August 2013

1. Patents 

Australia

Extension of Time for Filing Evidence Harder to Obtain
Among the changes introduced by the ‘Raising the Bar’ Amendment Act 2012 was the tightening of the criteria for obtaining an extension of time for filing evidence in opposition proceedings. IP Australia has now published a factsheet outlining how it will apply those criteria in determining requests for an extension of time.
Under the new test as given by regulation 5.9 the Commissioner may extend an evidentiary period in a substantive opposition only if the Commissioner is satisfied that:
• the party who intended to file evidence within a relevant evidentiary period has made all reasonable efforts to comply with all relevant filing requirements; and despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
• there are exceptional circumstances that warrant the extension.
IP Australia will apply this test to all substantive oppositions commenced on or after 15th April 2013 and to all substantive oppositions commenced before that date where the evidentiary period sought to be extended started on or after that date. The duration of any extension granted will be at the Commissioner’s discretion. If an extension is refused any evidence filed after the required time has lapsed will not be admitted. The duty to act promptly and diligently applies not only to the party seeking the extension of time, but also to their agent or legal representative or to an expert whose opinion or other declaration has been sought.
Examples of exceptional circumstances are:
• a circumstance beyond the control of a party that prevents the party from complying with a filing requirement;
• an error or omission by the Commissioner that prevents a party from complying with a filing requirement;
• an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action.
Examples of circumstances that cannot be regarded as exceptional are:
• an expert being unavailable for periods of time due to leave, work commitments, personal commitments or even short periods of illness;
• if a preferred expert becomes suddenly unavailable but other experts could be called on to complete the evidence in time, the sudden loss of the preferred expert is not an exceptional circumstance;
• settlement negotiations.

New Zealand

New Patents Act Imminent
Following its introduction over 5-years ago, the Patent’s Bill 2008 received its third reading on 28th August 2013 and will shortly receive Royal Assent. The majority of the forthcoming Patents Act 2013 will come into force one-year after it receives Royal Assent, with the rest of the Act coming into force by way of Order(s) in Council.
The Patents Act 2013 will apply to applications filed after the 2013 Act comes into force. Hence, if it is considered that achieving patent grant is more likely under the Patents Act 1953, then complete after provisional, convention or PCT National Phase applications should be filed before the Patents Act 2013 comes into force. Divisional applications can be an exception to this rule. If the parent application was filed under the Patents Act 1953, then the divisional application will also be subject to the Patents Act 1953.
The Patents Act 2013 will bring New Zealand’s patents legislation closer into alignment with judicially influential countries and regions such as Australia, United Kingdom, Europe and the United States of America. As a net importer of technology, it is important that New Zealand does not apply a lower criterion for inventiveness than its trading partners do as this may hinder or create extra costs for access to some technology.
The following are the key differences between the 1953 and 2013 Patents Acts:
• Under the Patents Act 1953 novelty is determined by what has been used or published in New Zealand before the priority date, although this has been broadened to include publications on the internet that are accessible from New Zealand. The Patents Act 2013 will instead apply absolute novelty, covering all material publicly available or used worldwide before the priority date.
• The relevance of prior patent applications that are published after the priority date of a subsequent application is broadened by including the whole specification within the prior art base for novelty purposes, rather than just the claims as is the case under the Patents Act 1953.
• While obviousness or lack of inventive step has long been a ground of opposition and revocation, under the new Act it will also be considered ‘up front’ during examination. Obviousness only takes into account publications made before the priority date of the subject application, and so does not consider prior patent applications published after the priority date.
• Examination will also evaluate whether the proposed invention has specific, credible and substantial utility. This will also become a ground of opposition in addition to being a ground of revocation.
• The 1953 Act allowed a patent to be refused if its “use” is contrary to morality. The 2013 Act instead requires that the “commercial exploitation” of the invention is contrary to public order or morality.
• A point of difference with many other jurisdictions is the attempt to address concerns regarding the use of indigenous traditional knowledge in patent applications. Inventions derived from Māori traditional knowledge, or whose exploitation would be considered contrary to Māori values can be refused protection under the 2013 Act. Upon invitation a Maori Advisory Committee will provide non-binding advice to the Commissioner on these considerations.
• Human beings, and biological processes for their generation, methods of diagnosis and methods of treatment of humans by surgery or therapy are excluded from patentability. This statutorily applies the exclusions that had been judicially applied under the 1953 Act.
• Plant varieties are also excluded from patentability, although they continue to be protectable under the Plant Varieties Act 1987.
• Computer programs “as such” are excluded from patentability on account of not being an invention or a manner of manufacture. Patents can be granted for inventions making use of or comprising a computer program, including an invention involving embedded computer programs. However, this requires that the actual contribution lies outside the computer or, if it affects the computer itself, is not dependent on the type of data being processed or the particular application being used. When determining the actual contribution made the Commissioner or Court must consider:
(a) the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:
(b) what problem or other issue is to be solved or addressed:
(c) how the relevant product or process solves or addresses the problem or other issue:
(d) the advantages or benefits of solving or addressing the problem or other issue in that manner:
(e) any other matters the Commissioner or the court thinks relevant.
• If a non-consented disclosure occurs prior to filing, then a grace period of 12-months from the date of the non-consented disclosure will apply for the filing of an application. This replaces the Commissioner having discretion in allowing a grace period. The other grace periods remain the same.
• Local inventors will no longer have to obtain the Commissioner’s permission to file a foreign application without first filing a New Zealand application.
• Publication only after acceptance is replaced by the specification being published 18-months from the priority date. It will be important to decide early whether to abandon the application so as to avoid its publication at 18-months from the priority date. Publication of an international PCT application counts as the publication of any resulting national phase application in New Zealand. Examiner’s reports become publically available after acceptance.
• Following publication at 18-months third parties can make assertions to the Commissioner that the invention is not novel or involve an inventive step.
• Instead of being taken up automatically, examination will need to be requested by the applicant, either of their own volition or after being directed to by the Commissioner. The period within which examination must be requested will be set by the regulations.
• Pre-grant oppositions are retained and an alternative option of re-examination is introduced, both options being available to any person. Re-examination is limited to contesting novelty or inventive step and can also be requested from acceptance and after grant. Opposition proceedings take priority over re-examination applications.
• The Commissioner has been given the same grounds for revocation as are available for revocation before the Courts.
• Maintenance fees are introduced to maintain an application during prosecution. The term and start date will be set by the regulations. However, maintenance fees are likely to be due annually starting on either the second or third anniversary of the filing date.
• Renewal fees are also likely to be due annually. Patents granted under the Patents Act 1953 will keep their next renewal date, but subsequent renewals will be due in accordance with the Patents Act 2013.
• When determining if patentability has been established a balance of probabilities test replaces the benefit of the doubt test. Consequently, examination, opposition and revocation before the Commissioner will use the same test as is applied in revocation before the Court.
• Contributory infringement is given a statutory basis, although it has been judicially recognised under the 1953 Act. The new statutory test appears to apply to a wider set of actions than the Courts have been willing to apply.
• An experimental use exception to infringement has been introduced. Acts such as determining how the invention works, its scope, or the validity of the claims, or seeking an improvement of the invention do not constitute infringement if the act does not unreasonably conflict with normal exploitation of the invention.
• Prior continuous use of the invention by a third party is also introduced as an exception to infringement.
• Court’s have been given the power to grant compulsory licences to enable the production of pharmaceuticals for exporting to specified eligible developing countries.
• PCT applications can be based on applications outside of the 12-month priority window provided the right to priority was restored in line with the recent changes to the PCT allowing for such restoration of the right to priority.
• The electronic filing of all requests, applications, and other documents with and by the Commissioner is mandated under the 2013 Act. However, there is an exception for the filing, serving or giving of information or documents in relation to related Court proceedings

United Kingdom

Privity of Interest
In Resolution Chemicals Ltd v H Lundbeck the Court of Appeal upheld the High Court’s decision that privity of interest had not been established so as to prevent Resolution from seeking revocation of Lundbeck’s patent. In previous proceedings the House of Lords dismissed an action by several claimants, including Arrow Pharmaceuticals, for revocation of Lundbeck’s escitalopram patent. During that time Resolution was part of the same group of companies as Arrow, only becoming an independent company after the previous proceedings when Watson Pharmaceuticals Inc bought the Arrow Group.
In 2012 Resolution initiated revocation proceedings against Lundbeck’s escitalopram patent. Lundbeck objected, claiming that Resolution was barred from bringing the proceedings by privity of interest just as Arrow was barred by estoppel. The High Court Judge found that Resolution had no interest in escitalopram at the time of the proceedings and held that being part of the same group of companies was insufficient to establish privity of interest.
After reviewing case law on privity of interest the lead Court of Appeal Judge considered that the Court needs to examine:
(a) the extent to which the new party had an interest in the subject matter of the previous action;
(b) the extent to which the new party can be said to be, in reality, the party to the original proceedings by reason of their relationship with that party, and
(c) against this background to ask whether it is just that the new party should be bound by the outcome of the previous litigation.
As with the High Court Judge the Court of Appeal held that merely being part of the same group of companies is insufficient to establish privity of interest. On the facts it could not be established that Resolution had any interest in or benefit from the previous proceedings on account of Arrow’s involvement therein.

Status of Post-Priority Evidence
In Generics [UK] Limited v Yeda Research & Development Co Ltd the Court of Appeal held that post-priority evidence can be used to demonstrate lack of invention. Generics [UK] Limited, which trades as Mylan, sought to revoke Yeda’s patent for a synthetic copolymer known as copolymer-1. Mylan also sought a declaration of non-infringement of their product called copaxone. The primary Judge rejected both of Mylan’s requests.
Ultimately the Court of Appeal did not overturn the primary Judge’s findings regarding validity and infringement, however it did overturn one of the primary Judge’s findings regarding the status of post-dated evidence. In his judgment the primary Judge said:
"Post-dated evidence may not be relied upon either to establish a technical effect which is not made plausible by the specification in order to rebut an allegation of obviousness or to contradict a technical effect which is made plausible by the specification in order to found an allegation of obviousness."
The first point that post-dated evidence cannot be used to establish a technical effect that has not been made plausible by the specification is now well accepted. However, the Court of Appeal held the Judge was wrong to hold that a technical effect made plausible by the specification cannot be contradicted by post-dated evidence. Such evidence is admissible, since it can be relevant to validity. If in fact a problem has not been solved, then a patent should not have been granted in relation thereto, since plausible but untrue predictions do not constitute a contribution worthy of patent protection.