Tuesday, 8 June 2010

The New Zealand tortoise: should we nip it in the bud?

In "Has the patent tortoise almost reached the finish line?", New Zealand law firm Simpson Grierson comments on the extremely slow progress of replacing that jurisdiction's ancient Patents Act 1953 with a fresh, new Act. According to this note,
" ... The Patents Bill, which will provide a complete re-write and reform of New Zealand's patent law, has been reported back from Parliament's Commerce Select Committee and is heading for its second reading in Parliament. And in a new twist on the old fable, the Select Committee has added a few hare-like twists to this tortoise of a piece of legislation.

Oppositions are Back

Back at the start of the reform process, the Institute of Patent Attorneys advocated a re-examination system, asserting that the opposition process was inefficient and unpopular. When the draft Patents Bill was circulated (in 2002), the Institute did a u-turn, and advocated for retaining oppositions. It is no wonder the Select Committee was confused.

The result is that the Bill provides for both re-examination and oppositions.

Revocation is of course also available. There are limited restrictions on the number of bites at the cherry a party can take. This proposal is unlikely to achieve efficiency in the system. The dual system instead adopts a "worst of both worlds" approach, and will give determined opponents plenty of opportunities to disrupt, and add to the expense of, patent applications".
Being in the mood for a mixed metaphor, I'd like to ask whether we should nip this tortoise in the bud. Following a recommendation in The British Patent System: report of the committee to examine the patent system and patent law [the Banks Report], Cmnd 4407, 1970, the UK was happy to scrap before-and-after challenges. It seemed quite outrageous that an opponent, having lost in Patent Office proceedings and then failed on appeal to the Patents Appeal Tribunal, the Court of Appeal and the House of Lords, could then wait till the patent was granted and then apply, on the same ground. to revoke the patent and pursue its application for revocation all the way up to the House of Lords again. I don't think this ever actually happened, through the prospect that it might -- though a boon for patent litigators -- was distinctly unattractive to litigants and legislators alike.

The UK, like the European Patent Office, operates a system in which a patent can be challenged only after grant, and this too has its unattractive side. Can any reader think of a better way to do things?

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