We continue in our series of articles on patent opposition in New Zealand. In our previous article, NZ Patent Oppositions – Why do I need expert evidence?, we discussed the crucial role that evidence plays in patent oppositions. In this article, we consider whether or not it is possible to use expert witnesses from foreign jurisdictions.
The ideal expert is someone with expertise in the field of the invention in New Zealand. The greater the departure from that ideal, the greater the evidence will be seen as having low probative value. A foreign expert is better than nothing but the risk is that the hearing officer might downgrade the value of the evidence when coming to a conclusion on obviousness.
A foreign expert can be used, if it can be shown that the technology in the field is international. For instance, does the expert attend international exhibitions and conferences that are also generally attended by members of the New Zealand industry? Has he had any experience working in New Zealand? Do the relevant industry journals circulate to an international audience?
Also, it seems as if an Australian expert would be generally accepted to have an understanding of the relevant field in New Zealand. For instance, many professions are regarded as having the same expertise in both Australia and New Zealand as a result of legislation recognising and qualifying professions in both countries. Also, many professions have industry bodies or representative organisations that are trans-Tasman.
If the technology is relatively simple then it can be argued that the common general knowledge would be the same internationally (and therefore a foreign expert’s views would be of value).
In a New Zealand Patent Office decision, where the applicant’s expert was a mechanical engineer from the company in Sweden, the hearing officer did not state that he disregarded the evidence. However he noted the lack of connection with the field in New Zealand and the lack of independence. Such factors might lower the weight of the evidence in the hearing officer’s view, without it being expressly stated in the decision.
The decision of whether or not to use a foreign expert might be one of availability e.g. where there are no independent experts in New Zealand. The decision might come down to cost e.g. it might be desirable to use the same expert in parallel proceedings in different countries. Another factor affecting the decision might be whether or not the applicant is likely to put up a counter argument or appear at the hearing. Whatever the factors affecting the decision, one thing should always be borne in mind: that any expert evidence is better than none. Without expert evidence, the New Zealand Patent Office is simply unable to make a decision on obviousness.
This is the fifth instalment of a multi-part series on New Zealand patent oppositions. Other articles include: