Update December 2013 – Issue 22 davies.com.au
GSK v Reckitt Benckiser: Children’s Panadol injunction overturned Federal Court confirms software inventions are patentable New Zealand’s new Patents Act
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Type #
Contents
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Insight
Case Studies
Practice Updates
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Google AdWords – navigating the way
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Are Australia and New Zealand one market, when enforcing intellectual property rights?
24 Time is running out to register transitional security interests under the Personal Property Securities Register
Muzz Buzz Franchising Pty Limited v JB Holdings (2010) Limited [2013] NZHC 1599
10 Federal Court overturns injunction restraining GSK’s supply of Panadol product GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Limited [2013] FCAFC 102
14 CUB defends heritage beer trade marks against non-use challenge by local brewery Cuauhtemoc Salgado S.: CC-BY 2.0 flickr.com/ photos/81893676@N05/9449451616/
CUB Pty Ltd v Elixir Signature Pty Ltd [2013] ATMO 74 Intellectual Property Development Corporation Pty Ltd v CUB Pty Ltd [2013] ATMO 73
16 Software patent in Australia upheld on appeal: Court rejects Patent Office approach RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871, 30 August 2013
20 Pacific Brands’ infringement of Adidas’ famous three-stripe design trade marks Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 (12 September 2013
26 Quick Guide to New Zealand Patents Act 2013: What you need to know 28 New Zealand accedes to Nice Agreement 28 New rules following ratification of Patent Law Treaty in United States
30 DCC News 31 DCC Out & About
IP Update
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Insight
Innovation policy under the new Australian government At the first sitting of the 44th Australian parliament last month, no member of the executive government had the word “innovation” in his or her title. Whereas previously there had been a Minister for Innovation, Industry, Science and Research, the current government will make do with a Minister for Industry. According to the Prime Minister, short titles were adopted so as to avoid “an extra large business card”. But, does the change reflect a lack of government commitment to innovation in Australia? The ministerial personnel – Ian Macfarlane as minister, and Bob Baldwin as parliamentary secretary – are familiar with the territory, having held the same positions in the Howard government in 2007. Although appointed some months ago, the Minister has made no public statement about innovation. This gives reason to fear that his interest in innovation disappeared along with the word in his title. Nevertheless, some IP law reform remains on foot from the previous government’s initiative. The future of Australia’s second-tier patent right, the innovation patent, is under review by the Advisory Council on Intellectual Property (ACIP). The review was commissioned because of concern that an innovation patent, which provides the same rights as a standard patent, is available for advances more minor than intended, thus providing the potential for strategic abuse. An option under consideration is abolition of
the innovation patent – but that could hardly assist in encouraging lower-level innovation. Surely the better approach is to retain the innovation patent but reduce the strength of the rights granted or raise the level of innovative contribution required, or both, so that an incentive for incremental innovation is maintained. Another current initiative is the Australian Law Reform Commission’s (ALRC) review of copyright and the digital economy. A key proposal of the ALRC is for a general ‘fair use’ defence, to replace the various purposespecific ‘fair dealing’ provisions. As the recent US decision in the Google book digitisation case shows, a fair use defence permits a “transformative” use of copyright material that complements, rather than directly competes with, the original product – the sort of innovation the IP system is meant to encourage. Thanks to Wikileaks, we now know what is proposed for the IP chapter of the Trans-Pacific Partnership (TTP) agreement being negotiated by Australia, Canada, Japan, NZ, the US and seven other Pacific Basin countries. Upon release of the text, news reports expressed concern that the provisions will lead to higher drug prices and more expensive computer software. The fact is, however, the TPP provisions largely maintain the status quo for developed countries. What is missing in the commentary is an understanding that the exclusive rights provided by patents and copyright are the trade-offs needed to ensure new drugs and software are produced and made available to the Australian public – i.e. that IP rights provide the incentive for innovation. The first opportunity for the new government to show its colours on IP rights and innovation will be in its responses to the ACIP and ALRC reviews. Here’s hoping it understands, and uses, these ‘i’ words.
Leon Allen, Managing Partner
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Case Study 1
GOOGLE ADWORDS – NAVIGATING THE WAY
Ever done a web search for your business and found a competitor ad further up the list than your site? Optimising your visibility on the results pages of search engines such as Google, has become a core component of online marketing strategy. But how can brand owners protect themselves when competitors are using their trade marks, business names and domain names as AdWords or keywords to increase their ranking on search engines such as Google? Equally, what checks and balances can advertisers using the Google AdWords program put in place to avoid allegations of misleading and deceptive conduct and trade mark infringement?
MY TRADE MARK IS BEING USED BY A COMPETITOR IN A GOOGLE ADWORDS PROGRAM Before 23 April 2013, if your trade mark was being used as a Google Adword in Australia, the first avenue was to file a Google Adword Complaint. However since 23 April 2013, Google’s Trademark Adwords policy has been updated so that Google no longer restricts advertisers purchasing and using trade marks as keywords in Google Ads (previously known as sponsored links), provided those trade marks do not appear in the text of the resulting Google Ad. Despite this policy change, trade mark owners still have the following options if the ad includes unauthorised use of the trade mark in the text of the ad: -- complain to Google about unauthorised use of their trade mark in ad text. Google will restrict this use; -- seek recourse against the advertiser for breach of the Australian Consumer Law, for example, if the advertiser’s use of the trade mark is likely to mislead or deceive the public into believing that when they click on the Ad they will be taken to the trade mark owner’s website, or that the advertiser is somehow associated with the trade mark owner or its goods and/or services; and
Calsidyrose: CC-BY 2.0 flickr.com/photos/17557997@N02/4925267732/
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IP Update
Google Ads
-- seek recourse against the advertiser for trade mark infringement under the Trade Marks Act 1995 (Cth). As there are significant consequences for making unsubstantiated allegations in relation to trade mark infringement and breaches of the Australian Consumer Law, you should consult your legal adviser before making allegations against an advertiser. Australian Courts are yet to consider whether the mere bidding and purchasing of a competitor’s trade mark, in circumstances where the trade mark is not visible in the resulting Google Ad, constitutes misleading or deceptive conduct or trade mark infringement. WHAT DO CONSUMERS UNDERSTAND? Based on recent High Court of Australia authority, it appears that the public understands the difference between Google Ads (formerly sponsored links) and organic search results. As such, consumers appreciate that the Google Ads that appear at the top or to the right hand side of organic search results are just that, paid advertisements and that the organic search results are those of the trade mark owner.
Organic search results
WHAT IF I HAVE A GOOGLE ADWORDS PROGRAM? Based on the current law in Australia, advertisers using the Google Adwords program should not use a competitor’s trade mark, trading, product or domain name anywhere in the text of a Google Ad including, as the headline, in the text of the ad or in the link to your website (URL) when the ad text links to a website which does not contain any information about the competitor or its products/services. Doing so may constitute trade mark infringement, and it is likely to be in breach of the Australian Consumer Law on the basis that the conduct is misleading or deceptive and/or constitutes a false or misleading representation that the advertiser (and/or its goods and services) has an association or affiliation with the competitor, when that is not the case.
It is not clear whether the mere bidding and purchase of competitor’s trade marks as invisible Google Adwords (that is, where those Adwords do not appear in the Ad text) may breach Australian consumer protection or trade mark laws. Whilst Google is taking a more relaxed approach to its Adwords policy, trade mark owners can still take advantage of other avenues for recourse against advertisers. Advertisers also have more guidance now on what they can and cannot do in their Google Adwords programs.
Elizabeth Godfrey, Senior Associate
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Case Study 2
ARE AUSTRALIA AND NEW ZEALAND ONE MARKET, WHEN ENFORCING INTELLECTUAL PROPERTY RIGHTS?
Muzz Buzz Franchising Pty Limited v JB Holdings (2010) Limited [2013] NZHC 1599
The Australian and New Zealand markets are often viewed by foreign business owners as a single market, which is reflected in the numerous franchises and businesses that operate across both countries. As Australian-based businesses expand their business operations throughout Australia they will often look to New Zealand as a natural extension.
As such, Australian businesses will often wish to stop anyone in New Zealand from copying their trade marks and related intellectual property, as this may stop them from expanding into New Zealand. Some of the many ways in which an Australian business can achieve this were discussed in a recent decision of the High Court of New Zealand in which an Australian company (Muzz Buzz Franchising Pty Limited) was able to stop a New Zealand based competitor, JB Holdings (2010) Limited, from trading under a similar mark. Muzz Buzz’s Trade Mark Rights Muzz Buzz operated drive-through coffee outlets throughout Australia, starting in 2002. All of its outlets operated under the MUZZ BUZZ mark and adopted the same distinctive shape of its drive through coffee kiosk as depicted below.
Muzz Buzz anticipated expanding into New Zealand and in 2007 registered trade marks for the words “MUZZ BUZZ”, “MUZZ BUZZ DRIVE THROUGH COFFEE”, the stylised Umer Shabib: CC-BY 2.0 flickr.com/photos/8896706@N05/6149598235/
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New Zealand and Australia may, for the purposes of enforcing intellectual property rights, be regarded as one market.
MUZZ BUZZ logo and the word “BUZZ” in relation to various goods and services elements of drive through coffee businesses. However, Muzz Buzz did not open an outlet in New Zealand until 2012. JB Holdings’ conduct JB Holdings traded under the trade mark JITTA BUZZ and first opened a drive-through coffee outlet in Auckland in 2010 with a second outlet opened in 2012. A picture of its drive through coffee outlet is below.
MUZZ BUZZ’S ALLEGATION Muzz Buzz took action against JB Holdings’ use of the JITTA BUZZ trade marks and related “get up”, alleging that JB Holdings: -- breached its copyright in its website and kiosks; -- infringed its registration of the BUZZ group of grade marks; -- constituted “passing off”; and -- breached the Fair Trading Act 1986 (NZ), as “misleading and deceptive conduct”. JB HOLDINGS FOUND TO BREACH COPYRIGHT AND INFRINGE TRADE MARK REGISTRATIONS
JB Holdings also operated a webpage with the above JITTA BUZZ marks and with various texts and phrases that Muzz Buzz argued were similar to those used by Muzz Buzz on its website.
Justice Toogood found that JB Holdings had infringed Muzz Buzz’s copyright subsisting in its website. He did not find that Muzz Buzz’s kiosks were capable of attracting copyright and as such JB Holdings had not infringed Muzz Buzz’s copyright in the kiosks. Justice Toogood also found that JB Holdings had infringed Muzz Buzz’s trade marks, as the JITTA BUZZ trade marks were held to be confusingly similar to Muzz Buzz’s trade mark registrations, particularly given the distinctive character of the word BUZZ.
AUSTRALIA AND NEW ZEALAND REGARDED AS ONE MARKET WHEN ENFORCING INTELLECTUAL PROPERTY RIGHTS In order for Justice Toogood to reach a finding that JB Holdings had engaged in misleading and deceptive conduct under New Zealand’s Fair Trading Act and under the tort of passing off, Justice Toogood needed to consider whether Muzz Buzz had developed protectable goodwill or business reputation in the New Zealand market. To demonstrate this, Muzz Buzz submitted evidence of its reputation in Australia, actual instances of confusion that had occurred in New Zealand as well as evidence demonstrating the likelihood that the New Zealand public would have been exposed to its MUZZ BUZZ trade marks. This included its sponsorship of a Perth basketball team which competed in an Australian national tournament which was televised in New Zealand, as a New Zealand team also competed in the same tournament. The Judge concluded that it was probable that New Zealand television viewers of the Australian National Basketball League games would have seen the Muzz Buzz logo associated with the Perth team.
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… it was not enough for JB holdings to argue that they were the first to operate and use their trade marks in New Zealand, given Muzz Buzz’s well established reputation in Western Australia and elsewhere …
Justice Toogood applied Dominion Rent A Car v Budget Rent A Car System1, in which the Court of Appeal of New Zealand found that an Australian company’s reputation and goodwill can extend to New Zealand if there is a sufficient business connection with New Zealand. Justice Toogood went on to say that the globalisation of the marketplace, particularly in relation to New Zealand and Australia, preceded the creation of the Internet and that it can hardly be doubted that New Zealand and Australia may, for the purposes of enforcing intellectual property rights, be regarded as one market.
FIRST USE OF A TRADE MARK IN NEW ZEALAND IS NOT ENOUGH TO DEFEAT A CLAIM TO INFRINGEMENT OF REPUTATION-BASED RIGHTS IN A TRADE MARK Justice Toogood held that it was not enough for JB holdings to argue that they were the first to operate and use their trade marks in New Zealand, given Muzz Buzz’s wellestablished reputation in Western Australia and elsewhere, including in New Zealand, through internet access. He referred to Lord Cooke in the Dominion Rent A Car case to support a view that “ in cases of natural expansion of established businesses into new territories it may not be right to regard exclusive rights as acquired by the first entrant in point of time; an international reputation already earned by the second entrant and extending to the new market militates against an automatic first-past-the-post approach to the establishment of goodwill.” As a result, the judge awarded injunctive relief to Muzz Buzz on the basis that he considered JB Holdings’ conduct to be misleading and amount to the tort of passing off.
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(1970) Ltd [1987] 9 IPR 307
Nick Holmes, Partner Lena Balakrishnan, Lawyer
IP Update
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Five tips FOR BUSINESSES EXPANDING INTO NEW ZEALAND This case provides some helpful tips for companies that are well established overseas and looking to enter the New Zealand market. In particular, any such businesses looking to expand into New Zealand should: 1. Obtain registration of your trade mark(s) in New Zealand as soon as possible.
A trade mark infringement may be found if another party uses a mark that is confusingly similar to a registered mark and covers the same or similar goods or services. In the absence of a registration, a company would only be able to stop another company from using a similar mark if it can demonstrate a reputation in New Zealand. In addition, it is a defence in New Zealand if that other party used the infringing mark before the date you filed your application for registration or before you used your trade mark (whichever is earlier). It is therefore important to make a footprint in New Zealand as soon as possible to avoid other parties utilising this defence. Before applying to register a trade mark, it is worthwhile conducting a search of the New Zealand trade marks register and marketplace to determine if there are any similar trade marks in use.
2. Ensure your company’s online presence (such as online forums, shops and social media sites) is not restricted to specific countries.
This may include, for example, obtaining a “.co.nz� domain name and allowing ordering and shipping of your goods to New Zealand. 3. Participate in promotional activities that increase the likelihood that New Zealanders would gain an awareness of your trade mark.
These may include, for example, sponsoring or advertising in global and/or Trans-Tasman sporting competitions, large Trans-Tasman entertainment events and festivals, global art exhibitions as well as publications available in New Zealand and television programmes that are televised in New Zealand. 4. Ensure you maintain accurate records of any intended expansion into New Zealand, including the dates of dealings and business plans, as well as records of any promotional activities in New Zealand.
Although JB Holdings used its trade mark in New Zealand first, Muzz Buzz successfully argued that its rights in New Zealand pre-dated JB Holdings. This was supported by evidence demonstrating an awareness in the MUZZ BUZZ trade marks in New Zealand since 2007.
Stirling Noyes: CC-BY 2.0 flickr.com/photos/the_rev/2295096211/
5. Lodge comprehensive and specific evidence when claiming reputation in a mark
A spill over reputation will not be inferred by the New Zealand Trade Marks Office or courts simply because there is extensive use overseas. Nor will judges readily apply their personal knowledge of a trade mark to find against a party in the absence of extensive evidence to support their view. Any evidence filed will need to go that additional step further to demonstrating how a reputation acquired overseas would also result in a reputation in New Zealand. If you wish to secure registration of your intellectual property rights in New Zealand, or need to enforce your rights against a third party, please contact us.
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Case Study 3
FEDERAL COURT OVERTURNS INJUNCTION RESTRAINING GSK’S SUPPLY OF PANADOL PRODUCT
GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Limited [2013] FCAFC 102
In September this year, the Full Federal Court of Australia lifted an injunction restraining the supply of GlaxoSmithKline Australia’s (GSK’s) Children’s Panadol 1-5 years which incorporated a liquid dispensing apparatus. Reckitt Benckiser Healthcare (UK) Limited (Reckitt) brought proceedings against GSK in May 2013 claiming that the liquid dispensing apparatus which accompanied its Children’s Panadol 1-5 years product infringed its patent, and sought injunctive relief to restrain the supply of that product coming into the winter cold and flu season.
The key factors that lead to GSK’s injunction being lifted The Full Court, comprising Justices Bennett, Jagot and Griffiths, lifted the injunction initially granted by Justice Rares in July 2013, after finding that: -- GSK’s case for non-infringement was stronger than Reckitt’s case; and -- the “balance of convenience” did not favour the granting of an injunction taking into account public health safety factors and the public interest in having GSK’s Children’s Panadol 1-5 years available with the safer dispensing apparatus. Reckitt’s first injunction against GSK’s Children’s Panadol product In May 2013, Reckitt commenced proceedings against GSK in the Federal Court of Australia claiming that GSK’s Children’s Panadol 1-5 years product which incorporated a liquid dispensing apparatus infringed its patent. Reckitt sought interlocutory injunctive relief to restrain GSK from supplying its Children’s Panadol 1-5 years product. The liquid dispensing apparatus in question comprised a bottle, bottle neck liner and flat-nosed syringe (the Original Syringe). The flat-nosed syringe inserted into and formed a seal with the neck of the
Sue Clark: CC-BY 2.0 flickr.com/photos/14277117@N03/3795995914/
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… the substance or idea of the invention should only be considered if all of the “essential integers” of the claim have been taken.
bottle to draw up liquid whilst the bottle was inverted. The purpose of this procedure was to accurately measure the correct dosage of paracetamol. On 28 May 2013, the trial judge (Justice Rares) granted an injunction against GSK restraining its supply of Children’s Panadol 1-5 years with the Original Syringe. In granting the injunction, Justice Rares considered that Reckitt had a relatively strong prima facie case of infringement and found that the “balance of convenience” favoured the granting of an injunction against GSK. A decisive factor for Justice Rares in that finding was that he considered it would be relatively easy for GSK to continue to market its Children’s Panadol 1-5 years product with only minor modifications to the product (to remove the bottle neck liner) and its packaging to avoid infringement of the Reckitt patent. Reckitt’s second injunction against GSK’s alternative Children’s Panadol product Soon after the first injunction was granted, GSK informed Reckitt that it intended to release a new form of the liquid dispensing apparatus (the Alternative Syringe). The Alternative Syringe had the same characteristics as the Original Syringe but GSK narrowed the distal tip of the flat-nosed syringe in comparison to the rest of the
syringe. GSK conceded that the Alternative Syringe was essentially a “design-around” of claim 1 in the Reckitt patent. At the hearing for the second injunction in July 2013, Justice Rares considered that the only issue that had to be decided was whether Reckitt had a sufficient prima facie case of infringement in relation to the Alternative Syringe, and therefore he could rely on his previous findings on validity of the patent and balance of convenience. Subsequently, Justice Rares excluded new evidence which GSK sought to rely on, that was relevant to the issue of balance of convenience. On 17 July 2013, Justice Rares once again found that Reckitt had a sufficiently strong prima facie case of infringement and granted an injunction against the Alternative Syringe. GSK’s Full Federal Court appeal against the injunction of its alternative Children’s Panadol product GSK subsequently sought leave to appeal from the Full Federal Court of Australia against Justice Rares’ decision to grant the second injunction against the Alternative Syringe on a number of grounds including that the trial judge:
a) erred in his construction of the patent; and b) wrongly excluded evidence. GSK’s application for leave to appeal was heard by the Full Court together with GSK’s appeal itself. Construction of the Patent gave Reckitt a stronger prima facie case of infringement than GSK The primary issue that arose was whether claim 1 of the Reckitt patent required the barrel of the syringe to have a uniform diameter along the entire length of the syringe from its flat-nosed distal tip to its other end. That was the interpretation advanced by GSK in support of its contention that the Alternative Syringe which had a narrower distal tip did not infringe the patent. Alternatively, Reckitt argued that all claim 1 of the patent required was that the flat-nosed distal tip of the syringe (which engaged with and formed a seal with the bottle neck liner) had to have a uniform diameter. Reckitt further submitted that it did not matter what size the syringe was above that point, and on that basis the syringe could have two barrels with different diameters.
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… there was a strong public interest in consumers having the option of being able to choose between Children’s Panadol 1-5 years with the safe dispensing apparatus and other paediatric analgesics.
In finding that Reckitt had a stronger prima facie case of infringement than GSK’s noninfringement case, the trial judge, Justice Rares took into account the substance or idea of the invention disclosed in the Reckitt patent. On appeal, the Full Federal Court did not agree with Justice Rares’ assessment and considered that whilst Reckitt had an arguable case of infringement, it was not a strong case and that GSK’s case for noninfringement was stronger. All “essential integers” were not taken by GSK The Full Federal Court considered that the words of claim 1, the description in the patent specification and the figures of the patent favoured GSK’s interpretation of claim 1. In coming to this conclusion, the Full Federal Court emphasised that when determining whether a product infringes a particular claim of a patent, the substance or idea of the invention should only be considered if all of the “essential integers” of the claim have been taken. There cannot be infringement if all of the “essential integers” of the claim have not been taken.
“Balance of convenience” evidence wrongly excluded As mentioned, one of the reasons the Justice Rares granted the first injunction was that he considered it would be “relatively easy” for GSK to make minor modifications to its Children’s Panadol’s 1-5 years product in order to avoid infringement of the Reckitt patent.
On appeal, the Full Federal Court considered that the new evidence which GSK sought to rely on was relevant and important to making an assessment of the balance of convenience, and found that Justice Rares erred in his decision to exclude it.
At the hearing for the second injunction against the Alternative Syringe, GSK sought to rely on additional evidence which explained why it would be impracticable and unsafe to make the modifications suggested by Justice Rares’ at the first hearing and also explained the reasons for GSK deciding to pursue and adopt the option of the Alternative Syringe (which included an explanation why that option was the safest option for consumers). Nevertheless, Justice Rares excluded that evidence on the basis that all that had to be decided at the second hearing was whether the Alternative Syringe infringed the Reckitt patent.
Richard Jarvis, Consultant Cara Gerace, Lawyer
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Summary of the reasons for the decision to overturn the injunction against GSK The Full Federal Court granted leave to appeal. In determining the appeal, it considered that this was not an appropriate case to order interlocutory injunctive relief and lifted the second injunction restraining the supply of GSK’s Children’s Panadol 1-5 years with the Alternative Syringe for the following reasons: 1. whilst Reckitt had an arguable case of infringement, it was not a strong case, and based on the existing evidence, GSK’s case for noninfringement was stronger; 2. despite Justice Rares’ finding, there was no reasonable option for GSK to supply the Children’s Panadol 1-5 years product without the bottle neck liner; 3. the new evidence which GSK sought to rely on (and which the Full Federal Court permitted) adequately explained why GSK chose to adopt the Alternative Syringe and why that was the safest option for consumers; and 4. there was a strong public interest in consumers having the option of being able to choose between Children’s Panadol 1-5 years with the safe dispensing apparatus and other paediatric analgesics. The case is set down for trial in June 2014 before Justice Rares.
whiskeyandtears: CC-BY 2.0 flickr.com/photos/10445132@N02/2212224985/
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Case Study 4
CUB DEFENDS HERITAGE BEER TRADE MARKS AGAINST NON-USE CHALLENGE BY LOCAL BREWERY CUB Pty Ltd v Elixir Signature Pty Ltd [2013] ATMO 74 Intellectual Property Development Corporation Pty Ltd v CUB Pty Ltd [2013] ATMO 73
Recent trade mark removal and opposition proceedings between two Australian breweries involving 59 heritage beer trade marks provide a useful discussion of when the Registrar may exercise her discretion under the Trade Marks Act to allow unused marks to remain registered and the issues to consider in relation to reapplying to register marks which are not in use. In the highly-publicised proceedings, Elixir Signature Pty Ltd (trading as Thunder Road Brewing Company) sought removal on grounds of non-use of 53 registered trade marks owned by one of Australia’s largest breweries, CUB Pty Ltd (formerly Fosters Australia Limited) and on grounds of lack of intention to use against one trade mark registration. The removal proceedings were heard concurrently with fiverelated oppositions lodged by Intellectual Property Development Corporation Pty Ltd (“IPDC”) against five trade mark applications filed by CUB.
Darren Johnson: CC-BY 2.0 flickr.com/photos/70140013@N07/7430916294/
SEE DCC’S FULL SUMMARY OF THE DECISIONS HERE HISTORIC BEER BRANDS CHALLENGED BY LOCAL BREWERY Elixir, the company behind a small Melbourne-based brewery, Thunder Road Brewing, is a member of the ICB Group of companies operating an import/export business in Australia, New Zealand, Europe, the USA, South Africa and throughout Asia including in the brewing industry. IPDC is an IP holding company within the ICB Group. CUB is one of Australia’s leading brewers with a history going back to 1824. Its evidence in the proceedings read like a history of brewing in Australia, detailing its expansionary business path and the acquisition of various competing businesses and their brands. The evidence showed that the majority of the beer trade marks have long since fallen into disuse (some having not been used for over 50 years) for various commercial reasons. However, where marks had not been used for some time, CUB’s evidence sought to show that the relevant marks retained a residual reputation or that CUB had a continuing intention to use the marks, in particular highlighting that some of the marks had previously been used by CUB to commemorate special events and that it had plans to use some of the trade marks in a similar way in the future.
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Key lessons for trade mark owners: -- A residual reputation in a trade mark may provide a basis for exercising the Registrar’s discretion to maintain a trade mark in spite of non-use.
Figure 1: Some of CUB’s heritage beer trade marks challenged in the removal proceeding
THE REGISTRAR’S DISCRETION TO ALLOW UNUSED MARKS TO REMAIN REGISTERED The decisions are critical reading for the owners of trade marks which are not in use, but which may still have a reputation or, at the very least, some ongoing commercial value. The decisions canvass the relevant considerations in relation to the exercise of the Registrar’s Discretion as to whether to maintain unused trade marks. They also deal with important issues in relation to who bears the onus in demonstrating an intention to use a trade mark and when an application to register a trade mark may have been filed in bad faith. A detailed summary of the decisions is available on DCC’s website HERE. CUB’S MARKS REMAIN REGISTERED DESPITE NON-USE In the removal proceedings, CUB succeeded in maintaining the majority of its registrations in spite of not having used the marks. CUB demonstrated a strong residual reputation in many of the marks and ongoing private interests in using the marks in the future. Elixir’s mere desire to use the marks was not sufficient to displace that interest. Indeed, the Delegate recognised that beer drinkers can be quite partisan, noting that where there is a geographical reference in a brand, it is likely to serve to maintain the reputation of that brand longer than would otherwise be expected. Further, the Delegate concluded that if these heritage beer brands were used, the buying public would expect that beer to be made in accordance with the original historical recipe to the extent possible and failure to meet this requirement would be somewhat misleading. In the related opposition proceedings, the Delegate was not prepared to draw an adverse inference that CUB’s applications had been filed in bad faith merely because they were filed as a defensive tactic and in response to IPDC’s interest in using the marks. Rather, the Delegate considered the inference to be drawn was that IPDC knew that CUB was the legal owner of the marks as it had approached CUB to acquire or license use of the marks and noted that no evidence had been provided
-- A risk of consumer confusion is an important public interest consideration when exercising the Registrar’s discretion to maintain a trade mark in spite of non-use. -- Trade marks containing geographical place names used for beer may have greater residual reputation in light of the partisan nature of beer drinkers. -- A removal applicant’s private interest in using a trade mark may be weighed against risk of confusion and potential loss of goodwill. -- Use of marks within a family of trade marks may provide a basis to maintain registrations for other marks in that family which are not in use if consumer confusion may arise. -- A mere desire to maintain a registration is not considered a sufficient reason to exercise the Registrar’s discretion. -- The onus is with an opponent to demonstrate why an application has been filed in bad faith or that the applicant does not have an intention to use the relevant mark. to show that CUB (or a reasonable man in its shoes) should not have applied for the Trade Marks. Further, the Delegate was not satisfied that IPDC had shifted the onus to the Applicant to demonstrate an intention to use the mark, as it had only made mere allegations rather than a prima facie case.
Michael Wolnizer, Partner Ian Drew, Senior Associate
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Case Study 5
SOFTWARE PATENT IN AUSTRALIA UPHELD ON APPEAL: COURT REJECTS PATENT OFFICE APPROACH
RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871, 30 August 2013
In an emphatic and clear judgement,1 the Federal Court has dismissed a negative practice the Australian Patent Office had adopted towards certain types of computer implemented inventions. The Court found that an automated process for gathering evidence to assess competency did constitute patentable subject matter.
BACKGROUND TO PATENT ELIGIBILITY Patent eligible or patentable subject matter in Australia is inexorably linked to the High Court’s celebrated judgement in NRDC2 which has been described as a watershed.3 In this appeal, the Federal Court confirmed NRDC made it clear any attempt to set forth prescriptive requirements is impermissible as it is necessary to be flexible to allow for excitingly unpredictable and emerging inventions to be patentable.4 NRDC considered an exact formula was not to be used, as patentable subject matter is a mere threshold consideration, particularly when any validity inquiry remains to be determined quite separately, and on different criteria,5 e.g. novelty and inventive step. RPL CENTRAL’S INVENTION The invention under consideration facilitated improvements in existing recognition of prior learning processes by enabling the automatic generation of a user interface to gather evidence from a prospective candidate, relevant to credit or exemption towards any qualification or unit offered across a wide range of training organisations. The evidence facilitated the assessment of the competency of the candidate.6
Tim Lucas: CC-BY 2.0 flickr.com/photos/57794886@N00/6170448143/
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… none of the earlier decisions articulated a separate or new requirement of substantiality of physical effect.
The main claim relates to a method of gathering evidence for the purpose of assessing an individual’s competency relative to a recognised qualification standard, which includes the following steps: -- a computer retrieving via the internet from a remotelylocated server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria; -- t he computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard; -- a n assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and -- r eceiving from the individual via their computer a series of responses to the automaticallygenerated questions, the responses including evidence of the individual’s skills, knowledge
and experience in relation to each of the elements of competency and performance criteria, wherein at least one said response includes the individual specifying one or more files on their computer which are transferred to the assessment server.7 THE AUSTRALIAN FEDERAL COURT’S DECISION IN FAVOUR OF RPL CENTRAL The Court considered and rejected all of the Commissioner of Patents’ submissions. In applying the principles of NRDC, the Court found that the invention did belong to the useful arts rather than the fine arts, and that it did have utility in practical affairs and solved a problem in the field of economic endeavour.8 The Court also made clear that there was no binding Australian authority that provides a different test for a method claim as opposed to a method and device claim.9 Significantly, the Court found that each of the computer-effected steps of the claimed invention constituted or gave rise to a change in the state or information in a part of a machine, and therefore produced a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation, as required by the Court’s decision in Grant.10 The
Court considered the statement in Grant to be a useful précis of the way in which the artificial state of affairs requirement may apply to computer programs, in accordance with the principles set out in NRDC.11 Furthermore, the Court emphatically rejected the Commissioner’s arguments that the physical effect required must be significant or central to the purpose or operation of the claimed process. The Commissioner felt that this requirement was supported by earlier decisions. In fact the Commissioner has been applying the requirement to reject a number of patent applications for computer implemented inventions relating to financial systems or gaming systems. The Court made it clear that none of the earlier decisions articulated a separate or new requirement of substantiality of physical effect.12 The Court noted the Commissioner submitted that without this, or some other limiting principle, then any method operated on a computer would fulfil the artificial state of affairs requirement.13 However the Court indicated that fear is not a valid objection.14 The Commissioner also submitted that the invention could be performed without the use of a computer, and if one was to strip away the computer aspects of the
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‌ the Court indicated that fear [of opening the flood gates] is not a valid objection.
claims, one would only be left with a method for performing an aspect of a business. In response the Court said one should not subtract from the invention any aspect of computer implementation, and then determine whether what remains is proper subject matter.15 The computer is an essential part of the invention claimed, as it enables the method to be performed.16 Another argument advanced by the Commissioner, that the steps did not involve anything that is foreign to the normal use of computers, was also rejected by the Court as a requirement not imposed by any of the binding authorities.17 This is to be considered under the separate requirements of novelty and inventive step.
The Court also distinguished its earlier decision in Research Affiliates18 on the basis that the patent applicant had accepted the only physical result generated by the method of the claimed invention was a computer file containing a generated index, and that the specification and the relevant claims did not disclose how to produce the index in question.19 In contrast, the specification and claims in issue in this case provided significant information about how the invention is to be implemented by means of a computer and the computer was integral to the invention as claimed.20
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20
^ RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871, 30 August 2013 ^ National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 ^ Supra n1, Para 64 ^ Ibid, Paras 106 and 107 ^ Ibid, Paras 108 and 109 ^ Ibid, Para 44 ^ Ibid, Para 46 ^ Ibid, Para 128 ^ Ibid, Para 136 ^ Ibid, Para 143 ^ Ibid, Para 144 ^ Ibid, Para 147 ^ Ibid, Para 148 ^ Ibid, Para 149 ^ Ibid, Para 157 ^ Ibid, Para 158 ^ Ibid, Para 159 ^ Research Affiliates LLC v Commissioner of Patents [2013] FCA 71 ^ Supra n1, Paras 169-171 ^ Ibid, Para 172
David Webber, Partner
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KEY LESSONS FOR SOFTWARE PATENTS IN AUSTRALIA 1. The decision reaffirms that software patents are available in Australia. 2. The negative practice that the Australian Patent Office had adopted towards certain types of computer implemented inventions, such as financial systems or gaming systems, did not have a sound basis in Australian law, and was incorrect.
MacMan475: CC-BY 2.0 flickr.com/photos/23826245@N00/2259904187/
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Case Study 6
PACIFIC BRANDS’ INFRINGEMENT OF ADIDAS’ FAMOUS THREE-STRIPE DESIGN TRADE MARKS
Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 (12 September 2013)
Adidas had a partial but significant victory in a Federal Court dispute against Pacific Brands Footwear (“Pacific Brands”). Pacific Brands was found to have infringed Adidas’ famous 3-Stripe trade mark by using 4 stripes on sports shoes.
Allegations made against Pacific Brands
This decision provides assistance to owners of design (as opposed to word) trade marks which are applied to products (here to the side of shoes) and a warning for sellers of “look-alike” products, particularly footwear.
-- Registration No. 131325
The Court confirmed that evidence of an alleged infringer attempting to “sail close to the wind” but avoid infringement will not assist to establish trade mark infringement. Limited weight was given to the survey evidence due to questionable methodology.
Since 1957 Adidas has used three stripe marks on shoes in Australia. The trade marks alleged to be infringed can be seen below:
-- Registration No. 924921
(“the 3-striped Marks”) Both trade marks contained slightly different endorsements to the effect that the trade marks consisted of three stripes forming a contrast to the basic colour of the shoes. Adidas tendered these photographs to demonstrate use of its marks (see figure 1). Adidas asserted that Pacific Brands had infringed the 3-Stripe Marks by using, without licence from Adidas, four parallel stripes on the side of the footwear, in a contrasting colour to that of the shoe. Pacific Brands imported the allegedly infringing shoes between 2006 and February 2010. Pacific
Cordey: CC-BY 2.0 flickr.com/photos/7670328@N02/4227530970/
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Figure 1: Adidas’ tendered photographs
Brands and Adidas also had a history of licensing and distribution arrangements. It was common ground that Adidas’ 3-Stripe Trade Marks were very well-known in Australia. Adidas “had never used four stripes on its footwear”. There was no evidence of confusion. Pacific Brands denied it had infringed Adidas’ 3-Stripe Marks: 1. first, on the basis that Pacific Brands had not used the four stripes on its shoes as a trade mark. Pacific Brands claimed they had used the stripes decoratively, or for functional purposes, and not for “branding” purposes; and 2. secondly, that the stripes were not deceptively similar to Adidas’ 3-Stripe trade marks and consumers would not be deceived or confused by the use of the 4 stripes on the shoes and be caused to wonder if Pacific Brands shoes came from the same source as Adidas shoes. The stripes on Pacific Brands shoes were being used as trade marks on Pacific Brands shoes Adidas contended that consumers are conditioned to seeing markings on the side of shoes as brand elements (using the Nike “swoosh”, ASICS stripes and New Balance “N” as examples).
Justice Robertson accepted that the stripes have a decorative element and may also indicate that each shoe is a sports shoe. However, he concluded that the stripes were capable of functioning as an identifier of source. In Justice Robertson’s opinion, merely because a consumer could not identify the particular manufacturer or seller of the shoe did not mean the sign is not functioning as a trade mark to distinguish one trader’s goods from those of another trader. Even though Pacific Brands was not promoting the four stripes used on its shoes as a “brand”, the stripes were functioning as such and therefore being used as trade marks. Pacific Brands’ four stripe marks of contrasting colour were deceptively similar to Adidas 3-Stripe Marks To establish “deceptive similarity” it was not sufficient that the two marks conveyed merely the same idea. “Stripeness” as was coined by Senior Counsel for Adidas had the character of an idea and was considered “far too liberal an approach to the notion of recollection (even an imperfect one)” in an assessment of deceptive similarity. The comparison was between the trade marks and the various four stripes as they appear on the Pacific Brands shoes.
Did Pacific Brands have an intention to “sail too close to the wind” and if so, did it affect the finding of trade mark infringement? Adidas submitted Pacific Brands had a strategy to “sail too close to the wind”. However, no evidence could be produced of Pacific Brands deliberately manufacturing or ordering products which were based upon the 3-Stripe Marks, with the intention to deceive or cause confusion. The intention asserted by Adidas was therefore based on the fact that the Pacific Brands’ shoes resembled Adidas’ shoes. His Honour observed that: “ No doubt an intention to infringe would be good evidence confirming the fact of infringement and the likelihood of deceptive similarity but if, as seems to be put here by the applicants, the intention was to “sail close to the wind”, that is, to come close to but to avoid infringement, intention does not assist at a general level.” What weight did Justice Robertson give to Adidas’ survey evidence? A survey was conducted using the Internet where 400 participants were shown a photograph of one of four different shoes; including a “control” no-stripes shoes. The
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Justice Robertson did not give weight to the results of the survey evidence or to Pacific Brands’ overall intention to “sail too close to the wind” …
participants saw a photograph of the shoe; they were not shown the shoe itself to indicate whether or not the shoes bore any other branding or markings; and they did not see any promotional or point of sale material around the shoe. Relevantly, the participants were asked:
As such, his Honour gave the survey “little weight”. He took “the results of it into account as a point of comparison with [his] conclusions” but did not use the results to alter his conclusions.
His Honour concluded that the trade marks on four of the Pacific Brands shoes infringed the 3-Stripe Marks. The trade marks used on the remaining eight pairs of shoes were not infringing.
Had Pacific Brands infringed Adidas’ 3-Stripe Mark?
B1. Who do you think makes this shoe?
Justice Robertson considered that the dominant visual impression of Adidas’ 3-Stripe Marks is not of three stripes only but is of three stripes in a contrasting colour to the basic colour of the footwear. At a general level he accepted that the fame of a mark tends in favour of a finding of deceptive similarity but that did not mean that the fame of the Adidas mark had the consequence, in the present case, that a four striped mark could never be deceptively similar to Adidas’ 3-Striped Marks. The average consumer would not have forgotten the Adidas’ trade mark but he did not assume that the average consumer would perfectly recollect the number of stripes.
In relation to the infringing shoes, even though there were four stripes instead of three stripes, looking at the overall impression of the stripes of contrasting colours to the Pacific Brands shoes, there was a real tangible danger of confusion occurring. Justice Robertson did not give weight to the results of the survey evidence or to Pacific Brands’ overall intention to “sail too close to the wind” as asserted by Adidas.
B2. Why do you say that? Approximately 42% of participants identified Adidas as the maker of the shoe. Adidas submitted that the Judges of the Australian Federal Court do not necessarily possess all of the qualities of the average consumer. As to the methodology of the survey, his Honour noted that: 1. The survey did not sufficiently replicate or correspond with the experience of a consumer in the marketplace; and 2. The question “who do you think makes this shoe?” suggested to the participant that they ought to be able to discern the origin of the shoe from the decoration in the photograph. This would lead to an over-attribution of the shoes to the leading brands. The question put in the pilot survey “what is your reaction on seeing this shoe” did not elicit the same association (6 out of 300 participants);
His Honour did not give weight to the relative prices of the shoes or to the different stores in which they were sold or to the character of the probable purchaser because that evidence “does not establish any clear differentiation between the two when making the required comparison between the marks” . The greatest weight is to be given to the marks on the shoes as seen in the setting of a retail store.
In relation to the non-infringing shoes, there was no sufficiently clear impression of the stripes forming a contrast to the basic colour of the shoes or being a colour different from that of the article of footwear to which the stripe were applied.
IP Update
Adidas 3-Stripe Trade Marks
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Take Home Messages for Trade Mark Owners: 1. This decision gives owners of design or device trade marks applied to products, in this case the side of footwear, confidence about the investment made to protect such trade marks and to enforce those trade marks against manufacturers or sellers of look-a-like products.
INFRINGING Pacific Brands shoes
NOT INFRINGING
2. The fact that an infringer attempts to “sail too close to the wind� but avoid infringement will generally not assist in a determination of trade mark infringement. 3. Great care should be exercised in developing the methodology of a survey to be relied upon in trade mark infringement proceedings.
Christine Lowe, Partner Elizabeth Godfrey, Senior Associate
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Practice Update 1
Time is running out to register transitional security interests under the Personal Property Securities Register
If you are a holder of security interests in personal property, including IP assets and transferable IP licences, you have a 31 January 2014 deadline to record your interests on the Personal Properties Security Register (“PPSR”) in order to maintain the priority of your interests. IP assets include: – patents; – registered trade marks; – copyright; – registered designs; – registered plant breeders’ rights; and – circuit layout rights.
Failure to register these interests on the PPSR by 31 January 2014 may result in the priority of your interests being lost to other parties with competing interests. This is the case even if your security interests have already been recorded on the IP Registers maintained by IP Australia. What is the PPSR? Established on 30 January 2012, the PPSR is a national, electronic register of security interests in personal property, which includes intellectual property and any other personal property except land. A “security interest” includes any interest in personal property which is created by an agreement that secures a payment or performance of an obligation to another person (eg. a fixed and floating charge over an IP asset).
There were previously over 70 separate pieces of legislation regulating security over personal property in Australia, each applying different rules. The introduction of the PPSR and related legislation provides a uniform and consistent scheme for the creation, extinguishment, enforcement and prioritisation of security interests in personal property. The scheme aims to help prospective purchasers and lenders determine whether personal property is subject to a security interest, to reduce complexity and to increase efficiency and certainty. It is still possible to register security interests on the IP registers with IP Australia, and this is recommended to ensure that the holder of the security interest is notified of certain events regarding the IP assets (such as notice that the registered owner of a trade mark has requested cancellation of the registration, or notice of an application to record assignment of a registration) or otherwise obtains the benefits bestowed on registered interest holders under Australian IP legislation. However, the PPSR is the only register which determines whether a security interest: -- is enforceable; -- takes priority over other interests.
IP Update
What do you need to do? Security interests in IP assets recorded on the registers of IP Australia before 30 January 2012 were not automatically transitioned to the PPSR. Similarly, security interests created or registered on an IP register after that date will not be migrated to the PPSR automatically. Therefore, you need to: -- identify any security interests you hold over IP assets or IP licences; -- check whether those interests have been recorded on the PPSR; and -- record any security interests that arose before 30 January 2012 (or pursuant to a security agreement in force before that date) (known as “transitional security interests�) on the PPSR prior to 31 January 2014. Failure to do so means that the priority in your security interest may be lost, and the competing interests of third parties may take priority.
William Warby: CC-BY 2.0 flickr.com/photos/26782864@N00/3297205226/
We can assist you with your due diligence enquiries and with recording your interests on the PPSR and the IP Australia registers.
Carly Mansell, Senior Associate Tim Creek, Associate
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Practice Update 2
Quick Guide to New Zealand Patents Act 2013: What you need to know
More than two decades after announcing steps to introduce a new Patent Law, the long awaited, new and improved New Zealand Patents Act has finally arrived. The Patents Act 2013 received Royal Assent on 13 September 2013, with the new provisions to take effect at least by 13 September 2014.
The changes are extensive, serving to more closely align New Zealand and Australian patent laws. The new Act also represents a step toward establishing a single trans-Tasman (Australia and New Zealand) patent system. The most significant aspects of the New Zealand Patents Act 2013 include: -- Absolute novelty will replace the previous local novelty standard -- Grounds for examination have been expanded to include inventive step and utility -- New utility requirement; satisfied where an invention has a specific, credible and substantial use -- ‘Whole of contents’ novelty will replace ‘prior claiming’ -- Support requirements strengthened, with previous ‘fair basis’ test replaced by a ‘support’ requirement -- Test for a valid priority claim amended to a ‘support’ requirement -- Written description requirements strengthened, with introduction of a sufficiency requirement -- A ‘balance of probabilities’ standard will apply to examination, replacing previous ‘benefit of the doubt’ standard -- Formal request for examination required, either voluntarily or in response to a direction from the Commissioner -- Complete specifications will automatically be published within 18 months of the priority date -- New requirement for a Notice of Entitlement to be filed prior to acceptance
IP Update
-- Amendments after acceptance will be allowable where they relate to matter that is in substance disclosed, or where the amended claim falls wholly within the scope of a claim of the specification before amendment -- New extension of time provisions to restore a lapsed or abandoned application in prescribed circumstances -- New provisions to bring the Act in line with TRIPS protocol -- Exclusions to patentability formally expanded to include inventions that would be contrary to public order or morality, human beings and processes for their generation; methods of treatment and diagnosis of human beings, and plant varieties; as well as a separate general exclusion for computer programs as such -- Options for third-party challenges expanded to include pre- and post-grant reexamination and nontime limited post-grant revocation, in addition to existing pre-grant opposition
Anthony Cramp: CC-BY 2.0 flickr.com/photos/7770166@N05/3277442653/
Existing grace period provisions have been retained and exempt prior disclosure in a limited number of prescribed circumstances. No provision for a general grace period. No patent term extension provisions have been introduced. Should you have any questions or wish to discuss any of the upcoming changes, please contact us.
-- ‘Anti-self collision’ provisions have been removed -- Prior secret use introduced as a ground of invalidity before the Office -- Exclusive rights afforded to a patentee defined with reference to ‘exploiting an invention’ -- Exceptions to infringement expanded to include experimental use and prior use exemptions -- Annuities will be payable prior to acceptance of an application -- Existing requirement for divisional applications to be filed prior to acceptance has been retained.
Michael Caine, Partner, Jarrod Ward, Patent Attorney, Amanda Lee, Trainee Patent Attorney.
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Practice Update 3
NEW ZEALAND ACCEDES TO NICE AGREEMENT
December 2013
Practice Update 4
New rules following ratification of Patent Law Treaty in United States
Bill Harrison: CC-BY 2.0 flickr.com/photos/29053754@N08/6086939437/
The Patent Law Treaty (“PLT”) harmonises and streamlines patent formalities internationally, providing, among other things, procedures and mechanisms to prevent loss of rights. New Zealand has formally acceded to the Nice Agreement relating to the classification of goods and services. This final step concludes the Intellectual Property Office of New Zealand’s (“IPONZ”) reclassification of trade marks to ensure that all trade marks on the New Zealand Register are now classified according to the Nice Classification. Previously marks registered in New Zealand prior to December 1941 were classified using different classification system which led to a broad range of familiar goods being classified in surprising classes such as clothing (class 38), games and sporting articles (class 49) and musical instruments (class 9). This required careful management when conducting trade mark searches in New Zealand. IPONZ undertook a reclassification process over the last twelve months to address this anomaly.
The Nice Agreement came into force in New Zealand on 16 October 2013.
Following ratification of the PLT by the United States on 18 September 2013, the United States Patent and Trademark Office (USPTO) has published a final rule which becomes effective on 18 December 2013 and brings aspects of the US patent system into conformity with the PLT. The new rule (among other things): 1. relaxes requirements for non-provisional utility and plant patent applications to be awarded a filing date; 2. provides a single standard as a basis for restoration of an abandoned patent application or patent; and 3. provides a grace period for the filing of priorityclaiming patent applications. 1. Relaxed requirements for awarding of a filing date At present, a non-provisional utility or plant patent application, to be awarded a filing date, must have at least one claim and must include a specification and, if appropriate, at least one drawing. The new rule provides that a non-provisional utility or plant patent application filed on or after 18 December 2013 can be awarded a filing date even if: -- it does not include any claims; or -- it is filed by reference to a previously filed application, without a specification and drawings.
Nick Holmes, Partner
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Under the new rule, where the application is filed without any claims or is by reference to an earlier application, the USPTO will set a time period within which at least one claim or a specification together with any drawings, respectively, must be submitted. In the event of a delay in submitting the missing parts sufficient that the application is not in a “condition for examination” within eight months of filing, limitations will be placed on any patent term adjustment (PTA) ultimately available, PTA being additional patent term awardable to a patent owner to compensate for excessive delays in progression of the application to grant. There will remain, following implementation of the new rule, a requirement that a design patent application include a claim and design representations, as appropriate, in order to be awarded a filing date. 2. Single standard for restoring abandoned patents and patent applications Presently, a patent applicant or owner may seek to restore an abandoned patent application or patent by arguing that the delay in taking the action necessary to keep the application or patent alive (typically, responding to an office action or paying maintenance fees, respectively) was either unavoidable or unintentional. The “unavoidable” standard generally requires the applicant or owner to show that it had no choice but to allow the application or patent to become abandoned.
brunosan: CC-BY 2.0 flickr.com/photos/64887888@N00/8187560117/
3. Grace period for filing priority-claiming patent applications Under the new rule, there will be provided a twomonth grace period for filing a non-provisional application (including, notably, a design application despite the PLT being inapplicable to industrial designs) claiming priority from a foreign or US provisional application, provided it can be shown the failure to file the non provisional application by the deadline (which, in the case of a utility patent application, is 12 months from the filing date of the foreign or US provisional application and, in the case of a design patent application, is 6 months from the filing date of the foreign application) was “unintentional”. The new rule, when it takes effect on 18 December 2013, will apply to all non-provisional patent applications.
Under the new rule, which applies to all patent applications filed on or after 18 December 2013 and patents granted on such applications, the “unavoidable” standard is eliminated, leaving only the more lenient “unintentional” standard. Also, a current 24-month time limit to restore an abandoned patent is removed under the new rule, whereby it may be possible to restore a patent regardless of how much time has elapsed since abandonment. Robert Finn, Partner
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DCC News
DCC PAtENT FIRM OF THE YEAR 2013 We are delighted to announce that Davies Collison Cave has been recognised by Asia IP magazine as the ‘Australian Patent firm of the Year’ at the recent 2013 Asia IP Awards. David Webber partner and head of DCC’s patent practice, said “it was a pleasure to be in Hanoi to accept the award on behalf of our dedicated and experienced Patent team. Davies Collison Cave accepts this award for the fourth year running and we take this opportunity to thank our clients and staff for their commitment and support throughout 2013. INTA VOLUNTEER SERVICE AWARD We are proud to announce that the International Trademark Association (INTA) honoured Michael Wolnizer, partner at DCC, with the Volunteer Service Award (VSA) in the Advancement of the Association category. Michael has been the project leader for INTA’s Trademark Office
Benchmarking Database for over six years. Due to his dedication and commitment to the project, the database was successfully launched in February 2013. This is a publicly available database which enables users to compare information on more than 170 trademarks offices. DCC CLIENT TAKES HOME THREE WINS AT THE iAWARDS At DCC’s recommendation, our client Organic Response was nominated for the ‘iAwards’ – a national ICT innovation awards program. Organic Response’s core product is a revolutionary device that allows decentralised control of lighting (and other) devices via peer-to-peer wireless communications between neighbouring devices. The benefits that flow from this technology include substantial energy savings and enhanced functionality. We were delighted to learn that Organic Response won the iAward for Best New Product. Richard Brown and Sam Mickan attended the 2013 iAward’s Presentation and Gala Dinner on Thursday 8th August to support Organic Response. To the surprise of us and the Organic Response team, they also won an additional two iAwards: “Best New Startup” and the “Victorian Government Inspiration Award”.
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DCC OUT AND ABOUT
ENGINEERING Engineer Australia Tasmania Division Awards – Cocktail Party
BRISBANE CLIENT FUNCTION DCC’s Brisbane office had the pleasure of hosting their annual client thank you function at Mr & Mrs G Riverbar. It was the perfect night for such an event. UNIVERSITIES University of Wollongong (UoW) – Pitch
The UoW Pitch competition is designed to promote involvement in entrepreneurialism and the commercialisation of ideas, inventions and research outcomes at UoW. Gavin Recchia represented DCC on the judging panel. Swinburne Venture Cup
DCC has a proud history in supporting the Swinburne Venture Cup. In 2013 the entries were once again of a high standard, with the DCC Innovation Prize going to “Reactive Electronics” and their project “Birdsense”. Mark Roberts was on hand to present the award to the winners.
Ross Clark and Peter Gretton represented DCC at the Awards and Showcase event in Hobart. The awards recognised established engineers and the next generation of professionals. The annual Engineers Australia Sydney Division Engineering Excellence Awards received a significant number of entries in the Innovations and Inventions category this year. For the second year running, this category was awarded to researchers from the CSIRO, valued clients of DCC. LIFE SCIENCES This quarter has been a busy time for the DCC Life Sciences team. Below are some of the highlights: 10th Australian International Peptide Conference – Michael Caine and Kathryn Morris represented DCC at the 10th Australian International Peptide Conference. Whilst normally held in Australia this year the conference moved to Asia and was held at the Golden Sands Resort in Malaysia. Drug Delivery Conference (CRS) – Paula de Bruyn attended the conference in Sydney. In its seventh year, the conference has become a focal point for scientists
from academia, industry and government agencies to meet, network and discuss the latest developments in the Drug Delivery field. TABBS Ministerial Roundtable Breakfast – LSQ hosted the Roundtable Breakfast in Brisbane prior to The Australasian Bioenergy and Bioproducts Symposium (TABBS). Alistair Smith and Kathryn Morris were in attendance as the attendees discussed trends, issues and opportunities for the Queensland bioeconomy. DCC Seminars DCC has been busy hosting several educational seminars. In September the BIO ICT seminar on the patentability requirements following Myriad, Prometheus & Alice Corp cases was held in Sydney. In November we hosted the ‘Drug discovery to early development’ seminar on how to overcome the challenges presented by regulation, attracting investment & obtaining IP protection. Penny Field from Bioregulatory Consulting was the key note speaker with Mark Roberts, Tim Creek and Ian Pascarl presenting on behalf of DCC. You can watch both of these on the DCC website.
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