July 2019
1. General
First Reading of the Part 2 Legislative Response to Productivity Commission Report
Following the October 2018 release of IP Australia’s response to submissions received in respect of the exposure draft, the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 had its first reading on 25th July 2019.
If passed the Bill will: abolish the innovation patent system; insert an objects clause; and amend the Crown use and compulsory licensing provisions. As noted in IP Australia’s response to submissions in respect of the proposed aligning Australia’s inventive step requirements with Europe further consideration of how that is to be achieved was deemed necessary and so that part of the exposure draft does not feature in the current Bill.
The innovation patent system will be abolished 12-months after the day the Bill receives Royal Assent so as to ensure that applicants who file an innovation patent based upon a priority filing will have the (Paris Convention) minimum of 12-months in which to do so from the date the Bill receives Royal Assent.
The following objects clause will be introduced the day after the Bill receives Royal Assent:
The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In so doing, the patent system balances over time the interests of producers, owners and users of technology and the public.
The clause is intended to clarify and clearly articulate the existing goals of the patent system and to assist courts in interpreting the Patents Act in cases where the text of the legislation is uncertain or ambiguous. As such it is claimed that it will not alter the ordinary meaning of the legislation (including the patentability criteria) or overturn existing case law and established precedent. Social and ethical considerations were specifically left out of the objects clause as it is considered that these are better addressed within the legislation and case law and so as to not give rise to an expectation that each application will be examined against social and ethical criteria, which are less objective than economic criteria.
The Bill will clarify the Crown Use provisions by making it clear that they can be invoked for the provision of a service that any Commonwealth, State or Territory Government has the primary responsibility for providing or funding and extends to uses by non-government bodies having government authorisation to exploit an invention. Transparency will be improved by requiring the government(s) to first attempt negotiated use of a patented invention with the patentee, and only proceeding to use the patented invention in the absence of a negotiated arrangement with the approval of the Minister or in the case of an emergency. The Bill will make similar Crown Use amendments in the Designs Act.
The Bill will amend the Compulsory licence provisions so as to remove an anomaly with the compulsory licensing of dependent patents – being patents which can only be exploited by also exploiting an earlier patent. The current provisions allow a third party that obtains a compulsory licence over a dependent patent to also have a compulsory licence over the original patent to the extent necessary to work the dependent patent. The Bill will remedy this anomaly by providing that only the patentee of a dependent patent can seek a compulsory licence over the use of the original patent.
The Bill will also replace the ‘reasonable requirements of the public’ test with a ‘public interest’ test to determine if a compulsory licence should be granted. Unlike the current test, the public interest test is widely used with an existing body of case law that will assist in its interpretation. In applying the public interest test Courts will need to take into account:
(i) the benefits to the public from meeting the relevant unmet demand for the original patented invention;
(ii) the commercial costs and benefits to the patentee and the applicant from providing authorisation to exploit the original patented invention;
(iii) any other matters the court considers relevant, including those relating to greater competition and any impact on innovation.
The changes in respect of both the Crown use and compulsory licence provisions will apply to such applications made the day after the Bill receives Royal Assent.
The Bill also includes amendments that are classed as technical fixes. In particular it will amend:
- the Patents Act and the Trade Marks Act to allow for seals of the Patents and Trade Marks Offices to be kept in electronic form – the Designs Act already does.
- the Patents Act to allow objection to claims in the now disallowed omnibus claim format to be raised at other stages in patent proceedings in addition to during examination.
- the Patents Act to clarify that the Commissioner can partially redact sensitive information that is not necessary for understanding the invention from a patent document, and publish a redacted version.
- the Patents Act to remove the requirement to file a certificate of verification for documents translated into English, unless the certificate is required by the regulations.
2. Patents
Changes Afoot with Canada Soon to Join the Patent Law Treaty
On 30th October 2019 Canada will accede to the Patent Law Treaty (PLT) and various changes will enter into force on that date.
The PLT harmonizes and streamlines formal national and regional patent application procedures. With the exception of filing date requirements, the PLT provides the maximum sets of requirements the office of a contracting party can apply. Notable changes to Canada’s patents legislation that enter into effect from 30th October 2019 unless otherwise indicated include:
- Canadian PCT national phase applications with an International Filing Date on or after 30th October 2019 will need to enter national phase within 30-months of the priority date unless they can satisfy the Office that the delay in entering was unintentional. (Currently the 30-month deadline can be extended as of right by 12-months by paying a late fee.)
- Non-PCT applications get 4-months from the application filing date to submit a certified copy of the priority document unless it has been deposited in a recognised digital library for priority claims.
- Non-PCT applications get 2-months from the application filing date to submit other outstanding documents and information and the application fee (plus late fee) can be paid up to 3-months from the application filing date.
- Responses to Office Actions will be required 4-months from the mailing date (currently 6-months).
- Examination will need to be requested by the later of 4-years from the filing date or 3-months from the date the divisional was filed (currently 5-years and 6-months respectively). A 2-month extension will be possible with a late fee.
- The Final Fee will need to be paid within 4-months of the Notice of Allowance (currently 6-months). As a new alternative applicants can instead request further examination (subject to additional fees) within that time frame.
- Late payment of Maintenance Fees will be possible with late fee till the later of 2-months from being notified by the Office or 6-months after the due date.
- There will be an exception for adding matter in the form of missing parts that are referred to but absent from the complete specification. Unless the missing parts are wholly contained within the priority document the complete specification will get the filing date of the missing parts.
- Transferring ownership will no longer require copies on the assignment documentation, but will still need registering. If the applicant/patentee notifies the change, then they just need to supply the name and address of the new owner. If the assignee notifies the change, then an affidavit to that effect will constitute satisfactory evidence.
3. Plant Variety Rights
Options Paper Released for Plant Variety Rights Legislation
Following on from last year’s Plant Variety Rights Issues Paper the Ministry of Business, Innovation and Employment (MBIE) has now released an Options Paper, for which submissions will close on Monday, 9 September 2019.
The principle issues the Options paper addresses are:
- whether New Zealand should meet its relevant obligations under the CPTPP by either acceding to UPOV 91 or ‘giving effect’ to it;
- how the PVR regime can be compliant with the Treaty of Waitangi (the Treaty);
- if New Zealand ‘gives effect’ to UPOV 91 what changes are required to align our regime with UPOV 91.
Unlike the other CPTPP members New Zealand negotiated the option to either accede to UPOV 91 or to ‘give effect’ to it. In the case of the latter it can adopt any measures it deems necessary to protect indigenous plant species in fulfilment of its obligations under the Treaty of Waitangi, provided that such measures are not used as a means of arbitrary or unjustified discrimination against a party. It is noted that giving meaningful effect to the Treaty of Waitangi requires the Crown to give consideration to kaitiaki interests – in this context being Māori guardianship, protector or caretaker roles in relation to taonga species, being native birds, plants and animals of special cultural significance and importance to Māori. Giving meaningful effect to such kaitiaki interests would involve a system that allows for the refusal of a PVR if kaitiaki interests would be negatively affected and the impact could not be mitigated to a reasonable extent such as to allow the grant. Given that UPOV does not allow member states to apply additional criteria for the grant of a PVR in relation to all plant genera and species, MBIE favours the option of giving effect to UPOV 91 rather than acceding to it. MBIE further favours achieving this by having a system that is UPOV 91 compliant in relation to non-indigenous plant species, but that allows for kaitiaki interests to inform decisions on whether to grant applications in relation to varieties derived from indigenous plant species. MBIE also considers that kaitiaki interests should not be a factor in post-grant review of a PVR as this would create too much uncertainty for plant breeders.
All applicants would need to make an information disclosure statement regarding the origin of the plant material used to develop their variety and, if relevant, who the kaitiaki are, whether the breeder has engaged with them, and whether any kaitiaki interests could be affected by the varieties commercialisation. Similar to the system used in relation to the Patents Act 2013 this would involve having a Māori Advisory Committee. However, unlike the Patents Act provisions, the decision on whether to allow the grant would be made jointly by the Commissioner and the Chair of the Māori Advisory Committee.
MBIE does not support the proposal of some submitters that plant breeders should not be granted exclusive rights to authorise the propagation of new varieties derived from indigenous plant species under any circumstances. MBIE considered that excluding new varieties derived from the plant material of indigenous plant species from PVR protection would result in little to no regulation of plant breeding of these species.
MBIE considers that the PVR legislation is not the right place to define ‘kaitiaki’ and ‘taonga species’ and that the legislation should instead be focussed on the origin of plant material. In this regard it proposes the following principles:
- Where plant material originating in New Zealand from indigenous plant species (indigenous plant material) has been used to develop a new plant variety, there is a presumption that there are kaitiaki who may have interests in the indigenous plant material.
- Generally, iwi, hapū or whānau who hold mana whenua over the rohe in which the plant material has been sourced in the wild may have kaitiaki interests in indigenous plant material.
- Iwi, hapū and whānau may also have kaitiaki interests in plant material from species that are not strictly indigenous to New Zealand – for example, species that were introduced to New Zealand on the migrating waka, like kumara. We refer to these in the remainder of this Part as non-indigenous species of significance.
- Where the indigenous plant material or plant material from non-indigenous species of significance has been used to develop a new plant variety but its regional origin is not able to be identified, those who hold mana whenua over the rohe where the variety has been developed (e.g. the location of the nursery) may have a kaitiaki interest in the new variety.
As with the earlier 2005 draft Bill MBIE favours including a definition of ‘breed’ which will exclude being able to obtain a PVR merely on account of discovery of a plant in the wild. It is also noted that the UPOV 91 definition of ‘variety’ is potentially narrower than the current definition as it applies to the lowest known rank of a botanical taxon, whereas the replacement of ‘homogeneous’ by ‘uniform’ and ‘reproductive material’ by ‘propagating material’ are considered non-contentious. To be compliant with UPOV 91 the scope of rights will need to expand from being based on reproduction for sale to include a wider array of rights around the commercial exploitation of a variety, including the rights to import for non-reproductive purposes, export and authorise stocking of propagating material.
To be UPOV 91 compliant the term of 23-years from the date of grant for woody plants or their rootstock will need to extend to a minimum of 25-years from the date of grant, although MBIE considers there is no case for extending the term beyond the 25-year minimum.
It will also be necessary to extend protection to essentially derived varieties (EDVs) such that if the initial variety the EDV was derived from is protected by a PVR, then the EDV cannot be commercially exploited without the permission of the owner of the PVR in the initial variety. There are several options for defining what constitutes an EDV. MBIE considers that the UPOV 91 definition of EDV is too ambiguous and favours defining an EDV as a derived variety in which the difference between the initial variety and the derived variety makes no difference to the commercial value of the variety.
UPOV 91 extends the rights of PVR owners over harvested material (produce), which can be the entire plant or parts thereof, where that harvested material either cannot be used for propagation or can also be used for another purpose - such as consumption. At its minimum UPOV 91 requires that PVR owners be given rights to control the commercial exploitation of the harvested material when the material was obtained through the unauthorised use of the propagating material and the PVR owner did not have a “reasonable opportunity” to assert their rights over the propagating material. As the vast majority of UPOV members only apply this minimum criterion MBIE does not support further extending the PVR owner’s rights over harvested material. Even at the minimum it is noted that it will create some uncertainty for retailers who may not be aware of whether the harvested material comes from unauthorised use of propagating material.
In UPOV 91 the default rule in relation to farm saved seeds is that the consent of the PVR owner is required, but member countries can invoke an exception to this under which farmers can save seed for use on their own farm and are free to sell harvested material from that saved seed as long as it is not used for propagation. MBIE favours the Australian approach of invoking the exception, while providing for the possibility that regulations will be made that provide exceptions to that exception in relation to some varieties in order to better balance the interests of breeders and farmers.
MBIE seeks further views on whether algae should qualify for PVR protection. It is noted that there is nothing in principle that should stop algae qualifying, but that there could be practical examination issues as well as Treaty of Waitangi issues. Currently only Australia provides such protection.
MBIE does not support the enhanced rights under UPOV 91 being retrospectively applied to prior grants, but seeks views on whether they should only be available to applications filed after UPOV 91 provisions get enacted or whether applications filed before but granted after the enactment of UPOV 91 provisions should qualify.
Other changes that MBIE proposes are to:
- Provide regulations that specify how a compulsory licence application will be dealt with (these will most likely be modelled around those used in the Patents or Trade Marks legislation.
- Specify in the Act that compulsory licence applicants must have made reasonable efforts to obtain a licence on reasonable terms and conditions within a reasonable period of time.
- Make it clear that a compulsory licence can only be exercised on a PVR within New Zealand.
- Clarify that compulsory licences are non-exclusive.
- Provide that relief for infringement can be either an award of damages; an account of profits; and/or an injunction.
- Repeal the criminal offence provisions as the activities in question would fall within the ambit of the Fair Trading Act.
- Implement the exhaustion of rights provisions of UPOV91 whereby the PVR owner’s rights in material placed on the market by them or with their consent are exhausted upon sale apart from when that material is used for propagation. Apart from that exception, the PVR owner has no rights to control the further exploitation of that material.
- The ‘objection after grant’ provisions will be expanded to encompass the nullification and cancellation provisions of UPOV 91 and the associated provisions, including counterclaiming to infringement proceedings, will be modelled around the patents legislation.
- Restricting the provisional protection provisions so that infringement proceedings can only be commenced once the PVR is granted.
4. Trade Marks
EUTM Holders can Opt-In to Notifications About Relevant .EU Domain Names
Holders of European registered trade marks and applications can now opt-in to receive notifications when a .eu domain name is registered that has their trade mark as the second level element of the domain name.
The .eu domain name register is administered by EURid, who were appointed for that task by the European Commission in 2003. In 2016 EURid entered into a collaboration agreement with EUIPO in order to raise awareness amongst their users of the other party’s services. Initially, for EU trade mark applicants, this collaboration meant that there was a link to the EURid website at the end of the trade mark application process.
However, in an effort to further minimize bad faith filings of domain names this collaboration has recently been enhanced with the opt-in service which will allow appropriate actions to be taken sooner.
In order to obtain a .eu domain name a company, individual or organisation has to reside within the EU. Consequently, Brexit will affect the ability of companies or organisations that reside in the United Kingdom, but which does not have any other EU based operation, and UK based individuals to own or maintain .eu domain names. Depending upon the negotiations, either from the Brexit date or from the end of the transitional period new .eu domain names will not be able to be obtained in the name of such entities and such entities that already hold .eu domain names will not be able to renew them.