What Is Intellectual Property?
Intellectual property is a generic term that refers to a range of property rights accorded to "creations of the mind", including inventions, industrial designs, literary and artistic works, symbols, names, images, and related rights such as performances and recordings.1
Intellectual property rights provide creators and innovators with exclusive rights, usually for a limited time, to control what others do with their works. The justification for the grant of limited monopoly rights is to provide incentives for creation and investment in innovation. If the opportunity to generate a return on creativity and investment was not present it is likely that much creative or innovative activity would not take place, thereby depriving society of many useful goods or services. At the same time it is important that the public has access to these "creations of the mind", for example, to encourage cumulative innovation.
There are a number of intellectual property rights afforded by New Zealand law:
- The Copyright Act 1994 protects original "works" including literary, dramatic, artistic or musical works, and sound recordings, films, broadcasts, cable programmes and typographical arrangements.
- The Trade Marks Act 2002 (soon to replace the 1953 Act) provides protection for a sign or symbol used to distinguish the goods and services of one trader from those of another.
- The Designs Act 1953 provides registered design protection for the external appearance of a manufactured article.
- The Layout Designs Act 1994 protects the layout of semi-conductors and integrated circuits.
- Geographical indications are protected under the Fair Trading Act 1986 and the common law tort of "passing off". The Geographical Indications Act 1994 has not yet been brought into force.
- The Plant Variety Rights Act 1987 provides sui generis protection for new plant varieties.
- The Patents Act 1953 protects inventions that are "methods of new manufacture".
Patents and plant variety rights are obviously the most relevant to the discussion of bioprospecting.
Patent Protection
A patent is an exclusive right granted for an invention. Three criteria are generally recognised internationally to be the minimum requirements for the grant of a patent. Under these criteria an invention must be new, involve an inventive step (not be obvious) and be useful (capable of industrial application).2
To be protected by a patent in New Zealand, the Patents Act 1953 provides that an invention must be "new" and a "manner of new manufacture".3 Lack of usefulness and inventive step are currently grounds for revoking a patent.
An invention is considered to be "new" if a description of the invention has not been published in New Zealand before the filing date of the patent application. No notice is taken of information published outside New Zealand but not publicly available within New Zealand.
The term "manner of new manufacture" has been interpreted by the courts to exclude such things as "products of nature", mathematical operations, bare principles, mathematical algorithms, schemes or plans and methods of medical treatment of humans.
In addition to these judge-made exclusions to patentability section 10 of the Patents Act states that claims for a new substance shall not be construed as extending to that substance when found in nature. The Intellectual Property Office of New Zealand (IPONZ), therefore, does not allow claims for micro-organisms which occur in nature when they are found in their natural state.
Section 17 of the Patents Act provides that the Commissioner of Patents may refuse applications where the use of an invention would be contrary to morality. As a matter of policy, IPONZ does not grant patents for human beings on the basis that human beings do not fall within the definition of invention. The grant of such patents may also be contrary to morality.
The scope of inventions that can be patented is, therefore, quite broad. An invention is patentable provided that it comes within the scope of the definition of "invention" in the Act, and is not expressly excluded from patentability. Some practical examples of inventions that may be patentable include:
- A new product;
- A new process of manufacturing;
- An improvement to an existing product or process;
- A new method or process relating to the testing or control of an existing manufacturing process;
- New chemical compounds or compositions;
- Biotechnological matter [plants, animals, genes and gene fragments];
- Electrical devices and circuits;
- A second pharmaceutical use for a known chemical compound or composition; and
- Computer technology and software.
The grant of a patent for an invention provides the owner with a right to exclude others from making, using or selling the patented invention during the term of the patent. In return for the grant of a patent, the owner must make public a complete description of the invention.
In New Zealand, a patent will last for twenty years from the date IPONZ receives a complete application, provided that renewal fees are paid on time. After that time, the knowledge becomes part of the "public domain" for all to use. During the period of protection the owner may licence others to use the invention.
A patent granted by IPONZ will only protect the invention within New Zealand. To receive overseas protection applications must be filed with intellectual property offices in countries of interest. An international application may be filed under the Patent Co-Operation Treaty which will provide preliminary advice as to the likely patentability of the claimed invention.
It is important to note that rules about the patentability of inventions are distinct from the development and use of such inventions. The fact that a patent has been granted doesn't mean that the invention can be commercially exploited. The grant of a patent does not over-ride any other legislation that might regulate the use of the invention. For example, a new pharmaceutical cannot be marketed until the Minister of Health has given approval, even though the pharmaceutical has been patented.
As part of the Review of the Patents Act the Government is currently considering whether any changes should be made to boundaries of patentability.4 Policy advice, based on a submissions process undertaken last year, is currently being formulated.
Plant Variety Rights
New Zealand is a member of the International Convention for the Protection of New Varieties of Plants (UPOV).5 Protection for new plant varieties6 is provided through the provisions of the Plant Variety Rights Act 1987.
Plant varieties are essentially "cultivars" or cultivated varieties. Cultivated plants may arise from hybridisation, selection from existing cultivated stock or selection from variants within a wild population, maintained as a recognisable entity solely by continued propagation.7 A cultivar is commonly defined as a variety produced by horticultural or agricultural techniques and not normally found in natural populations.8
A plant variety right will be granted if the variety is "new, distinct, homogenous, and stable".9 A variety is "new" if there has been no sale of that variety with the consent of any relevant owner of the variety. A variety is "distinct" if it is distinguishable from any other known variety by one or more characteristics, for example, colour of flowers, time of flowering, dimensions of leaves. A variety is "stable" if it remains true to its description after repeated reproduction or propagation.
The grant of a plant variety right gives the owner the exclusive right to produce for sale, and sell, reproductive material of the variety concerned. It does not prevent the propagation, growing or use of the protected variety for non-commercial purposes. Any person may use reproductive material from the protected variety for human consumption or other non-reproductive purposes.10
A plant variety right lasts for 23 years from the date of grant of the right in the case of woody plants or their rootstocks, and for 20 years for all other varieties.
It is also possible for plants to be granted patents under the Patents Act. Where a plant is protected by a patent, the rights of the patent owner are greater than those conferred by the grant of a plant variety right. For example, the owner of a plant variety right cannot prevent other breeders exploiting another variety bred from the protected variety. The grant of a patent, however, would prevent the exploitation of varieties derived from a patented plant.
The Plant Variety Rights Act 1987 is currently being reviewed to consider issues such as the protection of derived varieties, the export of reproductive material, farm saved seed and whether the 1991 revision of the UPOV Convention should be ratified.
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