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Compliance with the TRIPs Agreement is a non-issue, by and large, for the Asia Pacific members of this part of the World IP Survey. Developed economies only had a year from the time TRIPs was signed in 1995 to ensure their laws conformed to the treaty and countries such as Australia and Japan completed the work, if any was necessary, in good time. Now the task is to enforce their them and address how best to deal with the challenges to IP laws posed by technological advances. Breakthroughs in areas such as biotechnology and the internet will always require laws to be tweaked.
Some countries tweaked their patent legislation in 2002. Australia, for example, passed a Patents Amendment Act which came into force on April 1 this year. The new legislation was inspired by the Intellectual Property and Competition Review Committee (IPCRC) and the Advisory Council on Intellectual Property (ACIP), two government-sponsored bodies who produced reports in August 2001. The competition committee's report is known better as the Ergas report after Henry Ergas, the committee's chairman. The report proposed that patent applicants should have an obligation throughout the application process to provide the results of local and foreign searches to the patent office. This recommendation was incorporated into the Patents Amendment Act. Ergas also proposed that the prior art base be extended to include, in effect, the world, rather than the ?patent area' term from the 1990 Patents Act, which was defined as Australia and territories it controlled. The ACIP reached a similar conclusion to Ergas about disclosure of prior art. The Patents Amendment Act also puts the onus on the patent applicant to show, on the balance of probabilities, that their invention includes an inventive step.
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Tony Ward |
The patent profession in Australia has welcomed the change to the prior art base because it imposes a condition of absolute novelty, bringing Australian patent applications into line with those of the USPTO and the EPO. Murmurs of discontent have been heard about the seemingly meaningless penalty for applicants who do not fulfil all the requirement to reveal all their search results. "The requirements are quite draconian and could affect the ability to amend after grant," says Tony Ward, a partner of Griffith Hack in Melbourne. "But so few patents are amended after grant anyway, it is like a slap on the wrist with a feather. You would think there would be a more severe sanction."
Proposals to change Japan's patent legislation also came from a committee set up to study how online rights could be protected better. Patent Law and Trade Mark Law in a Networked Era was the title of a report the Intellectual Property Policy Committee sent to the Japanese government in December 2001. The report considers patent protection in the context of the internet so any changes or new provisions are likely to be part of legislation covering IP on the internet rather than any amendments to Japan's existing patent legislation.
Japan has begun a revamp of the practice of IP, which will have implications for patents if the recommendations of the prime minister's Strategy Council for IP are followed through. The Japanese government has identified the reform of IP as a way of reviving the economy. The proposals are not concerned with changing IP rights legislation itself, rather with how the system of securing, protecting and exploiting IP rights operates in Japan.
The council foresees an agreement between the Japanese Patent Office and the USPTO to provide reciprocal access to each other's investigation and examination results with a tentative start of 2004 mentioned for this. The aim of this move would be to eliminate the duplication of work and to speed up patent examination. The sharing of patent examination information would extend to Asia too as part of a new initiative called the Asian Industrial Property Information Network. The long-term goal is an international patent system.
The Strategy Council also believes there is more potential in universities and other research institutes to create IP and to establish and sustain successful businesses with this IP than there is in private industry. Patenting must be made easier as a result, the council maintains. The council raises other issues such as the establishment of new patent courts and the adequacy of damages awards in infringement cases. The Strategy Council's plans have been dismissed as being light in substance. Others say the deadlines for the achievement of certain goals are unrealistic. An IP Basic Law, which is likely to state general principles concerning where the Japanese government wants to get to with IP, will be presented to parliament either at the end of this year or early in 2003.
Politics upset patent reform
New Zealand's efforts to replace its Patents Act were confounded by a general election in July. New legislation seemed to be on the cards for this year when a discussion document dealing with patentability came out in March, but politics intervened. Despite the Labour/Alliance coalition returning to power, it is unclear when a new patent law might be in place.
It is not as if the country hasn't been waiting long enough for a new Patent Act. Next year, the present one will be 50 years old. "It's possible legislation might go through quickly, but I'm not holding my breath," says Tim Jackson, a partner of Baldwin Shelston Waters in Auckland. Another discussion document, the third since 1992 to deal with patent reform, was due to be published towards the end of September. This was thought likely to deal with issues concerning the patent profession, such as the incorporation of firms.
Need to defend
If the growth in the number of patentees, which is behind changes in patent legislation in many countries, is successful, this increases the likelihood of more patent litigation. While Australia and Japan have traditionally been the leaders for patent litigation in Asia, other countries, such as Singapore, have seen a rise in cases. "There is more and more patent litigation," says Tony Yeo, a director of Drew & Napier. "A lot of the parties have registered patents here in Singapore and more and more are waking up to enforcement."
Yeo believes a reason that some litigants choose to go to court in Singapore is the quality of the courts. "The courts are very transparent," he says, "most international clients have extreme faith in taking action in Singapore". If Singapore was part of a global litigation, it would be the first country where proceedings would get underway, Yeo says. "It is well known that Singapore courts are the fastest in the world."
Increase in cases likely
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Maurice Gonsalves |
An increase in patent litigation, especially of the biotechnology and pharmaceutical variety, is on the way as well in Australia, according to Maurice Gonsalves, head of the IP department of Mallesons Stephen Jaques. "There will be big battles in pharmaceuticals and biotechnology," he says. "There is a lot at stake. You have to fight to preserve it." A result of the extra life sciences litigation will be the demand for expertise. "There will be an increasing need for people skilled in biotech as well as law," says Gonsalves. His firm defended Alphapharm against Astra in Australia as part of a global patent infringement action over Astra's omeprazole, the world's best-selling prescription drug. In June, the High Court of Australia heard Astra's appeal against the revocation of its patent for obviousness. A decision may still be up to six months away.
Something which doesn't happen often in patent litigation in New Zealand occurred in 2002 when a case was appealed to the Privy Council in London. The case, between Ancare and Fort Dodge New Zealand, now Wyeth, two animal health companies, concerned Ancare's 1991 patent for a combination drench used to treat roundworms and tapeworms in sheep and other animals. Fort Dodge New Zealand and others applied successfully to the High Court to revoke the patent because it was obvious and should never have been granted. Ancare took its case to the New Zealand Court of Appeal and the Privy Council and lost each time. "The litigation didn't raise any new points of law," says Tim Jackson, of Baldwin Shelston Waters, Fort Dodge New Zealand's lawyers. "But any New Zealand case that reaches the Privy Council is of interest."
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Greg Arthur |
The New Zealand High Court also ruled on the latest in a series of cases concerning patent applications for methods of medical treatment. This time Pfizer took the Commissioner of Patents to court and failed in an attempt to overturn the commissioner's rejection of a patent for a salt to treat psychotic disorders. "The High Court has concluded that it would need something more unequivocal from the Court of Appeal or a decision from parliament before it would overturn Wellcome," says Greg Arthur, the litigation partner of AJ Park in Wellington, who handled Pfizer's case. "It was a little bit of a disappointment, but no great surprise," says Arthur. The 1983 Wellcome decision declared that methods of medical treatment of humans were not patentable and that any change in that situation was a matter for parliament.
More chance of satisfaction
The changes to China's Patent Law in the last year have increased the chances for a patent owner to achieve meaningful enforcement of his rights through litigation, as well as lowered the possibility even further of patent trials occurring in any great number in Hong Kong. China's new legislation allows patentees to seek court orders to stop infringers from continuing their infringement and to force them to retain evidence and any infringing articles. "There is a real incentive to get a case to trial in China," says Paul Davies, the senior patent attorney of Deacons in Hong Kong. "Patent owners should be more confident than ever before when taking action in China," he says. The development of patent litigation in China is part of a more effective enforcement system in the country.
The improvements in litigation in China will contribute to the continuing lack of patent trials in Hong Kong. "When you had little chance of litigation in China, Hong Kong was your best option," says Davies. "Chances are the product will be manufactured in China now." And even when Hong Kong is part of a global patent action, the matter is settled before it gets a chance to get going in Hong Kong. "The system is quicker in the UK. A patent action will get to court a year before Hong Kong."
Specialist courts catch on
China's use of specialist courts to hear IP cases in Beijing and Shanghai is part of a recognition throughout Asia of the value of IP courts. Court authorities have realized that IP cases, particularly patent cases, are just too complex for judges who haven't received any specific training, or aren't exposed to them regularly, to handle. In Japan IP divisions form part of the Tokyo and Osaka District Courts and more courts are likely to be given responsibility for IP cases because of the IP Strategic Outline. The plan also proposes allowing judges to avail of the experience and knowledge of IP specialists by using them to inform the court of the technical issues associated with cases. Korea has its own IP Court and while Australia does not have a separate bench, many of its Federal Court judges have years of experience in hearing IP cases.
Singapore is the latest country in Asia to consider the establishment of an IP court. Nothing regarding the structure or resources of a new court has been announced. It seems to be only a thought in an official's mind as yet, but some observers are convinced it will happen and of its value. "It would enhance the experience, expertise and specialist knowledge of the judges," says Tony Yeo, of Drew & Napier. "Looking at cases day in day out would enhance their decisions," he says. The establishment of an IP court, which is not a requirement of the TRIPs Agreement, would support the Singapore Government's efforts to make Singapore an IP hub.
