Monthly Archive: February 2019

Patent Searching: Working with Documents Written in Unfamiliar Languages

Before embarking upon a new venture with a new product or process that you’ve invented, an important first step is to conduct a basic patent search.  This will give you a reasonable idea of whether your idea has already been published and whether a third party already has a patent that covers it.

As with many jurisdictions, New Zealand applies a test of absolute novelty, meaning for an invention to be patentable, it must not have been made publicly available at any time, anywhere in the world, by means of written or oral description, by use or in any other way, before the priority date of the patent being sought.

Whilst it’s always a good idea to engage the services of a professional patent searcher and analyst throughout the life cycle of your IP and products, there is still a certain amount of initial work you can do for yourself, such as a basic patent search.  If your search returns documents written in a language with which you’re unfamiliar, this raises the challenge of how to interpret this prior art.

A lack of experience working with various languages should not be seen as a barrier to trying to determine the potential relevance of such documents before dismissing them.

In this post I share a few of the tips, tricks and resources for assessing documents written in foreign languages.

 

Look at the Pictures

A picture paints a thousand words.  Examining the images, figures and drawings within a patent document can often provide a clearer appreciation of the nature of an invention, particularly when the text is either difficult to interpret, or is in an unfamiliar language.

 

Not All Patents Are Purely Monolingual

It is required practice at the European Patent Office that the claims of granted EP patents are published in all three official languages of the EPO – English, French and German.  So, if you need a translation in one of these three languages, a granted EP patent will at least provide you with the claims in your language of choice.

In addition, these documents will provide you with English, French and German keywords for the features you’re searching for in order to expand your searches to documents only published in those languages.

 

Other Equivalents

Along similar lines to the previous point, looking within the patent family may help you find other equivalents (patent family members) that are written in your preferred language.

It’s important to note that these won’t necessarily be direct translations of each other.  Nonetheless, they will provide an indication as to the nature of the invention being protected.

 

Online Translation Engines

Some of the free online patent search tools, as well as many of the commercially available products, provide translation tools built into their display interfaces.  Be sure to identify these where available and make full use of them.  Whereas they don’t provide a substitute for a professional translation, the quality of machine translation is often very high and will provide a good indication as to whether the document you are looking at is likely to require deeper investigation.

Failing this, copying & pasting into, for example, Google Translate will also provide a translation to give you the gist of an invention.

 

EPO Asian Patent Information Virtual Helpdesk

The European Patent Office has a virtual helpdesk for understanding and working with patent information from various Asian and Middle Eastern jurisdictions.  Clear guides are available to help you search and understand IP from these regions:

https://www.epo.org/searching-for-patents/helpful-resources/asian.html

 

Take-Home Message

Don’t let a lack of knowledge or experience working with unfamiliar languages limit your ability to interpret global patent information.  A small amount of careful research as well as making the most of numerous free online tools can help you identify important and valuable prior art that may otherwise have been missed.

These techniques should never replace the practice of engaging an IP professional and translator, but will help you gain a broader, global understanding of the space in which your business operates.

Alistair Curson

 

References

Bhatti, AW. (2017, October 02). “Topic 3: Legal Requirements for Patentability and Typical Parts of a Patent Application”. Retrieved February 04, 2019, from: https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_ip_cnx_17/wipo_ip_cnx_17_3.pdf

Macaskill D. (2013, September 12). “New dawn for the New Zealand Patent landscape – the New Patents Act”. Retrieved February 04, 2019, from: http://www.jaws.co.nz/about-us/media/new-dawn-for-the-new-zealand-patent-landscape-the-new-patents-act

The European Patent Convention. “Article 14: Languages of the European Patent Office, European patent applications and other documents”. Retrieved, February 05, 2019, from: https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar14.html

The European Patent Office. (2019, January 17). “Asian Patent Information”. Retrieved February 11, 2019, from: https://www.epo.org/searching-for-patents/helpful-resources/asian.html

Wikipedia. (2019, February 04). “A picture is worth a thousand words”. Retrieved February 05, 2019, from: https://en.wikipedia.org/wiki/A_picture_is_worth_a_thousand_words

Copyright Protection in the Digital Environment in Aotearoa

On 16th January 2019 the Ministry for Business, Innovation and Employment announced that New Zealand had joined the World Intellectual Property Organization’s Copyright Treaty (WCT) and Performers and Phonograms Treaty (WPPT).  New Zealand acceded to both treaties on 17th December 2018, and they will enter into force on 17th March 2019.

Both treaties increase the scope of protection of works, as well as the protection of the rights of authors, producers and performers.  There is a particular emphasis on the digital environment, which is of relevance to a 21st century world.  The accession to these treaties is also of particular importance to New Zealand given its strong and growing tech industry.

 

WIPO Copyright Treaty (WCT)

The Berne Convention for the Protection of Literary and Artistic Works is an international agreement covering copyright as an IP right.  The WIPO Copyright Treaty is a special agreement under the Berne Convention focussing on works and authors’ rights in the digital environment.

In addition, the treaty discusses two additional subject matters, of particular relevance to the digital environment to be protected by copyright – computer programmes and databases.

Computer programmes are protected irrespective of the mode or form by which they are expressed.

Databases cover any compilations of data or other materials, in any form, providing the selection and/or arrangement of their contents may be considered an intellectual creation.  In other words, the selection and/or arrangement of the data must meet the originality requirement of copyright, i.e. originate from the author (not be copied).  If this criterium is not met, then the database in question will not be covered by the treaty.

The treaty also grants authors’ rights (beyond those recognised by the Berne Convention) of:

  • Distribution – authorising the original work and copies to be made available to the public via sale or some other transfer of ownership
  • Rental – authorising commercial rental of computer programmes, cinematographic works and works subsisting in phonograms (subject to certain restrictions)
  • Communication to the public – authorising communication to the public, in particular via on-demand and interactive means over the internet

 

WIPO Performers and Phonograms Treaty (WPPT)

The WIPO Performances and Phonograms Treaty also has focus on the digital environment and is concerned with the rights of two categories of beneficiaries – performers and the producers of phonograms.

Performers include actors, singers and musicians.  The producers of phonograms are the people, or other legal entities, that record (fix) sounds.  The overlap that exists between performers rights and the protection of their recorded aural performances is why these two categories are addressed by the same treaty.

The treaty grants performers the following rights associated with their performances when fixed in phonograms.  These, however, do not apply to audiovisual fixations, such as films or movies.  The same rights are also granted to the producers of phonograms:

  • Reproduction – authorising the reproduction of a phonogram
  • Distribution – authorising the original work and copies of the phonogram to be made available to the public via sale or some other transfer of ownership
  • Rental – authorising commercial rental of the original and copies of a phonogram
  • Making available – authorising wired or wireless access to any performance recorded in a phonogram, at a time and from a place chosen by the public, in particular via on-demand and interactive means over the internet

Where a performance is unfixed, i.e. live, performers are granted the rights of broadcasting (but not rebroadcasting), communication to the public (but not for broadcast performances), and the right of fixation (i.e. to record the work).

Performers also enjoy the moral rights to be identified as the performer and to maintaining the integrity of the work.

The treaty also sets out rights with respect to the remuneration to both performers and producers of phonograms published, broadcasted or communicated for commercial purposes.

 

Term of Protection and Paracopyright

Under both treaties, the term of protection must be at least 50 years.

Further, there is an obligation for contracting parties to provide paracopyright protection – legal remedies to support authors where efforts have been made either to circumvent technological protection measures (TPM), such as encryption; or to interfere with digital rights management (DRM), such as metadata intended to identify works and/or the authors as a means to manage distribution and monetisation of a work.

 

Copyright in Aotearoa

New Zealand’s Copyright Act 1994 is currently under review with an Issues Paper published and available for comment (as of 23rd November 2018).  Written submissions should be made by 17:00 NZ on 5th April 2019.  The review is being undertaken because of the rapid changes to technology and the consequent ways in which copyright-protected works are both created and distributed.

Many of the questions raised in the issue paper relate to performers rights, TPMs, communication to the public, and current or emerging technologies that the law should give additional consideration to.

New Zealand’s accession to the WIPO Copyright Treaty and the WIPO Performers and Phonograms Treaty, together with the outcomes of the review of the existing Act will position the creators of original works in Aotearoa with greater and relevant protection in an ever-evolving digital world.

Details for making submissions in relation to the issue paper may be found here:

https://www.mbie.govt.nz/have-your-say/review-of-the-copyright-act-1994-issues-paper/

 

Alistair Curson

 

References

Ministry of Business, Innovation and Employment. “Review of the Copyright Act 1994”. Retrieved January 28, 2019, from: https://www.mbie.govt.nz/business-and-employment/business/intellectual-property/copyright/review-of-the-copyright-act-1994/

Ministry of Business, Innovation and Employment. “Review of the Copyright Act 1994: Issues Paper”. Retrieved January 28, 2019, from: https://www.mbie.govt.nz/have-your-say/review-of-the-copyright-act-1994-issues-paper/

Ministry of Business, Innovation and Employment. (2018, November). “Issues Paper: Review of the Copyright Act 1994”. Retrieved January 28, 2019, from: https://www.mbie.govt.nz/assets/a28d02fc5c/review-of-copyright-act-1994-issues-paper.pdf

Ministry of Business, Innovation and Employment. (2019, January 16). “New Zealand joins international copyright treaties”. Retrieved January 18, 2019, from: https://www.mbie.govt.nz/about/news/new-zealand-joins-international-copyright-treaties/

New Zealand Copyright Act 1994, s15. Retrieved January 25, 2019, from: http://www.legislation.govt.nz/act/public/1994/0143/117.0/DLM345922.html

Wikipedia. (2018, July 4). “Paracopyright”. Retrieved January 24, 2019, from: https://en.wikipedia.org/wiki/Paracopyright

Wikipedia. (2018, December 24). “Berne Convention”. Retrieved January 23, 2019, from: https://en.wikipedia.org/wiki/Berne_Convention

World Intellectual Property Organisation. (1996, December 20). “WIPO Copyright Treaty”. Retrieved January 24, 2019, from: https://www.wipo.int/treaties/en/text.jsp?file_id=295166#P83_10885

World Intellectual Property Organisation. “Berne Convention for the Protection of Literary and Artistic Works”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/berne/

World Intellectual Property Organisation. “Protection of Non-Original Database”. Retrieved January 24, 2019, from: https://www.wipo.int/copyright/en/activities/databases.html

World Intellectual Property Organisation. “Summary of the WIPO Copyright Treaty (WCT) (1996)”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/wct/summary_wct.html

World Intellectual Property Organisation. “Summary of the WIPO Performances and Phonograms Treaty (WPPT) (1996)”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/wppt/summary_wppt.html

World Intellectual Property Organisation. “Treaties and Contracting Parties: Contracting Parties; WIPO Copyright Treaty: New Zealand”. Retrieved January 18, 2019, from: https://www.wipo.int/treaties/en/remarks.jsp?cnty_id=12548C

World Intellectual Property Organisation. “Treaties and Contracting Parties: Contracting Parties; WIPO Performances and Phonograms Treaty: New Zealand”. Retrieved January 18, 2019, from: https://www.wipo.int/treaties/en/remarks.jsp?cnty_id=12549C

World Intellectual Property Organisation. “WIPO Copyright Treaty (WCT)”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/wct/

World Intellectual Property Organisation. “WIPO Performances and Phonograms Treaty”. Retrieved January 23, 2019, from: https://www.wipo.int/treaties/en/ip/wppt/