Sunday, June 16, 2013

Another case of the disappearing hens

UntitledSome of our hens are disappearing. It's a hard one to measure. We don't know exactly how many hens we have. We think it is somewhere between 15 and 20. They are free range so we're never quite sure where they all are at any given time.

But there is still a sense that they occasionally disappear. Someone or something is helping themselves without asking. Our flock is a bit like a lolly jar to some predator. But which predator?

We know it's not our own canine mobsters. I covered them in a previous post. The evil mastermind has passed on already.

It's probably not a harrier hawk or Kahu. I often see them gliding around our property. In my experience they tend to go for young chicks and eggs rather than adult birds. A month ago I did see a harrier swoop on one of our hens and try and carry it off. The hen won that encounter.

There are no other native predators in New Zealand. No snakes, foxes, coyotes, raccoons, weasels, skunks, wildcats, badgers or wolves. But there are plenty of introduced predators. We talked to the biosecurity folks at the Greater Wellington Regional Council. We compiled a short list of possible culprits from their list of pest animals.
Stoat trap
It could be a ferret, stoat or weasel. We set a kill trap for those a few weeks ago. No luck yet. The device has an entrance for the nasty little mustelid to enter the box. Once inside it trips a spring loaded plate and that's the end of it.

Bait stationMaybe it's a family of rats. It doesn't really matter whether they are norway rats or ship rats. They are all rats to us. We've set some poison bait in a bait station for those. The bait station is basically a housing that only a rat is small enough to enter. Apparently we need to avoid non-target animals.

Cage trapOr it could be a feral cat or possum. This is a little tricky. We have three domestic cats of our own. Surely it's not one of our own cats who are sneaking chickens?! I guess we'll find out soon enough. We've set a live cage trap that will catch and contain a feral cat, a possum, or one of our domestic moggies.

We'll find out soon enough who the lolly jar culprit is.

Lolly jar photo courtesy of author Sydney Wired under Creative Commons licence.

Thursday, June 13, 2013

Beware the moonlighting bureaucrat

MOONIn my last post I posed the question of whether we would see New Zealand patent examiners moonlighting as patent attorneys. This idea is not as far-fetched as it sounds. Consider the following example. I am not making any of this up.

The applicant

A few years ago an inventor in a rural New Zealand town came up with an invention for a spray tank assembly for an all terrain vehicle (ATV). He prepared and filed a patent application in New Zealand through a reputable patent attorney firm.

The inventor had a year within which to decide where to file further patent applications for his invention. The records show that he filed a PCT international application with the Intellectual Property Office of New Zealand (IPONZ).

There was obviously a change in advisor at some point between the filing dates of the New Zealand application and the PCT application. The inventor named someone else as address for correspondence on the PCT Request form.

The application

We can quickly see where things start going wrong. The PCT Request form lists a total of 21 pages filed. These include 3 request pages, 11 description pages, and 7 drawings pages. No claims pages. No abstract page.

WIPO published the PCT application with the International Search Report (ISR) attached. The international examiner managed to produce some prior art even though there were no claims to search.

The examiner noted in the International Preliminary Report on Patentability (IPRP) that '[t]here is no suitable claim on which I can base a search or opinion'. In fact, the examiner went on to state that 'the application has no claims'.

The PCT application has lapsed. Because the PCT application was published there is no scope for the inventor to secure patent protection for the invention described in the published application. Anywhere.

So who would encourage an inventor to file a PCT patent application with no claims? The inventor has forked out several thousand dollars in PCT patent office fees and now has nothing to show for it.

The advisor

Various publications describe the advisor as an IP strategist, one of the world's leading intellectual property experts, and an industry expert. There is no record of the advisor ever appearing on the New Zealand Patent Attorney Register.

The advisor authored a document while under contract to IPONZ to 'explore the viability of a support and advisory service for SMEs'. One of the proposals in the document, if implemented, would see IPONZ offer through its website:
  • IP search;
  • designs search and commentary;
  • patentability search;
  • patent validity search; and
  • freedom to operate search (all IP).

IPONZ made it clear that the views expressed, and any findings outlined, in the report are those of the author and not IPONZ. As far as I know, IPONZ has not implemented any of the above options.

What now?

There are quite a few observations we can make here. One is that a PCT patent specification should have claims. Most patent attorneys know that. Some IP strategists and leading intellectual property experts do not.

It is important when engaging an IP advisor to reassure yourself that they know what they are doing. Especially if they are a moonlighting bureaucrat. The advice may be cheap or even free. But what if it means losing potentially valuable IP rights forever? I guess it really is a case of getting what you pay for.

Photo courtesy of author Nick. K. under Creative Commons licence.

Wednesday, June 12, 2013

A trans-Tasman approach to patent examination


Two years ago the New Zealand and Australian Governments announced a faster, cheaper and more streamlined trans-Tasman process for securing patent rights in New Zealand and Australia. A single patent application and examination process for both countries, we were told, will remove duplication, drive efficiencies and reduce costs.

Further details of the plan have now emerged with the introduction into the Australian Parliament of the Intellectual Property Laws Amendment Bill 2013. Here is my take on the main changes.

The Moonlighting Examiner

Patent examiners are in a privileged position when it comes to inventions. They get to see a lot of sensitive material before it is publicly available. In New Zealand we have section 6(3) of the Patents Act 1953 that says:
[e]very officer and employee of the Patent Office commits an offence, and shall be liable on summary conviction to a fine not exceeding 20 pounds, if, outside the scope of his official duties, he drafts or prepares a specification or drawing or any part of a specification or drawing or makes a search of the records of the Patent Office for the use or information of any applicant or intending applicant for a patent under this Act.

The explanatory note says that the equivalent provision in Australia, section 185, is outdated and no longer required. We are told that such conduct would breach the APS Code of Conduct in the Public Service Act 1999, and could be dealt with appropriately under that Act.

The Bill will remove the Australian provision. It will be interesting to see if similar changes are made to the New Zealand Act. It is not uncommon for New Zealand examiners to qualify as New Zealand patent attorneys while working at IPONZ. Some continue to work at IPONZ after qualification. Will we see New Zealand patent examiners moonlighting as patent attorneys?

The Electronic Mailbox

At the moment an address for service must be a physical or postal address in Australia, and the permitted means of service are by post or personal delivery to that address.

Revised section 221(1) will permit an address in Australia or New Zealand to be an address for service of documents. Presumably a patent applicant will be able to maintain separate addresses in each country if that is what the applicant wants.

It looks like we will be sticking with post or personal delivery for now. But there is a specific provision to allow an electronic address to be an address for service in Australia or in New Zealand. New section 221(2) says that 'an address includes a reference to an electronic address'.

The question of whether a particular electronic address is in Australia or in New Zealand is to be 'determined in accordance with the regulations', according to new sections 221(3) and 221(4).

That will be an interesting one to watch.

The New Zealand Delegate

Patent examiners are usually referred to as 'examiners' for those of us in the profession and 'advisors' for those working at the Intellectual Property Office of New Zealand (IPONZ). The Bill introduces a couple of new labels. A 'New Zealand patents official' administers New Zealand patent law. A 'New Zealand delegate' is a New Zealand patents official 'to whom the Australian Commissioner delegates powers and functions under the Patents Act'.

A patent examiner in his/her role as a New Zealand delegate will be able to examine Australian patent applications while resident in New Zealand. There will be some teething problems. The Bill contains some provisions to deal with these.

A New Zealand delegate must, if so required, exercise a delegated power or perform a delegated function under the direction or supervision of the Commissioner or an employee in the Patent Office specified in an instrument of delegation. This will ensure that New Zealand delegates can be given appropriate guidance by Australian patents officials.

There may also be situations where an error or omission by a New Zealand delegate of the Australian Commissioner causes a deadline to be overlooked. There are new subsections to permit the Australian Commissioner to extend the time for doing a relevant act if the relevant act or the error or omission took place in New Zealand.

Protection of New Zealand Delegates

New section 20(3) will give New Zealand examiners immunity from liability in case they mess up examination of an Australian patent application. The example given in the explanatory note is where:
a New Zealand delegate of the Australian Commissioner does not accept an application for grant of a patent when examining it, owing to a mistaken understanding of the invention being claimed. Later on, a Deputy Commissioner in Australia hears the applicant and accepts the application. The applicant is inconvenienced by the delay in the grant of the patent. It is immaterial that the New Zealand delegate‘s decision is made in New Zealand: the New Zealand delegate will have the same immunity in Australia as an Australian delegate.

I expect that this limitation of liability would apply equally where a New Zealand examiner has a mistaken understanding of Australian law and practice.

The One-Stop Shop

New section 214(2) will allow applicants to file 'prescribed documents' required for Australian patent applications with one of the specified New Zealand patents officials. This will save applicants having to file the same document in both Australia and New Zealand. One example given is where an applicant applies for grant of a patent for the same invention in each country.

There are time differences between the two countries. What time is an Australian document filed in New Zealand deemed to have been filed? All we know from new section 214(3) is that the time will be 'ascertained in accordance with the regulations'. There is a hint in the explanatory note that the time of filing an Australian document with the New Zealand patents officials will be deemed to be the time in Canberra, Australia.

Currency trading

New section 227(6) says that a fee required for an Australian patent or application can be paid in New Zealand currency to a New Zealand patents official instead. An example is where a patent applicant files both New Zealand and Australian patents with the New Zealand Commissioner. The applicant would be able to pay the New Zealand filing fee for the New Zealand patent application and 'the New Zealand dollar amount' of the Australian filing fee.

Similarly, there will be provisions for fees required for a New Zealand patent or patent application to be paid in Australian currency to IP Australia.

So how is the New Zealand dollar amount of an Australian fee, or the Australian dollar amount of a New Zealand fee, going to be calculated? Again, the details are being left to the regulations.

New section 226(7) says that 'the amount of the fee in New Zealand currency is to be ascertained in accordance with the regulations'. Senior officials in IP Australia and the New Zealand Ministry of Business Innovation & Employment are going to establish an instrument for setting these amounts.

What will probably happen is that IP Australia will maintain a schedule of Australian fees and Australian dollar amounts of New Zealand fees. IPONZ will maintain a schedule of New Zealand fees and New Zealand dollar amounts of Australian fees.

New Zealand and Australia have separate currencies with floating exchange rates that are independent of each other. I expect a few canny applicants will select the country in which they pay patent office fees based on the exchange rate of the day. Will this turn patent applicants into amateur currency traders?

Perhaps the proponents of this regime are right. Maybe it will reduce costs for applicants and other users of the patent system.

Further steps

The Bill that will enable this regime still needs to go through due Parliamentary process. Once through we should start seeing some regulations coming out of Australia setting out in more detail how this regime is going to work in practice.

In the meantime you can read further details about the process, a less than complimentary report on the proposed regime, and a joint study by the Productivity Commissions of both countries.

Photo courtesy of author Garfield Anderssen under Creative Commons license.

Wednesday, June 5, 2013

Traditional knowledge - the proverbial square peg

South Africa is wrestling with the issue of how to protect traditional knowledge. Do you tweak traditional intellectual property rights to accommodate traditional knowledge? Or do you create a whole new sui generis (independent) regime?

The Waitangi Tribunal

In New Zealand we have been looking at this issue for years. We have the Waitangi Tribunal, set up to make recommendations on claims brought by Maori relating to actions or omissions of the Crown that breach promises made in the Treaty of Waitangi.

Last year we saw a decision issue on the 262nd claim brought before the Waitangi Tribunal. The genesis of WAI 262 is concern at the ease with which native flora and fauna can be lost to overseas interests. This claim puts under the spotlight the Maori rights of tino rangatiratanga (authority) and kaitiakitanga (guardianship) over indigenous flora and fauna. The report is unique in that it looks to build a partnership between Māori and the Crown beyond the grievance process. The report looks to establish a culture in New Zealand where both cultures are promoted, rather than one being promoted above the other.

The report acknowledges that current intellectual property laws and policies in New Zealand were not designed to deal with indigenous relationships with flora and fauna. Furthermore, current laws and policies allow third parties to use traditional knowledge without acknowledgement and consent. Furthermore, the report states that Maori tribes do not have ownership rights in “taonga species” or in traditional knowledge relating to those species.

It makes some recommendations to the Government as follows:

  • establish a Maori advisory committee to advise the Commissioner of Patents about whether inventions are derived from Maori traditional knowledge or use taonga species;
  • establish a register of traditional knowledge;
  • introduce a legal requirement for patent applicants to disclose the source and the country of origin of any genetic or biological material contributing to the invention; and
  • grant the commissioner the power to refuse patents that unduly interfere with the relationships between kaitiaki (guardian) and taonga.

Tweaking the existing regime

It has been almost two years since the Waitangi Tribunal released the WAI 262 report. Law makers have done nothing to implement its recommendations. The decision took almost 20 years to issue from the date the claim was first lodged. So maybe we have a while to wait before we see a substantive review of our intellectual property regime.

Progress on protection of traditional knowledge is further ahead in South Africa. The South African Parliament is considering a proposed Intellectual Property Laws Amendment Bill (the Traditional Knowledge Bill).

The Traditional Knowledge Bill has some 'issues', which is a polite way of putting it. One commentator describes the Bill as potentially damaging and that it appears to be proceeding:
... in spite of an independent report (the RIA Report), commissioned by the Department of Trade and Industry (DTI) in 2009, which seriously questioned both the need for the bill and the route taken to address the issue...
The TK Bill seeks to recognise and protect traditional knowledge within the existing forms of intellectual property, such as copyright and patents, but most expert opinion, including that of the World Intellectual Property Organisation (WIPO), is that, if traditional knowledge requires protection, it should be in the form of a new type of legal instrument rather than being subjected to IP.
In its diplomatic criticism of the TK Bill, the WIPO Secretariat describes the government’s approach as “novel and unusual”, which is a polite way of saying that it is unworkable.

An independent approach

What has recently emerged is an alternative South African bill called the Protection of Traditional Knowledge Bill.

IP law firm Spoor & Fisher published a summary of the new Bill on their website. The article states that:
[t]he new Bill, unlike the old Bill, proposes a sui generis approach to the protection of traditional knowledge.  In short, this means that traditional knowledge will be dealt with as a new category of intellectual property rather than fitting it into the already existing categories of intellectual property. This approach has generally been regarded internationally, including by the World Intellectual Property Organisation, as the proper approach for the protection of traditional knowledge.
The protection proposed to be offered by the new Bill can be divided into 3 categories, namely
  • Traditional Work, akin to copyright;
  • Traditional Designs, akin to Designs; and
  • Traditional Marks; akin to Trade Marks.

The noticeable exception is traditional knowledge relating to an invention, but this is due to the Patents Amendment Act, 2007 which established rules for dealing with inventions based on or derived from traditional knowledge.

Further steps

The new Bill has been published for consultation. The submission deadline has passed. It will be interesting to gauge the reaction from submitters. I suspect there will be general support for the approach but a lot of comment about the detail.

Does South Africa square peg traditional knowledge into an existing intellectual property rights framework? Or is a whole new regime needed?

New Zealanders will be watching with interest.

Photo courtesy of author Yoel Ben-Avraham under Creative Commons licence.
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