Thursday, August 30, 2012

Samoa implements new law

A fale at Faofao beach, SamoaLast year I commented that my AJ Park colleagues and I made submissions on the Samoa Intellectual Property Bill 2011. We met with the Deputy-Registrar responsible for administering the Samoan Intellectual Property Registry.

The Samoa Intellectual Property Act 2011 was passed in October last year. You can find a copy of it here. The implementing regulations are not yet in place. They are expected to be passed in October this year. Once the regulations are passed, both the Act and the Regulations will come into force.

No Re-registration

One of the major changes for patent applicants outside of Samoa is that there seems to be no provision for re-registration. We are all used to being able to re-register a patent granted elsewhere within two years from grant.

Those applicants that currently use the re-registration system will no longer be able to from October 2012. Samoa is not yet a signatory of the PCT Treaty. So all patent applications will need to be filed in Samoa within the 12 month Paris Convention deadline.

There is a 12 month grace period for disclosures due to or in consequence of acts committed by the applicant, the applicant's predecessor in title, or an abuse committed by a third party.

Traditional resources

Each application must contain a statement as to whether or not the invention is based on knowledge available within any local or indigenous community whether from Samoa or elsewhere.

The Registrar may ask for evidence as to the applicant's title or authority to make use of such material or knowledge. Failure to provide evidence is a ground on which the Registrar may cancel the application.

Information concerning foreign applications

The Registrar is able to ask for details of corresponding foreign applications. Although there is provision for examination, we expect that grant in a foreign jurisdiction will be sufficient to secure grant in Samoa.

Further steps

I guess the next step for Samoa will be to work toward becoming a signatory of the PCT Treaty. Until that happens, applicants need to be aware that re-registration will no longer be available.

Photo courtesy of author F0t0Synth under Creative Commons licence.

Tuesday, August 28, 2012

A makeover for the Patents Bill

Color Cosmetics Rabbit In an earlier post I mentioned that the current government has succeeded in slipping the Patents Bill into an economic policy agenda to make it less boring to the general public. It is working. Today's Parliamentary Order Paper lists the Patent Bill as number 5 in a list of 60 Government Orders of the Day.

There is even a Supplementary Order Paper (SOP) dated 28 August 2012 setting out proposed amendments to the Bill as it heads into a Second Reading. There appear to be a few amendments in three main areas.

Sanity check

During the Select Committee process the Ministry of Economic Development (MED) prepared a Supplementary Report to the Commerce Select Committee in January 2010 ("the January Report") on the issue of the patentability of computer programs.

The report recommended an exclusion from patent protection for computer programs, "the wording of the exclusion being similar to, or the same as, the exclusion for computer programs contained in the EPC and the UK Patents Act." The MED report stated that "IPONZ has indicated that if such an exclusion was provided, it would use EPO and UK case law and practice to interpret the exclusion".

The desire for a European-style exclusion was echoed in many of the submissions. For example, there were three written submissions from the New Zealand Open Source Society (NZOSS). The first of these submissions favoured harmonisation with Europe. The submission suggested that "New Zealand could follow the European lead in patent law, and explicitly exclude software from being patentable".

It was surprising to see the Select Committee recommend an exclusion that did not follow European law, despite advice and submissions to the contrary. The exclusion inserted by the Select Committee, clause 15(3A), simply reads "A computer program is not a patentable invention."

The Supplementary Order Paper replaces the exclusion in clause 15(3A) with new clause 10A. This new clause reads as follows:
10A Computer programs
(1) A computer program is not an invention for the purposes of this Act.
(2) Subsection (1) prevents anything from being an invention for the purposes of this Act only to the extent that a patent or an application relates to a computer program as such.
The Explanatory note states that the new clause is "considered to be more consistent with New Zealand's international obligations ... [and] is also more consistent with overseas precedents and makes it clear that it is only computer programs themselves that are ineligible for patent protection.

I guess it took a new Minister to perform a sanity check on the original exclusion.

The digital age

New clause 278A amends the regulation-making powers and other provisions to ensure that a fully electronic patent system can be implemented. It will now be a requirement that all requests, applications and other documents must be filed electronically.

Timing issues

Other clauses in the SOP recognise the fact that the Patents Bill has been waiting for a Second Reading for a while. Clause 2(3) is amended to extend the date for the Act coming into force from 31 December 2012 to 31 December 2013.

New clause 293A empowers transitional regulations to be made to enable an orderly implementation of the transition from the Patents Act 1953 to the new Patents Bill given the complex nature of reform. The transitional period is three years.

Photo courtesy of author laverrue under Creative Commons licence.

Wednesday, August 22, 2012

The Patents Bill - good things take time

Windy road aheadYesterday I came across an article telling me that patent law reform in New Zealand has stalled. The author says that:
'Patent law reforms that have been stalled in Parliament since their introduction by the last Labour government are finally back on the agenda, with passage into law expected by the end of the year'.
With respect to the author, patent law reform in New Zealand has been underway in a real sense since 1992. Law reform of the New Zealand Patents Act 1953 has outlived not one but two of the government departments responsible for it. I don't think patent law reform has stalled. It is just taking a while.

My fellow blogger Doug Calhoun sets out a good potted history:
"The Patents Act 1953 was virtually a carbon copy of the 1949 British Patent Act ... In the early 1980s the government appointed a committee (IPAC) that looked at some aspects of patent law on an ad hoc basis. In 1989 the Law Commission had a brief look at patent law, but gave it over when the Ministry of Commerce (MOC) took on the task.

In 1992 MOC produced a set of “proposed recommendations” that almost led to a rewrite of the patent law. But in 1994, in anticipation of the formation of the WTO with its minimum IP standards, the [existing Patents Act 1953] was tweaked. The 1994 changes resulted in the Wai 262 claimants protesting that all IP law reform should halt until their treaty claim was settled. It did. The Wai 262 report was finally released in mid-2011".
In August 2000 a three-stage review of the Patents Act commenced. Each stage was to deal with a specific topic of patent law reform. In December 2004 a Draft Patents Bill was released for public consultation. In July 2008 the Patents Bill was introduced to Parliament. It had its First Reading in Parliament and was referred to the Commerce Select Committee for public submissions. A Revised Patents Bill, containing amendments recommended by the Commerce Select Committee, has been awaiting a Second Reading since March 2010.

Patent law reform is a difficult one to get the mainstream public excited about. It doesn't attract the same level of interest as gay marriage, sale of state-owned assets, or even local government reform. If there is no interest in it then there are no votes in it. If there are no votes in it then it is dealt with according to 'legislative priority'.

What the current government has manged to do is slip the reforms into something the public can get excited about, or at least interested. The New Zealand Patents Bill appears to now form part of the Government's economic policy agenda, "arranged around exports, innovation, workplace skills and safety, capital markets, natural resources and infrastructure".

It seems to be working. Today's Parliamentary Order Paper lists the Patent Bill as number 17 in a list of 60 Government Orders of the Day. Maybe we will have the new law in by Christmas. This Christmas.

Photo courtesy of author Dawn Loh under Creative Commons licence.

Thursday, August 16, 2012

The tobacco tango

Tobacco shedsYesterday we saw the conclusion of one of the battles in the "tobacco wars". In an earlier post I covered litigation in the Australian High Court relating to a tobacco industry challenge to legislation requiring plain packaging of cigarettes.

The High Court has just found the proposed tobacco plain packaging laws to be both legal and constitutional. From December all tobacco products in Australia must be sold in a uniform olive box with black lettering. The full judgment will not be released until later this year, although it has already attracted comments from a wide audience.

Unintended consequences

A major change like this, even if well-intentioned, is bound to have unintended consequences. I guess it is a matter of opinion whether these consequences are really unintentional, or whether they are merely collateral damage.

British American Tobacco spokesman Nick Booth commented that if plain packaging is brought in, companies will use other devices to attract customers. "Ultimately, if we're not able to use our brands to compete, we'll be forced to compete on things like price, which could actually frustrate the intended goals of plain packaging".

Trust is important to brands, says Stephen Cheliotis of the Centre for Brand Analysis (TCBA). If consumers decide the source of a given product is no longer reliable or safe they will vote with their wallets. Known brands have to uphold certain standards to retain consumer trust. Making packaging easy to copy gives rise to counterfeit cigarettes. Some counterfeit cigarettes have reportedly been found to contain abnormally high levels of cancer-causing chemicals.

The nanny state

Booth also poses the question of where does it end? What about alcohol, fatty foods, sugary drinks and sweets? Should they all be sold in plain packaging or unbranded?

Herald-Sun journalist Patrick Carlyon asks why Australia is still awash in beer and spirits television advertisements. Alcohol is a contributing factor in about a quarter of road deaths in Victoria, Australia. Children are victims of alcohol-related harm in more than one-fifth of Australian homes. It is thought to be a risk factor in about 20,000 cases of child abuse. Yet no one is suggesting that alcohol be plainly packaged.

There are plenty of commercials depicting families gathered at the dinner table eating fast food. Yet Australian waistlines and rates of diabetes are increasing. Does this suggest the introduction of taxes on unhealthy foods, the limiting of advertising on those foods, banning advertising altogether, followed by the introduction of plain packaging?

A property right?

One of the most interesting questions for me remains unresolved. The Australian Government's view was that:
  1. a trade mark itself is a privilege. It is not a property right. The Government can take it away.
  2. trade mark owners acquire a registration on the proviso that it cannot be used in certain areas
We don't know which one of these arguments found more favour with the High Court. We won't know this until the decision is publicly available.

I can kind of understand the second argument. A patent right gives its owner the right to exclude others rather than the right for the owner to work an invention. Maybe argument 2 along these lines.

But argument 1 is a different matter altogether. This is a major change. I have always thought of trade marks as property rights. Something you own. Something you have the right to control. Something you have the right to use.

What now?

The Australian Government has won the battle but not the war. I understand complaints have been lodged with the World Trade Organisation (WTO) by some countries who claim the law breaches trade agreements. It is going to be an interesting issue to follow.

Photo courtesy of author trbpix under Creative Commons licence.

Wednesday, August 15, 2012

These colourful olympics

Opening Ceremony London 2012 Olympics 0063Thanks to Allan Main, Principal of MAINly Consulting Ltd for this guest post.

Like everyone else during the past two weeks, I spent an irrational amount of time in front of the television watching the pageant that was the Olympic Games. It has been an immensely colourful spectacle brilliantly aligned to the vibrancy of HDTV, as I am sure was the prime intention rather than to provide those in the arena with a theatrical experience.

Of course we're used to the Olympics parading the exuberance of national colours, but this time there was a flood of colour in the surroundings too. Throughout the venues there was a vibrant constancy in the livery, and one colour seemed dominant. It was present on the crowd barrier surrounding the track, the seats on which the field event athletes rested between turns, on-field drink trolleys, and most of the essential event paraphernalia were thus dressed. Competitor bibs were framed by it, even the sensor-strip on the jump line at the jumping pit was this colour. Come the medal ceremony, female medal escorts were dressed in it, the winners' dais was draped in it and the medals themselves were supported by a ribbon of it. What is “it”; why the colour purple of course.

Nothing extreme or unusual about this; consistent trade dress is a key element of sound branding, and “THE OLYMPICS” mark certainly warrants that dilligence given it is considered (by multinational intangibles valuation consultancy Brand Finance) to be this year's second-most valuable global brand (after APPLE®).

Regularly my television cut to a commercial break, and to a series of advertisements framed by those of premium Olympic sponsors, those who have invested millions – cumulatively US$957mil actually – to have their brands integrally associated with the greatest sporting spectacle in the world. One of these major sponsors was iconic British brand CADBURY®, whose sponsorship allowed them to promote their chocolate as the official confectionery of the 2012 Games. And what was usually first up on the ad break? Why, a smart new TV commercial - a "TVC" - for that very same Cadbury, apparently produced specifically for the games period. A clear intent of this ad is to flourish the fanfare "WE ARE CADBURY AND WE ARE PURPLE!" (well, a specific shade of purple anyway - Pantone 2685C purple).

(Virtual Side Bar: In many jurisdictions around the world, including the United Kingdom and the Australasian nations, Cadbury has been actively moving to register exclusive trademark rights for the specific shade of purple core to their trade dress in as broad an area of the confectionery sector as they can persuade local trademark offices to allow. In prosecuting these applications Cadbury argue with significant success that consumers identify that colour with Cadbury to such an extent that any confectionery wearing that colour is presumed by the consumer to originate from them. As such, they claim to deserve to have the right to exclude competitors from using "their" colour to the same extent that they can exclude others from using their trade name. As these claims become allowed Cadbury's promotions slant ever more to tie the colour purple to their brand.)

At this point the bronze penny dropped - this Cadbury TVC founds on the same colour we have been bombarded by every second of the Olympic broadcast. How “fortuitous” is that!?! (Do I sense a Tui-style “Yeah, Right” repost?)

All Olympic performance spaces are, by IOC edict, product-placement-free (ie "absent", not "at zero cost", of course) zones. Yet the London Organising Committee of the Olympic Games (LOCOG) have clearly skirted that edict in at least one other instance, with the radio-controlled model cars running around the athletics field retrieving and returning field event hardware (discuss, javelins etc) bearing an uncanny resemblance to the current Mini, also as British in its origins as Cadbury. Other than the distinctive shape, there is no branding that makes it clear that this is a Mini ... but we all know it is. BMW, the current owner of the Mini marque, and another official sponsor of the 2012 Games, reputedly paid £40mil as their sponsorship contribution. The “generic” model car discuss-toter’s indisputable resemblance to the Mini we can buy from the local BMW dealer might be construed as part of their reward package for that generous financial support.

So could it possibly be that Cadbury have accomplished a comparable coup (“achievement” not “a 2-door car”) with LOCOG rewarding Cadbury’s sponsorship by having their master colour so prominent in the Olympic livery? The official line is that purple was ACTUALLY chosen to honour Queen Elizabeth's jubilee year - "royal purple" so to speak. As entirely plausible as that is, an alternative construct is that the event sponsor that OWNS purple in confectionery was able to negotiate their rewards to reach into the London Olympics’ trade dress as part of their sponsorship package. You would no more expect that to be publicly announced than was the secret-squirrel BMW-Mini deal, and a pervasive colour is substantially more challenging to unmask, and more subliminal in its effect than is the physical shape of a model car.

On the other hand, perhaps it was just a happy (for Cadbury) coincidence turned by them into a masterful moment of reverse ambush marketing. But however it came about, Cadbury had a greater "virtual presence" at the 2012 Olympic Games than had any other commercial party. After all, where next can you go for greater Olympic brand association once you have connected your brand with the medals that hang around the winners' necks?

I remain in total awe!

All this, whether schemed or serendipity, was enabled by Cadbury's long-term intellectual property management nouse, first to build their colour strongly into their brand identity, then to protect that position by registering it and finally to create a clever association marketing campaign. The cleverest advertising is when you don't even know it is being done to you, except at a subliminal level.

Hats off to Cadbury for seizing the opportunity, however it came about.

Photo courtesy of author Duncan Rawlinson under Creative Commons licence.

Thursday, August 9, 2012

Apple v Samsung - the big shrug?

And So It BeginsOver the last couple of years Apple and Samsung have engaged in what commentators have labelled a tablet war, a feud, and a battle.

In reality the two parties are involved in a regular commercial dispute. I think the high profile of the dispute can be attributed to two things. One is that the object of the dispute involves well-known consumer devices. Another is that there are intellectual property rights involved about which everyone seems to have an opinion.

So far we have seen litigation in the United States, Germany, the Netherlands, Australia, the United Kingdom, France, Italy, Japan and South Korea. The exact nature of the litigation in each country depends on the intellectual property rights secured by the parties in those countries and the extent to which those intellectual property rights can be enforced.

Trade dress

In some jurisdictions we have seen Apple take action against Samsung for what is known as trade dress infringement, unfair competition and/or consumer protection law. Apple is saying that consumers are going to buy a Samsung product thinking they are buying an Apple product due to the way Samsung is manufacturing and packaging its Galaxy Tab product.

My impression is that Apple is not doing too well with this cause of action. I could understand it if the product was a can of dog food or a tube of toothpaste. A customer in a hurry may pick up the wrong product off the shelf. However I would like to think that a consumer dropping several hundred dollars on a tablet device would at least stop to look at the packaging.

Design patents

In some jurisdictions we have seen Apple secure registered rights for the appearance of its iPad product. These types of registered rights are called registered designs or design patents. Apple is alleging that Samsung's Galaxy Tab product infringes some of these design rights.

The problem here is that the iPad isn't that distinctive looking. Turn off the device and all you have is a rectangular glass plated hunk of metal. In Germany for example Samsung has re-engineered its product so that the glass front does not extend to the side edges. It now looks slightly different and is, according to Samsung, no longer covered by Apple's design rights.

Utility patents

Samsung is calling out Apple in some jurisdictions. It is saying that Apple infringes some of its patents relating to mobile communications and wireless communications. These patents are said to be essential for implementing European mobile telephony standards.

This hasn't gone too well for Samsung, with a European anti-trust investigation underway against the company. The issue here is whether Samsung's attempts to enforce these 3G related patents violate an agreement it made with the European Telecommunications Standards Institute (ETSI) to licence the patents to other companies on fair, reasonable and non-discriminatory terms.

Perhaps the most promising cause of action for Apple involves a whole bunch of patents it owns relating to touch screen technology and user interfaces. Apple's patents are not essential to operate the tablet device. Many of the patented inventions contribute to an enhanced user experience. It has asserted these against Samsung in many of the jurisdictions in which it has acquired them.

Samsung will be arguing that it doesn't infringe the patents and that the patents are invalid anyway. Samsung will argue that the claims of the patents are not new, that they are obvious, and/or that they cover subject matter that shouldn't be patentable in the first place.

The New Zealand perspective

The commercial dispute between Apple and Samsung is unlikely to have a significant effect on research and development undertaken by New Zealand companies. New Zealand's small market size means that any given electronics/ICT patent in the United States will have only a 1 in 100 chance of also being applied for in New Zealand.

I don't think the dispute merits the big shrug in New Zealand. The litigation in Australia on patentable subject matter will be interesting from a New Zealand perspective. Patent infringement lawsuits involving computer-implemented inventions are unheard of here, so we tend to look to Australia for guidance on subject matter eligibility.

New businesses will continue to emerge. Some will grow to a useful size. When an individual business is ready to export it may review the intellectual property landscape on a market-by-market basis to assess freedom to operate. If it becomes a truly global business it will assess freedom to operate in the intended markets as part of its research and development programme.

The Apple-Samsung dispute has been a fascinating one to follow. However it ends up, I think it shows a healthy level of competition and strategic use of intellectual property rights within a competitive consumer device market.

Photo courtesy of author gothick_matt under Creative Commons licence.

Wednesday, August 8, 2012

An unconventional order

BeehiveLast week the Patents, Designs, and Trade Marks Convention Order 2012 was presented to the House. It is due for enactment 23 August 2012. I spent a few squinty minutes playing spot the difference with the Convention Order of 2000. It was only when I reached the end of the list that I found a useful summary.

The newcomers

The new convention order contains a bunch of additional countries that are now convention countries for the purposes of the Patents Act 1953, the Designs Act 1953 and the Trade Marks Act 2002. These new countries have either signed the Paris Convention, joined the World Trade Organization, or both.

The countries are:
  • Andorra
  • Bhutan
  • Cape Verde
  • Comoros
  • Montenegro
  • Nepal
  • Samoa
  • Saudi Arabia
  • Serbia
  • Seychelles
  • Tonga
  • Yemen

We're not expecting a flood of patent applications to file here that claim priority from these countries. But it is nice to have an updated list.

Also new to the list are certain intellectual property offices and organisations in countries that are members of the Paris Convention and/or the WTO. These are:
  • African Intellectual Property Organization (OAPI)
  • African Regional Intellectual Property Organization (ARIPO)
  • Benelux Office for Intellectual Property (BOIP)
  • Eurasian Patent Organization (EAPO)
  • European Patent Office (EPO)
  • European Union
  • Office for Harmonization in the Internal Market (Trade Marks and Designs)(OHIM)
  • Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent Office)

The Problem

In New Zealand we have a little problem that affects New Zealanders more than anyone else. The problem is that a national phase entry application in New Zealand, called a treaty application, cannot validly claim priority from a New Zealand patent application.

It might be that the problem arose from an error in amendments to our patent legislation following New Zealand's accession to the PCT treaty. It may be that the error arose in omitting New Zealand from the convention order enacted soon after. If New Zealand had been listed as a country from which priority can be claimed, then the problem would have been fixed.

The new convention order doesn't fix the problem. New Zealand is not listed as one of the new convention countries from which priority can be claimed.

There is at least some sign that our government ministers and officials recognise the problem and are willing to fix it. The Patents Bill, currently awaiting a second reading in Parliament, contains clause 298A that will retrospectively validate priority claims for all existing treaty patent applications and issued patents.

Photo courtesy of author Iain Farrell under Creative Commons licence.

Monday, August 6, 2012

When will my patent application be examined?

Mt Ruapehu Original Vertorama
Mount Ruapehu
We are often asked for status updates on patent applications we are handling in Australia and New Zealand. Last year I ran some numbers on my firm's cases and posted my results. I'm sure the sample size is large enough to be a fair representation of IPONZ records.

I found that 84% of unexamined patent cases had been filed up to 12 months earlier. About 16% of cases were filed between 12 months and 24 months. A negligible number were filed more than 24 months earlier.

Since then it feels like IPONZ has conducted a massive clearance of its inventory. Some numbers I ran recently confirm just that. As at 26 July 2012 approximately 91% of unexamined patent cases had been filed up to 12 months earlier. Approximately 9% of cases were filed between 12 months and 24 months earlier.

Patent examination times

Breaking this down further, just over half (51%) of unexamined patent cases were filed less then 6 months earlier. Approximately 40% were filed between 6 months and 12 months earlier.

I guess the answer to the most commonly asked question is that a New Zealand patent application will probably be examined some time within 12 months of filing. Unless it isn't.

Photo courtesy of author JayVeeAre under Creative Commons licence.
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