EPO to Provide Option for 3-Year Postponement of Examination
From 1st July 2018 the EPO will allow applicants to request postponement of the examination procedure for a period of 3 years. Applications entering the European phase on or after that date will qualify.
Currently the examination fee needs to be paid either within 6-months from when publication of the search report is mentioned in the European patent bulletin or, if being entered via the PCT, within 31-months of the priority date. (i.e. when filing for European regional phase.) Assuming accelerated prosecution or early examination has not been requested the examination report will then be in line for issuance, unless the applicant exercises their right not to proceed further with the application.
Following the implementation by the EPO of its Early Certainty from Examination program in July 2016 the pendency time for examination reports has been reducing as it heads towards the target of 12-months. However, the earlier examination is creating concerns for some applicants such as those from industries having regulatory approval requirements for products or long product development cycles or those needing time to raise funds.
In response to these concerns from the 1st July 2018 the EPO will implement a User Driven Early Certainty program under which applicants can request postponement of the examination procedure for a period of 3 years. Such a request needs to be filed either within the period for requesting examination or where the applicant has already paid the examination fee within the period the EPO allocates the applicant to confirm if they want to proceed to examination after receiving the search report with written opinion. The request is not subject to an official fee, but renewal fees remain due during the postponement period. The maximum time period for postponement of a divisional application will be 3-years from the European phase entry date of the earliest Euro-PCT parent application, or 5-years from the earliest parent priority date for direct EP applications. The applicant can request resumption of examination during the 3 year period, as can non-anonymous third parties who file substantiated observations covering at least one substantial ground. By utilizing the postponement period the applicant will effectively pay less renewal fees as there will be less renewals paid to the national offices once the patent is granted and validated in the national offices.
Uncertainty about whether Advancement Patents Bill will Survive First Reading
On 16th May 2018 the first reading of the Patents (Advancement Patents) Amendment Bill was initiated, but only 2 of the scheduled 11 speeches were made before progress of the Bill was interrupted. The Members Bill, which is sponsored by an opposition party member, has subsequently slipped down the Order Paper.
The sponsoring member made the first speech in which she argued that while New Zealand is currently a net importer of technology allowing a second tier patent system will increase innovation by New Zealand based businesses. In particular, New Zealand based small to medium sized businesses are considered to need the protection offered by a second tier patent system for their innovations. It was argued that the encouragement to innovate would grow the presence of New Zealand businesses not just locally but also internationally and that this would have positive flow on effects for New Zealand’s economy. The sponsoring Member specifically stated that the Bill was drafted based on learnings from the pros and cons of second tier systems worldwide and not just from Australia’s contentious innovation patent system.
The reply speech by a Government member pointed out that various countries that had or have second tier patent systems repealed or are considering repealing them on account of the legal uncertainty they create for third parties. It was further stated that there is no evidence of New Zealand’s small and medium sized businesses asking for a second tier patent system. The Labour member indicated that they would not be supporting the call for the Bill to pass the first reading and sent to select committee. However, the Bill could still pass the first reading if the New Zealand First party support it.
Given that like the USA the EU has a strong presence of innovator pharmaceutical businesses, it is likely that the EU will require New Zealand to agree to patent term extensions. Patent term extensions were provisionally agreed to by the previous New Zealand Government as part of the TPP negotiations, but after the USA pulled out were dropped from the subsequent CPTPP Agreement between the remaining parties. The changes introduced by the Agricultural Compounds and Veterinary Medicines Amendment Act 2016 brought New Zealand’s data protection laws broadly in line with those of the European Union.
Role of Innovation Considered in Transitioning to Low Carbon Economy
Following its brief by the prior Government in May 2017 the Productivity Commission has produced a draft report on how New Zealand can maximise the opportunities and minimise the costs and risks of transitioning to a lower net-emissions economy.
Amongst other issues this involved consideration of what market based instruments would best help New Zealand transition to a low emissions economy. Chapter 5 of the report is devoted to innovation on the basis that it can and should have a central role to play. It notes that a country’s policies and institutions significantly affect innovation performance and such policies and institutions need to enable and encourage both the creation and deployment of low emissions technologies. This will likely require policies that lean against path dependencies that can lock-in polluting technologies and patterns of production.
While noting that stronger emissions pricing and regulation of emitting activities will incentivise more innovation in clean technologies, it is considered that there also needs to be some subsidising of innovation in clean technologies. While intellectual property rights incentivise innovation, in the context of climate change they are seen as providing insufficient incentive for the creation and implementation of clean technologies within an effective timeframe. Subsidies can assist with initial cost-barriers in the research, development and adoption phases. The usefulness of a technological change does not guarantee the attainment of intellectual property rights and even where intellectual property rights can be attained the unpredictability of private commercial reward therefrom can stifle technological change.
Other suggested positive incentives are subsidising open science, public subsidies for private research and development in the form of either tax concessions or grants, direct government purchased research and prizes. However, it is argued that the current practice of providing subsidies for high emission activities dis-incentivise innovation by reducing the relative payoff for reducing emissions. It is also noted that regulations such as policy standards that force the use of specific techniques or practices can have positive and negative effects given that they can both stipulate the use of cleaner technologies but also inhibit the development of superior solutions. It proposes that this problem could be mitigated by implementing regulations that are technology neutral. Subsidies to support the growth of clean technologies are intended as a short to medium term measure that helps to overcome the path dependencies on high emissions technologies. However, it is proposed that such subsidies will be further justified on account of the wider economic benefits that can be expected to result from the associated knowledge spillover which tends to be larger in relatively unexplored areas of technology than for more mature technologies. Given the relative size of New Zealand’s economy and that it is a net importer of technology the Government is also seen as having a role in actively searching for relevant technologies being adopted in other countries and assisting local firms to absorb such technologies.
However, despite already being a relevant policy in the patent systems of numerous developed countries, there is no mention of providing accelerated processing of patent applications for low-emission technologies.
Rare Decision on Similarity of Designs Reconfirms Principles
In Watkins Manufacturing Corporation v Prestige Pools Limited the Judge held that Prestige’s Sunrans SR range of spa pools are not substantially different to Watkins registered design for a spa pool cabinet.
Noting that there has been little New Zealand case law on infringement of registered designs, the Judge was guided by the principles given in the Court of Appeal’s 1988 UPL Group Ltd v Dux Engineers Ltd judgment. Although noting that ultimately the comparison is between the registered design representation and the challenged product, the Court of Appeal allowed the plaintiff’s embodied articles of manufacture to assist in the comparison given that comparing a 2-dimensional design with a three dimensional object is not always easy. Applying this, the Judge made use both of Watkins’ design representation and the commercial embodiment when considering whether Prestige’s Sunrans SR range had substantially the same appearance.
The Judge was also guided by expert evidence which found that the design representations constitute a material break from the prior art. Consequently, small differences would not save the defendant. While noting that judging eye is that of the informed consumer, the Judge was disinclined to allow an imperfect recollection test or customer confusion to be used as a measure of design infringement. Rather, applying another principle from the Court of Appeal judgment, the Judge considered the respective designs both separately and together and closely and at a distance and held that Prestige’s models to be articles not substantially different from Watkins registered design.
3. Trade Marks
Changes to Madrid Protocol Fees for NZ
On 2nd June 2018 the following fee changes will take effect. For Madrid Protocol applications that designate New Zealand or for Madrid Protocol registrations where New Zealand is a subsequent designation the designation fee for New Zealand will change from CHF 93 to CHF 102. For Madrid Protocol registrations the renewal fee for New Zealand will change from CHF 217 to CHF 239.