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Patents Bill (Consistent) (Sections 5, 14, 19, 21, 25(c), 27(1)) [2007] NZBORARp 42 (1 November 2007)
Last Updated: 5 January 2019
Patents Bill
1 November 2007 Attorney-General LEGAL ADVICE
CONSISTENCY WITH THE NEW ZEALAND BILL OF RIGHTS ACT 1990:
PATENTS BILL
- We
have considered whether the Patents Bill (PCO 4946/20) (the Bill) is consistent
with the New Zealand Bill of Rights Act 1990 (‘Bill
of Rights Act’).
We understand that this Bill is likely to be considered by the Cabinet
Legislation Committee at its meeting
on Thursday 8 November 2007.
- We
considered potential issues of inconsistency with sections 14, 19, 21, 25(c) and
27(1) of the Bill of Rights Act and assessed whether
or not these issues are
justifiable under section 5 (Justified limitations) of that Act. To that end we
examined whether the relevant
clauses serve an important and significant
objective and whether there is a rational and proportionate connection between
these clauses
and that objective.[1]
- We
have reached the conclusion that the Bill appears to be consistent with the
rights and freedoms affirmed in the Bill of Rights
Act.
PURPOSE
- The
purpose of this Bill is to update New Zealand’s patent regime to ensure
that it continues to provide an appropriate balance
between providing adequate
incentives for innovation and technology transfer and protecting the interests
of the public and the
interests of Māori in their traditional
knowledge and in indigenous plants and animals. It also updates the regulatory
regime
for patents attorneys. If passed, the Patents Bill will replace the
Patents Act 1953.
BILL OF RIGHTS ACT ISSUES
Section 14 – Freedom of Expression
- Section
14 of the Bill of Rights Act affirms the right to freedom of expression, which
includes the freedom to seek, receive, and
impart information and opinions of
any kind and in any form. The right has been interpreted as including the right
not to be compelled
to say certain things or to provide certain information. [2]
- We
note, taking into account the various domestic and overseas judicial
pronouncements on the issue, a two-step inquiry has been adopted
to determine
whether an individual’s freedom of expression has been infringed. The
first involves a determination of whether
a particular activity falls within the
freedom of expression. The second step is to determine
whether the
purpose or effect of the impugned government action is to restrict that freedom.[3]
Requirements to provide documents or other information
Clause 211(1) and (2) and clause 214(1)(c)
- The
Bill contains some provisions that require persons to provide or disclose
information. We particularly note clause 211(1) and
(2), which lists the
Board’s powers of investigation or inquiry, and clause 214(1)(c), which
states that the Board may issue
a summons to a person requiring that person to
produce documents, things, or information. The powers in these clauses relate to
investigation
and inquiry concerning a complaint about the conduct of a patent
attorney.
- It
cannot be excluded that the documents and other information that the Board may
require to be provided, may be of such a nature
that they express an idea or
meaning[4]. Since non-compliance with
these requirements may have consequences that create a degree of compulsion, it
may therefore be argued
that the powers in these provisions raise freedom of
expression issues.
- The
Ministry of Economic Development (MED) has advised that the powers are necessary
so that the Board, during an investigation or
inquiry, can have access to all
the relevant information and documents that it needs to enable it to reach a
fair and reasonable
determination in relation to the complaint and in relation
to whether disciplinary action against a patent attorney is warranted.
This is
particularly important as the Board may order that a person’s registration
as a patent attorney may be cancelled or
suspended. This affects that
person’s continued employment in the patent attorney profession.
- We
further note that the Board may only exercise its powers under clause 211(1) if
the Board considers it ‘reasonably necessary
for the purposes of any
investigation or inquiry’ under subpart 3 (Standards of conduct and
discipline) of the Bill. Moreover,
the powers in clause 214(1)(c) in relation to
production of documents and other types of information are limited to production
of
documents that “are relevant to the subject of the inquiry”.
- In
our view, the limitations in clauses 211 and 214 of the Bill on the freedom of
expression appear to be justified under section
5 of the Bill of Rights Act.
Clause 293
- In
order to be able to exercise his or her functions, duties and powers under the
Bill, the Commissioner may need to receive certain
information. Clause 293
(Supplementary empowering provision) provides for a regulation making power to
‘prescribe what information
must be provided or other evidence or
documents must be provided in
connection with the thing.’ It
will depend on the actual wording of these regulations whether the information
to be provided
under the relevant clauses will be sufficiently expressive to be
covered by section 14. We note, however, that these regulations
have to
be drafted in a manner that is consistent with the Bill of Rights Act,
otherwise they may be open to challenge for being ultra vires.
Right to receive information
Clauses 74 and 76
- The
Bill provides that certain documents relating to patent applications become open
to public inspection at specified times (clause
74). There are, however, some
restrictions on the publication of these documents (clause 76). Although this
limits the right to receive
information, as affirmed in section 14 of the Bill
of Rights Act, we think this limit is justifiable under section 5 of that
Act.
- In
reaching this view, we note that most documents relating to a patent application
will not be made public at the time the application
is made. Many will be made
available at a later date (as set out in clause 74). For instance, patent
applications and the documents
associated with them are not made available to
the public until 18 months after the earliest priority date. However, some might
not
be made available, for example, because they contain confidential or
commercially sensitive information. Clause 76 is intended to
ensure that
documents that are not available under clause 74 are not published. As a
consequence, these documents will not be available
for inspection or be able to
be produced in court unless a person having power to authorise inspection or
production directs that
this may occur.
- There
may be occasions when applicants decide that they wish to keep their inventions
secret rather than allow details to be published
in a patent application. If the
application is withdrawn before publication, then no details should be made
public. Clause 76 also
ensures that in such cases the application and associated
documents remain confidential.
Clause 125(2)
- Under
clause 125(2) (Directions in relation to inventions concerning defence), a
direction can be made prohibiting or restricting:
(a) the publication of
information concerning the invention; and (b) the communication of information
concerning the invention to
a person or class of persons specified in the
directions. This provision only covers patent applications dealing with
inventions
that have military or other defence related uses. Restricting such
information is justified because publication would be prejudicial
to the defence
of New Zealand.
Section 21 – Right to be Secure against Unreasonable Search and
Seizure
- Section
21 of the Bill of Rights Act provides:
“Everyone has the right to be secure against unreasonable
search or seizure, whether of the person, property, correspondence
or
otherwise.”
- There
are two limbs to the section 21 right. First, section 21 is applicable only in
respect of those activities that constitute a
"search or seizure". Second, where
certain actions do constitute a search or seizure, section 21 protects only
against those searches
or seizures that are "unreasonable" in the
circumstances.
- The
requirements in clause 211(1) and (2) and clause 214(1)(c), which were discussed
above under the freedom of expression, involve
compulsory access to information
in the context of an investigation and inquiry concerning a complaint about the
conduct of a patent
attorney. These requirements impinge to a certain degree
upon reasonable expectations of privacy which members of the public would
have
in relation to that information. For that reason, these requirements also
constitute a search or seizure for the purposes of
section 21 of the Bill of
Rights Act.
- Nonetheless,
for the same reasons as discussed in paragraphs 9 and 10 above, we have
concluded that the requirements in these provisions
are reasonable and,
therefore, are not inconsistent with section 21 of the Bill of Rights Act. In
reaching this conclusion we note
that the ability to require documents is less
of an intrusion into the expectation of privacy than a power of entry.[5]
- As
regards clause 293 (see paragraph 12), we note again that regulations have to be
drafted in a manner that is consistent with the
Bill of Rights Act, otherwise
they may be open to challenge for being ultra vires.
Section 19(1) – Freedom from Discrimination
- Section
19(1) of the Bill of Rights Act affirms the freedom from discrimination on
prohibited grounds set out section 21 of the Human
Rights Act 1993 including
race and ethnic origins. In our view, taking into account the various domestic
and overseas judicial pronouncements
as to the meaning of discrimination, the
key questions in assessing whether discrimination under section 19 exists
are:
- Does
the provision draw a distinction based on one of the prohibited grounds of
discrimination; and
- Does
the distinction involve disadvantage to one or more classes of individuals?
- If
these questions are answered in the affirmative, the provision gives rise to a
prima facie issue of ‘discrimination’
under section 19(1) of the
Bill of Rights Act. Where a provision is found to be prima facie inconsistent
with a particular right
or freedom, it may nevertheless be consistent with the
Bill of Rights Act if it can be justified under section 5 of that Act.
Appointment of a Māori advisory committee
- Under
clause 275(1), the Commissioner must appoint a Māori advisory committee.
The functions of this committee are laid down
in clause 276. These functions
include advising the Commissioner of whether an invention claimed in a patent
application is derived
from
Māori traditional knowledge or from
indigenous plants or animals. If so, the Committee advises whether the
commercial exploitation
of that invention is likely to be contrary to Māori
values.
- We
note that there is no obligation to appoint a Committee, nor is the Māori
advisory committee instructed, to advise with respect
to inventions derived from
traditional knowledge of non-Māori which could be of equal importance to
those groups. It could therefore
be argued that clause 275(1) appears to
discriminate on the basis of race or ethnic origin. We have considered whether
clause 275(1)
would result in disadvantage to non- Māori and thus raises an
issue of prima facie inconsistency with section 19(1) of the Bill
of Rights
Act.
- MED
advises that, although there is no specific advisory group dealing with similar
issues that may be of concern to non-Māori
groups, there is nothing in the
Bill that would prevent the Commissioner from taking into account the views of
organisations with
specific knowledge of issues affecting non-Māori groups.
Clause 14(3) of the Bill, for instance, specifically authorises the
Commissioner, for the purposes of making a decision as to
whether an
invention is contrary to public order or morality, to “seek advice from
the Māori advisory committee or any
person that the Commissioner considers
appropriate” (emphasis added).
- For
this reason, we are of the view that clause 275(1) does not appear to result in
disadvantage to non-Māori and therefore does
not engage section 19(1) of
the Bill of Rights Act.
Membership of Māori advisory committee
- The
Bill provides that a person must not be appointed as a member of the Māori
advisory committee unless the person is qualified
for appointment, having regard
to that person’s knowledge of mātauranga Māori and tikanga
Māori (clause 275(3)).
- This
provision could be seen as giving rise to indirect discrimination on the basis
of race
or ethnic origins because Māori are more likely than
non-Māori to have knowledge of
mātauranga Māori and tikanga Māori. This could arguably
disadvantage non-Māori in their ability to be appointed
as a member of the
Māori advisory committee.
- We
note that the requirement does not prevent non-Māori from being appointed:
it simply requires them to have knowledge of mātauranga
Māori and
tikanga Māori. It is important that members of the committee are qualified
to provide advice to the
Commissioner in relation to mātauranga
Māori and tikanga Māori. This is because the Commissioner may take the
committee’s
advice into account in determining whether an invention is
patentable (clause 14). Without having this knowledge, a member of the
committee
would have difficulty advising on whether the patent application is derived from
Māori traditional knowledge or from
indigenous plants or animals and, more
importantly, whether the commercial exploitation of that invention is likely to
be contrary
to Māori values (see clause 276).
- We
have concluded that the potential discrimination in clause 275(3) appears to be
justifiable under section 5 of the Bill of Rights
Act.
Section 25(c) – Right to be presumed innocent until proved guilty
- Section
25(c) affirms the right to be presumed innocent until proved guilty. This means
that an individual must not be convicted where
reasonable doubt as to his or her
guilt exists. The prosecution in criminal proceedings must therefore prove,
beyond reasonable doubt,
that the accused is guilty.
- Strict
liability and reverse onus offences give rise to an issue of inconsistency with
section 25(c) because the accused is required
to prove (on the balance of
probabilities) the defence to escape liability. In other criminal proceedings an
accused must merely
raise a defence in an effort to create reasonable doubt.
Where an accused is unable to prove the defence, then he or she could be
convicted even though reasonable doubt exists as to his or her guilt.
- The
Bill contains the following strict liability and reverse onus offences:
- Clause 187(5)
(Only patent attorneys, and patent attorney companies and
partnerships,
may provide patent attorney services)
- Clause 188(3)
(False representations)
- Clause 190(3)
(Exception for lawyers and incorporated law firms to provide limited patent
attorney services)
- Clause 212(1)
(b) and (c) (Offences of obstruction)
- Clause 285(1)
(Offence of failing to comply with summons)
- All
of these clauses give rise to an issue under section 25(c) of the Bill of Rights
Act because a defendant may be required to prove
something to escape
liability.
Clauses 187(5), 188(3), and 190(3)
- Clause
187 provides that only patent attorneys, and patent attorney companies and
partnerships, may provide patent attorney services.
It also sets out the
criteria they must meet. Any other person that provides patent attorney
services, or does not meet these criteria,
commits an offence. It is a defence
to an offence under subsection (2) if the person proves that he or she did not
know, and could
not reasonably be expected to have known, that the other person
was not registered as a patent attorney or a patent attorney company.
- Clause
188 provides who may represent himself, herself or itself as a patent attorney,
or patent attorney company and partnership.
Contravention of this section is an
offence. Again, it is a defence to an offence under subsection (2) if the person
proves that
the person did not know, and could not reasonably be expected to
have known, that the partnership was not a patent attorney
partnership.
- Under
clause 190 lawyers and incorporated law firms are able to provide limited patent
attorney services if they meet certain conditions.
Contravention of this
provision is an offence (sub-clause 190(3)). It is a defence to this provision
if the lawyer or incorporated
law firm is acting under the instruction of a
patent attorney or patent attorney company, or directed to do so by a court of
New
Zealand (sub-clauses 190(2)(b) & (c).
- The
objective of these provisions is to ensure that persons and partnerships
providing patent attorney services are qualified and
competent to provide patent
attorney services. Clauses 187 and 188 carry over the current registration
regime under section 103 of
the Patents Act 1953 concerning who may be permitted
to describe themselves or be held out as patent attorneys or patent agents and
who may provide “patent attorney services”.
- In
our view, these clauses have significant and important objectives. They contain
offences that are regulatory in nature (as opposed
to ones that are truly
criminal) and the information that can exonerate the defendant is information
that is particularly in the
realm of the defendant.
- When
examining the proportionality of the proposed penalties, we note that as a
general principle, reverse onus and strict liability
offences should carry
penalties at the lower end of the scale. The penalty for committing an offence
under these provisions is a
fine on summary conviction not exceeding $5000 for
offences under clauses 187(5) and 188(3) and a fine not exceeding $1000 for an
offence committed under clause 190(3). These penalty levels are comparable to
the penalty levels for similar offending and are not
disproportionate.
Clause 212(1) (b) & (c) and clause 285(1)
- Clause
212(1)(b) and (c) are reverse onus offences which provide, respectively, that it
is an offence to fail, without sufficient
cause, to comply with any requirement
of the board, a board committee or other authorised person, and to act, without
sufficient
cause, in contravention of, or fail to comply with, any order made by
the board or a board committee or any term or condition of
the order.
- Clause
285(1) provides that a person commits an offence, if he or she without
sufficient cause fails to comply with a summons to attend
before the patent
attorneys’ standards board or does not give evidence, answer questions, or
provide documents or other information
as required.
- MED
has advised us that these offences are aimed at deterring a person obstructing
or hindering an investigation by the patent attorneys’
standards board
concerning a complaint against the conduct of a registered patent attorney. It
is in the public interest to ensure
that the commissioner or board, when making
a decision in respect of a patent attorney, has all the information relevant to
the matter
being determined. If there was no power to summon witnesses, or no
ability to sanction witnesses who chose not to appear, the ability
of the
commissioner or the board to make fair decisions would be
compromised.
- We
consider that in both cases, the evidence as to why the defendant has failed to
comply with a requirement or order, or acts in
contravention of an order will be
primarily within the defendant’s knowledge. The defendant will know why he
or she was unable
to comply with an order or requirement or has acted in
contravention better than the prosecution in any instance.
- The
offences are regulatory in nature and the penalty for these offences is a fine,
on summary conviction, not exceeding $2000. This
penalty is again comparable to
similar offences in other acts and is therefore not disproportionate.
- For
these reasons outlined above we consider that the limitations in the Bill on the
presumption of innocence under section 25(c)
of the Bill of Rights are justified
under section 5 of that Act.
Section 27(1) – Right to natural justice
- Clause
135 (Presumption that product produced by infringing process) states that if a
patented process is a process for obtaining
a new product, the same product
produced by a person is presumed in infringement proceedings to have been
obtained by that process
unless the defendant proves the contrary.
- We
note that this provision puts a burden on the defendant to disprove the
presumption and thus reverses the onus of proof. We have
therefore examined
whether this provision is consistent with the right to natural justice (as
affirmed in section 27(1) of the Bill
of Rights Act).
- Clause
35 has been carried over from the Patents Act 1953 (see section 68A of that
Act). It was inserted in the Patents Act 1953 by
the Patents Amendment Bill 1994
to implement the obligations set out in Article 34 of the WTO Agreement on Trade
Related Aspects
of Intellectual Property Rights (the TRIPS Agreement). All
members of the WTO, including New Zealand, must comply with the TRIPS
Agreement.
- The
rationale behind Article 34 is that where a product can be made either by a
patented process, or by a non-patented process, it
is often not possible to
determine, by examination of the product, what process was used to make the
product. In such cases, it may
be very difficult or even impossible for the
owner of the patent for the process to find out if the patented process was used
and
therefore infringed, whereas it should be well within the realm of knowledge
of the defendant to give evidence in relation to the
process that was used.
- For
this reason, we are of the view that clause 135 does not seem to be inconsistent
with section 27(1) of the Bill of Rights Act.
CONCLUSION
- We
have concluded that the Bill does not appear to be inconsistent with the rights
and freedoms affirmed by the New Zealand Bill of
Rights Act
1990.
Melanie Webb
Manager, Ministerial Advice Office of Legal Counsel
|
Stuart Beresford
Acting Manager
Human Rights/Bill of Rights Team
|
Footnotes
- In
applying section 5, we have had regard to the guidelines set out by the Court of
Appeal in Ministry of Transport (MOT) v Noort
[1993] 3 NZLR 260; Moonen v Film
and Literature Board of Review [1999] NZCA 329; [2000] 2 NZLR 9; and Moonen v Film and Literature
Board of Review [2002] NZCA 69; [2002] 2 NZLR 754.
- RJR
MacDonald v Attorney-General of Canada (1995) 127 DLR (4th)1 3 Ross v New
Brunswick School District No 15 [1996] 1 SCR
825
4 R v Keegstra
[1990] INSC 224; [1990] 3 SCR 697, 729, 826
5 Trans Rail v Wellington District Court [2002] NZCA 259; [2002] 3
NZLR 780, 791-792.
In addition to the general disclaimer for all documents on this website,
please note the following: This advice was prepared to assist
the
Attorney-General to determine whether a report should be made to Parliament
under s 7 of the New Zealand Bill of Rights Act 1990
in relation to the Patents
Bill. It should not be used or acted upon for any other purpose. The advice does
no more than assess whether
the Bill complies with the minimum guarantees
contained in the New Zealand Bill of Rights Act. The release of this advice
should
not be taken to indicate that the Attorney-General agrees with all
aspects of it, nor does its release constitute a general waiver
of legal
professional privilege in respect of this or any other matter. Whilst care has
been taken to ensure that this document is
an accurate reproduction of the
advice provided to the Attorney-General, neither the Ministry of Justice nor the
Crown Law Office
accepts any liability for any errors or omissions.
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