NZ IP Legislative Landslide
The Agricultural Compounds and Veterinary Medicines Amendment Act 2016 commenced on the 8th November 2016. It appears that no further changes were made in addition to the earlier noted amendments proposed by the select committee.
On the 21st November 2016 the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 received Royal Assent. As previously reported, the provision relating to correcting the grounds of opposition is being made retrospective to the commencement of the Patents Act 2013, while the provisions relating to Patent Attorneys will commence by way of Order in Council by the Governor General. The Order in Council needs to issue before 24th February 2017, but should issue promptly, since the relevant amendments to the Australian legislation commenced on the 15th November 2016.
Also on the 21st November 2016 the Trans-Pacific Partnership Agreement Amendment Act 2016 received Royal Assent. Amongst other legislation, this will amend the Copyright Act 1994, Patents Act 2013 and the Trade Marks Act 2002. It will no longer amend the Agricultural Compounds and Veterinary Medicines Act 1997 on account of the amendments made in the above noted Agricultural Compounds and Veterinary Medicines Amendment Act 2016. As earlier noted, the Plant Varieties Act 1987 does not need to be amended just yet as New Zealand will have three-years from the date of entry into force of the TPPA in New Zealand to join UPOV 1991.
Given that it is unlikely that the USA will enact the TPPA and that without the USA any such trade agreement would likely be amended, it is unclear whether the provisions of the Act will commence in the near term, or whether they will be further amended before commencing.
On the 26th November 2016 the Geographical Indications (Wine and Spirits) Registration Amendment Act 2016 commenced, having received Royal Assent the day before. In addition to the recently notified changes recommended by the select committee, the Bill was further amended to allow an interested person to oppose the proposed removal or the proposed alteration of a registered geographical indication.
Importation of Product Manufactured Abroad Infringes Swiss-Style Claim
In Apotex Pty Ltd v Warner-Lambert Company LLC (No 2) the Federal Court held that a swiss-style claim can be infringed when the manufacturing process is performed outside of the patent area.
Warner-Lambert’s patent consists of both methods of treatment and swiss-style claims involving the use of compounds in the treatment of pain. Apotex admit that if the methods of treatment claims are held to be valid, then they threaten to infringe them. However, Apotex deny threatening to infringe the swiss-style claims on the basis that their medicament will be manufactured outside of the Australian patent area by a third party.
Apotex rely on sections 12 and 13 of the Patents Act 1990 to argue that the patentee only has the exclusive right to exploit the invention within the patent area – being Australia, the Australian continental shelf and the associated water and airspace. Apotex also cited a prior Federal Court case which held that the definition of “exploit” should be read as including an express geographical limitation. In particular, at  of the cited Federal Court case the Judge held that the correct construction should include the inserted and substituted bracketed qualifiers as follows:
exploit, in relation to an invention includes:
(a) where the invention is a product – [in Australia, or more accurately, in the patent area] make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or
(b) where the invention is a method or process – [in Australia, or more accurately, in the patent area] use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from
such use [the use, anywhere, of the method or process].
Apotex sought to further refine that construction by requiring that the product resulting from the use of the relevant method be one that results from the use of the method in the patent area. However, the Judge in this case rejected the earlier Judge’s construction of exploit as being unfounded, holding that the definition of “exploit” has no territorial limitation and that reading such into it over-extends the scope of sections 12 and 13.
Rather, the Judge held that where the medicament is manufactured is irrelevant to whether Apotex threatens to infringe. In particular, under paragraph (b) of the definition of “exploit” infringement is not avoided by manufacture of the medicament outside of Australia, since the acts of importation or sale of the product within the patent area are sufficient to constitute infringement of a method or process (or swiss-style) claim.
It is worth noting, though, that the Judge made no reference to the swiss-style claims being for a second (or subsequent) medical use. As such the judgment did not consider whether there would be infringement if the medicament was (at least under pretence) imported for a different medical use. However, this issue was considered 8-days earlier in a UK Court of Appeal judgment on the UK equivalent patent. The Court of Appeal did not need to consider infringement as they held the patent to be invalid, but the issue was considered for the purpose of further clarification. While the Australian Judge did not also find the patent invalid, it appears this is on account of it being considered under pre-Raising the Bar legislation and that it would have been found invalid under the current patents legislation.
Regarding infringement the UK Court of Appeal considered this needed to be judged by objective indications of the manufacturer’s intention. In this regard, the absence of the patented indication from the label was not sufficient to counter such an intention to supply, particularly if manufactured in volumes that far exceed the demand for the labelled indications. The higher threshold held to be required was for the manufacturer to have taken all reasonable steps in their power to prevent the medicament being used for the patented indication. Such an approach was considered justified on account of recognising an obligation on the manufacturer to take proactive steps if they are to enter the market where they stand to benefit from the patentee’s contribution.
Scope of "Whole of Contents" Applications Clarified
IPONZ has updated its practice note on the meaning of the prior art base. Along with some minor clarifications and elaborations, it has clarified what constitutes ‘another patent application’ for the purpose of section 8(2) of the Patents Act 2013.
Section 8(2) specifies the conditions under which an earlier filed complete specification filed in respect of another patent application can constitute part of the prior art base even though it had not been published before the filing date of the later application. This subsection enacted a ‘whole of contents’ approach to the anticipatory potential of prior applications that were only published after the filing date of the subsequent application, and replaced the narrower prior claiming provision under the previous legislation.
However, the Act does not delimit what can constitute a prior application for the purposes of section 8(2). The previous practice note stated that documents considered in section 8(2) are not limited to patent applications in New Zealand. The new practice note has refined the documents considered under section 8(2) to: patent applications made under the Act and published under section 76; or published PCT applications which designate New Zealand, whether or not the latter enters national phase in New Zealand.
Amendment Before Acceptance Practice Note Introduced
IPONZ has introduced a practice note on amendment before acceptance, which is principally governed by section 40 and regulation 58. The practice note clarifies that:
- Amendments made during PCT international phase do not require a statement of support or a marked-up copy, but these are required if amendments are proposed upon entry to the national phase.
- For PCT national phase applications support for any amendments needs to be found in the specification of the PCT application at its international filing date.
- The statement of support is primarily to be in written format, but can be supplemented with a table indicating such things as the correspondence of claims or where support is found in the description.
- Voluntary amendments are subject to a fee if made after examination has been requested, and such fee should accompany the amendment request and must be paid prior to acceptance.
- In general voluntary amendments include: amendments not made in response to specific objections; amendments to the description made later than amendments to the claims; amendments made for reasons such as complying with NZ law or bringing in line with corresponding foreign specifications.
- Each requirement of regulation 58 should be satisfied at the time of making proposed amendments, and must be satisfied before expiry of the period for placing the application in order for acceptance.
- Compliance with regulation 58(c) is satisfied by supplying only the marked-up pages, the full specification of the marked-up version need not be supplied.
- If the specification was previously amended, then any subsequent request for amendment needs to state whether the marked up pages use the specification as originally filed or as previously amended.
- It is also noted that the Act and Regulations are silent on amendment of provisional specifications.
New Extensions of Time for Delay by Commissioner
IPONZ has updated its section 230 practice note on when the Commissioner may extend time limits for delays by the Commissioner. Notable changes allow an extension of time for putting an application in order for acceptance where:
- A new objection is raised late in the examination process, and where the objection could reasonably have been raised at an earlier point in the examination process.
- Any examination report is issued more than 20 working days after the date of filing of a response to an earlier examination report, provided there were more than 20 working days remaining for putting the application in order for acceptance.
Any such extensions of time will be notified in the Journal.
UK Still Intends to Ratify UPC
On 28th November 2016 the UK Minister of State for Intellectual Property, Baroness Neville Rolfe, confirmed that the UK is still proceeding with preparations to ratify the Unified Patent Court Agreement.
Given the vote for Brexit earlier in the year it was unclear whether the UK would seek to ratify the UPC as in its current form the UK would not be able to remain in the UPC once the UK formally left the EU. Confirmation of the UK’s position in this regard was sought as if it ratifies and remains in the UPC in the interim it will play key roles in the functioning of the UPC, including the hosting of key Courts. There is concern that were the UK to subsequently leave the UPC, whether on its own volition or because EU members could not agree on changes that would allow the UK to remain within it, then it would cause significant disruption and uncertainty to the UPC while the UK’s roles are re-delegated – probably to Italy. On the other hand, having the UK remain within the UPC will be beneficial for UK businesses seeking to enforce their IP across the EU. Although to remain within the UPC would require the UK to recognise the supremacy of EU law and the Court of Justice of the European Union.
However, Baroness Neville Rolfe said that the decision to proceed with preparations to ratify the UPC is made in the context of the UK continuing to play a full and active role in the EU while it is a member thereof. It was stressed that this decision should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.
3. Trade Marks
Eleventh Edition of Nice Classification Applies from 2017
From 1st January 2017 the 11th edition of the International Classification of Goods and Services for the Purposes of Registration of Marks (Nice Classification) will enter into force. It will introduce 334 new terms, and amendments to 15 class headings and 22 explanatory notes. The majority of the amendments arise from a joint proposal submitted by Japan, Switzerland, the United States, the European Union Intellectual Property Office and WIPO. As well as introducing new terms the changes are mainly in the form of elaborations or clarifications of the scope of what does and does not fall within a particular classification, particularly when taking into account the primary function or purpose.
As with previous updates of the Nice Classification offices will not reclassify earlier specifications to comply with the new classification. For Madrid Protocol applications WIPO will apply the 11th edition to all applications for international registration received by an Office of Origin on or after 1st January 2017.
- The official application fee doubled, but now allows an unlimited number of goods or services per class, rather than being charged again when exceeding each multiple of 10 goods or services.
- Non-traditional trade marks were introduced, including three-dimensional trade marks, sound marks, and holograms.
- The 2-month publication period for opposition purposes changed from after to before substantive examination, and so now occurs after passing the initial formalities examination. No further publication occurs after the substantive examination.
- Pending trade mark applications are now assignable in addition to registered trade marks.
- Renewal applications changed from being allowed within 12-months before the due date with no grace period to being allowed within 6-months before the due date with a 6-month grace period (subject to a penalty fee).