New Zealand Law Society - November madness: IP law reform month to remember

November madness: IP law reform month to remember

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Intellectual property law reform is never high on a government’s to do list, so November 2016 was exceptional. Four IP-related Acts and one Order were passed. On one day, 15 November, three IP bills in a row were debated in Parliament.

Agricultural Compounds and Veterinary Medicines Amendment Act 2016 (“Ag Compounds”)

Most of the Ag Compounds Act deals with product registration to ensure the safety and efficacy of agricultural chemicals. The amendment changes Part Six, which deals with data protection. Applications for registration of formulations under the Act require the submission of extensive data generated in field or animal trials. Data protection involves the Ministry of Primary Industries:

  • maintaining data (filed in support of an application for registration) in confidence, and
  • not using that data for determining whether to grant any other application.

The new provisions amend the data protection terms to 10 years, or five years depending on the category of “trade name product” in an application.

Copyright (Application to Other Countries) Amendment Order 2016

This order updates the principal order of 1995 for the first time since 2000. The purpose of the order is to list those countries whose nationals are entitled to enforce copyright in New Zealand by virtue of common international treaty membership.

The need for this update became apparent earlier this year in the case of Burden v ESR Group (NZ) Ltd [2016] NZHC 1542. Although the alleged copyright infringement occurred in New Zealand, a Vietnamese company was the owner of a work that was said to be infringed. Although Vietnam had acceded to the relevant international conventions, it was not listed in the order in force at the time. The court (in paragraph [39]) held that section 232 of the Copyright Act 1994 strictly required the country to be listed to be able to enforce copyright. Vietnam is one of 29 new countries added to Schedule 3 of the principal order, and not before time.

Patents (Trans-Tasman Attorneys and Other Matters) Amendment Act 2016

This establishes an Australian-based trans-Tasman regulatory regime for patent attorneys and retrospectively corrects a drafting error in the Patents Act 2013. The regulatory regime does not yet have a start date, but if it is not in force by 24 February 2017, the part of the Act establishing the regime will be repealed.

The drafting error had created an inconsistency between the grounds by which an accepted application could be opposed and a granted patent could be revoked. After the change neither a patent nor an accepted application can be revoked for claiming more than one invention.

The single application and examination processes proposed in the original bill were removed by the Commerce Committee. The opposition members of the select committee were highly critical of officials (and the minister) in the commentary of the bill as reported and in the second and third reading debates. They expressed reservations about the regulatory regime as well, but nevertheless passed the bill.

Lawyers who are not patent attorneys should be aware of the provisions of new sections 271, 274, 277 and 279 that establish offences for carrying out activities reserved for registered patent attorneys.

Trans-Pacific Partnership Agreement Amendment Act 2016

This Act would effect major changes to the Copyright Act 1994 and relatively minor changes to the Patents Act 2013 and the Trade Marks Act 2002. However, the Act will not come into force until the TPP Agreement enters into force in New Zealand. By the time this issue of LawTalk is published it is likely that President Trump will have withdrawn the US from the treaty and it will not come into force in its present form.

Geographical Indications (Wines and Spirits) Registration Amendment Act 2016

The Act was given its third and final reading on 16 November, but it is still awaiting Royal Assent. It will come into force the day after. Draft regulations were circulated for comment in July. The Intellectual Property Office has advised that it expects the Act and regulations to come into force on 1 April 2017.

Geographical indications (GIs) are a type of intellectual property, akin to trade marks. But while trade marks indicate that goods or services originate from an organisation, GIs indicate that products, such as beverages or food products, originate from a geographical region. The Act is restricted to GIs in wines or spirits.

GI legislation has had a 22 year gestation. An original act was passed in 1995, but never brought into force. The 1995 Act was replaced by the 2006 principal Act, which also was never brought into force. This amendment Act will finally allow a GI regime to begin.

Doug Calhoun is a member of the NZLS Intellectual Property Law Committee. He is a former partner of AJ Park, where he worked from 1974 to 2006, describing his role as IP Mentor.

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