10. Matters Raised Outside of the Scope of the Current Review
51. A number of submissions raised matters that were outside of the scope of the current review. These are summarised below.
Extension of Term of Pharmaceutical Patents
52. The Research Medicines Industry and Professor John Parker were concerned solely with the issue of the extension of term for pharmaceutical patents. In addition, Fonterra and Baldwin Shelston Waters made mention of this issue, but in a wider context that included the release of genetically modified organism.
53. These submitters argued that the patent term for inventions, such as pharmaceuticals, should be increased to compensate for the time lost while conducting the tests and trials necessary to gain regulatory approval to market the invention. They suggested that if the term was not extended, companies may have less incentive to invest in New Zealand or to release their inventions here.
54. Cabinet has agreed that the issue of the extension of term for pharmaceutical patents should not be considered in Stage 3 of the Review of the Act .
Pre-Grant Opposition
55. Under s21 of the Act, third parties have the right to oppose the grant of a patent. Cabinet agreed during Stage 2 of the Review of the Act to abolish the existing pre-grant opposition procedure (FIN (01) 6/6 refers). Telecom, Fonterra, the NZIPA and Baldwin Shelston Waters called for this proposal to be reconsidered as oppositions were considered to be the pre-eminent administrative process for challenging the grant of a patent. The NZIPA noted that in Australia, where both pre-grant opposition and re-examination options are available, there was a clear preference by opponents to use the pre-grant opposition provisions over re-examination requests.
Standards of Patent Examination in New Zealand
56. Fonterra and the NZIPA raised concerns about whether IPONZ currently has sufficient patent examination resources. These concerns were made in addition to the comments already provided above in respect of the examination of patent applications for computer software and business methods inventions.
57. Fonterra referred to recruitment and retention problems and recurring problems with backlogs of unexamined applications at IPONZ. The NZIPA suggested that the lack of time spent on examination by examiners was contributing to the relatively low barrier to patentability in New Zealand. The NZIPA also suggested that if Australia was concerned over difficulties of adequately covering all areas of technology1 with 200 patent examiners, far greater difficulties would be faced in this respect by New Zealand's 20 patent examiners.
58. The NZIPA was concerned that measures to introduce absolute novelty, examination for inventive step and adopting stricter stringency test for granting a patent would further increase pressures on existing patent examiners at IPONZ. The introduction of such measures would require an increase in the number of patent examiners employed by IPONZ. The Law Society supported an increase in funding to allow appropriate staffing at IPONZ to ensure a proper examination. Fonterra suggested the possibility of out-sourcing examination to IP Australia (the Australian Patent Office) as a possible cost effective solution to the current lack of patent examination capacity.
Societal Values, Ethics and Indigenous People's Rights
59. The majority of environmental and humanitarian groups and like-minded individuals referred to the need for government to uphold societal values, ethics and indigenous people's rights. ARENA commented that intellectual property rights are not an economic imperative and do not necessarily encourage investment or innovation and that the assumed economic benefits of intellectual property rights do not outweigh the societal, environmental and moral costs.
60. Pacific Institute of Resource Management called on government to introduce a five-year freeze on granting patents for food or in relation to farming until socio-economic and environmental impacts can be evaluated and for all policies and proposed plans to be examined and realigned with respect for human rights and environmental sustainability. Companies wishing to introduce GM products should be required to conduct full socio-economic and environmental impact assessments of those products.
61. GE Free Northland and GE Free New Zealand were concerned about the potential adverse economic, social and environmental effects of genetic engineering, as well as the ethical concerns regarding the patenting of life forms and traditional knowledge. They called for a continuation of the moratorium on commercial release of genetically modified organisms and a new approach from the Ministry that gives precedence to ecological, cultural, social and ethical values.
Other Issues
62. There was a wide range of other issues raised by individual submissions and these included:
- the need for cheap and easily obtainable intellectual property rights, especially for small to medium sized enterprises ("SMEs") (Ray Palmer and Tait Electronics Ltd);
- the need for government assistance with enforcement of patent rights (Ray Palmer);
- intellectual property rights should be easy for SMEs to obtain with a helpful taxation regime for intellectual property rights (Tait Electronics Ltd);
- local regulatory bodies should support and give preferential treatment to New Zealand businesses (Tait Electronics Ltd);
- the right to import should be added to the rights granted under a patent (Fonterra);
- there should be a right to stop "contributory infringement" (Fonterra);
- there should be prior user's rights to protect a prior user from infringement proceedings when using a patent invention (Fonterra);
- the Act should define the "state of the art" as all documents located by the "diligent searcher" (Baldwin Shelston Waters); and
- the granting of intellectual property rights should be on the basis of there being economic benefits for New Zealand (Jon Carapiet).
Back to Top