Intellectual Property Laws Amendment Bill 2013 Introduced
On 30th May 2013 the Intellectual Property Laws Amendment Bill 2013 was introduced to the Australian Parliament. The Bill covers a number of areas. Namely:
Crown use of patents - Provisions for the Crown use of patents have been clarified in an attempt to increase certainty and accountability. The modifications to the Crown use provisions follow from the recommendations of the Productivity Commission’s 2013 Report. In particular:
• Clarification that Crown use can be invoked for the provision of a service that the “relevant Authority” (more clearly defined as Australian, State and/or Territory Governments) has the primary responsibility for providing or funding (s160A);
• Requirement that the Crown attempt to negotiate use of the patented invention prior to invoking Crown use (s163(2)(a));
• Requirement that the Crown to provide the patentee with a statement of reasons no less than 14 days before such use occurs (s163(2)(c));
• Requirement that Crown use to be approved by a Minister (the relevant Federal Minister or State Attorneys General) (s163(2)(b));
• Requirement that in instances of Crown use, the patentee is entitled to remuneration determined on the same basis as that for a compulsory licence (s165(2)).
• In emergencies the above provisions regarding negotiating with or issuing of statements to the patentee do not apply. In such instances the Crown would be required to provide patentees with immediate notice with the statement of reasons following as soon as practical thereafter.
The TRIPS Protocol – The Bill would implement the TRIPS protocol. This would allow Australian pharmaceutical manufacturers to supply least-developed and developing countries with the patented medicines they need when facing serious health problems.
Plant breeder’s rights - The Federal Circuit Court is designed to deal with less complex more quickly and informally than the Federal Court. The Bill proposes to allow the Federal Circuit Court to have jurisdiction for plant breeder’s rights litigation, but not for patents.
Trans-Tasman Single Economic Market - Provisions allowing for a single patent application and examination process and a single patent attorney regime across Australia and New Zealand.
Under the single patent application and examination process:
• either country can accept the filing of applications, correspondence and other documents and fees, resulting in the filing of documents under each country’s law
• an examiner in either country would consider the applications for grant of patents under both countries laws—as a delegate of each country’s Commissioner of Patents.
This new process will not create a single patent covering both Australia and New Zealand. Rather, each country will grant patents under its own legislation.
Technical amendments - Minor corrections to the Patents Act 1990, to ensure that the Raising the Bar Act operates as intended.
Budget Encourages R&D Investment
New Zealand’s current tax legislation in relation to patents and plant variety rights contains what is referred to as a black hole for expenditure for applications that do not proceed to grant. In such cases the expenditure is neither deductable nor depreciable as no capital asset has arisen.
The May 2013 budget has proposed that this will change from the 2014-2015 income year. Subsequently withdrawn patent or plant variety right applications will be eligible for a deduction in that income year for the accrued expenditure. This change to the tax system is hoped to encourage businesses to invest in research and development, particularly where the commercial usefulness of an invention is not known – which is frequently the case during prosecution.
Computer Program 'as such' Exclusion Considered
In HTC Europe Co Ltd v Apple Inc the Court of Appeal provided clarification of the scope of the computer program 'as such' exclusion from patentability. The application at issue concerned a method for handling multiple touch events on computer devices with touch-sensitive screens. In the earlier decision the trial judge had found that the method was excluded from patentability because it fell within the computer program as such exclusion.
The Court of Appeal held that the trial Judge erred in that finding by incorrectly focussing on the fact that the invention was implemented in software. When correctly construed the method addressed a technical problem and caused the devices to operate in an improved way. While the solution was embodied in software, a patentable invention did not become unpatentable because a computer program was used to implement it. In line with the 4-step test in Aerotel it was found that Apple’s invention does make a technical contribution to the art and its contribution did not lie solely in excluded matter.
3. Trade Marks
India Joins Madrid Protocol
India (IN) deposited its instrument of accession to the Madrid Protocol on 8th April 2013, and will enter into force with respect to India on 8th July 2013. As with New Zealand, India will apply an 18-month time period for notifying provisional refusal and licenses will have no effect. India has also elected, under Article 14(5), that marks registered under the Madrid Protocol prior to the Protocol entering into force in India cannot be extended to India.
Using Google Adwords not always a Blooming Good Idea
It is recalled from Pipers Bulletin April 2013 that Google has stopped monitoring or restricting keyword advertising, meaning that it is up to trade mark owners to pursue any grievances directly with the advertiser rather than with Google.
In Interflora Inc v Marks & Spencer Plc the High Court held that Marks & Spencer had infringed Interflora’s trade marks under Directive 89/104 article 5(1)(a) and Regulation 40/94 article 9(1)(a) by using variations of ‘Interflora’ as keywords on the Google AdWords referencing service. Use of the signs had an adverse effect on the origin function of the trade marks because a significant proportion of the consumers who searched for those signs were led to believe, incorrectly, that Interflora’s flower delivery service was part of the competing network.