By Mike Hawkins

It is a sad indictment of the state of New Zealand's intellectual property law ("IP") that its New Zealand Patents Act 1953 and its New Zealand Design Act 1953 are both based on the equivalent 1949 United Kingdom Acts.
Having Acts which are now effectively over 50 years old means that, from time to time, some issues long since forgotten elsewhere, can raise their heads.

Coincidentally two such issues required a decision in 2001, both issues being of particular interest to New Zealand IP Attorneys, albeit only of possibly historical interest to IP Attorneys in other countries.
There is no legal or factual nexus between the issues apart from their historical nature, so they are dealt with separately.

Registered design no. 26293 (IPONZ 17/10/01 Assistant Commissioner of Designs)
In the first case, the issue was whether the recognised inability under the UK Designs Act 1949 to restore a lapsed design registration had been carried over into the New Zealand Designs Act 1953.

What had occurred was that the fifth year renewal fee of a New Zealand design registration had inadvertently not been paid. The patent attorney acting for the proprietor of the design had filed a request for a correction of error in an attempt to restore the registration, the error being stated as being the error or omission of the proprietor to renew.

The Intellectual Property Office of New Zealand ("IPONZ") declined the request on the basis that the official register correctly showed that the design had lapsed due to the failure to pay the renewal fee, so that there was no error in the register to correct.

At the Hearing before the Assistant Commissioner of Designs, it was revealed that an Australian patent attorney firm acting for the owner of the design had no record of the 1999 renewal fee being due. Although the New Zealand patent attorney firm acting as agent in the matter stated it had sent a renewal reminder, there was no record of this having been received by the Australian firm.

In his submissions on behalf of the design owner, counsel submitted that a mistake did now exist in the Design Register, occurring by reason of the failure of the renewals procedure adopted by the parties. This was a mistake which was in the power of the Commissioner to correct, notwithstanding Section 12 of the New Zealand Designs Act 1953 (the "Act") containing no explicit provisions for restoration and indeed pointing in the other direction by specifically providing a period "not exceeding six months" for the late payment of the renewal fee. Counsel also reviewed the restoration provisions of the Designs Acts of the United Kingdom, Australia and South Africa, although he conceded that until the United Kingdom 1998 Copyright, Designs and Patents (Amendment) Act, it had not been possible to obtain restoration in the United Kingdom.

In his decision the Assistant Commissioner referred to Section 12 (2) of the Act which states that the Commissioner may only extend the first or second periods of copyright if an application is made in the prescribed form within six months of the expiration of the five-year period. With no application having been made in the present case, the register is correct, so that there is no error appearing on it. The inability to restore a UK design under the 1949 UK Act was also held by the Commissioner as pointing to the logical conclusion that this is a problem which must be solved by the New Zealand Parliament rather than by him attempting to read a restoration provision into the current New Zealand Act.

As the unintentional lapsing of a New Zealand design registration also has major consequences for the protection of three dimensional designs under the New Zealand Copyright Act 1994, it is to be hoped that the appropriated amending legislation is able to be introduced in the not too distant future, even if the long overdue overhaul of the New Zealand Designs Act itself is not a prospect.

Sherman v Merck & Co. Inc 11/4/01, McGechan J, HC Wellington AP184/00
The other case raised an ancient but interesting issue namely whether under the New Zealand Patents Act 1953, an opponent to the grant of a patent under Section 21 could raise the ground of an invention having been obtained abroad, or whether because of the anachronism of the New Zealand Act permitting invention by importation, any obtaining of an invention needs to have taken place in New Zealand.

In the decision at first instance, the Commissioner of Patents had refused to strike out the ground of "obtaining abroad" on the basis that he considered it better to leave the legal question over to a full hearing.
The patent applicant appealed to the High Court where his counsel pointed to the numerous United Kingdom cases which clearly established that obtaining abroad was not a ground which could be pleaded under the UK 1949 Act.

Counsel for the respondent (the opponent) referred however to the fact that under the New Zealand Patents, Designs and Trademarks Act 1889 the definition of "true and first inventor" specifically excluded "the unauthorised importer of an invention from any place outside the colony [of New Zealand]".

McGechan J. held however that the 1953 New Zealand Act, in adopting the virtually identical provisions of the 1949 United Kingdom Act, intended that importation would now be treated as "invention" so that obtaining abroad would no longer be a ground on which opposition could be based and on the basis that again if there was any change in the law, then this needs to be addressed by Parliament.

The Judge therefore allowed the appeal and the striking out of the ground "obtaining abroad" in the opposition proceedings before the Commissioner. Fortunately, unlike the position under the Designs Act 1953, there are good prospects of new patent legislation being introduced in New Zealand in the foreseeable future. This will finally, in an age when technology is more likely to newly arrive in New Zealand by the Internet rather than by a passenger on a ship, preclude an importer claiming to be an inventor.

This is a general summary only and should not be taken as a substitute for specific advice.

Web site: Baldwin Shelston Waters
Email: email@bsw.com