Comments on Submissions
7. Although the rationale for releasing the draft Bill was to obtain feedback on the drafting of the Bill (rather than to re-litigate the policy decisions incorporated in the Bill) most of the submissions also contained comment on policy issues. Some of the submissions dealt solely with policy issues.
Drafting Issues
8. In general nearly all the submissions dealing with "drafting" (as opposed to "policy") issues were contained in the submissions from patent attorneys and the New Zealand Law Society. Most of the comments on "drafting issues" fell into two categories:
- those issues where submitters considered that the wording of the draft Bill might not properly give effect to the relevant Cabinet decisions or could have unintended consequences;
- in relation to those provisions in the Bill which have been carried over from the Patents Act 1953, where submitters considered that the corresponding provision in the draft Bill did not reflect the wording of the current Act.
9. The issues raised in the submission from the New Zealand Institute of Patent Attorneys had been previously discussed with members of the Institute's council. The Institute considered that the Bill was well drafted, with most of the drafting issues identified being relatively minor.
10. Officials are currently preparing drafting instructions for the Parliamentary Counsel Office for amendments to the Bill to deal with the drafting issues raised by submitters.
Policy Issues
11. Submitters raised a number of policy issues. Most of the issues raised were of a nature that would be best dealt when the Bill is considered by a Select Committee. These issues included:
- The patentability of methods of medical treatment of humans;
- The patentability of computer software and business methods;
- The patent term for pharmaceuticals;
- The abolition of pre-grant opposition.
12. These issues were dealt with during the Patents Act review. The submissions largely repeated submissions made to the Ministry during the course of that review. None of the submissions identified any new issues that would warrant re-considering the policy decisions at this stage.
13. There were, however, some issues where submissions did indicate that some provisions in the Bill as drafted may cause problems if enacted in that form. The Ministry considers that additional clarification of some policy matters will be required to rectify matters. The proposed changes are not major and could best be incorporated into the submission to the Cabinet Legislation Committee seeking approval to introduce the Patents Bill, rather than left to the Select Committee. These issues relate to the Bill's definition of "inventor", and some aspects of the proposed regulatory regime for patent attorneys.
Definition of "Inventor"
14. The draft Bill carries over the term "true and first inventor" from the Patents Act 1953. A number of submissions have pointed out that judicial interpretation of this term includes a person who first introduced or imported an invention into New Zealand even though the person had no part in actually devising the invention. This interpretation is facilitated by the "local novelty"2 provisions of the current Act.
15. "Invention by importation" is a concept that no longer features in the patent law of other developed countries, and it was never the intention to retain the concept in the Patents Bill. It has largely been rendered obsolete by the move to "absolute novelty" standards internationally. Under an absolute novelty standard, public disclosure of an invention anywhere in the world by any means before a patent application is filed destroys its novelty and would prevent the grant of a patent. The Patents Bill incorporates an "absolute novelty" standard.
16. Another factor is that the term "true and first inventor" may give the misleading impression that New Zealand grants patent rights on a "first to invent" basis. This is not the case, patents in New Zealand are granted on a "first to file" basis.
17. In light of these factors, and to remove any doubt, the Ministry proposes that the term "true and first inventor" be replaced by the term "inventor". In addition, the Ministry is also considering including a definition of "inventor" into the Bill. Such a definition would look to define the inventor as the actual devisor of the invention.
Regulation of the Patent Attorney Profession
18. The one of the policy objectives for the regulation of the profession was to align the provisions in the Bill with those under the Australian Patents Act 1990. Submissions from the patent attorney profession largely approved of the regulatory regime included in the draft Bill. The submissions did note some areas where the proposed regime might need further development. At the same time the Australian government is considering a number of recommendations to modify the Australian regime for patent attorneys, particularly in relation to the handing of complaints.
19. As drafted, the Bill requires all complaints, no matter how minor, to be referred to the Tribunal. Submitters considered that the nature of some complaints might not warrant a full inquiry by the Tribunal, because the nature of the complaint would not ordinarily lead to some form of disciplinary action being taken. For example, a complaint may arise from a person's lack of understanding of the Patents Act, rather than any particular action or conduct by his or her patent attorney. In these cases, it may be more efficient and effective to settle the complaint through a process of mediation, negotiation or conciliation in a similar manner as set out in the Lawyers and Conveyancers Bill 2004.
20. Recent Australian experience indicates that the number of serious complaints actually determined by its disciplinary tribunal is very small (around 1 complaint every second year). In contrast, a regular number of minor complaints are received, which do not warrant a determination by its Disciplinary Tribunal, that are not always adequately settled to the satisfaction of all parties under the current regime.
21. Consequently, the Ministry is investigating the possibility of amending the Bill to require complaints regarding the conduct of patent attorneys to be referred and considered by to the Professional Standards Board. The Board would then act as a "filter" for complaints, with only complaints of a more serious nature being referred to the Tribunal. For complaints of a less serious nature, the Board would explore the possibility of settling the complaint through a process of negotiation, mediation or conciliation between parties to the complaint.
22. The Bill also requires that the person appointed as the Patent Attorney's Disciplinary Tribunal be a practising barrister or solicitor of at least seven year's experience, but the person must not be a registered patent attorney.
23. While submitters had no objection to the first requirement, both the Law Society and the New Zealand Institute of Patent Attorneys, Inc. expressed concern at the requirement that registered patent attorneys be excluded from appointment to the Tribunal. It was also noted by submitters that patent attorneys were not excluded from membership of the corresponding Tribunal in Australia.
24. Submitters considered that the subject matter of some complaints would be such that a patent attorney might be the most appropriate person to deal with the subject matter of a complaint. They also noted that under Schedule 2 of the Bill a provision exists for the appointment of an Acting Tribunal where the person appointed to the Tribunal may have a conflict of interest in hearing the complaint. This provision could be invoked to appoint of an Acting Tribunal if, for example, a patent attorney appointed as the Tribunal had a conflict of interest in dealing with any complaint.
25. Consequently, the Ministry proposes that the requirement that the person appointed as the Patent Attorneys Disciplinary Tribunal not be a registered patent attorney be dropped. The requirement that the person be a barrister and solicitor of at least seven years standing would, however, be retained.
2The term "local novelty" in this context means that an invention is considered new if a description of the invention has not been published in New Zealand, or the invention has not been used in New Zealand before the date the patent application was made. Use or publication of the invention outside New Zealand before this date would not prevent the grant of a patent in New Zealand.
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