Korea implements US FTA

Late last year we saw some progress on the Korea-US Free Trade Agreement.  On 22 November 2011 the Korean National Assembly passed the KORUS FTA Bill.

There are consequential revisions to the Korean Patent Act which are due to take effect this year.  The folks at Korean firm Lee International have provided a nice summary of the changes.

Extension of Patent Term for Examination Delays

Where a patent is registered more than four (4) years from the filing date of a patent application or three (3) years from the filing date of a request for examination, the patent term may be extended for the delayed period.

A delay in registration caused by the applicant will be excluded.

Extension of Grace Period

The grace period in which an inventor may file for a patent application after making the invention public has been extended from six (6) months to twelve (12) months.

Repeal of Patent Cancellation Action for Nonpracticed Inventions

Under the old law a patent could be cancelled where a patentee had not worked the invention for two (2) or more years.  This was a risk even if a non-exclusive compulsory licence had been granted to a third party.

The revisions to the Patent Act repeal this law.

Duty of Confidentiality in a Patent Infringement Lawsuit

The parties in a patent infringement lawsuit, including their attorneys, are required to withhold from disclosing confidential information obtained during the litigation proceedings.

Photo courtesy of author slagheap under Creative Commons licence.

Our relationship with India - the sequel

On Thursday 19 May 2011, the Foreign Affairs, Defence and Trade Committee initiated an inquiry into New Zealand’s relationship with India.

The terms of reference for the inquiry are to:

• Consider trade, tourism, and opportunities including investment.
• Examine strategic opportunities for both New Zealand and India resulting from new opportunities for engagement particularly flowing from technological innovation.
• Determine any untapped opportunities for growing the relationship in the areas of science, medicine, defence, education, and culture.

NZIPA written submission

As I mentioned in an earlier blog post, the New Zealand Institute of Patent Attorneys (NZIPA) made a submission to the Committee.  A copy of our submission is available here.

The main points of our submission are that India:

• does not extend professional legal privilege to our clients
• provides no data protection for agricultural and medicine related data
• does not provide copyright protection for three dimensional works
• requires proof of working of patents
• cannot adequately manage trade mark applications

Oral submission

In October this year, Tim Jackson and I rocked up to present oral submissions to the Foreign Affairs, Defence and Trade Committee on behalf of the NZIPA.

We didn't have a lot of time to submit so we focussed on the privilege issue.  I can't say how our submission was received.  But I can say that I've seen the same reaction at a fancy dress party when the only one in fancy dress turns up.

Hon Pete Hodgson raised the fact that our Patents Act doesn't reciprocate rights that India already grants.  I pointed out that our Patents Act dates back to 1953.  It has been under review since 1989.  And there is a current Bill on the Parliamentary Order Paper.

Dr Paul Hutchison asked what the point was of Indian intellectual property.  Fisher & Paykel (Appliances or Healthcare - not sure which) and Rakon just get copied.  In answer I said that India has stronger IP laws than we have in our proposed Patents Bill.  One example is our proposed approach to patent protection for computer implemented inventions.

Committee report

The Report is now out and is available here.

It is good to see that the Committee has been made aware "that there are many opportunities for New Zealand to engage with India in science and innovation, particularly in areas such as pharmaceutical research, food technology, agricultural and horticultural science, and ICT".

Unfortunately, it seems that such opportunities will need to be pursued within the existing legal frameworks of the respective countries.

The Committee recommendation is simply that "the Government assist the New Zealand business community in pursuing opportunities for trade with India in ICT, creative industries, aviation, engineering, science and innovation".

Photo courtesy of author ILRI under Creative Commons licence.

Our relationship with India

Early last year our New Zealand Trade Minister and his counterpart in India announced the start of negotiations for a Free Trade Agreement between the two countries.  New Zealand's exports to India were valued at NZ$630 (US$542) million in 2009.  The Foreign Affairs, Defence and Trade Committee initiated an inquiry to consider the relationship.  The New Zealand Institute of Patent Attorneys (NZIPA) filed submissions for consideration.

The inquiry

The terms of reference for the enquiry are to:

• Consider trade, tourism, and opportunities including investment
• Examine strategic opportunities for both New Zealand and India resulting from new opportunities for engagement particularly flowing from technological innovation
• Determine any untapped opportunities for growing the relationship in the areas of science, medicine, defence, education, and culture.

NZIPA submission

The NZIPA represents almost all registered patent attorneys who are resident in New Zealand.  Our members regularly advise New Zealand business on intellectual property rights available in New Zealand and in New Zealand’s major trading partners, including India.

From an intellectual property perspective the relationship with India disadvantages New Zealanders.  We suggest addressing at least one issue to put the two countries on a more balanced footing and thereby encourage trade between the two countries.

Patent attorney-client privilege

Clients of registered patent attorneys in New Zealand enjoy privilege in the advice they receive from that patent attorney.  This privilege is extended to clients of registered patent attorneys (or equivalent profession) in India.

That same privilege is not extended by India to clients of registered patent attorneys in New Zealand.

This means that an Indian company will receive advice from an Indian patent attorney that is privileged in New Zealand.  However, a New Zealand company will receive advice from a New Zealand patent attorney that will not be privileged in India.

We think India should be encouraged to reciprocate the privilege New Zealand law affords overseas practitioners and their clients.