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.

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