Wednesday, July 25, 2012

Strengthening economic relations

The Australian and New Zealand Governments are looking at stronger economic relations between the two countries. The Productivity Commissions of each country have been asked to conduct a joint study on the options for further reforms that would increase ecomomic integration and improve economic outcomes.

One of these reforms is the establishment of a Single Trans-Tasman Regulatory Framework for Patent Attorneys. I covered this in an earlier blog post.

The process kicked off with an issues paper released in April this year. The closing date for submissions was 31 May 2012. The New Zealand Institute of Patent Attorneys (NZIPA) made a submission.

The Trans-Tasman profession

Patent attorneys are one of the registered professions covered by the Trans-Tasman Mutual Recognition Act 1997 (TTMRA). Any New Zealand patent attorney may register as an Australian patent attorney. Any Australian patent attorney may register as a New Zealand patent attorney.

There is no barrier to a New Zealand patent attorney providing a full range of services to an Australian resident client. There is no barrier to an Australian resident patent attorney providing a full range of services to a New Zealand resident client.

Clients prefer a local service provider

Members of our profession have had 10 years experience with TTMRA. We have found that a local service provider is almost always more attractive to a client because of the ease of engagement. We have seen only two attempts to build a fully integrated firm with offices in New Zealand and Australia. Both unsuccessful.

Further integration unlikely to bring great cost savings

The NZIPA observes that, since the enactment of the TTMRA, a New Zealand resident patent attorney acting for a New Zealand client is able to file patent applications in Australia without needing to engage an intermediary Australian resident patent attorney. The TTMRA has therefore brought about some cost savings. These cost savings are not substantial. The NZIPA states that further integration is not going to result in greater further savings.

Loss of local services

Individual patent attorneys have become a mobile commodity. New Zealand and Australian patent attorneys can already freely move to and practice in their country of choice. The overall result is a net migration of skilled patent attorneys from New Zealand to Australia. Clients prefer to deal with a local service provider. This means that the skills of these migrants are essentially unavailable to New Zealand enterprise.

The potential for the hollowing out of a local services industry in New Zealand is real.

Economic analysis

The NZIPA has conducted its own economic analysis with the help of the Bureau of Economic Research Limited (BERL). The BERL report covers the proposed establishment of a single regulatory framework, observing that:
'New Zealand has failed to undertake a substantive analysis of the effects of economic integration activities on the New Zealand patent attorney industry prior to commitment to harmonisation activities. It is the finding of the current study, that if care is not taken to structure relationships appropriately harmonisation will lead to a decline in the New Zealand patent attorney industry. New Zealand will lose a valuable resource in the innovation ecosystem, and a valuable opportunity to grow a local knowledge industry.

Patent attorney firms are key members of New Zealand's innovation ecosystem. New Zealand businesses find them valuable, and consider them at their best when they are in a close working relationship with the innovating business. The opportunity cost of losing such a valuable industry is unknown. No substantive research has been undertaken on the effects of the patent attorney industry on revenues derived from patenting activities and technologies commercialised and exported from New Zealand. We are blind to the implications'.
Further steps

The NZIPA believes that a well informed and appropriately structured integration could stimulate growth in the New Zealand patent attorney industry, ensuring that it continues to provide highly skilled and efficient services in the New Zealand economy. Such an approach requires research and detailed consultation with the industry in New Zealand.

Wednesday, July 18, 2012

Trade marks and traditional knowledge

Kiwi HakaA recent decision from the Intellectual Property Office of New Zealand (IPONZ) highlights yet again the fundamental disconnect between Western-style intellectual property rights and the protection of traditional knowledge.

Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited [2012] NZIPOTM 14 (1 June 2012) examined the protection available (or lack thereof) for the lyrics in a haka, a traditional ceremonial dance or performance.

The Haka

According to evidence before Assistant Commissioner Walden the haka Ka Mate was originally composed by chief Te Rauparaha of Maori tribe Ngati Toa Rangatira in 1820. It is believed that the Chief composed the haka on encountering a hirsute but friendly face after a narrow escape from enemies.

The words of the haka are as follows:
Ka mate, ka mate! ka ora! ka ora!
’Tis death! ‘tis death! (or: I may die) ’Tis life! ‘tis life! (or: I may live)
Ka mate! ka mate! ka ora! ka ora!
’Tis death! ‘tis death! ’Tis life! ‘tis life!
Tēnei te tangata pūhuruhuru
This is the hairy man
Nāna nei i tiki mai whakawhiti te rā
Who brought the sun and caused it to shine
Ā, upane! kaupane!
A step upward, another step upward!
Ā, upane, kaupane, whiti te ra!
A step upward, another... the Sun shines!
The haka is incredibly well known throughout New Zealand. It is performed on sports fields, on streets, in schools and in bars.

The trade mark applications

There were four trade mark applications at issue in this case. All four were filed by Te Runanga O Toa Rangatira Incorporated (the Runanga) as the formal representative body of Ngati Toa Rangatira. The opposed marks were as follows:
814421 KA MATE
814532 WHITI TE RA
814533 KA ORA
Prokiwi successfully opposed each of the trade marks on the ground that none had distinctive character.

The Hearing Officer concluded that the haka Ka Mate is an important part of New Zealand's heritage. A New Zealand icon. A powerful reference to New Zealand. It was clear to the Hearing Officer that certain traders of New Zealand themed goods and services, would, in the ordinary course of their business, wish to legitimately use the entire wording of the haka.

If the opposed marks were registered, honest traders would effectively be hindered in using the haka Ka Mate in relation to New Zealand themed merchandise and commercial sporting events in New Zealand.

It is not clear whether the Assistant Commissioner considered the opponent Prokiwi to be an honest trader. She records evidence of the New Zealand Rugby Union's "contact with Prokiwi concerning alleged unauthorised use of All Black imagery by Prokiwi on its souvenir products on more than one occasion".

The fundamental disconnect

Evidence led by the Applicant reveals the fundamental disconnect between intellectual property rights and the protection of traditional knowledge. The haka, according to the Applicant, does not belong to the composer per se but instead is a taonga (treasure) of the iwi (tribe) to which the composer affiliates.

The deponent goes on to state:
The haka Ka Mate also has kaitiaki (guardians). [The tribe] Ngati Toa Rangatira are the kaitiaki of the haka Ka Mate and it is our lineage that creates this kaitiaki relationship. The primary obligation of kaitiaki is to protect and safeguard the mauri (life force) of the taonga as well as the matauranga (knowledge) that sits beneath it.

As kaitiaki, our relationship with this taonga will be perpetual. As long as it continues to exist, our obligation will continue. A large component of this will be protecting the mauri (life force) of the haka Ka Mate from mistreatment such as offensive and derogatory use.
A succinct statement of the problem in my view. Western style intellectual property rights typically require some sort of novelty, an identified creator, are owned by a legal 'person' and are of finite duration.

Patents and registered designs (design patents) have to be novel. Copyright works need to be original. Trade marks must have distinctive character.

In this case we have an identified creator. However, it is not always so easy to identify an inventor for a patent or the author for copyright or a registered design.

The incorporated society that is the applicant for these trade marks is a legal person that is able to own intellectual property rights such as copyright, trade marks, patents and registered designs. However, the stated expectation is that traditional knowledge is collectively 'owned' in the sense of guardianship by a group that is not a legal person.

Intellectual property rights are finite. In New Zealand registered designs last for 15 years, patents for 20 years, and copyright for 50 years from the date of the death of the author. Trade marks are only valid while they have a distinctive character and are used on the goods and services for which they are registered. These rights are certainly not perpetual.

This case serves as yet another reminder that intellectual property laws were not designed with traditional knowledge in mind. Intellectual property rights do protect some aspects of traditional knowledge, but not to the extent expected by their guardians.

Photo courtesy of author Jad_23 under Creative Commons licence. 

Monday, July 2, 2012

Amazing grace periods

Horses engaged
The horses have bolted
Intellectual property lawyers have all had one of those "oh shoot" moments. You have the best intentions to file a patent application for your client before an impending disclosure. And suddenly the invention is out there.

It can happen all kinds of ways. I've seen the organisers of an exhibition promote their event by running a front page story of my client's invention the week before the exhibition. I've seen the proceedings of a conference published online in advance. I have heard of cases where a peer review panel for a journal is not under a formal confidentiality arrangement.

In each of these cases it's a matter of salvaging some sort of intellectual property rights from a bad situation. Many countries offer what is known as a "grace period". A grace period allows an inventor to file a patent application under some circumstances even though the invention has already been disclosed.

The global view

Earlier this year I attended a good seminar on grace periods at the LES International Annual Conference in Auckland New Zealand. The presenter gave an overview of the America Invents Act and its grace period provisions.

There are grace period provisions of varying scope in the United States, Europe, Japan, China, Taiwan, Singapore, Republic of Korea, Russia, Australia and India.

The proposed law in New Zealand

New Zealand currently provides only limited grace period provisions. Patent law in New Zealand has been under review for the last 20 years. At the time of writing, we have the Patents Bill 2008 that is awaiting a second reading in Parliament.

The grace periods proposed in the Bill are not radically different to what we have now. Disclosure of matter constituting an invention can be disregarded under the following circumstances:
  • material obtained unlawfully or in breach of confidence from the inventor;
  • disclosure made in breach of confidence by someone who obtained the material in confidence;
  • communication to a government department;
  • display at a specified exhibition;
  • reasonable trial necessary to be performed in public.

What the public said

The Patents Bill has been through a Parliamentary Select Committee process. During the submission process three universites and two crown research institutes asked for a general grace period. These are (in no particular order):

There was a common theme among the submitters. The main points raised were:
  • major markets provide for a general grace period. Providing a general grace period in New Zealand would allow local applicants to compete more fairly on the international stage (Plant & Food Research, Auckland UniServices)
  • academic standing, promotions and funding are primarily assessed based on number of publications rather than patent applications. (Research and Enterprise-University of Otago, Lincoln University, AgResearch)
  • There is a tension between the need to publish early and the need to seek patent protection for commercial opportunities (Research and Enterprise-University of Otago, Lincoln University)
  • inadvertent publications, or publications based on a lack of understanding of the patent system still occur before the commercial position has been evaluated. (Research and Enterprise-University of Otago, Lincoln University, AgResearch)
  • A grace period would help with obtaining a commercial return (Research and Enterprise-University of Otago, AgResearch)

What the profession said

The New Zealand Institute of Patent Attorneys (NZIPA) argued for a general grace period. The NZIPA acknowledged that the provision of grace periods is not consistent around the world. A disclosure that may be disregarded in New Zealand may still destroy novelty in another country.

Grace periods should be regarded as a "last chance" to provide protection in New Zealand for an inventor who has inadvertently disclosed his or her invention. Grace periods should not encourage wilful early disclosure at the risk of jeopardising validity in other jurisdictions.

The NZIPA argued for a general grace period similar to Australia, Canada and the United States to assist New Zealand resident applicants in securing patent protection at least in New Zealand following disclosure.

The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) also advocated for a general grace period. IPTA highlighted the fact that a grace period was introduced in Australia on 1 April 2002. They said that:
'in the interests of harmonising patentability requirements between Australia and New Zealand, we submit that a corresponding grace period should be introduced in New Zealand. To do otherwise would result in a marked disconformity in the law of the two jurisdictions, such that a New Zealand national who publishes his invention prior to filing a patent application would be able to obtain a patent in Australia, but not in New Zealand.'
What the officials said

New Zealand officials disagreed with the submitters. In a departmental report they said that:
'such a grace period may have advantages for local inventors who only want to apply for patents in NZ. However a number of other countries have no grace period provisions; for those that do, there is no internationally harmonised grace period provision. This means that local inventors relying on a NZ grace period may lose their ability to obtain patents elsewhere.'
A separate briefing note observed that:
'[p]roviding a grace period in New Zealand may have the effect of encouraging local inventors to make their inventions public before filing a patent application. They may not appreciate that this might jeopardise their chances of getting a patent in other countries ... In light of this, there may be little value in providing for a general grace period in New Zealand'.
It seems odd to me that the briefing note focuses so much on the hypothetical local inventor yet pays only lipservice to the submissions of universities and research institutes and completely ignores the submissions of the patent profession in both Australia and New Zealand.

The briefing note was penned nearly three years ago in September 2009. Since then we have seen the development of policy around greater harmonisation between Australia and New Zealand.

If we were to adopt the position set out in the briefing note, isn't there a greater risk for Australian local inventors to 'jeopardise their chances of getting a patent' in New Zealand? This would suggest that the New Zealand grace period should at least be harmonised with Australia. Surely.

Photo courtesy of author Pomax under Creative Commons licence. 
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