Update September 2013 – Issue 20 davies.com.au
DSI wins groundless threats case against Garford Winnebago loses injunction due to unfair delay 5 tips for seeking extensions in patent oppositions
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Type #
Contents
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Insight
Case Studies
Practice Updates
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Garford’s threat of patent infringement proceedings was unjustified against DSI
24 IP Australia provides guidance on extensions of time for patent oppositions
DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132; [2013] FCA 268
27 NZ Patents Bill: How will it affect software patents in NZ?
Penalties for continued infringement of copyright: fines and imprisonment
28 US Supreme Court rules Myriad’s BRCA genes not patentable: US vs Australian perspectives
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Connect TV Pty Ltd v All Rounder Investments Pty Ltd (no 4) [2013] FCA 393
12 Injunction granted in favour of Winnebago set aside on appeal due to 25 year delay Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59 Neal.: CC-BY 2.0 www.flickr.com/photos/31878512@N06/4644606033/
16 MYOB succeeds in trade mark opposition to Train Your Own Business & Device Scott Ford v MYOB Technology Pty Ltd [2013] ATMO 37
18 Federal Court considers “pharmaceutical substance”; Upholds extension of patent term granted to Mundipharma Spirit Pharmaceuticals Pty Ltd v Mundipharma Pty Ltd [2013] FCA 658
20 Implicit disclosure: A recipe for anticipation Novozymes A/S v Danisco A/S [2013] FCAFC 6
30 DCC News 31 DCC Out & About
IP Update
Insight
What, exactly, is the purpose of the patent system? That simple, but profound, question lies at the heart of two recent proposals to amend the Australian Patents Act: by including an Objects Clause in the legislation; and by introducing an exclusion from patentability on ethical grounds. At the outset I must declare my connection with the proposals. They arose from a 2010 review of Patentable Subject Matter conducted by the Advisory Council on Intellectual Property, of which I was then the Chair. The government accepted ACIP’s recommendations, and is now consulting on the form of their implementation. The fuller of the two proposed versions of the Objects Clause states that the purpose of the patent system is to enhance the well-being of Australians by promoting innovation and the dissemination of technology and by balancing the competing interests of patent applicants and patent owners, the users of technology, and Australian society as a whole. It highlights the economic and social welfare goals of the patent system, and recognises the competing, and at times conflicting, interests of the system’s stakeholders. The proposed ethical exclusion applies to inventions the commercial exploitation of which would be wholly offensive to the ordinary reasonable and fully informed member of the Australian public. A careful reading shows that its operation is constrained.
Leon Allen, Managing Partner
Contrary to what some think, it does not exclude from patentability “immoral inventions” (whatever they may be). Rather, it excludes only those inventions the commercial exploitation of which would be wholly offensive. The exclusion’s focus on the offensiveness of the commercial exploitation of the invention, rather than on the invention itself, is appropriate. A patent grants the exclusive right to commercially exploit the invention. It would be inconsistent to grant a patent for an invention – and, thereby, the exclusive right to commercially exploit it – where its commercial exploitation would be offensive to the public. While the ethical exclusion is the more controversial of the two proposals, the Objects Clause is likely to have the greater practical impact. It is more than a mere “motherhood” statement. As an aid to legislative interpretation, it will be taken into account when fundamental issues – such as what should and should not be patentable, and what are the boundaries of a patent’s exclusive rights – are under consideration. It can be expected that the ethical exclusion will come into play only rarely. But, in the extreme situation where commercial exploitation of an invention would be wholly offensive, it is only right that no patent be granted for it. So, what, exactly, is the purpose of the patent system? These proposals tell us it is to enhance economic and social welfare through promoting innovation while balancing competing interests in an ethical manner. That’s a purpose I’m happy to keep serving.
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Case Study 1
GARFORD’S THREAT OF PATENT INFRINGEMENT PROCEEDINGS WAS UNJUSTIFIED AGAINST DSI DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132; [2013] FCA 268
On 28 February 2013, Justice Yates handed down his decision finding that Garford had made unjustified threats of patent infringement against DSI. His Honour found that the threats were unjustified because claims of the Garford patent in issue were invalid for secret use, lack of novelty and obviousness. Justice Yates also held that had the claims been valid, DSI would have infringed the Garford patent. On 28 March 2013, his Honour made orders in the proceeding including declarations and an injunction against Garford in relation to threats of infringement and ordered that Garford pay DSI’s costs of the proceeding. The decision highlights the importance of ensuring that a patent’s validity can be defended before threats of infringement are made.
DSI issued the proceedings for unjustified threats of infringement Garford threatened to sue DSI for infringement of its patent directed to an apparatus and method for manufacturing bulbed cable bolts, being a type of rock anchor used to stabilise bore holes in mines and rock tunnels. DSI then commenced the proceeding, seeking relief for unjustified threats of infringement. Garford cross-claimed for infringement. DSI denied infringement and alleged that the relevant claims were, in any event, invalid and liable to be revoked. The unjustified threats provision Under section 128(1) of the Patents Act 1990 (Cth), when a person makes threats of infringement proceedings, an aggrieved person can bring an action seeking a declaration that the threats are unjustifiable, an injunction to stop the threats and damages for loss suffered as a result of the threats. For a communication to be a threat under section 128(1), it must be shown that a reasonable person would understand that the person making the threat intends to bring infringement proceedings. In this case, Garford accepted that it had threatened patent infringement proceedings under the Act.
Cranti: CC-BY 2.0 www.flickr.com/photos/cranti/4257207178/
IP Update
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… it must be shown that a reasonable person would understand that the person making the threat intends to bring infringement proceedings.
Garford’s secret use of the claimed invention Justice Yates found that claims 12 to 14 of the patent, claiming a method for manufacturing the bulbed cable, were invalid because Garford had “secretly used” the claimed invention within the meaning of section 18(1)(d) of the Act. His Honour noted that “secret use” under section 18(1)(d) requires the patentee to have reaped a commercial benefit1. In relation to one apparatus used by Garford before the priority date, his Honour held that the use had been a trial only, notwithstanding that the inventor had later sold the bulbed cable produced during the trial. His Honour stated that the use was not denied the character of a trial simply because the fruits of the trial were later turned to account. However, in relation to another early apparatus used by Garford, Justice Yates found that the use had been commercial use and it fell within the method claims 12 to 14 of the patent. Lack of novelty of the claimed invention DSI relied on four published patent specifications as prior art citations for its challenge to the novelty of the claimed invention. Justice Yates rejected each of the novelty citations as lacking one or more features of the claims, other than one specification (referred to as the “IRF Application”) which was raised
as a “whole of contents” citation. A “whole of contents” objection is an allegation of lack of novelty based on a patent specification published after the priority date, but which contains information which, if it were the subject of a claim of the prior art specification, would have a priority date before the priority date of the claim under consideration. To test whether the information in the IRF Application anticipated the relevant claims, DSI prepared a set of notional claims for his Honour’s consideration (following the reasoning of Emmett J in E I Du Pont de Nemours and Co v ICI Chemicals and Polymers Ltd (2005) 66 IPR 462). Garford submitted that the notional claims were not fairly based on the IRF Application but this submission was rejected by his Honour. Justice Yates held that the IRF Application disclosed the steps in one of the method claims of the Garford patent (claim 12). Lack of inventive step Justice Yates found that claims 1 and 5 to 14 lacked an inventive step as they were directed to an apparatus and method which was within the ordinary perception and competence of the person skilled in the art. Interestingly, His Honour carried out his assessment of inventive step using the invention as claimed as the starting point for his assessment rather than relying on the popular problem/
solution approach. He did this by considering whether “the conception that there could be a combination of integers that would interact to provide an apparatus that manufactured continuous bulbed cable might be capable of providing an inventive step”. His Honour found that the apparatus was used to make a commonly known product (being bulbed cable) and the claims were no more than an assemblage of functionally described components which were selected to fulfil well-known and well-understood processing steps. His Honour rejected Garford’s evidence that there were secondary indicia, including commercial success, that the invention was not obvious. His Honour noted that there may be numerous reasons for the increasing success of bulbed cable as a product, and this did not necessarily reflect the commercial success of the claimed apparatus and method for producing bulbed cable.
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… had the claims of the Garford patent been valid, they would have been infringed by DSI’s apparatus …
Other grounds of invalidity – rejected Justice Yates rejected DSI’s allegations that claims of the Garford patent were also invalid for not claiming a manner of manufacture, and for insufficiency and inutility. The DSI apparatus would have infringed the Garford claims Justice Yates also found that, had the claims of the Garford patent been valid, they would have been infringed by DSI’s apparatus for manufacturing bulbed cable bolts. One of the arguments raised by DSI was that even if its apparatus had the features of the Garford claims, there was no infringement because its apparatus was a “new and different combination” compared with how the preferred embodiment was said to operate. DSI relied on Fresenius Medical
Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 where the Full Court referred to Clark v Adie and said “when considering infringement of a claim to a combination, a relevant question is whether the alleged infringement is the same in substance and effect or is a substantially new or different combination”. Justice Yates found that this was a misplaced attempt to rely on the “pith and marrow” doctrine and held that the only test was whether DSI’s apparatus possessed the essential features of the claims. This test was answered in the affirmative and it was irrelevant that the DSI apparatus had features which distinguished it from the preferred embodiment described in the patent.
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Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75
John Hannebery, Partner Penny Smith, Associate
IP Update
Lessons for patent owners This case highlights the risk that a party threatened with patent infringement proceedings may take preemptive action and establish that the relevant claims of the patent are invalid and hence the threats were unjustifiable. Before making any demands that could reasonably be interpreted as threats of proceedings, a patentee should therefore carefully assess the validity of the patent and be willing and able to defend its validity if pre-emptive proceedings are commenced.
SAN_DRINO: CC-BY 2.0 www.flickr.com/photos/san_drino/4528899014/
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Case Study 2
PENALTIES FOR CONTINUED INFRINGEMENT OF COPYRIGHT: FINES AND IMPRISONMENT
Connect TV Pty Ltd v All Rounder Investments Pty Ltd (No 4) [2013] FCA 393
Australian courts have the power to punish individuals by way of fine or imprisonment or to fine companies if they commit a contempt by disobeying a court order. This extends to persons who continue to infringe intellectual property rights in contravention of court orders. Whilst orders of contempt are rare, the Federal Court in the Connect TV case did impose reasonable fines and a suspended prison sentence for contempt of the court’s orders relating to infringement of intellectual property rights. We have previously reported on instances which led to imprisonment for some of those individuals involved in continued misuse of the UGG trade mark in contempt of the court’s orders. The Connect TV case again shows that there can be serious consequences for continuing to infringe another person’s intellectual property rights in breach of court orders.
-JvL-: CC-BY 2.0 www.flickr.com/photos/-jvl-/7962594326/
Copyright infringement via internet re-broadcasting of TV programs Connect TV is licensed to broadcast certain Russian television programs and films in Australia. Connect TV discovered various companies and individuals involved in unauthorised re-broadcasting of the licensed programs. The unauthorised broadcasts were arranged by visiting people’s homes and installing set-top boxes with signal codes and passwords which enabled transmission of the programs to those televisions sets. Connect TV sued various companies and people involved in arranging those broadcasts for copyright infringement. In September 2010 the court made interlocutory orders that certain of the companies sued, and their servants and agents, cease assisting or being involved in re-broadcasting or communicating the licensed Russian programs pending the trial. In particular, the court orders restrained the company All Rounder Investments Pty Ltd (“All Rounder”) and its servants and agents from carrying out such activities.
IP Update
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The court held that Ms Lurie deliberately failed to take any action to have her name removed from the website.
The offending activities continued and ‘All Rounder’ fined After the interlocutory orders were made Connect TV identified certain conduct which it considered contravened some of the orders and it brought contempt of court proceedings. Connect TV brought contempt proceedings against All Rounder, Ms Lurie, the sole director of All Rounder, and against Mr Vladimir Grinberg, Ms Lurie’s son. The charge for contempt against All Rounder alleged that it failed to take all lawful steps to prevent existing customers from receiving or being able to receive the infringing broadcasts. The charge was proven and All Rounder was fined $30,000. The conduct of Ms Lurie held to constitute contempt included: 1. Sending an email to a potential customer of the Russian television services advising them to contact her son to obtain access to the infringing broadcasts. For this contempt, which the court called serious, the court imposed a one month suspended prison sentence. (All Rounder was also ordered to pay a fine of $20,000 for its role in this contempt.)
2. Ms Lurie’s name continued to be advertised on a website as being a provider of the Russian television services covered by the court orders. The court held that Ms Lurie deliberately failed to take any action to have her name removed from the website. For this contempt, the court ordered both Ms Lurie and All Rounder to pay fines of $10,000. 3. Failing to take lawful steps available to All Rounder to prevent its customers having continued access to the offending broadcasts. Ms Lurie did not contact an existing customer and try to persuade the customer to stop using the Russian television services. For this, the court fined Ms Lurie $2,000. A new business avoided penalties Contempt proceedings were also brought against Ms Lurie’s son, Mr Grinberg, claiming that he took steps to respond to the potential customer of Russian television services who was referred to him by his mother. However, Mr Grinberg was found “not guilty” of breaching the court orders by responding to the customer. The court orders in the interlocutory application did not extend to Mr Grinberg’s activities in a personal capacity. Whilst Mr Grinberg had worked for All Rounder at the time the original court orders were
made, he subsequently started a new business and that business began providing the unauthorised Russian television services. Mr Grinberg argued that when he was in contact with potential customers of the unauthorised Russian television services after the court orders were made, he was acting as an agent of his new business, not as an agent of All Rounder, so the orders did not cover his activities. The court accepted Mr Grinberg’s arguments and found that it could not be proved beyond reasonable doubt that Mr Grinberg was acting in his capacity as an agent of All Rounder rather than as the owner of his own business. The charges against him for contempt were therefore dismissed. Although Mr Grinberg found a temporary loop-hole in the original court orders to successfully defend the contempt charges, that could prove to be short lived. It would seem possible for Connect TV to obtain interlocutory orders restraining Mr Grinberg personally (as he is currently named as a respondent in the copyright infringement case). It would also seem possible for Connect TV to sue Mr Grinberg’s new business for copyright infringement.
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Owners of intellectual property rights need to continue to observe the conduct of past infringers to ensure that the infringement ceases ‌
Three lessons regarding infringement of Intellectual Property, from the Connect TV case 1. An injunction restraining the infringement of intellectual property rights gives no guarantee that the infringers will cease their infringing conduct. Owners of intellectual property rights need to continue to observe the conduct of past infringers to ensure that the infringement ceases and that all court orders are complied with. 2. The decision that Mr Grinberg was not guilty of contravening the court orders highlights the importance of carefully considering the wording of orders sought from or proposed by the court to ensure they are wide enough to deal with the infringing conduct and the offenders involved.
3. This case also reminds lawyers that they need to be careful when advising a client on the meaning of orders made by the court against the client. Despite imposing fines on Ms Lurie for the various contempts, in fixing the fine of $2,000 the court accepted that Ms Lurie may have been misadvised about the extent of the orders requiring steps to be taken to have existing customers cease using All Rounder’s broadcast services, and that this was a highly relevant consideration when determining the penalty for this contempt.
Darron Saltzman, Partner Fiona Galbraith, Associate
IP Update
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.reid.: CC-BY 2.0 www.flickr.com/photos/sarahreido/3245498261/
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Case Study 3
Injunction granted in favour of Winnebago set aside on appeal due to 25 year delay Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59
On 7 June 2013, the Full Court of the Federal Court of Australia unanimously upheld an appeal by Knott Investments against orders restraining it from using the “Winnebago” name and associated logos, in connection with the manufacture, promotion or sale of recreational vehicles (RV’s) in Australia. The Full Court held that the injunction granted by a single judge of the Federal Court was “unreasonable” and “unjust” in the light of Winnebago’s 25 year delay in taking action against Knott Investments.
The Winnebago name in the US and Australia Since 1959, Winnebago (an American company) has manufactured and sold RV’s such as motor homes and trailers in the United States and elsewhere (but not in Australia). In 1978 Knott Investments (or a principal of Knott, Mr Binns and his wife), without Winnebago’s permission, began manufacturing and selling RV’s in Australia using the Winnebago name and logo in a form substantially identical to Winnebago’s mark. Winnebago became aware of Knott’s actions in 1985 however, did nothing until 1991, when it entered into settlement discussions with Knott. A Settlement Agreement was eventually executed between Winnebago and Knott in 1992. Both parties had differing views as to the effect of the Settlement Agreement. Knott said the Agreement permitted it to use the Winnebago name “without any problem”2. Mr Binns also (mistakenly) believed that the Settlement Agreement allowed Knott to apply to register a trade mark for “Winnebago”, which it did in 1997 (and which was subsequently registered). On the other hand, Winnebago asserted, and the Full Court agreed, that the effect of the Settlement Agreement was as a “standstill agreement”
On the White Line: CC-BY 2.0 www.flickr.com/photos/onthewhiteline/3945578913/
IP Update
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In 2010, 25 years after Winnebago first became aware of Knott’s conduct, Winnebago demanded Knott stop using its name and logo and commenced proceedings in the Federal Court …
reserving Winnebago’s rights, holding its position and putting Knott on notice of Winnebago’s claims3 (and did not give permission for Knott to register a trade mark). The Settlement Agreement did not contain a Release. In 2010, 25 years after Winnebago first became aware of Knott’s conduct, Winnebago demanded Knott stop using its name and logo and commenced proceedings in the Federal Court alleging misleading and deceptive conduct and passing off. At first instance, the Court found in favour of Winnebago and, among other things, restrained Knott from using the Winnebago name and marks in Australia and cancelled its Australian trade mark registration for “Winnebago”. Appeal to the Full Court of the Federal Court Knott appealed to the Full Federal Court. Most of the appeal judgment focussed on whether or not the trial judge had erred in making orders permanently restraining Knott from using the “Winnebago” name and marks. The Full Court agreed with the trial judge on most of the substantive issues,4 but allowed the appeal on the basis that the relief granted to Winnebago by the trial judge should be varied.
Winnebago’s entitlement to relief In Justice Jagot’s opinion, the error made by the trial judge (which required appellate intervention) was that an “unreasonable or plainly unjust” outcome had resulted from granting an injunction in Winnebago’s favour.5 In determining that restraining Knott from using the Winnebago marks was unfair, the Full Court considered the following: -- Winnebago had known that Knott was using the Winnebago name and logo since at least 1985 but had done nothing until 1991. Since 1992, when the Settlement Agreement was signed, it had effectively sat on its hands until 2010 when it demanded Knott stop using the Winnebago marks and logo. -- In taking no action for (effectively) 25 years, Winnebago had taken a risk that when it eventually decided to take action against Knott, Knott might be able to successfully argue that because of Winnebago’s lengthy inaction, it would be unfair to prevent Knott from using the Winnebago name and logo.6
-- Despite the fact that Winnebago had not made any representations (expressly or impliedly) that it would not enter the Australian market or take action against Knott, Knott was under the impression that this was the case. -- Knott had therefore taken a risk that Winnebago would sue Knott in the future (and Knott would be required to rebrand its products). Taking this risk was not motivated by any particularly malicious intent, but rather stemmed from an initial intention of Mr Binns to trade off the reputation of Winnebago.7 -- Justice Jagot considered that restraining Knott from using the Winnebago marks would enable Winnebago to trade off the reputation and goodwill that Knott had developed over 30 years.8 It would be unfair for Winnebago to take advantage of the work Knott had put into building up its business in Australia.9 In addition, Justice Cowdroy stated that if an injunction were granted to Winnebago, Knott and Mr Binns would suffer severe detriment.10
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In the light of the above, the Full Court considered that granting an injunction restraining the appellants from using the Winnebago marks was unreasonable due to the substantial delay by Winnebago in bringing an action against Knott.11 Accordingly, the Full Court ordered that many of the original Orders be set aside, including the injunction and the requirement that Knott deliver up any Winnebago branded stationery and marketing materials held by it.
However, the Full Court did hold that, in the interests of consumer protection, it was necessary for Knott to provide a disclaimer that Knott products were not manufactured by or under the licence of Winnebago, and were not associated with Winnebago.12 According to the Court, it was not sufficient merely to refer to the disclaimer in documents but that the disclaimer needed to be included in notices on vehicles, in the future.13
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Des Ryan, Consultant Jessica Sapountsis, Law Graduate
Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59 [132]. See also Allsop J’s comments at [68] and Cowdroy J at [106]. Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59 [134]. Ibid [2]. In relation to the substantive issues on appeal, the Full Court largely agreed with the trial judge’s conclusion that Knott did not have a defence to Winnebago’s claims of misleading and deceptive conduct and passing off (namely, that Knott could not prove estoppel or laches, acquiescence and delay). Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59 [132]. See also Allsop J’s comments at [68] and Cowdroy J at [106]. Ibid [137]. The Full Court did not agree with the trial judge’s conclusion that Mr Binns’ intention, when entering the Australian market and commencing use of the Winnebago marks, had been not only to trade off the reputation of Winnebago but
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also to prevent Winnebago from ever entering the Australia market or worse, to extort money from Winnebago (Ibid [133]). The 25 years of Knott’s use and the extra 5 years that Mr and Mrs Binns had used the mark prior to Knott. This was despite Winnebago’s argument that it might be disadvantaged by Knott’s reputation considering that some customers had complained to Knott as to their confusion over whether Knott’s products were Winnebago’s product. The court held that, with over $560 million in sales, Knott was bound to have some unhappy customers and that it had worked hard to build up its business in Australia (see Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59 [128]). Ibid [103]. Ibid [106] (per Cowdroy J). This was one of the original orders of the Federal Court. Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59 [66].
IP Update
Lessons for trade mark owners As seen in the Winnebago case, courts may refuse or restrict remedies granted to a rights holder due to delay. Trade mark owners should be vigilant in protecting their trade mark rights. If they do not, those rights can be lost or significantly restricted.
Chris Barber: CC-BY 2.0 www.flickr.com/photos/chrisbarber/7079396859/
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Case Study 4
MYOB SUCCEEDS IN TRADE MARK OPPOSITION TO TRAIN YOUR OWN BUSINESS & DEVICE Scott Ford v MYOB Technology Pty Ltd [2013] ATMO 37
Facts of the MYOB case On 18 January 2010, Scott Ford filed an application for registration of the trade mark shown in Figure 1 in respect of range of training services in class 41. The application was accepted for registration and opposed by MYOB Technology Pty Ltd. MYOB was represented by Davies Collison Cave, Patent and Trade Mark Attorneys. Relevantly, Mr Ford had filed an earlier application on 5 October 2009 covering an identical range of services in class 41 for the following mark, shown in Figure 2. This application was examined by the Trade Marks Office and encountered objections based on some thirty of MYOB’s earlier applications and registrations. The application lapsed as a result of Mr Ford not responding to the objections. This lapsed application has considerable similarity to the stylised version of MYOB’s logo mark, shown in Figure 3. In its opposition, MYOB led evidence of use since 1991 of the marks MYOB and ‘Mind Your Own Business’ to demonstrate its marks have a significant reputation in Australia. MYOB also filed evidence of the earlier application filed by Mr Ford.
kewl: CC-by 2.0 www.flickr.com/photos/kewl/5212626838/
IP Update
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Figure 1: Scott Ford's opposed mark
Mr Ford asserted in his evidence that the trade marks, the subject of his applications, had been designed by a third-party graphic designer engaged for the purpose of developing a logo for his new business. Although no supporting evidence was provided, it was asserted that the Graphic Designer provided two logo trade marks which were the subject of his trade mark applications. Mr Ford asserted that after his initial trade mark application was rejected, he filed an application to register the opposed mark. He asserted that it was not his intention to take advantage of the reputation of the MYOB trade marks. The matter was before the Delegate of the Registrar of Trade Marks, Iain Thompson. The Decision The Delegate considered the matter under Section 60 of the Trade Marks Act 1995 (Cth). On the issue of reputation, he concluded that “in view of the very high turn over under the trade marks MYOB and ‘Mind Your Own Business’, it is obvious that the reputation of the trade marks on which the opponent relies are substantial and those reputations are primarily amongst business professionals and those who run or manage small businesses”.
Figure 2: Scott Ford’s earlier mark
Figure 3: MYOB’s stylised mark
In turning to the issue of confusion, the Delegate found the earlier filing of the lapsed application of importance, noting that “… the conclusion that the opposed trade mark was coined by the applicant with reference to the opponent’s ‘Mind Your Own Business’ trade mark is unavoidable …”
The Delegate further noted that MYOB offers training services via its accredited trainers and found it likely that people would have cause to wonder whether training courses offered under the ‘Train Your Own Business’ mark are offered by the same person who offers accountancy and book-keeping software under the trade mark ‘Mind Your Own Business’.
The Delegate identified this as within the principle set out in Australian Woollen Mills Ltd v F S Walton & Co. Ltd1 as follows: “The rule that if a mark or get up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. … Moreover, he can blame no one but himself, even if this conclusion be mistaken that his trade mark or the get up of his goods will confuse and mislead the public”. The Delegate then held that the conclusion that use of the opposed mark would confuse is also “unavoidable”. He noted that when the reputation of the ‘Mind Your Own Business’ trade mark is taken into account, the obviousness of the derivation of the ‘Train Your Own Business’ mark is a “strong associative force” between the trade marks of the parties.
The Delegate rejected the application and awarded costs to MYOB.
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Australian Woollen Mills Ltd v F S Walton & Co. Ltd Case (1937) 58 CLR 641
Adam Sears, Partner Ian Drew, Senior Associate
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Case Study 5
FEDERAL COURT CONSIDERS “PHARMACEUTICAL SUBSTANCE”; UPHOLDS EXTENSION OF PATENT TERM GRANTED TO MUNDIPHARMA Spirit Pharmaceuticals Pty Ltd v Mundipharma Pty Ltd [2013] FCA 658
In a recent judgment handed down by the Federal Court, Justice Rares found that a pharmaceutical formulation containing the known active agent oxycodone, although defined by a result to be achieved, nevertheless satisfied the requirement of being a pharmaceutical substance per se, and that therefore, the extension of term for Mundipharma’s patent claiming these formulations had been validly granted under section 76 of the Patents Act 1990.
Brief background to the patent for Oxycontin The patent1 related to controlled release oral dosage formulations of oxycodone (marketed under the brand name “OxyContin”). Whilst the claims specified the amount of oxycodone contained within the formulations, they did not set out amounts and proportions of excipients required to achieve the controlled release. Rather, the claims defined the pharmacokinetic parameters to be achieved upon administration of the formulation. Although the normal 20 year term of the patent was due to expire in November 2012, the actual expiry date of the patent was not until July 2014 as a result of an extension of term granted in 2000. Spirit Pharmaceuticals seeks rectification of the register of patents The controlled release formulation afforded distinct advantages over the previously available immediate release formulation, and in an attempt to bring their own generic version of the controlled release formulation to market, Spirit Pharmaceuticals launched proceedings seeking rectification of the Register of Patents by removal of the extension of term on the basis that the extension had been invalidly granted. One of the grounds advanced by Spirit Pharmaceuticals in support of the rectification of the
Snodgrass: CC-by 2.0 www.flickr.com/photos/stevensnodgrass/6010535530/
IP Update
Register was that the controlled release formulation was not a pharmaceutical substance per se. Did the claimed formulations satisfy the definition of a ‘Pharmaceutical Substance’? Section 70(2)(a) of the Australian Patents Act sets out the requirement that one or more pharmaceutical substances per se must be disclosed in the complete specification and in substance fall within the scope of the claim. The court was asked to consider whether the claimed formulations satisfied the statutory definition of a “pharmaceutical substance per se”. The Patents Act, relevantly defines a pharmaceutical substance as: ...a substance (including a mixture or compound of substances) for therapeutic use whose application (or one of whose applications) involves: (a) a chemical interaction, or a physico-chemical interaction, with a human physiological system;... It was common ground that the claims defined a product which was a mixture that included oxycodone and that the therapeutic use in this instance was to alleviate pain. However, the parties differed in their view as to what constituted the pharmaceutical substance per se. Spirit Pharmaceuticals contended that the therapeutic effect was achieved solely by oxycodone, not the mixture of
substances which made up the controlled release formulation, and that the claims did no more than define circumstances in which a desired result was to be achieved by various combinations. His Honour considered the nature of the chemical interaction required by the definition of pharmaceutical substance, noting that the therapeutic result was achieved by two separate interactions: the interaction within the GI tract which causes the formulation to break down the excipients and release the oxycodone for absorption into the blood plasma in a controlled manner, and the nerve interaction, where the oxycodone in the blood plasma interacts with nerve cell receptors in the spinal cord and brain to alleviate pain. This provided a different result to that achieved by repeated doses of the immediate release formulation over the same period of administration. His Honour therefore reasoned that the mixture of substances of the controlled release formulation had a therapeutic use, being the controlled release and action of oxycodone over time, achieved by two separate interactions within the human physiological system and that the controlled release formulation therefore was a pharmaceutical substance per se.
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The outcome for Mundipharma The decision means that, for the moment, Mundipharma will retain their exclusive right to market Oxycontin in Australia until 23 July 2014. However, Spirit Pharmaceuticals (now known as Medis Pharma Pty Ltd) has now appealed the decision to the Full Federal Court.
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Australian Patent No 657027
Paula de Bruyn, Partner
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Case Study 6
Implicit or inherent disclosure: A recipe for anticipation Novozymes A/S v Danisco A/S [2013] FCAFC 6
Earlier this year, the Full Federal Court handed down its decision in Novozymes A/S v Danisco A/S, clarifying the approach to implicit or inherent disclosure under Australian law, and overturning the decision at first instance which potentially gave rise to a curious situation where performing a process described in the prior art could constitute infringement of a later patent.
Danisco A/S v Novozymes A/S: The first instance decision Danisco A/S (“Danisco”), the patentee, initially sued Novozymes A/S (“Novozymes”) alleging that the sale of their baking enzyme, LipopanXtra, infringed the Patent. LipopanXtra is marketed as a natural lipase enzyme which increases the stability of the bread dough, and achieves the same effect as the addition of emulsifiers. The Danisco Patent was directed to processes for preparing baked goods using an enzyme to generate an emulsifier and a second functional ingredient, such as a fatty acid ester, wherein the enzyme is subsequently inactivated during the baking process. Novozymes consequently asserted that the claims of the Patent were anticipated by inherent teachings in the prior art. One of the prior art documents cited by Novozymes, the Novo Patent, described the use of an enzyme which inherently possessed dual phospholipase/lipase activity for baking bread – although this dual activity was not explicitly disclosed by the Novo Patent. Novozymes argued that even if all the features of the Patent in suit were not explicitly disclosed, following the directions of the Novo Patent would inevitably result in generation of an emulsifier and a second functional ingredient by way of the dual enzyme activity,
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The Full Court held that the question of inherent anticipation is hypothetical …
thus constituting an anticipation of the claimed process. At first instance, Justice Bennett accepted the proposition established in The General Tire & Rubber Co v The Firestone Tyre and Rubber Co Ltd [1972] RPC 457 that a claim could be anticipated by a prior publication containing directions to use a process that inevitably resulted in something within the claim in question. Justice Bennett further acknowledged that although the Novo Patent did not explicitly disclose all the claimed features, following directions contained in the Novo Patent may nevertheless give rise to a situation where a person may infringe the Patent in suit. Despite this, Justice Bennett held that novelty will only be destroyed where following instructions in an earlier publication will inevitably produce the claimed result, and that result would furthermore be perceived by a skilled person. Her Honour also suggested that even if following the instructions inevitably resulted in the claimed process, then the actual disclosure (the working of the invention) could not have been completed before the priority date of the Patent, due to restrictions on access to the micro-organism which produced the enzyme in question and the limited period of time between publication and priority dates.
Our previous review of the first instance decision is available on our website1. The Novo Patent: An inevitable result and the need to work an invention On the question of anticipation, the Full Federal Court reconsidered the Novo Patent which described, among other examples, a phospholipase (inherently having dual phospholipase/lipase activity), and its application in baking. Novozymes had submitted at first instance that Example 20 of the Novo Patent (which described a method of baking using a phospholipase) would, if followed, inevitably anticipate the features of the claims. While the dual activity of the phospholipase could indeed provide an emulsifier and a second functional ingredient, there was no explicit disclosure in the Novo Patent that such dual activity would exist under the specific physicochemical conditions for making bread dough. Claims of the patent anticipated In determining whether the Novo Patent anticipated the claims, the Full Federal Court applied the test from General Tire: “…if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent
were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.” Interestingly, the appellant did not tender any experimental evidence that the process of Example 20 would inevitably have resulted in the claimed invention. However, the Court relied on Danisco’s own admissions to conclude that the amount of enzyme used in Example 20 was sufficient to result in the dual activity and that a skilled addressee, in following Example 20, would inevitably have worked the process in which two functional ingredients were generated from the starting constituents. Question of inherent anticipation is hypothetical Justice Bennett had also suggested in the first instance decision that even if the Novo Patent constituted an anticipation, it could not have actually been worked before the priority date of the Patent due to restricted access to the enzyme and the limited time frame between publication and filing of the Patent in suit. However, this approach was rejected by the Full Court. The Full Court held that the question of inherent anticipation is hypothetical and as such was not concerned with what has happened or with what could have happened, but with what would
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have happened. The Court thus concluded that there was sufficient basis to suggest that the inevitable result of following the instructions described in the Novo Patent would be carrying out the method of the Patent in suit. Accordingly, the Full Court considered that claims 1 and 7 lacked novelty in light of the Novo Patent. The Johnson Patent: An implicit disclosure The novelty of the Patent was also considered in view of another prior art publication, the Johnson Patent dated 13 February 1968, which described “[a] lipase preparation … which has the ability to increase the extractable monoglyceride content of a dough … [and] retard the tendency of the baked goods obtained from the dough to become stale.” The Johnson Patent was dismissed at first instance for failing to explicitly disclose the features of an emulsifier and a second functional ingredient. However, the Full Federal Court considered that the Johnson Patent did in fact describe the features of claims 1 and 7 of the Patent in suit. The Johnson Patent conceded that the exact mechanism resulting in the claimed improvement in the baked goods was not known. While the role of monoglycerides in improving the quality of the dough was broadly contemplated, the Johnson Patent failed to describe the specific function of the monoglycerides. At first instance, Justice Bennett acknowledged that monoglycerides of the Johnson Patent may in fact be emulsifiers, but nevertheless held that the Johnson Patent did not explicitly
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tell the skilled person that the monoglycerides were “acting as, or should be characterised as, emulsifiers”. Justice Bennett thus held that the Johnson Patent failed to anticipate the claims of the Patent. Full Federal Court considers implicit disclosure novelty destroying The Full Federal Court however considered that Her Honour had erred at first instance, and instead held that a skilled person, in 1998, would have understood that the monoglycerides, in terms disclosed in the Johnson Patent, were emulsifiers. Accordingly, the Full Federal Court found that “if a baker followed the directions given in the Johnson Patent to the letter, he or she would have worked a process as described in the Patent in suit, including by producing a foodstuff which contained an emulsifier”. Thus, for the claims of the Patent to be anticipated, it would be “sufficient if the skilled addressee were able to perceive that the monoglyceride in terms disclosed in the Johnson Patent was working as an emulsifier”. The Court thus overturned the decision at first instance, finding that this implicit disclosure, as perceived by the skilled addressee at the priority date, was sufficient to destroy the novelty of claims 1 and 7.
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http://www.davies.com.au/pub/detail/511/ federal-court-finds-inevitable-result-not-enoughto-inherently-anticipate
Paula de Bruyn, Partner Amanda Lee, Trainee Patent Attorney
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Lessons learned regarding the approach to implicit or inherent disclosures This decision has clarified the approach to implicit or inherent disclosure under Australian law, and in particular, has resolved the first instance finding of Justice Bennett, which potentially allowed a scenario where working the prior art could infringe a later patent. In light of the Full Federal Court decision however, the claims of a Patent in suit may be anticipated where directions in a prior disclosure, when carried out, would inevitably infringe the invention as claimed.
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September 2013
Practice Update 1
IP AUSTRALIA PROVIDES GUIDANCE ON EXTENSIONS OF TIME FOR PATENT OPPOSITIONS
We knew obtaining extensions of time in patent oppositions would not be easy under the new regime introduced by the Raising the Bar Act 2012, and a new factsheet from IP Australia provides some guidance on just how difficult it will be. IP Australia (IPA) has published a factsheet entitled “Extension of Time for Filing Evidence” which provides some welcome guidance on how IPA proposes to assess requests for extensions of time in patent oppositions under the new regime introduced by the Raising the Bar Act 2012. The factsheet also provides an interesting insight into IPA’s perspective on the logistics of preparing evidence in opposition proceedings and shows a few areas where IPA perhaps underestimates the challenges that opponents and applicants can face.
The new test for determining whether an extension of time is justified Regulation 5.9 sets out that the Commissioner may extend an evidentiary period in a substantive opposition only if the Commissioner is satisfied that: -- the party who intended to file evidence within a relevant evidentiary period has made all reasonable efforts to comply with all relevant filing requirements; and despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or -- there are exceptional circumstances that warrant the extension. IPA will apply the same test as set out in regulation 5.9 when considering whether to grant a request for a direction to extend an evidentiary period in a procedural opposition. Always be diligent – IPA is taking a tough stance It seems clear from IPA’s comments that, in order to put yourself in the best position to obtain an extension, you have to do your utmost to avoid needing one by acting quickly and diligently, being proactive and having contingencies in place. Extensions will be much more difficult to obtain now and
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… IPA will now take a hard line approach to extensions of time for filing evidence.
any request for an extension will need to explain the reasons for the extension in detail in order to convince IPA that you deserve one. The factsheet makes clear that it is not enough for the party seeking the extension to have acted promptly and diligently at all times. The party’s agent or legal representative and any expert engaged by them are also expected to act promptly and diligently. This highlights the importance of picking a good team to support you in an opposition matter. Few circumstances will be considered exceptional By extending the diligent conduct obligations to the team supporting the opponent or the applicant, IPA has reduced the circumstances that it considers to be beyond the control of the party seeking the extension. In general, it may be difficult for parties to show that there are exceptional circumstances that warrant an extension. For example, the sudden loss of a preferred expert might not necessarily be considered exceptional circumstances unless you can explain why you were unable to find an alternative expert. Be prepared to justify your decisions Parties seeking an extension will also need to be prepared to defend the choices they have made in
preparation of their evidence. This is one area in particular where it seems IPA underestimates the challenges that opponents and applicants can face. For example, IPA believes that the unavailability of experts due to involvement in other matters can suggest that a party had not made all reasonable efforts or acted promptly and diligently to comply with an evidentiary period, unless the party has “exhausted all efforts to find alternative experts”. IPA seems to have forgotten that experts often have full-time jobs, aside from their role as an expert, and that these jobs will make demands on their time. IPA’s approach also seems to gloss over the time and effort required to identify potential experts, to confirm whether the proposed experts have the correct technical experience, to assess which of the proposed experts are independent of the parties to the opposition, and to collect the evidence of the expert(s) ultimately found to be suitable. IPA cautions against the adoption of an inherently lengthy process of evidence preparation, and in this regard IPA specifically refers to the two stage manner described by the Federal Court in Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315. In our view it would be unwise to ignore the best practice approach recommended by the courts simply
for the sake of complying with IPA’s new guidelines. However, this clearly creates a tension between following the best practice approach for generating compelling and persuasive evidence and IPA directed expediency. Accordingly, parties must now be prepared to act quickly and diligently and justify the approach they intend to take in preparing evidence, as well as their rationale for selecting their preferred expert. What if the extension is refused? An added problem is, if an extension request is refused, IPA will not allow the requesting party a short extension to file evidence that is immediately available. The requesting party will also not be allowed to validate evidence that was filed out of time but while the extension request was pending. There is no doubt that IPA will now take a hard line approach to extensions of time for filing evidence. There is also little doubt that we will shortly see parties who have had their extension refused seeking review by the Federal Court under the Administrative Decisions (Judicial Review) Act. It will be interesting to see the outcome of those reviews. We suspect that the courts may take a different line to that proposed by IPA and that over time the hard line approach adopted by IPA may be softened to some extent.
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Five practical suggestions for dealing with the new provisions 1. Start identifying potential experts early – do not wait until the start of the evidentiary period to commence your search. 2. Once you have identified your preferred expert, consider whether you should continue working with the next best alternative expert so that you have a back-up expert.
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Mark Roberts, Partner Edith Hamilton, Patent Attorney
3. Treat the preparation of evidence as a project management exercise. Determine the key milestones, establish nominal deadlines for completing those milestones and work out your critical path. This will allow you to spot early whether you are likely to need more time to complete your evidence. It will also help illustrate to IPA that you have taken steps to ensure your evidence is filed within the period.
4. Consider requesting extensions early. It may be best to ensure that your request can be fully determined within the existing evidentiary period, as this will allow you to retain the opportunity to file evidence that is immediately available if the request is refused. Remember, IPA will not allow the requesting party a short extension to file evidence that is immediately available, so you will need to keep some time up your sleeve. Partial evidence can be better than no evidence at all. 5. When you apply for an extension, make sure your request is very detailed. Unexplained delays are likely to be fatal.
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Practice Update 2
NEW NZ PATENTS ACT: HOW WILL IT AFFECT SOFTWARE PATENTS IN NZ?
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The New Zealand Patents Bill, which recently passed its third reading and is expected shortly to receive Royal Assent, includes changes to New Zealand patent law which will explicitly exclude computer programs ‘as such’ from patentability. Whilst many IT industry players have reportedly welcomed the provisions of the new Patents Act 2013 as an effective ban on software patents, it appears that the extent of the exclusion is likely to be limited, and in practice is merely aligning the law with that of the UK.
NEW ACT TO EXCLUDE COMPUTER PROGRAMS ‘AS SUCH’
A brief history of the software patent debate in NZ
Indeed, the corresponding Explanatory note clarifies that the approach of the new clause is intended to be consistent with UK precedent. In particular, some commentators have drawn parallels between the proposed clause, and the tests outlined in Aerotel Ltd. v Telco Holdings Ltd [2006] EWCA Civ 1371.
The Patents Act 2013 will replace the Patents Act 1953, and intends to strike a balance between protecting the interests of inventors’ and the general public. Prior to the Patents Bill passing its third reading, patenting of software had been hotly debated with some members of the IT industry, including free and open source (FOSS) advocates, backing an outright ban. Indeed, an earlier version of the Patents Bill included a sweeping exclusion that ‘[a] computer program is not a patentable invention’.
The new Act seeks to ensure NZ complies with its obligations under international agreements, such as TRIPS. The new provisions appear to have tempered the previous proposed exclusion, requiring that a ‘computer program is not an invention ... only to the extent that a claim in a patent or an application relates to a computer program as such’. A number of additional sub-clauses are also provided which attempt to clarify the nature of a ‘computer program as such’. Several examples are offered in this regard, including one which indicates that a process relating to embedded software controlling a washing machine may be patentable.
be inappropriate,2 do not fall within the ‘computer programs “as such”’ exclusion and are thus patentable. ARE SOFTWARE PATENTS NOW BANNED IN NZ? Therefore, whilst on the face of it the new Patents Act 2013 appears to embrace an outright ban on software patenting, the recitation of the phrase ‘as such’ means that in practice the exclusion will not be so far reaching, and at least some software processes will still be protectable. In any event, ultimately this will be for the courts to decide.
FOLLOWING THE UK LEAD ON SOFTWARE PATENTING
It should also be noted that recent case law in the UK has held that subject matter such as a software method for designing a drill bit,1 and a system for monitoring electronic communications and alerting users when content may
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Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat). Re Protecting Kids the World Over (PKTWO) Ltd [2011] EWHC 2720 (Pat).
Alistair Smith, Partner Katherine Rock, Trainee Patent Attorney
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September 2013
Practice Update 3
US Supreme Court rules Myriad’s BRCA genes not patentable: US vs Australian perspectives
The BRCA patents, which claim both breast cancer diagnostic methods and the BRCA DNA molecules, have courted significant controversy both in Australia and the US in recent years. In Australia, two Senate enquiries considered the impact of granting gene patents and Federal Court litigation was subsequently initiated by Cancer Voices Australia to challenge the patentability of the claims to the BRCA DNA molecules. The outcomes from both the Senate enquiries and the Federal Court have unequivocally supported maintaining the patentability of isolated nucleic acid molecules, although the Federal Court decision is currently under appeal. In the US, the patentability of genes has been judicially challenged in the case of Association for Molecular Pathology v Myriad Genetics. The US Federal Appeal Court twice upheld the patentability of isolated nucleic acid molecules. However, on appeal to the Supreme Court, a unanimous decision was handed down on 13 June 2013 ruling that naturally occurring DNA molecules are not patentable. Specifically, the Court ruled that naturally occurring DNA molecules are a product of nature and not eligible for patenting merely by virtue of the fact of having been isolated. This decision is in direct contrast to the reasoning of the Australian Federal Court Myriad decision where the Court held that an isolated nucleic acid molecule
is patentable, even where the sequence of this molecule is the same as the sequence of the native molecule. The Court’s view was that the removal of nucleic acid material from its natural environment gives rise to the “artificial state of affairs” which is required under Australian law. The US Supreme Court did, however, clarify that nucleic acid molecules in which the order of the naturally occurring nucleotides has been altered, such as cDNA, do remain patentable. Such molecules are not a “product of nature” since they represent a molecular sequence which is not found in nature. Impact of the Myriad decision on biotechnology patents in the US This decision reverses decades of accepted practice in relation to the patentability of genes. It also sets US patent law at odds with that of all other developed countries, where isolated nucleic acid molecules remain patentable. From a practical point of view, this decision is likely to have a relatively small impact on isolated DNA molecules, since the advent of the full genome sequencing of many organisms has effectively destroyed the novelty of claims directed to the genes which form part of these genomes. Accordingly, although prior to the recent Myriad decision these molecules were patentable subject matter in the US, and remain so in most other jurisdictions, the fact is
ryansharp: CC-BY 2.0 www.flickr.com/photos/ryansharp/4801138112/
that patents are now rarely granted for naturally occurring nucleic acid molecules since publication of the relevant genome sequence usually destroys novelty. It is in respect of other “products of nature”, however, that this decision may lead to more serious consequences. Bioentities such as proteins, natural compounds and cells extracted from any animal, plant or other natural environment are often simply isolated from their natural environment. The question which therefore now
IP Update
This decision reverses decades of accepted practice in relation to the patentability of genes.
arises is whether these types of non-DNA biological entities will still be regarded as patentable in the US simply because they are isolated or whether an applicant will have to demonstrate a difference between the claimed molecule and the native molecule. To this end, the USPTO has recently generated interim guidelines, for its patent examiners, which attempt to quarantine the Myriad decision to isolated nucleic acid molecules. These guidelines state: “Examiners should now reject product claims drawn solely to naturally occurring nucleic acids or fragments thereof, whether isolated or not, as being ineligible subject matter ‌ Claims clearly limited to non-naturally occurring nucleic acids, such as a cDNA or a nucleic acid in which the order of the naturally-occurring nucleotides has been altered ... remain eligibleâ€?. However, issuance of these guidelines is not a bar to any party electing to test the scope of the Myriad precedent by judicially challenging the validity of a patent directed to any natural product. Accordingly, the irony in relation to this decision is that its impact may, in fact, be most acute in relation to the patentability of biological entities other than DNA.
Adan Garcia: CC-BY 2.0 www.flickr.com/photos/adangarcia/2422054585/
Tania Obranovich, Partner
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DCC News
DAVIES COLLISON CAVE 2013 STAFF APPOINTMENTS The partners of Davies Collison Cave are pleased to announce the following appointments effective 1 July 2013. SENIOR ASSOCIATES
ASSOCIATES
Dawn Logan Keeffe LLB (Hons), MSc (Marketing), GCTMLP, RTMA, Trade Mark Attorney
Fiona Galbraith LLB(Hons)/BEng(Hons), LLM(IP), Lawyer and Patent Attorney
Simon Reynolds B.Eng. (Computer) (Hons.), M.I.P., Patent Attorney
Rachel Stevenson B.Sc. (Biology), M.Sc. (Biotechnology), Ph.D., Patent Attorney
Tony Lolis B.Sc., LL.B., Lawyer and Patent and Trade Mark Attorney
Michael Cooper B.Eng. (Mech)(Hons.), Patent Attorney
IP Update
DCC News
DCC OUT AND ABOUT
2013–2014 PCT WHEEL
Engineering
The 2013–2014 DCC PCT Wheel is now available online and in hard copy. The Wheel provides a simple way to check due dates for priority documents, filing demand and entering national/regional phase at 20 or 30 months from a chosen priority date. The Wheel is available in English and Chinese.
Around 100 of Sydney’s budding young engineers turned out at Davies Collison Cave in Sydney on 11 July for the annual Young Engineers Australia Sydney Entrepreneurs Workshop.
If you would like a hard copy sent to you please subscribe online at davies.com.au
These ambitious minds were presented with an IP 101 from our Senior Associate, Simon Reynolds, before hearing the insights and experiences of two highly successful entrepreneurs, Dr Simon Poole of Finisar Australia and Richard Sokolov of ide Group. Following this on 7 August, Davies Collison Cave in Melbourne, together with Engineers Australia, hosted the “Invention to Investment’ seminar as part of Australian Engineering week (AEW). The Event was one of the highlights of AEW in Victoria, attracting over 130 engineers from all around Victoria. Hayden Barke, Senior Associate at DCC, discussed the IP protection considerations and strategies, and some of the benefits and pitfalls related to the various IP protection options. Bob Beaumont, a Consultant at Commercialisation Australia, provided an insight into how to submit a strong application for Government grants and Ken Johnsen, CEO of Perth based Advanced Braking Technology Ltd (ABT), shared his insight into how
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ABT’s IP protection strategy has been successfully implemented and their key to obtaining a grant for technology development. Nanotechnology Dr Ramon Tozer, a partner with DCC, attended the International NanoMedicine Conference in Sydney in early July. DCC has been a proud supporter of this conference for a number of years. This year the conference covered the areas of Target Delivery, Sensing, Diagnostics, Regenerative Medicine, Imaging, Translational Medicine and NanoSafety. We are looking forward to the 2014 conference. Life Science and ICT Bill Pickering and Sam Mickan from DCC have been busy educating the Bio science and ICT market in Melbourne and Adelaide on the patentability requirements following the Myriad, Prometheus & Alice Corp cases. The seminars provided an outline of the revised definitions and discussed their impact on patent strategies in the bio science and software/ business method fields. The Sydney seminar will take place on 18th September in our Sydney office. For more details email events@davies.com.au
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