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Update March 2013 – Issue 19 davies.com.au

Facebook comments spell trouble for swimwear designer Google escapes liability for misleading conduct BMS v Apotex: experimental evidence in patent litigation


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Type #

Contents

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Insight

Case Studies 4

Seafolly sues competitor over misleading and deceptive Facebook posts Seafolly Pty Ltd v Madden [2012] FCA 1346

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Google not responsible for misleading and deceptive Adword advertisements: High Court Google v ACCC [2013] HCA 1

12 Lessons learned on website redirection and trade mark infringement DRH Holdings (Australia) Limited v David Reid Homes Australia Pty Ltd [2012] FCA 1336

josullivan.59: CC-BY 2.0 www.flickr.com/photos/97373666@N00/8125820044/

16 Reliance in patent litigation on experimental work referenced in specification Bristol-Myers Squibb Company v Apotex Pty Ltd (No 4) [2012] FCA 1433

20 SUNNY ROO trade mark deceptively similar to SUNNY BOY trade mark SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483

22 Full Federal Court agrees that copyright subsists in original printer cartridge chart Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd [2012] FCAFC 162

26 Lundbeck extension of time upheld in LEXAPRO extension of pharmaceutical patent term saga Aspen Pharma Pty Ltd and Ors and Commissioner of Patents and H Lundbeck [2012] AATA 851

30 Is a method of treatment of the human body a patentable invention? Apotex Pty Ltd v Sanofi-Aventis Pty Ltd

Feature Article 32 Raising the bar Practice Updates 34 Federal Magistrates Court reforms: new name and expanded intellectual property jurisdiction 35 Europe nearly has a Unitary Patent – 2014? 37 America Invents Act Revised 38 DCC News 38 DCC Out & About 39 Articles on davies.com.au


IP Update

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Insight

“When the facts change, I change my mind. What do you do, sir?” said John Maynard Keynes to a colleague challenging him for changing his position on an economic issue. I’m with Keynes. The facts on the potential perils of a grace period in patent law have changed, and so I’ve changed my mind. When Australia introduced a 12-month general grace period ten years ago, I feared that the obvious problems would outweigh the expected advantages, and I resisted the change. A decade of experience has shown my fears were largely unfounded – and so I’ve shifted my position. The main argument against a grace period is the increase in “uncertainty”, for both applicants and third parties. A grace period may give patent applicants a false sense of security, misleading them to think the local grace period will save them in other countries. More problematic is the increase in uncertainty for third parties – the normal 18-month delay in knowing whether patent rights may exist becomes up to 2.5 years. The Australian experience has been that the concern of increased uncertainty is more theoretical than real. Inventors do not appear to have become more likely to disclose their invention before filing an application, and competitors do not appear to have become more constrained in their operations.

What is real, however, is the problem caused by the lack of international uniformity on the issue – and, in particular, by the absence of an equivalent grace period in the European Patent Convention. The Australian experience of no observed increase in pre-filing disclosures suggests that applicants won’t take advantage of a grace period unless it applies in all major markets. Until Europe adopts a grace period provision compatible with those in Australia, the US and elsewhere, the full benefits of the grace period will not be achieved. Harmonising the grace period has been on the international patent law reform agenda for more than a century. Although the story to date has been one of constant failure, recent changes to the law in the US, Japan and Korea have added momentum to the movement. An important development is the initiative of the Tegernsee Group of patent offices. Its September 2012 comparative study identified four issues on which development of an EPC grace period should focus: duration of period (6 or 12 months?), procedure for use (declaration/notification required?), type of disclosure graced (all applicant disclosures?), effect of intervening 3rd party disclosure (prejudicial to applicant?). While resolving these issues is not straightforward, it is possible. And, making sure they are resolved is important for all patent system users, both in Europe and elsewhere. I’m hopeful that those who have resisted a grace period will see that the facts have changed – and will do what Keynes would do.

Leon Allen, Managing Partner


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Case Study 1

Seafolly sues competitor over misleading and deceptive Facebook posts Seafolly Pty Ltd v Madden [2012] FCA 1346

On 29 November 2012, the Federal Court held that comments posted by an individual on her personal Facebook page, and the page of her business, were misleading and deceptive and constituted false representations in contravention of the (then applicable) Trade Practices Act 1974 (Cth).1 Despite the statements only being posted for a short time, the comments made by Leah Madden were found to have been erroneous and made recklessly.

This case highlights the importance of exercising caution and ensuring that you are fully informed of all the relevant facts before posting statements on social media sites such as Facebook, especially where those statements could be construed as allegations that another party has infringed your rights. This is particularly so in relation to competitors. It also serves as a reminder that individuals may be liable for misleading and deceptive conduct for comments posted on social media sites, where such comments are in fact made “in trade or commerce”. Statements about Seafolly published on Facebook and sent to media outlets In September 2010, Leah Madden, the principal of White Sands, an Australian swimwear label, posted statements and comments on her personal Facebook page implying that Seafolly Pty Ltd, a competitor of White Sands, had copied some of her swimwear designs. Specifically, Ms Madden: -- posted 7 photos of Seafolly garments on her personal Facebook page under the heading “The most sincere form of flattery?”, with the name of one of her product designs and a question mark under each photo;

pshab: CC-BY 2.0 www.flickr.com/photos/pshab/498122926/


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… a reminder that individuals may be liable for misleading and deceptive conduct for comments posted on social media sites …

-- later updated her personal Facebook photo album, adding photos of White Sands garments next to each of the Seafolly garments and including the words “White Sands as seen at RAFW in May – Seafolly September 2010” or “White Sands 2009 – Seafolly 2010” under the photographs. She also posted the comment “Why allowing ‘buyers’ to photograph your collection at RAFW can be a bad idea”; and

Seafolly’s argument

-- sent an email to various media outlets with the subject line “The most sincere form of flattery?” followed by the words “Is it just us, or has Seafolly taken a little to (sic) much ‘inspiration’ from White Sands?” and the photos of both the Seafolly garments and the White Sands garments that had been posted on her personal Facebook page.

Madden’s statements amounted to representation of copying and were misleading and deceptive against Seafolly

Ms Madden argued that she had made her statements as a result of a buying appointment that occurred on 6 May 2010 in which a buyer for Sunburn (a company 68% owned by Seafolly) had taken photographs of samples of White Sands swimwear.

As a result of Ms Madden’s conduct, Seafolly sued Ms Madden, arguing that she had: -- made statements that were misleading and deceptive; -- infringed Seafolly’s copyright by reproducing and communicating the photographs of Seafolly garments; and -- committed the tort of injurious falsehood.

Justice Tracey held that the statements and content posted by Ms Madden, and further comments posted on her personal page and the White Sands Facebook page, constituted representations that, among other things; a) Seafolly had copied Ms Madden’s designs; and b) used underhanded means to do so.2 In his Honour’s opinion, this representation was reinforced by the comments posted by users of the Facebook pages which indicated they had interpreted Ms Madden’s comments as allegations of copyright infringement.

Justice Tracey held that none of these representations were true. He found that in fact, most of the Seafolly garments were already on the market before the buying appointment took place.3 Ms Madden’s defence of genuinely held opinion Ms Madden, in defending the claims by Seafolly of misleading and deceptive conduct, argued that her comments could not be understood as allegations that Seafolly had copied garments which she had created. Justice Tracey held that in publishing her statements, Ms Madden’s “choice of language was intended to and did convey to her readers that such copying had, as a matter of fact, occurred”.4 She further contended that her statements amounted to no more than an expression of her genuinely held opinion as distinct from statements of fact, submitting that a statement of opinion could not be held to be misleading or deceptive if it were honestly held by her. According to Justice Tracey, “the statements would not have been understood by the class of persons to whom they were directed as mere expressions of Ms Madden’s opinions”.5 Further, if Ms Madden had done some further research, she would have realised that:6


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Justice Tracey concluded that Ms Madden’s resolve was to make the statements not caring if they were true or false ...

-- most of the Seafolly designs had been on the market prior to May 2010 and the other designs were in the later stages of design and were released in July 2010; -- the dates placed under the various photos were wrong; and -- a comparison of the actual garments would have disclosed varying degrees of design difference. Lack of preliminary research led Madden to be misleading and deceptive By posting the comments without doing preliminary research, Justice Tracey concluded that Ms Madden’s resolve was to make the statements not caring if they were true or false, she was “reckless in giving public expression [to her statements] and there was no adequate foundation for any of them”.7 Consequently, her statements were misleading and deceptive. Seafolly entitled to an injunction Despite the comments on Ms Madden’s Facebook page being posted in late 2010, and removed shortly after, Justice Tracey nevertheless held that Seafolly was entitled to an injunction to protect itself from Ms Madden reproducing Seafolly’s photographs or making further statements alleging that Seafolly had copied Ms Madden’s garment designs.

Seafolly unable to establish claim of injurious falsehood and copyright infringement allegations In addition to its allegations of contraventions of the Trade Practices Act, Seafolly also claimed that Ms Madden had infringed its copyright (by reproducing and communicating its photos) and committed the tort of injurious falsehood. Though Justice Tracey held that Ms Madden had falsely stated that Seafolly had copied her designs, published the statements to a number of third parties, and acted maliciously, Seafolly was unable to establish its claim of injurious falsehood on the basis that it could not adduce evidence which established that its business had sustained actual damage as a result of Ms Madden’s statements. In relation to the copyright claim, his Honour found that although the right to sue for past infringement had been assigned to Seafolly by the photographer who took the photos (an assignment which took place after Ms Madden posted her comments); this right did not entitle Seafolly to pursue a damages claim by it.

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New sections 19 and 29 of the Australian Consumer Law. Seafolly Pty Ltd v Madden [2012] FCA 1346, [1], [34]. Ibid [69]. Ibid [60]. Ibid [67]. Ibid [69]. Ibid [69] – [73].

Chris Jordan, Partner Jessica Sapountsis, Graduate Lawyer


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3 Key things to remember before posting statements on Facebook or other social media platforms 1. Do your research before you think about making comments about someone else on Facebook or any other social media site, especially a competitor, because they may turn out to be unfounded or incorrect. 2. Obtain legal advice before posting comments of possible claims of copyright infringement (or infringement of other rights) on Facebook or other social media sites or before sending comments to media outlets, even if you think that your opinion is correctly and justly held. 3. Be aware that even if statements and related comments are posted on personal Facebook accounts, this can be considered to be “in trade or commerce� where the statements have a connection with your own business or the business of others, so individuals may also be liable under the Australian Consumer Law.

marcie casas: CC-BY 2.0 www.flickr.com/photos/marciecasas/5347580266/


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March 2013

Case Study 2

Google not responsible for misleading and deceptive Adword advertisements: High Court Google v ACCC [2013] HCA 1

The ACCC’s case against Google

On 6 February 2013, in a much anticipated judgment, the High Court of Australia unanimously allowed Google’s appeal from a decision of the Full Court and found that Google was not responsible for the content of third party “Adword” advertisements (formerly sponsored links) displayed on Google search result pages.

In July 2007, the Australian Competition and Consumer Commission (“ACCC”) issued proceedings against Google in the Federal Court of Australia alleging that Google had engaged in misleading and deceptive conduct within the meaning of the Trade Practices Act 1974 (“TPA”) (Cth) (now the Australian Consumer Law (“ACL”)) by “making” misrepresentations contained in sponsored links (now Google Adwords) that had been purchased from Google by a number of Australian advertisers. Interestingly, the ACCC did not allege that Google had contravened the TPA by aiding, abetting, counselling or procuring the misleading conduct of the advertisers1 or by publishing the impugned sponsored links.2 The First Chapter: The Federal Court’s findings at first instance At first instance, Justice Nicholas found that the advertisers sponsoring the links were guilty of misleading or deceptive conduct but held that Google was not responsible for the content of such links3 as it had merely communicated them and had not endorsed or adopted their contents.

Robert Scoble: CC-BY 2.0 www.flickr.com/photos/scobleizer/4249731778/


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... the message conveyed was a message from the advertiser which Google was “passing on for what it was worth” ...

The Second Chapter: The Full Federal Court unanimously allows the ACCC’s appeal On appeal by the ACCC, in April 2012, the Full Federal Court unanimously reversed Justice Nicholas’ findings and held that Google had in fact engaged in misleading and deceptive conduct.4 According to the Full Court: “No user of Google’s search engine presented by Google with a sponsored link in response to a search query would regard the sponsored link displayed by Google with a clickable link to the sponsor’s URL as conveying the message that the sponsored link is a statement by an advertiser which Google is merely passing on. What appears on Google’s webpage is Google’s response to the user’s query. That it happens to headline a keyword chosen by the advertiser does not make it any the less Google’s response. And even that occurs pursuant to the AdWords facility made available to the advertiser by Google. Google’s conduct cannot fairly be described as merely passing on the statements of the advertiser for what they are worth. In those circumstances, it is an error to conclude that Google has not engaged in the conduct of publishing the sponsored links because it has not adopted or endorsed the message conveyed by its response to the user’s query …” “… critical to this conclusion is the fact that the sponsored link is displayed on the screen in response to the user’s query which is made by the entry of selected key words. Thus, the user asks a question of Google and obtains Google’s response.”5

The final chapter: The High Court unanimously allows Google’s appeal and reverses the Full Court’s decision On 6 February 2013, the High Court unanimously found that Google did not engage in misleading and deceptive conduct, and accordingly set aside the Full Court’s decision. The High Court relevantly held that Google did not “make” the misrepresentations contained in the sponsored links in issue. In reaching this conclusion, the High Court had regard to the following facts: a) Google does not control the Google search terms entered by Internet users or the material available on the Internet; b) The sponsored links were created by, or at the direction of the third party advertisers; c) Advertisers (and not Google) specify the content of Google Adword Ads and also specify the Google search “keywords” which trigger the appearance of the Ad on Google’s results pages; d) Google’s automated generation of Adword Ads in response to a user’s search query is wholly determined by the Adword keywords and content chosen by advertisers;

e) Google’s proprietary algorithms which display Adword Ads merely assemble information entered by Internet users and advertisers; f) Google may encounter difficulties determining whether a particular Ad is in fact misleading or deceptive; g) Whilst there was evidence that Google employees had been actively involved in the selection of keywords for some of the Adwords in issue, the evidence

“never rose so high as to prove that Google personnel, as distinct from the advertisers, had chosen the relevant keywords, or otherwise created, endorsed or adopted the sponsored links”.6 This is in stark

contrast to the view taken by the Full Federal Court; and h) In light of the above, ordinary and reasonable internet users would be unlikely to have understood any information contained in the sponsored links in issue as being endorsed or adopted by Google. Rather, those persons would have understood that the message conveyed was a message from the advertiser which Google was “passing on for what it was worth.”7


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... the High Court’s decision brings the Australian position ... into line with the position in the United States and elsewhere ...

Publication of misleading and deceptive advertisements As explained above, the ACCC identified Google’s contravening conduct as being the “making” of the misleading representations contained in the sponsored links in issue. The ACCC did not allege that Google had engaged in misleading and deceptive conduct by merely publishing the ads. The majority of the High Court (Chief Justice French, and Justices Crennan, Kiefel and Heydon) considered that publication of a misleading advertisement will, in general, only constitute misleading or deceptive conduct if the publisher can be said to have adopted or endorsed the misleading statements contained in the advertisement. On the other hand, Justice Hayne was of the opinion that the mere publication of a misleading and deceptive third party advertisement may constitute misleading and deceptive conduct. Justice Hayne noted that publishers who engage in such conduct may, however, seek to rely on the defence afforded by s. 85 (3) of the TPA (now s. 251 of the ACL). Section 85 (3) will apply if a person establishes that: a) he or she is a person whose business it is to publish or arrange for the publication of advertisements;

b) the advertisement in issue was received for publication in the ordinary course of business; and c) he or she did not know and had no reason to suspect that the publication of the advertisement would constitute misleading and deceptive conduct. Whilst the weight of judicial opinion favours the view that the mere act of publication will not constitute misleading and deceptive conduct within the meaning of the ACL, final resolution of the matter will require careful examination of a number of difficult policy considerations. The fall out from the High Court’s decision The High Court’s decision brings the Australian position in relation to Google’s responsibility for its sponsored links or Adword Ads into line with the position in the United States and elsewhere (where Google has not been held liable under the trade mark laws in those jurisdictions). Australian Courts have not yet considered whether Google or the advertiser’s use of competitor’s names in sponsored links constitutes trade mark infringement in Australia. To do so would require a finding that Google’s use of the Adwords was “use as a trade mark”.8

As a result of the High Court’s decision, it is clear that Google cannot be held liable for “making” misrepresentations contained in Google Adword Ads unless it can be shown that it expressly or impliedly adopted or endorsed them. However, the High Court did not conclusively consider whether Google had engaged in misleading and deceptive conduct by “publishing” or aiding, abetting, counselling or procuring the misleading conduct of the advertisers, and persons who are aggrieved by such conduct may still legitimately seek to take action against Google on these bases.


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KEY POINTS FOR: Online publishers

1. Publishers online or in any form of media should ensure that they are simply passing on third parties’ representations and not in any way endorsing those representations or “making” representations that such statements are accurate. 2. Intermediary publishers should put appropriate systems in place so they can demonstrate (should it need to rely on the publisher’s defence) that they did not know and had no reason to suspect that the publication of the representation would amount to misleading and deceptive conduct. Trade mark owners

1. The first avenue for trade mark owners in Australia is to file a Google Adword Complaint. If the Complaint is not successful or a satisfactory outcome cannot be negotiated, aggrieved brand owners’ main source of recourse under Australian law will be against the advertisers responsible for the advertisements.

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2. The decision does not mean that Google and similar providers can never be held liable for misleading and deceptive conduct for displaying third parties’ advertisements. Recourse may still be available on the basis that Google aided, abetted, counselled or procured the misleading conduct of the advertisers or possibly for merely publishing the misleading sponsored links. 3. Australian Courts are yet to consider whether Google/the advertiser’s use of competitor’s names in headlines of sponsored links constitutes a breach of our trade mark laws. To do so would require a finding that Google’s use of the AdWord was “use as a trade mark”. Advertisers

1. Advertisers should not use a competitor’s trade mark, trading, product or domain name as the headline of its sponsored link when the ad text links to a website which does not contain any information about the competitor or its products/ services.

See section 75B of the Competition or Consumer Act 2010 (Cth) At [117] per Hayne J http://www.davies.com.au/pub/detail/531/google-victorious-in-sponsored-linksdispute-with-accc-appeal-on-foot http://www.davies.com.au/pub/detail/583/google-found-liable-for-misleadingand-deceptive-representations-in-adwords-sponsored-links ACCC v Google Inc(2012) 201 FCR 503 at [87] and [90] At [71] per French CJ, Crennan and Kiefel JJ At [70] per French CJ, Crennan and Kiefel JJ Section 120 of the Trade Marks Act 1995 (Cth)

Des Ryan, Consultant Elizabeth Godfrey, Senior Associate Aaron Yates, Lawyer

pixel pro photography south africa: CC-BY 2.0 www.flickr.com/photos/albertbredenhann/2451909582/


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Case Study 3

Lessons learned on website redirection and trade mark infringement

DRH Holdings (Australia) Limited v David Reid Homes Australia Pty Ltd [2012] FCA 1336

In this ever evolving and highly competitive online environment, businesses are pulling out all the stops to get you to their websites, for example, by causing a domain name (which contains a registered trade mark) entered into a search engine to be deliberately redirected to an unrelated or competitor’s website. However, businesses should be wary when contemplating such an action – in effecting the redirection trade mark infringement may be committed (as well as misleading and deceptive conduct).

The case of DRH Holdings (Australia) Limited v David Reid Homes Australia Pty Ltd1 is another case in a line of Federal Court decisions which have held that using a trade mark in a domain name which redirects consumers to an unrelated or competitor’s website constitutes trade mark infringement. A finding of infringement in these circumstances demonstrates a widening of the situations in which persons may be liable for trade mark infringement in Australia. It also provides trade mark owners with a broader context in which to enforce their registered trade marks. The facts of the DRH Holdings trade mark infringement case The Applicant (DRH Holdings) is a company incorporated in New Zealand, and registered in Australia as a foreign company. At all material times Mr David Reid was the sole director and local agent of DRH Holdings. DRH Holdings develops and owns a business system for the supply, design and construction of houses (“the Business”). It is the registered owner of trade marks numbers 1026582 “David Reid Homes Raising the Standard” and 1026671 “David Reid Homes”, which are used in connection with the Business.

Official GDC: CC-BY 2.0 www.flickr.com/photos/officialgdc/6235163921/


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... using a trade mark in a domain name which redirects consumers to an unrelated or competitor’s website constitutes trade mark infringement ...

On 1 April 2004 DRH Holdings and David Reid Homes Australia entered into a Master Franchise Agreement pursuant to which DRH Holdings granted David Reid Homes Australia the right to operate the Business in Australia. For various reasons the relationship failed. There was evidence before Justice Collier that after the Agreement was abandoned David Reid Homes Australia took “deliberate actions” which resulted in redirection of the website www.davidreidhomes.com to the website www.davidreidhomes. com.au. As a result of these actions, all website enquiries directed to www.davidreidhomes.com were redirected to the Australian website under the control of David Reid Homes Australia. There was evidence before the Court that over the course of several days following the abandonment of the Agreement David Reid Homes Australia “caused the websites with [DRH Holdings’] trade marks to be redirected to prevent their use by DRH Holdings or anyone else associated with the Business, and also to enable David Reid Homes Australia to make disparaging comments concerning DRH Holdings on those websites, all of which was contrary to the terms of the Agreement”. Justice Collier held that this conduct constituted trade mark infringement.

David Reid Homes Australia was ordered to refrain from establishing, maintaining, accessing, redirecting or interfering in any manner with the following domain names or with the data published at the domain names www.davidreidhomes.com.au and www.davidreidhomes.com. Other cases of website redirection and trade mark infringement In making his decision, Justice Collier did not refer to the earlier decisions of Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700 or Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2012] FCA 281 where website redirection was held to constitute trade mark infringement.2 In the Solahart case the Court found that mere use of a domain name to resolve to a website hosted from a different domain name was infringement even where there was no use of the trade mark on the website or in the URL. In the Solahart case the Court also considered that the maintenance of the domain name containing the deceptively similar trade mark was a deliberate act to funnel traffic to the website to which consumers were redirected.

In the Edgetec case the Federal Court held that Zippykerb’s (the Respondent’s) use of KWIK KERB (which was considered to be substantially identical to the Applicant Edgetec’s KWIK KERBER mark) in domain names for the purpose of redirecting internet users to Zippykerb’s website constituted trade mark infringement. This was seen to be analogous to using another person’s sign or trade mark on the front of a shop to indicate the goods and services sold within. Even though Zippykerb distinguished itself from Edgetec on its website, the Federal Court considered this to be immaterial to the enquiry of whether or not there had been a trade mark infringement. Similar to the Solahart case, in the DRH Holdings case there were “deliberate actions” by David Reid Homes Australia to direct inquiries intended for the international business to the Australian website and to make disparaging remarks. The registered trade marks in the present case were also used in the domain name to which consumers were redirected and on the offending website.


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Lessons about domain name use, website redirection and trade mark infringement For individuals and businesses

-- Unless you are authorised by the trade mark owner to do so, do not use another trader’s trade mark in a domain name to redirect a consumer to your website. For trade mark owners

When redirection constitutes trade mark infringement These cases demonstrate a broadening of what the Courts consider constitutes infringement under the Trade Marks Act 1995 (Cth). To infringe a registered trade mark a person must use as a trade mark a sign that is substantially identical with, or deceptively similar to, a registered trade mark in relation to the goods or services in respect of which the trade mark is registered or in relation to similar goods or services to those covered in the registration. To constitute trade mark infringement, the sign must be “used as a trade mark”, that is it must be used as a badge or indicator of origin of the goods or services offered. A sign that is used ‘as a trade mark’ will generally perform a ‘branding function’. The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of a brand. The context of the use complained of is also important. One often considers whether the impugned sign is prominently displayed on packaging or in advertising or on a website and not instead used for primarily descriptive or laudatory purposes.

-- mere registration of a domain name that includes a trade mark does not constitute trade mark infringement. Such conduct may constitute common law passing off or misleading and deceptive conduct particularly in circumstances where the trade mark is well and favourably known. Trade mark owners may in these circumstances also have recourse under a domain name Dispute Resolution Policy (such as the UDRP or auDRP); -- mere use of a domain name to resolve to a website hosted from a different domain name may constitute infringement, particularly when there is use of the trade mark in the domain name to which the website resolves and/or on that website (as was the case in DRH Holdings). However, even where there is no use of the trade mark on the website to which the domain name resolves or in the URL, trade mark infringement may be found. This is particularly likely if the responsible party has deliberately taken this action to divert or funnel traffic from the trade mark owner’s website to another website.

However, applying this well established infringement test to a situation where a trade mark is used in a domain name for purposes of redirection requires one to think a little outside the square. Nonetheless, on the basis of a line of current Federal Court authority this conduct can indeed constitute trade mark infringement under Australian law.

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[2012] FCA 1336 Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700 or Solahart Industries Pty Ltd v Solar Shop Pty Ltd (No. 3) [2011] FCA 884 (see http://www. davies.com.au/pub/detail/571/domain-namesin-hot-water) and Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2012] FCA 281 (see http:// www.davies.com.au/pub/detail/631/how-can-youlegally-refer-to-another-traders-trade-mark).

Michael Wolnizer, Partner Elizabeth Godfrey, Senior Associate


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R/DV/RS: CC-BY 2.0 www.flickr.com/photos/redvers/2449343843/

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Case Study 4

RELIANCE IN PATENT LITIGATION ON EXPERIMENTAL WORK REFERENCED IN SPECIFICATION

Bristol-Myers Squibb Company v Apotex Pty Ltd (No 4) [2012] FCA 1433

An important issue in the conduct of patent litigation is the use to which statements in the patent specification in suit can be put. In Bristol-Myers Squibb Company v Apotex Pty Ltd (No 4)1, the Federal Court considered whether a patent specification in suit could be used as proof of certain experimental work referred to in it. In this case, the applicants, Bristol-Myers Squibb Company (BMS) and Otsuka Pharmaceutical Co., Ltd, sought to rely on Reference Examples 1 and 2 in the specification to prove that the steps referred to in each example had been carried out and that the results referred to were indeed obtained. The respondent, Apotex Pty Ltd, objected to the admissibility of the specification for that purpose, as well as to a passage in an affidavit made by one of the inventors (Mr Aoki) that asserted what Reference Example 2 demonstrated, on the basis that there had been no compliance with rule 34.50 of the Federal Court Rules 2011.

Rule 34.50 of the Federal Court Rules 2011 Rule 34.50 of the Federal Court Rules 2011 is in the following terms: 1. If a party (the proponent) proposes to tender, as evidence in a proceeding, experimental proof of a fact, the proponent must apply for orders in relation to the experimental proof, including orders about any of the following: a) the service on other parties of particulars of the experiment and of each fact that the proponent asserts is, will or may be proved by the experiment; b) any persons who must be permitted to attend the conduct of the experiment; c) the time when, and the place where, the experiment must be conducted; d) the means by which the conduct and results of the experiment must be recorded; e) the time by which any other party (the opponent) must notify the proponent of any grounds on which the opponent will contend that the experiment does not prove a fact that the proponent asserts is, will or may be proved by the experiment.

Adriano_of_Adelaide: CC-by 2.0 www.flickr.com/photos/adriano_of_adelaide/8440172328/


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2. Evidence of the conduct and results of the experiment is admissible in the proceeding, only: a) if the proponent has complied with subrule (1) and any orders given under that subrule; or b) with the leave of the Court. 3. If an order mentioned in paragraph (1) (e) has been made, and the opponent has not complied with the order in relation to a ground, the opponent may rely on the ground only with the leave of the Court.

experimental proof whether the experiments had been carried out before or after commencement of the relevant proceeding. Justice Yates found that even though rule 34.50(1) refers to prospective steps, that rule is expressed in inclusive terms and thus it also applies to experiments conducted before the commencement of the proceeding. Matters relevant to the grant of leave The Judge found that the following factors supported the granting of leave.

BMS and Otsuka submitted that, to the extent that leave was required to enable them to rely on Reference Examples 1 and 2 as evidence of experiments carried out and results obtained, leave should be granted.

a) Importantly, the experiments to which Reference Examples 1 and 2 referred were carried out many years ago and in circumstances unrelated to the conduct of the present litigation.

Justice Yates found that rule 34.50 did apply to Reference Examples 1 and 2 and granted leave to BMS and Otsuka to rely on those examples to prove the existence of the facts in them.

b) Apotex’s objection was unusual in that parties usually proceed on the basis of the asserted truth of the matters stated in the specification, including the conduct and results recorded in the specification, unless those statements are specifically challenged. The Judge noted that, even then, there is normally no challenge to the admissibility and use of the specification.

Application of rule 34.50 to experiments conducted before the litigation commenced In deciding to grant leave, Justice Yates cited Lucent Technologies Inc v Krone Aktiengesellschaft (No 2).2 In that case, Justice Lindgren held that Order 58 rule 31, the predecessor rule to rule 34.50, applied to

c) It was open to Apotex to allege that the Reference Examples contained a false suggestion or misrepresentation in relation to

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the steps that were carried out or the results obtained (a basis for revocation of the patent) but it did not do so. d) If any issue was expected to arise out of tender of the specification, and the use to which it would be put, that matter should have been raised at the case management conference before the hearing, if not earlier. e) Discovery had already been given in relation to reproductions of prior art methods carried out by Otsuka, which the parties seemed to accept included discovery in respect of the Reference Examples. Apotex alleged that it was unable to test the evidence of the experiments in the Reference Examples without access to supporting documentation. In response to this, Justice Yates said that “it was always within its (Apotex’s) power to seek specific discovery on that issue or, perhaps, to endeavour to obtain documents by issuing a notice to produce.”


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The Judge also pointed out that as Apotex had elected to test the evidence of the experiments described in the discovered prior art documents by cross-examining Mr Aoki, it was equally able to test the evidence of the experiments referred to in the Reference Examples by cross-examining him. Earlier in the proceedings, Apotex applied under Order 58 rule 31 (the predecessor to rule 34.50) to tender its own experimental evidence. The Judge noted that had Apotex wished to challenge Reference Examples 1 and 2, it could have conducted its own experiments and applied under Order 58 rule 31 or rule 34.50 to tender proof of those experiments. The Judge concluded by noting that any disadvantage which Apotex perceived it had suffered could have been remedied by Apotex itself. Apotex must have known that the specification (including a description of the invention and the best method of performing it) would be tendered. Other objections to admissibility: hearsay and unfairly prejudicial evidence The Judge noted that the specification was admissible as evidence in the proceeding, and for a variety of purposes. He also noted that the statements in the specification concerning Reference Examples 1 and 2 were hearsay. However, he found

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that the hearsay rule did not apply to those statements because section 60 (1) of the Evidence Act provides that the hearsay rule does not apply to evidence of a previous representation that is admitted because it is relevant for a purpose other than proof of an asserted fact. Section 136 of the Evidence Act provides: The court may limit the use to be made of evidence if there is a danger that a particular use of the evidence might: a) be unfairly prejudicial to a party; or b) be misleading or confusing. The Judge found that there was no danger that the evidence would be misleading or confusing or that use of the Reference Examples as experimental proof would be unfairly prejudicial to Apotex. Section 135 of the Evidence Act provides that the Court may refuse to admit evidence if its probative value is substantially outweighed by the danger that the evidence might be unfairly prejudicial to a party, or be misleading or confusing, or cause or result in undue waste of time. The Judge also found that the conditions for the exercise of the discretion under section 135 of the Evidence Act to reject the evidence of the Reference Examples as experimental proof were not present.

Admissibility of the contested passage in Mr Aoki’s affidavit The Judge did not consider the particular contested passage in Mr Aoki’s affidavit to be experimental proof. When taken together with another passage in his affidavit (to which no objection had been taken), he found that it merely identified the type of crystals referred to in Reference Example 2, about which much evidence had already been given in the proceeding. He accordingly admitted the contested passage into evidence.


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Matters to consider in patent litigation The case illustrates some of the matters that the parties to patent litigation (involving issues of infringement and revocation) should consider at an early stage in the proceeding. These include: 1. In the case of the patentee - what use may or will be made of the Examples in the specification in suit - whether it is necessary to obtain leave under rule 34.50 of the Federal Court Rules 2011 in respect of any of those Examples - discovery may have to be given in respect of the Examples. 2. In the case of the respondent - whether any statement in the specification in suit should be specifically challenged and/ or whether there is a basis for asserting that it contains a false suggestion or representation - whether specific discovery in respect of any of the Examples should be sought - whether it should itself conduct its own experiments, and make relevant application under rule 34.50 of the Federal Court Rules 2011 - whether, and if so when, there should be an objection to tender of the specification.

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[2012] FCA 1433 (1999) 94 FCR 124

Richard Jarvis, Consultant Cara Gerace, Lawyer

itupictures: CC-by 2.0 www.flickr.com/photos/itupictures/8076211216/


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Case Study 5

SUNNY ROO trade mark deceptively similar to SUNNY BOY trade mark

SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483

In a trade mark dispute having its origins in the Australian Federal government’s solar panel subsidy scheme, the Federal Court in SMA Solar Technology AG v Beyond Building Systems Pty Ltd1 found that use of the mark SUNNY ROO by Beyond Building Systems Pty Ltd (BBS) constituted passing off and misleading and deceptive conduct, and was an infringement of SMA’s registered trade mark SUNNY BOY in respect of inverters and inverter installation services. By the time of the trial BBS was in liquidation. The applicant, SMA Solar Technology AG (SMA), also alleged that a company related to BBS, Ipevo Pty Ltd (Ipevo) was jointly liable for BBS’ infringing activities. Ipevo’s joint liability was established by the terms of a trade mark licence Ipevo had granted BBS and, separately, because Ipevo and BBS both would have known that BBS’ use of the SUNNY ROO mark on its inverters was likely to mislead consumers into believing the goods were connected with SMA. 1 2

SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483. Issues of liability and quantum were split, so the court did not need to determine the amount of this damage.

Des Ryan, Consultant Fiona Galbraith, Lawyer Chandra Marsono: CC-by 2.0 www.flickr.com/photos/chandramarsono/2283251419/

Solar products in trade mark infringement dispute Before the Australian Federal government introduced a subsidy scheme for solar panels, SMA was the main player in Australian solar inverter market: it had an 80-85% market share. SMA sold its inverters under the mark SUNNY BOY and a number of other “Sunny” marks. Solar inverters convert the direct current of electricity generated by sunlight collected on solar panels into alternating current. BBS was an installer and supplier of solar panel systems, and initially purchased its solar inverters from SMA. Due to the boom in the solar panel market following the government subsidy, and subsequent inverter supply shortages, BBS began manufacturing its own inverters. BBS began selling those, and other items including solar panels, under marks such as SUNNY ROO, SUNNY ROO PRODUCTS and a SUNNY ROO logo featuring a kangaroo in sunglasses. Actual confusion between Sunny Roo and Sunny Boy; demonstrated infringing conduct Evidence was given by SMA’s employees that SMA was frequently contacted by people complaining about BBS’ SUNNY ROO solar inverters. The court accepted that SMA had a strong reputation in the mark SUNNY BOY and that consumers actually mistakenly thought that SUNNY ROO products were SMA’s SUNNY BOY products.


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The court found damage to SMA’s goodwill had occurred2 and BBS had engaged in passing off and misleading and deceptive conduct in contravention of the Australian Consumer Law. Trade mark infringement – goods not of the same description

a director of Ipevo) assigned his trade mark registration to Ipevo, who then licensed the use of the registered mark to BBS. The court found that if Ipevo had licensed BBS to use the SUNNY ROO mark and the SUNNY ROO logo, that was sufficient to establish Ipevo’s joint liability. It was therefore necessary to consider the scope of the trade mark licence.

SMA’s SUNNY BOY trade mark registration specified inverters but not energy generators such as solar panels. The court found that the marks SUNNY ROO, SUNNY ROO PRODUCTS and the SUNNY ROO logo were deceptively similar to SUNNY BOY. Thus, BBS’ use of these various SUNNY ROO marks in respect of inverters and inverter installation services infringed SMA’s registration. Interestingly, the court considered that solar panels were not goods of the same description as solar inverters, on the basis of the technical difference between an energy generator and an energy converter, and that one was not substitutable for the other. This led to the finding that use of the SUNNY ROO marks on solar panels did not infringe SMA’s registration. On the other hand, installation services for inverters were held to be services closely related to inverters and therefore there was infringement.

Interestingly, the trade mark licence did not expressly identify which trade marks Ipevo had licensed to BBS. Nevertheless, the parties agreed that a licence to use the SUNNY ROO logo had been granted to BBS. Ipevo argued that it had not granted BBS a licence to use SUNNY ROO “without more”, so Ipevo could not be jointly liable for contraventions arising from BBS’ uses of SUNNY ROO without the logo.

Joint liability of Ipevo – scope of trade mark licence

- SUNNY ROO “without more” was a derivative of the licensed SUNNY ROO logo registration, so Ipevo had granted BBS a licence to use SUNNY ROO without the logo.

A director of BBS obtained a trade mark registration for the SUNNY ROO logo. The BBS director (who was also

The court rejected Ipevo’s interpretation of the licence because: - Ipevo had granted BBS a licence to use its “intellectual property”; - “intellectual property” included improvements to the intellectual property, and the improvements included modifications or derivatives of the intellectual property made during the licence term. This covered modifications or derivations of the SUNNY ROO logo; and

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Given the scope of the licence, and the involvement of common directors, the court found Ipevo was jointly liable for and was knowingly involved in, all BBS’ infringing uses of SUNNY ROO. Key lessons for trade mark owners arising from this case 1. Keep good records of any instances of consumers being confused between your and your competitor’s products, as they might be invaluable in any action fending off a competitor coming too close to your trade marks. 2. In a licensing dispute, a party’s actions are likely to be more closely scrutinised where the parties are in a non-arms’ length relationship. 3. Draft trade mark and other IP licences carefully to ensure the IP being licensed is clear to avoid unintended consequences, such as joint liability for a licensee’s infringing activities.


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Case Study 6

Full Federal Court agrees that copyright subsists in original printer cartridge chart Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd [2012] FCAFC 162

In a continuation of a battle between two printer cartridge resellers, the Full Federal Court has affirmed the legal principles pronounced by the High Court in Ice TV v Nine Network Australia1 which govern the nature and level of skill, judgement and human effort required for copyright to subsist in a compilation as an original literary work. It is clear from the Full Court’s decision that: -- For a work to be original it must originate from the author as opposed to having been copied; -- An original work must be the product of human intellectual effort, but need not have literary merit; -- Copyright protects the form of expression of information, not the information itself; and -- When determining whether copyright subsists in a work, the work should be examined as a whole rather than as individual elements.

The Federal Court’s decision at first instance Printer consumable company Dynamic Supplies Pty Ltd had, since 2007, maintained a database, called the ‘Navision database’, which stored data on each of the cartridge products it manufactured and sold. In 2008, Mr Campbell, a Dynamic employee, extracted part of this data and arranged it into a printer cartridge compatibility chart. This involved selecting which information was relevant to customers and setting out the information in columns for ease of use, which was then published on Dynamic’s website. Tonnex, a trade rival of Dynamic, later produced its own compatibility chart containing parts of the Dynamic chart. Initial decision of the Federal Court As previously reported2, in April 2011, Justice Yates of the Federal Court relevantly found that in producing its chart, Tonnex had infringed the copyright subsisting in Dynamic’s printer cartridge compatibility chart. Tonnex appealed Justice Yates’ decision to the Full Court of the Federal Court of Australia.

Aidan L: CC-by 2.0 www.flickr.com/photos/aidanl/526380251/


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Simplicity in the layout ... can be a virtue and does not deprive a work of originality ...

The Full Court’s decision In November 2012, the Full Court unanimously affirmed Justice Yates’ decision and dismissed Tonnex’s appeal, finding that copyright subsisted in Dynamic’s compatibility chart and that therefore Tonnex had infringed Dynamic’s copyright. Tonnex’s arguments on appeal regarding “intellectual effort” Broadly speaking, Tonnex’s appeal challenged that there was sufficient intellectual effort exerted in the production of the compatibility chart by Dynamic to render it an original literary work. In support of this contention, Tonnex relied upon two main grounds: 1. That the formatting and selection of data to be included in the compatibility chart had principally occurred at the time the data was entered into the Navision database, and that Mr Campbell had exerted negligible human intellectual effort in transferring this information into the compatibility chart; and 2. That Mr Campbell’s written evidence in support of his intellectual effort was contradicted by his oral evidence given during the trial, and that the trial judge was therefore wrong to accept that earlier written evidence.

Subsequent to the hearing of the appeal, Tonnex made a further application seeking to have the issue remitted to trial in light of further evidence. Tonnex did not dispute the finding that, should copyright exist, it had infringed that right.

Importantly, the court focused on the fact that Mr Campbell had made an assessment of what information from the Navision database would be included in the compatibility chart and how that information would be arranged.

Mr Campbell’s “intellectual effort” evidence

In fact, the Full Court stated that these factors were “critical” to the outcome of the case.

Regarding Mr Campbell’s evidence, Tonnex argued that it was contradictory and that part of it was incorrect. In essence, Tonnex sought to show that the real work had been done in creating the Navision database, rather than the compatibility chart and that Mr Campbell’s evidence in support of the latter was flawed. The Court disagreed and held that there was no inconsistency, and that since it had not been put to Mr Campbell at trial that his evidence was incorrect, it was impermissible to pursue the issue on appeal. Was Dynamic’s printer cartridge compatibility chart “original”? In dismissing the appeal, the Full Court found that Mr Campbell’s evidence had established that the compatibility chart was original and thus protected by copyright.

There was significantly more information stored in the Navision database than that which was included in the compatibility chart, which reflected the selection process undertaken. Additionally, reference was made to the trial judge’s findings that some material had been deliberately duplicated in the ‘product description’ fields to aid customer searching. Simplicity in the layout, it was also said, can be a virtue and does not deprive a work of originality unless it reflects the fact that there is only a limited number of ways the work could be expressed, such as the TV Schedules in the Ice TV case. The court emphasized that the fact the information had been extracted from the database did not prevent copyright subsisting in the compatibility chart.


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Lessons for copyright litigators in Australia This case provides guidance as to the considerations that an Australian court will have regard to when determining whether copyright subsists in a work that is sourced or derived from an earlier work: 1. The fact the compiled information is taken from an earlier source does not prevent copyright subsisting in the compilation; Tonnex’s late application to have the copyright subsistence issue remitted in light of further evidence A final submission was made by Tonnex subsequent to the hearing of the appeal, based on a list produced by Mr Campbell called the ‘tab delimited price list’. This was an earlier list, produced from material on the Navision database and Tonnex sought to argue that the compatibility chart in issue was copied from this list. The application was fraught with procedural issues and was said to be inconsistent with fundamental case management principles. The application raised another point that should have been pursued at trial, or during the appeal hearing at the very latest. The court noted that copyright would have subsisted in the tab delimited price list, the compatibility chart or both, and that Tonnex would therefore be guilty of infringement regardless. To add insult to injury, costs of this application were awarded on an indemnity basis due to the lateness of its filing and the fact it did not reveal any error in the trial judge’s reasoning.

2. Whether copyright subsists in a literary work will depend on whether sufficient human intellectual effort has been exerted in its reduction to a material form; 3. In determining whether sufficient human intellectual effort has been exerted, the extent to which the information has been selected and filtered, as opposed to merely copied in its entirety, will be highly relevant; and 4. The way in which that information is then arranged and the thought that has gone into the arrangement is also relevant to the issue of copyright subsistence. Finally, the case illustrates the importance of raising all relevant arguments at trial and of ensuring that important points are not left until the appeal (or later). Failure to follow this approach may result in claims being compromised by procedural issues and harsh adverse costs orders being made by the court.

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(2009) 239 CLR 458 Federal Court: Cartridge reseller copied compilation of printer compatibility and misled with ‘Australian product’ claims

Ian Pascarl, Partner Aaron Yates, Lawyer Andrew Black, Seasonal Law Clerk


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Horia Varlan: CC-BY 2.0 www.flickr.com/photos/horiavarlan/4522267829/

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Case Study 7

Lundbeck extension of time upheld in LEXAPRO extension of pharmaceutical patent term saga

Aspen Pharma Pty Ltd and Ors and Commissioner of Patents and H Lundbeck [2012] AATA 851

The Administrative Appeals Tribunal (AAT) has handed down the latest decision in the LEXAPRO saga, upholding an Australian Patent Office decision to grant patentee H Lundbeck A/S an unprecedented extension of time of 121 months to request a pharmaceutical patent term extension of Australian Patent No. 623,144, covering escitalopram (LEXAPRO).

Background to the LEXAPRO decision Escitalopram, a selective serotonin reuptake inhibitor (SSRI) and the active compound in LEXAPRO, is the (+)-enantiomer of the racemate citalopram. The racemate citalopram, comprising both the (+)-enantiomer and (-)-enantiomer, was earlier patented and sold as an antidepressant under the name CIPRAMIL, having first received marketing approval on 9 December 1997. However escitalopram, the (+)-enantiomer, was subsequently found to be more efficacious than either the racemate or the (-)-enantiomer. Accordingly, Lundbeck applied for a patent for the single enantiomer escitalopram, and obtained marketing approval for the pharmaceutical LEXAPRO on 16 September 2003. The initial 20 year patent term for the Australian Patent covering escitalopram, was due to expire on 13 June 2009. Based on the 16 September 2003 inclusion of LEXAPRO in the Australian Register of Therapeutic Goods (ARTG), Lundbeck applied under section 70 of the Patents Act 1990 to extend the term of the patent until 13 June 2014. An application for a pharmaceutical extension of term under section 70 must be made during the term of the patent, and within six months after the latest of (a) the date of grant of the patent; (b) the date of first

EPSOS.DE: CC-by 2.0 www.flickr.com/photos/epsos/8116279888/


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The Applicants questioned the Commissioner’s findings that Lundbeck genuinely believed in July 1999 that a s70 extension of term application could not be based on the racemate, CIPRAMIL.

inclusion in the ARTG; or (c) the date of commencement of the extension of the term provisions, being 27 July 1999. Patent term extension and validity of Lexapro patent challenged The basis for the extension was questioned (along with the validity of the patent) by Alphapharm and others, with the matter reaching the Full Federal Court in 2009. In that instance, the majority held that the claims were valid, finding that the disclosure of the racemate in the earlier CIPRAMIL patent did not anticipate the separate or isolated (+)-enantiomer escitalopram (LEXAPRO) as claimed. However, with regard to the extension of patent term, the Full Federal Court unanimously upheld the first instance finding that the first inclusion in the ARTG of goods which contained or consisted of the (+)-enantiomer escitalopram, was the earlier inclusion of the racemate CIPRAMIL on 9 December 1997. As such, the application for an extension of term was not based on the correct entry in the ARTG, and was thus invalid. Given that CIPRAMIL first received marketing approval prior to commencement of the current extension of term provisions, the latest date for an application to be made based on the inclusion of CIPRAMIL in the Register was within six months of the date of commencement of the provisions, being 27 July 1999. At the conclusion

of the Full Federal Court case in 2009, the prescribed period for applying for a pharmaceutical extension of term based on the correct earlier inclusion had elapsed. Lundbeck filed application for extension of time on last possible date Australian patent law includes provisions in section 223 for the grant of extensions of time for doing a ‘relevant act’ that is required to be done in a certain time, where failure to do the act within the prescribed time results from, inter alia, an error or omission by an applicant or patentee or his or her agent or attorney. The day before the 20 year patent term was due to expire (and the last possible date for an application to be made) Lundbeck filed an application for an extension of time with the Australian Patent Office, to enable an application for an extension of patent term to be made based on the earlier listing of the racemate CIPRAMIL. The Commissioner’s delegate awarded the extension of time, finding that the original deadline was missed due to a genuine misunderstanding of the law on the part of the patentee, which constituted an ‘error or omission’ for the purpose for section 223. Not surprisingly, a number of pharmaceutical manufacturers including Alphapharm Pty Ltd, Apotex Pty Ltd, and Aspen Pharma Pty Ltd,

(hereafter ‘the Applicants’) – who had marketed their own escitalopram products throughout the intervening period – lodged an application for review of the Commissioner’s decision with the Administrative Appeals Tribunal (AAT). The Administrative Appeals Tribunal (AAT) Decision on the Lundbeck case The Applicants questioned the Commissioner’s findings that Lundbeck genuinely believed in July 1999 that a section 70 extension of term application could not be based on the racemate, CIPRAMIL. Furthermore, the Applicants disputed that Lundbeck genuinely misunderstood the relevant law, and thus argued there was no ‘error or omission’ as required to support an extension of time. Was there an “error or omission” to support an extension of time? In 1999, within six months of the date of commencement of the extension of the term provisions, Mr Petersen, an attorney for Lundbeck, was of the view that the extension of patent term could only be based on the first regulatory approval of goods “containing or consisting of” the single enantiomer, being LEXAPRO, and not the racemate CIPRAMIL. In fact, in 1999 Lundbeck had not considered whether the extension could or in


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The AAT agreed ... that Lundbeck’s interpretation of the Act was consistent with the views of the profession at the time ...

fact should be based on the inclusion of CIPRAMIL rather than LEXAPRO in the ARTG. However, contrary to Lundbeck’s view, the Full Federal Court subsequently held in 2009 that the application for an extension of term application should have been based on the inclusion of CIPRAMIL in the Register, and the latest date for an application to be made was thus 27 July 1999 (within six months of the date of commencement of provisions). Lundbeck submitted that as a result of its genuine misunderstanding of the law it failed to file the application based on the inclusion of CIPRAMIL, and furthermore, if not for this error, then it would have filed an application in time. In light of Mr Petersen’s submissions, the AAT considered that there was a relevant “error or omission” as evidenced by Lundbeck’s conduct. Was Lundbeck’s conduct reasonable? The Applicants also claimed that Lundbeck’s conduct was such as to disentitle it from being granted an extension. Some of the reasons cited by the Applicants included: -- Overall length of, and failing to satisfactorily justify, the delay in applying for an extension of time; -- Misleading the delegate of the Commissioner by not disclosing frankly all of the conduct, knowledge, and advice received;

-- Adopting and maintaining the clearly erroneous view of the position taken by it before and even after the decisions of the Federal Court; and -- Failing to make a contingent application for an extension of time, which in itself was a calculated commercial risk. Of note, Lundbeck was informed of possible reduction of the patent term by their Australian attorneys, Watermark, when proceedings were first commenced by Alphapharm in 2005. At that time, the attorneys at Watermark did raise the possibility of applying for an extension of time as contingency in the event Alphapharm succeeded in the Federal Court action. However, Lundbeck maintained that it did not consider this suggestion from Watermark as formal or final advice, but rather as a preliminary comment. The matter was immediately referred to Lundbeck’s solicitors, Corrs, for further comment and was not acted upon. Lundbeck led evidence from two experienced Australian attorneys in support of the reasonableness of their conduct – Mr Michael Caine, a partner of Davies Collison Cave, and Ms Shahnaz Irani, a principal of Spruson & Ferguson. Mr Caine and Ms Irani both indicated that the Federal Court’s interpretation of the words “contain, or consist of” in section 71(2)(b), did not accord with the views held in the profession at the time. Additionally, both Mr Caine and Ms Irani indicated

that if any “contingent” extension application were to have been filed prior to the outcome of the Federal Court proceedings, the Commissioner would have deferred consideration of the application until the final conclusion of the court proceedings. The AAT agreed with the views of Mr Caine and Ms Irani that Lundbeck’s interpretation of the Act was consistent with the views of the profession at the time, and that no practical or useful purpose would have been served by filing an application on a contingent basis as it would not have been considered by the Patent Office until the court proceedings had been resolved. Furthermore, the AAT held that the “advice” Lundbeck received from attorneys at Watermark was merely preliminary in nature, simply indicating a possible course of pre-emptive or protective action in respect of litigation that had only just commenced. Did Lundbeck mislead the Delegate? The Applicants submitted that Lundbeck had misled the delegate in applying for the extension of time by not disclosing all advice it had received in respect of the matter. Specifically, Lundbeck did not disclose to the delegate the substance of the initial advice received from Watermark and Corrs, regarding possible reduction of patent term and the possibility of making a contingency application. Further, the Applicants suggested that the existence of the advice


IP Update

indicated that Lundbeck and their attorneys could not claim that they had genuinely misunderstood the extension of term provisions. However, on this point, the AAT again stressed the preliminary nature of the advice received by Lundbeck, concluding that in making an application for the extension of time, it was in fact not necessary or appropriate for Lundbeck to inform the delegate of such preliminary observations. Administrative Appeals Tribunal Outcome In light of the above considerations, the AAT upheld the decision of the delegate to grant Lundbeck an extension of time to apply for an extension of term. The AAT decision does raise a number of questions; namely, how far does a patentee’s obligation extend in providing a full and frank disclosure, and to what end can s223 rectify an “error or omission”? Unsurprisingly, given the significant commercial interest in escitalopram, Aspen Pharma, Alphapharm and Apotex appealed the decision to the Federal Court on 21 December 2012. The matter has been referred to the Chief Justice for direction as to whether the appeal should be heard by the Full Federal Court.

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Mikey G Ottawa: CC-by 2.0 www.flickr.com/photos/ mikeygottawa/3882637487/

NSD2236/2012 https://www.comcourts.gov.au/file/Federal/P/ NSD2236/2012/actions

Mark Roberts, Partner Amanda Lee, Trainee Patent Attorney

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Case Study 8

IS A METHOD OF TREATMENT OF THE HUMAN BODY A PATENTABLE INVENTION? Apotex Pty Ltd v Sanofi-Aventis Pty Ltd

In what will undoubtedly be an important decision for the medical and pharmaceutical industries, the High Court will this year1 consider:1. whether a claim for a method of treatment of the human body is a patentable invention within the meaning of s 18(1)(a) of the Patents Act 1990 (Cth); and 2. whether a claim for a second or subsequent medical use of a previously known product claims a patentable invention. We previously reported the Full Federal Court’s decision in Apotex Pty Ltd v Sanofi-Aventis Pty Ltd (No. 2) [2012] FCAFC 102.2 On 14 December 2012, the High Court granted Apotex special leave to appeal from that decision. The parties have now filed their written submissions in the Appeal.3

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Probably in April or May 2013 In our case study 3a in September 2012 Apotex on 25 January 2013 and Sanofi-Aventis on 15 February 2013 4 [2012] FCAFC 102 at [193] 5 [2012] FCAFC 102 at [193]; Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 at 17G; Bristol-Myers Squibb Co v FH Faulding & Co (2000) 97 FCR 524 at [16] 6 [2012] FCAFC 102 at [193] 7 (1959) 102 CLR 252 8 (1959) 102 CLR 252 at 269 9 Appellant’s submissions, para 17 10 Appellant’s submissions, paras 36 – 37. The method in this case is a “method of preventing or treating … psoriasis, which comprises administering to the recipient an effective amount of … [leflunomide]”.

Richard Jarvis, Consultant RichDelux: CC-by 2.0 www.flickr.com/photos/richdelux/3140104720/

11 12 13 14 15 16 17 18 19 20

Respondent’s submissions, paras 19 – 29 Respondent’s submissions, paras 39 – 48 Respondent’s submissions, paras 30 – 38 Respondent’s submissions, paras 49 – 60 Respondent’s submissions, paras 36 – 38 Respondent’s submissions, paras 61 - 66 Appellant’s submissions, paras 2, 46 – 53 Appellant’s submissions, para 51 Appellant’s submissions, para 48 “method of preventing or treating … psoriasis, which comprises administering to the recipient an effective amount of … [leflunomide]”; [2012] FCAFC 102 at [37], [40], [125] – [128] 21 Respondent’s submissions, para 72 22 In our case study 3a in September 2012

Issue (1) – patentability of a method of treatment of the human body Before the Full Federal Court, Apotex submitted that claims to methods of medical treatment should not be patentable. The Full Court rejected that submission. In doing so, Justices Bennett and Yates observed that the patentability of methods of treatment represented “orthodoxy in Australian patent law”.4 They also observed that, both before and since the Patents Act 1990 was passed, it had been commonplace for patents to be granted for methods of treatment.5 They also noted that although it had ample opportunity to do so in recent years, the Australian Parliament had not been persuaded to legislate to change the Patents Act to exclude such methods from patentability.6 S18(1)(a) of the Patents Act requires that the claimed invention be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies 1623. In National Research Development Corporation v Commissioner of Patents (NRDC)7, the High Court said that “the right question” in this regard was whether a claimed invention is “a proper subject of letters patent according to the principles which have been developed for the application of section 6 of the Statute of Monopolies?”.8


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Sanofi-Aventis has noted that no decision of the Federal Court or High Court has upheld the exclusion of methods of treatment from patentability on the grounds that they are “non-economic”.

Apotex’s Submissions It appears from Apotex’s submissions that Apotex will argue that, according to the High Court’s dicta in the NRDC case, the answer to that question with respect to methods of treatment of humans was “probably not”.9 Furthermore, Apotex will argue that the High Court in the NRDC case saw methods of treatment as remaining outside the broader concept of invention it was articulating and that a method of treatment is “essentially non-economic”, particularly where the question is whether the physician’s intent accords with the claimed method.10 Sanofi-Aventis’ submissions On the other hand, it appears from Sanofi-Aventis’ submissions that it will argue that given the wording and context of the Patents Act 199011, the fact that methods of treatment have been held to be patentable at the Federal Court level12, and the fact that no High Court decision has held to the contrary, methods of treatment of the human body are patentable.13 Furthermore, Sanofi-Aventis has noted that no decision of the Federal Court or High Court has upheld the exclusion of methods of treatment from patentability on the grounds that they are “non-economic”.14

Also, to the extent that there might be any exclusion of methods of treatment on the ground of “general inconvenience” as opposed to the matter being “non-economic”, Sanofi-Aventis will apparently argue that that ground is not open to Apotex15, and, in any event, is not an appropriate basis for excluding methods of treatment from patentability.16 Issue (2) – patentability of the second or subsequent use of a previously known product Apotex’s alternative argument is that methods of treatment of the human body are not patentable if they involve a second or subsequent use of a previously known product.17 The rationale given for this is that an invention limited by purpose is not patentable.18 That is, a claim to a new purpose is not a manner of manufacture. Sanofi-Aventis’ submissions in this regard note that, inter alia, the Full Court’s construction of the relevant claim20 did not compel an enquiry into the subjective purpose or “state of mind” of the medical practitioner. Rather, the construction required an objective assessment to be made of the object or end in view of the medical practitioner in prescribing or administering leflunomide for the treatment of the patient.21

Section 117 – Full Federal Court decision As we also previously reported22, the Full Court relied on Apotex’s own Product Information Document (PID) as well as expert evidence to determine whether section 117 would apply. The evidence established that psoriasis is a diagnostic criterion of psoriatic arthritis (PsA), and that patients with psoriatic arthritis will have or eventually develop psoriasis. Thus it was accepted that rheumatologists would routinely prescribe leflunomide to treat PsA as well as psoriasis in patients presenting with concurrent conditions. Furthermore, although the PID expressly disclaimed the treatment of psoriasis in the absence of manifestations not associated with arthritic disease, the Full Court agreed with the primary Judge and construed the double negative as a positive instruction by Apotex for the treatment of psoriasis associated with arthritic disease. On that basis, the Full Court concluded that either of sections 117(2)(b) or (c) would be sufficient to engage the application of section 117(1) and render Apotex liable for infringement. Apotex’s application for special leave to appeal Apotex’s application for special leave to appeal the Full Court’s decision in respect of this point will be heard at the commencement of the hearing of Apotex’s Appeal.


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March 2013

Raising the bar It is not long before commencement on 15 April 2013 of most provisions of The Intellectual Property Laws Amendment (Raising the Bar) Act 2012. This is the most significant amendment to Australia’s intellectual property laws since the Patents Act 1990 was enacted and now is the time to ensure you are ready to deal with the impact of the new law. NEW REQUIREMENTS FOR PATENT APPLICATIONS The Act raises the requirements for patentability (particularly inventive step), and the description requirements for patent specifications, for all applications filed from 15 April 2013, and for patent applications filed prior to that date if an examination request has not been filed by 12 April 2013.

PREPARING FOR RAISING THE BAR COMMENCEMENT To ensure that patent applications are subject to the current, more lenient patentability and description requirements, patent applicants can take the following actions by no later than Friday, 12 April 2013. 1. Request examination of any pending patent applications. 2. Enter the national phase or file a complete patent application (as opposed to a provisional application) in Australia with an examination request. 3. File any divisional applications required in view of lack of unity objections or to cover separately disclosed inventions with a request for examination. 4. If examination will not be requested, consider amending pending applications to include additional description or examples, or to recite a specific, substantial or credible use, as required under the new law. CHANGES TO EXAMINATION REQUEST AND ACCEPTANCE PERIODS You will need to ensure that you are ready to deal with shortened time periods for requesting examination and for securing acceptance of a patent application after commencement of the new law. From 15 April 2013 the period for requesting examination following the issuance of a Direction to Request Examination will be reduced from 6 months to 2 months and the current 21 month period within which an application must be accepted (following issuance of the first examination report) will be reduced to 12 months. As patent examiners will have an improved ability to maintain objections under the new law it is likely to be necessary for examination issues to be argued at a hearing more often than is currently the case. In view of the shortened acceptance period it will be important for applicants to progress examination quickly to allow time for objections to be resolved and for hearings to take place.


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Rob YOung: CC-by 2.0 www.flickr.com/photos/rob-young/2833238084/

Changes to Trade Mark Opposition Case Management

Once the Statement of Ground of Particulars is filed, it will be open to the parties to request a cooling off period of six months which may be extended once more by six months.

Timeframes

Enforcement

The period to file a Notice of Opposition and the period to file evidence-in-reply have been shortened from three months to two months. The ability to obtain an extension of time to file Notice of Opposition on the basis that further time is required to undertake genuine research or on the basis of negotiations with the applicant, has been removed. Moreover, it will be more difficult to obtain extensions of time to file evidence and this will only be allowed if a party has acted promptly and diligently at all times throughout the period.

The Act introduces new summary offences which have lower thresholds of fault and lower penalties. The maximum penalty for indictable offences has also been increased to fall more in line with other IP legislation. In addition, it will now be possible to obtain additional damages in trade mark infringement proceedings.

There are significant changes to opposition procedures, the most significant of which are:

Notice of Opposition

A Notice of Opposition will now comprise two documents: i) A Notice of Intention to Defend; and ii) A Statement of Ground of Particulars due one month from the filing of the Notice. If grounds are not sufficiently particularised then the Registrar has the power to amend the Statement to remove certain grounds or to dismiss the opposition outright. The ability to later amend the Statement is limited and amendments will only be allowed if the Registrar is satisfied that it relates to information which the opponent could not have reasonably have known at the time of filing the Statement. In a positive development, once the Statement of Ground of Particulars is filed then the applicant must file a Notice of Intention to Defend the opposition otherwise the application will lapse.

Customs Changes The onus has shifted to the importers of seizured goods to make a claim for the release of the goods if they wish to have them returned. This is a significant change as under the current system it is often difficult to track down counterfeit importers . As a result of the changes it is hoped importers of counterfeit product will simply allow product to be impounded by customs. This will mean that trade mark owners will often not have to do anything to ensure counterfeit goods never get on the market (thus cutting enforcement costs) The Act also gives Customs increased powers to provide contact details for the importer and exporter of the seizured goods and allows for inspection of seized goods. On the minus side time limits for taking action have been reduced (so they are no longer TRIPS compliant). For more information on the Raising the Bar amendments and how they may affect you, please visit davies.com.au/raisingthebar


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March 2013

Practice Update 1

Federal Magistrates Court reforms: new name and expanded intellectual property jurisdiction

Under legislation passed by Parliament in November 2012, the Federal Magistrates Court is soon to be renamed the Federal Circuit Court of Australia. These changes follow on from other reforms also passed last year, which will see the expansion of the Court’s jurisdiction to include more intellectual property matters. New name for the Federal Magistrates Court The Federal Magistrates Court of Australia will be renamed the ‘Federal Circuit Court of Australia’, under legislation passed by the Senate on 19 November 2012. According to former AttorneyGeneral Nicola Roxon (who oversaw the legislative reforms), the proposed change is designed to more accurately reflect the Federal Magistrates Court’s ‘modern role and its accessibility for all court users’.1 It will also reflect the ‘prominence of its [the Court’s] circuit work to regional areas and the federal nature of its jurisdiction’.2 Federal Magistrates will also be renamed Judges under the legislation, to better reflect their important role in the judicial system.3

Expansion of the Federal Magistrates Court’s intellectual property jurisdiction The court’s name changes, which will come into force in the first half of 2013, will supplement the Raising the Bar legislative reforms, which expand the jurisdiction of the Federal Magistrates Court as of 15 April 2013 to include more intellectual property cases, including:

The government’s court reform agenda Both pieces of legislation are part of the government’s current court reform agenda, which is designed to provide greater certainty around the roles and responsibilities of the federal courts. The broader court reform agenda, which commenced in 2009, aims to improve judicial transparency, accessibility and timely resolution of disputes.

-- matters arising under the Trade Marks Act, including trade mark infringement and rectification matters and appeals from decisions of the Registrar of Trade Marks. -- matters arising under the Designs Act, including design infringement and revocation matters. This means that the Federal Circuit Court will have substantially the same jurisdiction as the Federal Court of Australia for design matters, subject to one exception in relation to hearing appeals.4 Prior to this change, the Federal Magistrates Court could only hear civil copyright matters.

SalFalko: CC-BY 2.0 www.flickr.com/photos/safari_vacation/6260723020/

1

2 3 4

Attorney-General for Australia, ‘Introducing the Federal Circuit Court of Australia’ (Media Release, 13 September 2012). Ibid. Ibid. The Federal Circuit Court will not be able to hear an appeal from another court under section 87 of the Designs Act: Explanatory Memorandum to the Raising the Bar legislative reforms, page 115.

Chris Jordan, Partner Jessica Sapountsis, Graduate Lawyer


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Practice Update 2

Europe nearly has a Unitary Patent – 2014?

Aimed at stimulating business in the single European market, a new European patent package is to provide a Unitary Patent (UP) automatically valid in 25 member states of the European Union (EU) with associated reductions in validation costs, and a single Unified Patent Court system intended to promote legal certainty with reduced litigation costs. In Brief on the European Unitary Patent The European Parliament recently voted in favour of the Unitary Patent Regulation. The vote further facilitates a Unitary Patent to be granted by the European Patent Office (EPO) valid in 25 out of the 27 EU member states, but not in other states of the European Patent Convention (EPC) which will require separate validation, such as Switzerland and Turkey. The UP and UPC will run as an alternative or parallel to existing options, at least for transitional periods, and will significantly reduce the cost of obtaining pan-EU patent protection. One concern is the power of an untested Unitary Patent Court (UPC) to issue decisions which will have EU-wide effect. This is both an advantage

(to avoid litigation costs in multiple states) and a potential problem (an unfavourable decision has panEuropean effect). The Unitary Patent has been thirty years in the wings: why now? In June, the European Council resolved the outstanding issue of the patent package, namely the seat of the central division of the court of first instance of a Unified Patent Court. Great diplomacy and pragmatism appears to have been employed in the last few years and months driven in part by pressure from trading partners, and pressure from within the EU to implement a range of strategic packages aimed at increasing prosperity for Europeans. Italy and Spain who disagree with other members concerning the languages for the Unitary Patent were not part of the recent negotiations which were nevertheless able to proceed without these member states under the “enhanced co-operation� provided by the Treaty of Lisbon in 2009. The legality of this side-step is still being decided. What are the next steps with the Unitary Patent? A formal agreement embodying the patent package will now be drafted for review by individual EU member states with agreement from a minimum of thirteen member states, including the UK,

France and Germany, required to ratify the agreement. There is no deadline for this process but there is some optimism given the present impetus and lack of significant obstacles that the agreement may be ratified, and the UP and UPC up and running, by 2014. Thus some existing applications, or their divisional applications, may grant as UPs. The key features of the Unitary Patent: Unitary Patent will automatically be valid for participating EU states

The present European Patent (EP) system requires separate validation in all EP states where protection is sought. For the UP route, upon grant by the EPO, a UP will automatically be valid for participating EU states. The EP and national patent systems will continue to run in parallel at least for a transitional period, but it will not be possible to have protection twice in a single state, for example, as an UP and an EP patent. The Unitary Patent system language translation requirements reduces fees

EP patents are granted with the text in English, French or German with translations of the claims into the other two languages. Under the current system, if validation is sought in up to thirty-eight EPC states, the cost of translations of an EP patent can be vast, even though only claim translations are required


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in some countries. This is the case even with the significant cost reductions provided by the London Agreement in 2008. Under the UP system there will be a transitional period during which the text is translated into one other of the current three patent languages, English, French and German, after which the claims only will need to be translated into English, French and German. There are provisions for subsidised machine translations into any EU language upon request. A non-centralised Unitary Patent Court

A non-centralised Unitary Patent Court with Local/Regional Divisions, and a Central Division is to be developed. The Central Division is to be divided between technologyspecialisation clusters in Paris, London and Munich, and will have a Court of Appeal in Luxembourg. The break down of the Central Division

The Central Division is to have jurisdiction over revocation matters and matters where the defendant is not domiciled in the EU. London is to hear biotechnology, chemistry, materials and pharmaceutical related cases, Paris to hear electronics, computer and textiles, and Munich to hear mechanical engineering and administrative actions.

March 2013

The Local/Regional Divisions

The Local/Regional Divisions in a state/region to have jurisdiction over infringement, and the option over any revocation counter-claim, where the infringement takes place in that state/region or where the defendant has residence or its principle place of business in that state/region. A uniform and streamlined procedural framework

The UPC is to have a uniform and streamlined procedural framework and, after transitional periods, exclusive jurisdiction over UPs and EPs. The UPC is to have no jurisdiction over national patents or utility models, and no jurisdiction over non-EU patents granted by the EPO, such as those validated in Switzerland and Turkey. Official fees

The European Commission estimates the official fees for validation of an UP will be approximately 80% less than the fees for validating an EP in all member states of the EU. The official fee for renewal of an UP is expected to equal the cost of renewal in 5 or 6 EU states.

Mark Roberts, Partner Jane Hutchison, Senior Associate


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Practice Update 3

America Invents Act Revised

INDelight Photography: CC-BY 2.0 www.flickr.com/photos/daveemerson/3890899087/

US President Obama has signed into law technical revisions to the Leahy-Smith America Invents Act (AIA). The AIA, which was enacted on 16 September 2011, makes significant changes to the US patent system, including those outlined in the article on our website entitled USA Patent Reform: six important elements of the America Invents Act. The revisions comprise straightforward clerical corrections but also substantive changes which include in particular elimination of “dead zone” periods, within which patents were not immediately challengeable at the United States Patent and Trademark Office (USPTO) under new post-grant mechanisms introduced by the AIA, and clarification as to how patent term adjustment is to be calculated for patents granted on US national phases of international patent (PCT) applications. Elimination of Post-Grant Dead Zones There are two mechanisms for a third party to challenge a patent at the United States Patent and Trademark Office, these being Post-Grant Review and Inter Partes Review. These forms of review, which should generally be faster and cheaper than litigation (and which are discussed in the article on our website entitled Big changes to the US patent system now implemented), were implemented under the AIA on 16 September 2012, and replace the inter partes reexamination procedure.

Post-Grant Review can only be sought within nine months following issuance of the patent but is presently only available for business method patents. It will be available for other (non-business method) patents only if they have an effective filing date of 16 March 2013 or later. Inter Partes Review can be sought in respect of a patent regardless of its date, but originally could only be initiated as of the later of nine months from the date of grant of the patent or the date of conclusion of any Post-Grant Review proceeding in respect of it. As a consequence, neither form of review was available to prospective challengers of non-business method patents granted on or after 16 September 2012 and having an effective filing date earlier than 16 March 2013. These patents fell within a “dead zone”. As a result of the revisions, the ninemonth waiting period, commencing at grant, for initiating inter partes review has been removed. Inter partes review can now be requested in respect of any patent from the date it is granted.

patent application exceeds a certain amount. The AIA introduces new provisions regarding calculation of PTA for such delays but there has been uncertainty as to the interpretation of those provisions where the patent application is the US national phase of a PCT application. The “filing date” of such an application is generally the date of “commencement of the national stage”, which is typically 30 months from the earliest priority date of the PCT application (even if the national phase is initiated before that date), in the absence of an express request by the applicant that it be otherwise. The original wording of the new provisions suggested the “filing date” for the purposes of calculating PTA could be the date of filing of the PCT application, which is often 18 months earlier than date of commencement of the US national stage. The revisions confirm that it is the date of commencement of the national stage which constitutes the “filing date” for the purposes of calculating PTA.

AIA Patent Term Adjustment Provisions Clarified US statute provides for patent term adjustment (PTA) to compensate patent owners where there have been excessive delays on the part of the USPTO in prosecution of their patent applications. PTA can be awarded in respect of various delays, including where a period of time which has elapsed since the filing date of the

Robert Finn, Partner


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March 2013

DCC News

DCC Out & About

GOLD AND TOP TIER RANKINGS IN WTR1000 AND MIP PATENT SURVEYS

As 2012 came to an end DCC had the pleasure of hosting the Sydney AusBiotech/AusMedtech Christmas Drinks and in attending the AusBiotech/BioMelbourne Network Christmas Drinks at Alumbra in Melbourne.

We are proud to have been ranked as a ‘Gold’ tier firm in the World Trade Mark Review 1000 for 2013 and as a Top Tier Firm in Australia in the MIP (Managing Intellectual Property) annual rankings for Patent Contentious and Patent Prosecution work. We are delighted to have seven members of our Trade Mark practice identified as world leading Trade Mark professionals. Trevor Stevens was described as a “wonderful practitioner and educator”. Michael Wolnizer was acknowledged as a stand out in the field for his “polished bedside manner, commercial astuteness and thoroughness”. Litigator John Hannebery was well regarded as an “immensely strong partner”. Adam Sears was endorsed for his “efficient, understandable and straightforward manner”. Top-rated US practitioners describe Marion Heathcote as simply “superb” and senior associates Fiona Brittain and Ian Drew attracted notice for their advanced prosecution skill.

DCC was proud to support the inaugural ‘Devices and Diagnostics Lab’ (Mobile Technologies in healthcare and well being) run by the BioMelbourne Network. The Network brought together a range of players involved with the medical device and the diagnostics industries, which are increasingly important segments of the BioMelbourne network. DCC also supported the New Chembeers group in Melbourne on 21 February. Implementation of ‘Raising the Bar’ is just around the corner (15th April). To assist our clients in preparation for the significant changes in the IP landscape that this legislation will entail, DCC hosted a very well attended education seminar and networking event on Thursday 28 February in our Melbourne office. A video of the seminar can be found at davies.com.au/raisingthebar

‘Gold’ tier firm

Chembeers

Raising the bar seminar


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Articles on davies.com.au

In addition to articles published in our IP Update, Davies Collison Cave partners and staff regularly post intellectual property updates and bulletins to our website. These articles report on recent cases and legal developments in a timely manner. A list of articles posted to our website since our last IP update is provided in the table. To read the entire article, please click on the title.

December Articles

january Articles

Intellectual Property – What is it and what does it mean to you?

Australian Pharmaceutical Patents Review – Response to “Suggested Issues Paper”

Damon Henshaw Recently granted US patents possibly eligible for extension of terms

Robert Finn ACCC commences proceedings against Harvey Norman franchisees for allegedly misrepresenting consumer rights

Tim Creek & Rodney DeBoos

Michael Caine Trade Marks Office outlines relevant principles for objecting to trade marks containing INN stems

Michael Wolnizer & Carly Mansell USPTO challenging Court finding of patent term adjustment under calculation

Rob Finn


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March 2013

Type #

davies.com.au

IP Update Issue 19 - March 2013  

This edition's Case Studies explain why Google is not liable for displaying misleading AdWords advertisements, while a Facebook user is liab...

IP Update Issue 19 - March 2013  

This edition's Case Studies explain why Google is not liable for displaying misleading AdWords advertisements, while a Facebook user is liab...

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