BAZPAT

File the Patent Application as Soon as Possible

2011-12-22T20:36:00.001+10:00

Here's an interesting article from the excellent LoTempio Law Blog. This post explains how Facebook got lucky in a case where it was found that its software infringed a patent. Fortunately for Facebook, that patent was found to be invalid because of disclosures made before the patent application was filed.

Interestingly, the case shows that the engine running Facebook is someone else's invention. Also interesting are the questions raised by the author concerning Zuckerberg's conduct at the time when he supposedly "invented" Facebook. All very intriguing...

Given the present value of Facebook, the failure to file early was a huge mistake on the part of the patentee.

Big Bash Out for a Duck

2011-12-16T09:54:00.000+10:00

The other day I was busy attempting to fight off the ravages of old age by moving some weights around in my garage. I enjoy listening to "Hot Tomato", a popular local radio station when I do this kind of thing.

My ears pricked up when I heard one of the presenters complain, jokingly, about the branding used by the "Big Bash League", a cricket tournament between various clubs around Australia. The presenter felt that not much thought had been given to the team names. I must agree. Let's see what we have.

"Adelaide Strikers" - not even a scintilla of imagination.
" Brisbane Heat" - sounds like a police show.
"Hobart Hurricanes" - what starts with "H"?
"Melbourne Renegades" - this is cricket...not some revived glam rock band...
"Melbourne Stars" - Ooh, that must have been difficult...

Australia is a vast land full of exciting words and imagery. And this is what they come up with? Sad, really...

Effexor Patent Denied Priority Date

2011-12-10T23:50:00.000+10:00

Case

Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132

Lesson:

Applicants should always ensure that the specification currently on file tracks developments. For example, when it becomes clear that a preferred formulation is no longer specifically described, action should be taken immediately so as not to lose the ability to protect that formulation. Failure to do so could result in the public release of the formulation before an amendment or a divisional is filed, leading to disastrous consequences, such as the inability to enforce the patent.

READ MORE.......

Apple Loses Bid to Extend Ban on Samsung Galaxy Tablet

2011-12-09T12:11:00.001+10:00

Some news from Business Week: http://www.businessweek.com/news/2011-12-08/apple-loses-bid-to-extend-samsung-galaxy-tab-ban-in-australia.html

It appears that the Galaxy will be available just in time for Christmas.

Patent Filings Still on the Increase in the U.S.

2011-12-06T07:47:00.000+10:00

Here is an interesting article from the Lo Tempio blog.

It appears that in spite of of all the doom and gloom, there have been a record number of patent applications filed for the United States 2011 fiscal year. If you have the time, the "Performance and Accountability Report" would make interesting reading.

Clearly, even if times are tough, failure to file a patent application can have detrimental consequences in two or three years' time. The reason is simply that both here and in the United States, it can take 2 to 3 years before a patent is actually granted. If the economy has picked up by then and you have failed to file a patent application two or three years earlier, you could be missing out on the gravy train. I suspect this is why the number of applications per year is still climbing in the US and particularly in China.

Samsung v Apple - Injunction Overturned but Orders Stayed

2011-11-30T13:42:00.001+10:00

As the struggle continues, the Federal Court has overturned the injunction by Apple against Samsung. However, it appears that the Galaxy might not hit the stores by Christmas. Apple's legal counsel has managed to get the orders stayed until 4 PM on Friday pending an appeal to the High Court.

Here's a good article on this: http://www.zdnet.com.au/galaxy-tab-ban-overturned-in-australia-339327063.htm?fb_ref=fb

China - The Awakening Patent Power

2011-11-29T17:21:00.000+10:00

This is an interesting article on how serious China is about patents. The time for being suspicious and patronising is over.

China awakening patent power

Patent Myths - Changing the Invention

2011-10-24T21:26:00.000+10:00

One of the patent myths I hear regularly is what I like to call the 10% rule. It's often couched as follows: "My mate told me that it's pointless to get a patent because someone just needs to change it by 10% and they can get around the patent". Attempting to keep all traces of condescension out of my voice, I ask earnestly: "If I gave you a pair of scissors, how would you change it by 10%?"

The marginally better remark I hear is: "I've heard that there's no point in getting a patent because someone just has to change it a little bit and they can get around the patent". This remark is marginally better because there are many patents out there which define a patent so narrowly that a small variation will be sufficient to avoid infringement.

READ MORE.......

Australian Designs - Absolute Novelty

2011-10-12T10:59:00.000+10:00

Here's an interesting article from Gilbert & Tobin.

We often have to give both patent and design registration advice to clients. It's important to remember that there is no grace period for filing an application to register a design in Australia. So applicants must either file in the first instance while the design is still confidential or make use of the 6 month convention period as provided in the Paris Convention.

At the end of the day, the rule remains: keep it secret until you have had a discussion with your patent attorney.

Here is some more information on the registration of designs - http://beagar.com.au/Registered%20Designs.htm

Home-based Business Advice

2011-10-05T09:01:00.000+10:00

Here's an interesting and useful article for all of you that are contemplating working from home. It's a challenge, but I can certainly recommend it, since I am one of the lucky ones that do work from home.

Why in an IP blog? Well, many of my clients do have home-based businesses. Also, many looking to file patent or trade mark applications need to find ways of keeping their overheads down. Working from home is definitely one way of doing that.

It's written from a US perspective, but it remains highly appropriate for us here in Australia

http://www.allbusiness.com/running-home-based-business/16640691-1.html

Raising the Patent Bar - Part II (The Innovation Patent)

2011-10-02T10:27:00.001+10:00

In my post of 28 July 2011, I discussed some aspects of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011.

In this post, I will have a look at how it's going to effect our innovation patent system. Also, the Advisory Council on Intellectual Property (ACIP) has recently released an issues paper which discusses some concerns with our innovation patent system with a view to initiating a discussion as to whether or not it should be reviewed.

READ MORE.......

Computer Implemented Purchase of Domain Names - Not Patentable

2011-09-22T12:30:00.001+10:00

Here's another decision where "computer implementation" does not provide the necessary subject matter -

In short, it is simply not enough that a computer is used. The nature of the invention must be such that it is practically necessary to make use of a computer. In this case, I think that further technical information should have been supplied as to how the method was automated and what advantages those provided over and above carrying out the steps manually. On the other hand, having briefly read the specification, there is clearly an argument to me made that computer implementation is necessary.

There is invention in automation, of course, so I believe that the Commissioner and our courts need to be wary of simply relying on the fact that a computer-implemented invention can be carried out manually since that may me saying that automating an otherwise manual operation is not proper subject matter.

READ MORE.......

Computer Implemented Insurance Plan - Not Patentable

2011-09-21T10:51:00.001+10:00

Discovery Holdings Limited [2011] APO 56

"From reading the specification as a whole the alleged invention lies within the method of managing a life insurance plan. The steps involved in this process are mere actions to be taken by legal entities as elements in a business scheme and as such, no concrete, tangible, physical or observable effect is produced as a result of the implementation of the claimed method. Therefore the method is not a manner of manufacture." - The Delegate

I couldn't have said it better.

8 Reasons Why Pirating Hurts Everyone

2011-09-21T10:36:00.001+10:00

I realise that this is not strictly speaking associated with the registration of IP. But it is related and very relevant.
http://www.internetserviceproviders.org/blog/2011/8-reasons-why-pirating-hurts-everyone/.

Worth a read.

Alignment of US and International Patent Practice

2011-09-10T13:02:00.003+10:00

The Leahy-Smith America Invents Act (AIA), H.R. 1249, was passed by the U.S. House of Representatives on June 23, 2011, and by the U.S. Senate on September 8, 2011. The bill now goes to President Obama to be signed into law. http://www.uspto.gov/patents/init_events/aia_implementation.jsp

One of the most important provisions of this Act is that it introduces a "first-to-file" system as opposed to the "first-to-invent" system that is currently in place. This will bring the US system into line with the "first-to-file" system used in Australia. While it has its detractors, I welcome this change because, to some extent, it saves my clients having to adopt a different set of rules for the US. In the complex world of patent practice, any such alignment is to be welcomed.

Here's the wiki on the difference between the two systems: http://en.wikipedia.org/wiki/First_to_file_and_first_to_invent

Tilting at Windmills?

2011-08-31T21:47:00.000+10:00

A meeting I had the other day prompted me to write this post. My prospective client was a bright young man who appeared to have done quite a bit of research himself. His source was the IP Australia website. There's no doubt that IP Australia's website is extremely useful, both for practitioners and inventors.

But let us go back to the principles of our Patents Act. As you will see, there are clearly two sides to the patent system. One side is the government, represented by IP Australia. The other side is the Applicant, being that person or organisation attempting to acquire a granted patent.

Why this need for two sides? It's important to understand the answer. The patent system is based on a quid pro quo. The government will give the inventor/s the right to exclude all other Australians from exploiting the invention for the life of the patent. In return, the inventor/s must give sufficient information to the public so that, when the patent expires, the public can exploit the invention. The instrument for enabling this quid pro quo is the patent specification.

It is the role of IP Australia to investigate whether or not the government should enter into the quid pro quo. It is not the role of IP Australia to enable the quid pro quo. In other words, IP Australia is not obligated to act in favour of the inventor/s. On the contrary, IP Australia's role is simply that of a proposed party to an agreement. The fact that IP Australia ostensibly encourages the filing of patent applications is contrary to the spirit of the Patents Act, even though it is admirable.

So you need to bear in mind that dealing with IP Australia yourself is akin to entering into an agreement with another party without professional assistance. Of course, this sounds like a plug for the profession and perhaps you have reason to be jaundiced. But please at least phone around and do some homework before dismissing the option of consulting a patent attorney.

A Rough Guide to Patent Searching

2011-08-17T22:56:00.002+10:00

I often meet prospective clients that have a simple, but clever concept. It is invariably mechanical and he or she is not sufficiently cashed up to add the cost of a professional search to patent application costs, product development costs, marketing costs, etc. However, a search is mandatory, in my opinion.

So, what to do? Well, it is possible to carry out your own search, quite effectively. There are a number of free patent searching websites. I describe a few below. The list is not exhaustive and you should do your own investigations as well.

READ MORE.......

Patent Prosecution Highway - Update

2011-08-12T10:12:00.001+10:00

A number of countries have entered into bilateral agreements in an attempt to speed up patent prosecution. This is an excellent initiative and one that I support wholeheartedly.

WIPO has some news about this system in its latest newsletter: http://www.wipo.int/pct/en/filing/pct_pph.html.

Seafood Innovations enforces innovation patents

2011-08-10T17:33:00.002+10:00

Case: Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2011] FCAFC 83

Construction

The fish stunning machine covered by the patents had a fish stunning device, a fish guide and a trigger. The fish is moved in one direction from an entrance to an exit.

Relevantly, one of the claims set out: "the fish guide includes a floor being pivotally mounted between a first position and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit".

The Bass devices included a pivotally mounted floor which moves from the first position to the second position. But they also included a cheek plate and a top plate. So the three devices acted together as a sphincter to allow the fish to pass unidirectionally. Bass contended that the devices did not infringe the claim because it was not the floor alone that allowed the fish to pass.

A common sense construction was adopted. There was evidence from a skilled addressee that the Bass devices and the apparatus of the claims of the first innovation patent operated in the same way and that there is no practical difference in terms of the purpose of the apparatus in this context.

Fair Basis

Bass pointed out that the pivotally moveable floor was the only description of the fish guide in the specification. The description stated that the fish guide “comprises” (in the sense of consists of) the floor. Bass said that that made the pivotally moveable floor an essential integer of the invention which must, therefore, be included in the claims. On the other hand, Seafood Innovations said that the description of such a fish guide is but one embodiment of the apparatus broadly described, without any such limitation.

Bass followed the incorrect approach of seeking to isolate essential integers from the body of the specification in understanding the claimed invention. As held in Lockwood Security v Doric Products [2004] HCA 58, a narrow embodiment of a broad claim does not render the claim invalid for lack of fair basis.

Lessons

Perhaps the most important message to come out of this decision is the reference to "common sense". It is always necessary to adopt a common sense construction. In order to do so, we always need to refer back to the skilled addressee and how he/she might read the document.

Canberra and Big Tobacco

2011-08-09T10:17:00.000+10:00

Here is an excellent discussion from ABC Radio National: http://www.abc.net.au/rn/lawreport/stories/2011/3287889.htm

I found the discussion regarding the extinguishing of trade mark owners' rights and possible compensation by the Australian government particularly interesting. Also, it appears that the plain packaging legislation could be in breach of an investment treaty we have with Hong Kong that specifically protects IP rights.

It will be intriguing to watch how this plays out.

Raising the Patent Bar - Part I

2011-07-28T22:04:00.001+10:00

In a previous post, I said that I would make some comments on the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011. In this post, I comment on the issues relating to standard patent applications. In a further post, I will continue with some further discussions, time permitting.

In the meantime, it may be useful to read the material available here.

As I work my way through this material, I am realising that an interesting future awaits us patent attorneys. Part of this will be explaining to our clients why our charges have increased. Alternatively, those patent attorneys who tend to "overreach" can possibly justify their invoices.

The proposed changes certainly place a heavy onus on us. Whether or not this is passed on in the way of increased charges awaits to be seen. I can safely say that it would indeed be foolhardy for innovators to attempt to go down the path of self-filing once the Bill is passed.

Also, I find it sad that such rich interpretations of phrases such as "fair basis" handed down by our courts over the years will become largely redundant as we are obliged to turn to guidelines handed down by foreign jurisdictions. Perhaps I'm being romantic, but to me, that's simply un-Australian.

Our profession is not immune from the effects of globalisation. However, I fail to understand why our courts are not permitted to simply and firmly direct interpretation towards the global norm, if such a thing exists.

Furthermore, there appears to be much focus on the law in the US and in Europe. Personally, the massive growth of filings in China and Korea (while ours has remained relatively stagnant - much to my irritation) would tend to indicate that we should perhaps be collaborating with those jurisdictions to a larger extent when developing new law.

READ MORE.......

Technical Disclosure - E-Commerce and Software

2011-07-28T16:54:00.000+10:00

I have recently been dealing with a number of matters related to e-commerce platforms and associated software.

Many applicants are entrepreneurs who have conceived of a plan to achieve some or other efficiency using a customised e-commerce platform.

Such platforms are often defined by various "bolt on" modules that interact to produce the platform or application. This can make a patent attorney's task very difficult. There are usually two reasons for this. Firstly, the client has largely contracted the task out to some developer or development company. Secondly, neither the client nor the developer can easily explain the particular technical difficulties which have been overcome to achieve the product. As a result, we are often presented with a list of advantages or potential outcomes.

Such information is of little use to a patent attorney, apart from perhaps embellishing various technical features of the product. Our Patents Act and equivalents in most countries require that a patent specification must disclose at least one embodiment of the invention. That disclosure needs to be "sufficient". In other words, a reasonably skilled person (whose identification is no easy task) should be able to recreate that embodiment without having to employ inventive faculties.

Clearly, therefore, a list of outcomes or advantages is simply inadequate.

It follows that if you are such an entrepreneur, you need to ensure that some form of communication is set up between your developer and a patent attorney. This will ensure that the patent attorney can be availed of the proper technical information required to prepare an adequate patent specification.

The fact that you may be using a developer may in itself create complications, but that's for another post.

IP Laws Amendment Bill 2011

2011-06-23T20:30:00.005+10:00

The Intellectual Property Laws Amendment (Raising The Bar) Bill 2011 was introduced into the Senate on 22 June 2011. Here's your link.

I will do my best to report on this in the next week or so.

Delegate Tests Amazon's One-Click Invention

2011-06-16T13:14:00.000+10:00

Case: Telstra Corporation Limited v Amazon.com, Inc. 2011 APO 28

Summary: Opposition to grant – ecommerce ordering system – construction of claims – whether claims comply with s40 – whether meaning of “single action” clear – whether claims novel – whether claims lack inventive step.

READ MORE.......

IP Clauses in Licensing Agreements

2011-04-26T14:50:00.003+10:00

Case - Larkden Pty Limited -v- Lloyd Energy Systems Pty Limited [2011] NSWSC 268

One aspect of this case deals with the powers of an arbitrator as opposed to the Commissioner of Patents and the Federal Court. More specifically, an arbitrator can resolve a dispute between a licensor and a licensee claiming rights to an invention provided the dispute is with respect to the licensing agreement itself and does not impinge on third party rights.

This kind of dispute emphasises the need for a licensing agreement to do more than just simply state for example that the licensor shall own intellectual property relating to improvements or developments to the invention that is the subject of the agreement.

My recommendation is that the agreement contains clauses that allow for the licensor to be kept up to date with developments and improvements before they are made public.

The agreement should allow the licensor the option to register any intellectual property in its own name related to the developments and improvements.

The agreement should also obligate the licensee to execute any documents or take any further steps which may be necessary to secure the registration of that intellectual property in the name of the licensor, including, but not limited to, assigning that intellectual property to the licensor. This is particularly important for those jurisdictions, such as the United States, where patent applications must be filed in the name/s of the inventor/s.

Some Useful Trade Mark Tips from Federal Court

2011-03-01T05:49:00.001+10:00

Case: Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94

Being a busy solo, I've not had a lot of time to wallow around in cases as much as I'd like. But this one caught my attention, thanks to my "editor" at CCH.

It's worth a read, especially for us busy filing trade mark applications and getting involved in disputes before the Registrar.

Here are some practice tips from that case:

1. When preparing a trade mark application, make sure to use words such as "includes/including". The court held that this means that trade mark would be considered to be in relation to goods of like kind to goods following such words. This is far better than trying to list everything you can think of. It might sound trite, by you'd be surprised how many people get it wrong.

2. When preparing evidence to show a reputation, make sure that you're showing that the trade mark has a reputation, not necessarily the goods/services. So evidence of sales and marketing must clearly show use of the trade mark.

3. Just because your client, the applicant, is seeking removal of a registered trade mark through non-use, does not mean that it is not infringing that registered trade mark. You should advise the applicant of this potential hazard.

Codifying Patentable Subject Matter

2011-02-23T16:36:00.000+10:00

One thing that I admire about our Patents Act is the fact that what constitutes patentable subject matter has been left to our courts to interpret. Most of our judiciary are brighter than our lawmakers. Also, technology is shifting and changing. Ongoing tests of what is patentable and what not by our courts is fluid and is probably the only way to keep up with technology.

So, it was with some distaste that I noticed that the recent ACIP Report recommends that the Patents Act be changed to codify the principles of inherent patentability. The wording from the key points of the report is "the recommendations propose a restatement of the law in words that are currently applied by the courts". It seems to me that ACIP would have the test frozen in time. In 15 to 20 years' time will the test still be relevant?

ACIP believes that the Act should codify the principles as developed by the High Court in the NRDC case. So now we'll have a situation where the High Court will have to assess how the authorities have adopted the principles of the NRDC case instead of possibly re-assessing or even over-turning that case. Clearly, this limits the discretion of the High Court to make changes in step with changing technology.

Not satisfied with that, ACIP also recommends a general exclusion that precludes "the patenting of inventions the commercial exploitation of which would be wholly offensive to the ordinary reasonable and fully informed member of the Australian public." At the moment, the courts only have to deal with what is generally inconvenient. So again, ACIP proposes to limit the High Court's discretion. In any event, how do we deal with "wholly offensive"? As with technology, cultural norms are constantly changing. We need a fluid system to handle those changes, not codification.

Early Patent Enforcement

2011-02-10T10:13:00.000+10:00

I was recently instructed to enter national phase in Australia and to do my best to get acceptance by the end of 2010. For those readers not familiar with Australian practice, acceptance is effectively an acknowledgement by the examiner that the invention defined by the claims qualifies for patent protection. Here's a flowchart. The reason for the urgency was that the applicant was in the throes of finalising a licence agreement. The licensee would only sign if there was a favourable examination report by an examining office. The task was not an easy one, since I was instructed early in December 2010.

My advice was to identify material in the specification that was descriptive of the product to be commercialized in Australia. Claims that are limited in scope to that material could then be crafted and filed together with a divisional application for a patent based on the parent application. I prepared a memorandum describing how the claims, in their amended form, defined an invention that was both novel and inventive and I filed that together with a request for expedited examination, explaining the need for the urgency.

As a reflection of the good service I've always received from IP Australia, I received a first report within about 2 weeks. Two days later, I filed a response. The Notice of Acceptance issued on 24 December 2010.

Of course, you won't always have an outcome like that. But this is a good example of how the divisional process together with the option of requesting expedited examination can be used to achieve early acceptance.

A problem with this approach is that once the application is accepted, it still has to be published for a period of 3 months for opposition purposes before the Deed of Letters Patent can be issued.

This is where the innovation patent comes in. See here for a number of posts on the innovation patent. And here is a flowchart.

It is possible to file a divisional application from a pending international application or a pending application for a standard patent in Australia. In the case of the international application, that application must be published before you do so.

Once you file a divisional for an innovation patent, it will be granted, without substantive examination, within about three to four weeks. In that state, it cannot be enforced. It is then necessary to request certification. This involves an examination of the application. If successful the examination will be certified. This can take as little as just one month from filing the request. It follows that in an ideal situation, you will be in a condition to enforce your rights in as little as two months. Realistically, you should budget for about three months from the date of filing the application for the innovation patent.

As with the divisional for the standard patent, the claims for the innovation patent can be crafted to cover the product in question. That product could be the product you wish to commercialize or could be an infringing product.

It's important to bear in mind that the claims prepared for the innovation patent must be "fairly based" on the material in the parent application. See here for a number of posts on the meaning of "fairly based". It follows that you need to be sure that the infringing product is actually covered by the parent application.

It does appear that the authorities are regarding this strategy with some hostility. The innovation patent was established to help the "little guy" get patent protection with as little fuss as possible. As with most attempts to "help" the authorities have miscalculated somewhat. The courts have also recently being interpreting the scope of innovation patents a bit more stringently even though there is no basis in the Patents Act for doing so. These are indications that the Act may change soon, closing the door on this strategy.

You should consider this option sooner rather than later if you happen to have a pending international application or application for a standard patent in Australia.

Filing and Prosecution - Best Practices - ABA Webinar

2011-01-15T09:44:00.000+10:00

I'm delighted and privileged to announce that the American Bar Association's (ABA) IP Section will be hosting a webinar by Neal Schutte and me on the above topic. Neal is senior IP Adviser at Rio Tinto.

The webinar will be a practical and easily understood explanation of how to achieve the best out of the various prosecution options in Australia and New Zealand. It also includes a discussion of the Innovation Patent System, an increasingly popular tool for early enforcement in Australia.

Here's the link: http://www.abanet.org/cle/programs/t11bpf1.html.

Psychological analysis and therapy not a "manner of manufacture"

2011-01-12T12:34:00.002+10:00

The Delegate has found that a method for "facilitating a person to integrate an inconsistency by comparison" in order to enhance personal effectiveness was not proper subject matter. Here's the case.

The applicant attempted to argue that the method of the claims produced an "observable effect" because it resulted in a change in the emotional and, consequently, the physiological state of the subject. But the Delegate said that this was not the sort of "physical phenomenon or effect" anticipated in Grant. Also, it was not an "artificially created state of affairs" within the meaning of NRDC.

The method claimed appeared "to be merely a process of psychological analysis and therapy based on analysing the subject’s responses to questions. It solely concerns human interactions and behaviours and is distinguishable from, for example, a method of treating a psychological condition with a drug producing a particular physiochemical interaction with the human body."

The Delegate said that " the subject matter of the claims clearly falls within the fine rather than useful arts in the same way as legal analysis and reasoning was not found to be patentable in Grant."

See also my post of 11 August 2010.

Patent Attorneys Expensive?

2011-01-11T21:56:00.001+10:00

Here's an excellent article from IPWatchdog - You may think it has little relevance because it's a US-based article. That would be dangerous. Your Australian patent attorney is often tasked with preparing patent specifications that have to stand scrutiny in the US. After all, most Australian entrepreneurs are looking for a berth in that massive market.

In short, the article argues that you get what you pay for. That's perenially true. A decent patent attorney will attempt to wear many jurisdictional hats when preparing your patent specification. If the job seems expensive remember that he or she is potentially trying to garner an exclusive international monopoly for you. That specification could find itself in front of a patent examiner in Europe, where the need for good drafting is perhaps more acute than in the US. And people pay half a million dollars for a house on an irrelevant patch of land...

Never forget the golden rule in drafting: if it's not there when you file the International Application, you won't be able to add it later. That means as much material as possible presented with great skill if you want a decent specification.

IP and Business Consultants

2011-01-11T15:41:00.002+10:00

I had the misfortune of having my judgement questioned by a so-called business adviser. He was particularly interested in why I had bothered to file a patent application for a particular client of his when "it did not appear that the invention would qualify even for an innovation patent". I immediately went on to the offensive and asked whether or not he knew what it was that would allow an invention to "qualify" for an innovation patent.

Given that an innovation patent will always be granted subject to passing a formalities test, I was already using inaccurate language. However, I thought it was appropriate given the level of understanding held by this particular business adviser. In any event, it appeared that he was completely ignorant of the test for an "innovative step". For a discussion in connection with this requirement, see my post of 2 July 2009.

This altercation was a stark reminder of the need to select an appropriate expert. Patents can be extremely complicated, particularly when one is attempting to understand the rather nebulous principles of inventive and innovative steps. After all, questions concerning these principles regularly find themselves presented in the highest court of the land. For a business consultant to provide any sort of opinion as to whether or not an invention is patentable would be unethical to say the least, provided of course the business consultant is not an ex-patent attorney.

The business adviser’s call was made on the basis of an Internet search that he'd carried out. The result he so proudly presented to me had the physical appearance of a preferred example of the invention described in the patent application in question. Based on that he was prepared to advise his client that he thought that the invention was not patentable. Sadly, business advisers are not bound by the same code of ethics that bind us patent attorneys.

So, if you're sitting down with a business adviser and he or she begins prattling on about patents, please make sure that you check his or her credentials.

Queensland Funding for Green Innovation

2011-01-09T16:00:00.005+10:00

Happy New Year to all my readers.

I'm starting the New Year off with some good news from Queensland government. I recently received a letter advising me that the Queensland Sustainable Energy Innovation Fund (QSEIF) provides funding assistance for Queensland-based individuals or organisations to develop innovative technologies that reduce consumption of fossil fuels, water or greenhouse gas emissions.

According to the letter, QSEIF funding can offset up to 80% of external project costs. The cost of filing a patent application is recognised as eligible project expenditure up to a level of 10% of the project costs or a maximum of $10,000.

The appropriate time to apply for funding might be immediately after the initial novelty search. See here for my post on searching.

Contact me if you want more information. Alternatively, the brochure can be downloaded here.

Patentability of Computer Programs in New Zealand

2010-12-20T12:18:00.000+10:00

IPONZ has released a guide regarding patents for computer programs.

http://www.med.govt.nz/templates/MultipageDocumentTOC____45568.aspx?epslanguage=EN

Great Invention - What Next?

2010-12-01T21:15:00.003+10:00

I've put together a short article on my website for the benefit of those of you who are contemplating an appointment with a patent attorney. Hopefully there are some useful tips to help the process get off to a flying start.

IP Australia Enhances Access to Patent Data

2010-12-01T08:17:00.001+10:00

IP Australia has just released its full text searching service.

Apparently it has full service functionality and includes about half of the patent collection. The full collection is to be made available free of charge by the end of March 2011.

As I've mentioned before, this is really good news. For one thing, due diligence investigations will be a lot easier.

Here's the link: http://www.ipaustralia.gov.au/auspatbeta/

Keep it Secret!

2010-11-27T15:44:00.000+10:00

I've had a few cases recently where a (potential) client has disclosed an invention to another party without understanding the consequences. I've written a short article in my website:

Due Diligence Failure Costs CSL

2010-11-25T12:14:00.002+10:00

Case: CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) [2010] 1251

Headnote
CSL failed "promptly" to consider whether or not amendments to its Australian patent should be made in response to amendments recommended in respect of corresponding foreign patent applications. CSL was "squarely on notice" that a claim was "problematic". The absence of evidence of professional advice to the contrary prior to launching legal proceedings was key to the refusal to permit CSL to amend that claim.

Significant Cases Cited
ICI Chemicals & Polymers Ltd v Lubrizol Corp [1999] FCA 1417
Novartis AG v Bausch & Lomb (Australia) Pty Ltd [2004] FCA 835

Facts

From at least 2001, CSL was aware that certain documents were regarded as problematic to the novelty of their invention.
The view that those documents were problematic came from a number of examining jurisdictions.
There was no evidence of professional advice contrary to the opinions expressed by the various examiners.
CSL sought amendments in the foreign jurisdictions but not in Australia.
The refused amendments were sought after proceedings had been launched.

Findings

When a patentee is exposed to the view that prior art may be fatal to the validity of claims, the onus shifts to the patentee to provide a reasonable explanation of why inaction was preferred to amendment.
It is too categorical to restrict the circumstances in which amendment is refused to those in which the patentee knew the unamended patent was invalid.
The lack of evidence of professional advice (supra) counted heavily against CSL.
It was not a satisfactory response to assert that CSL did not need to take the initiative because the patent stood on the register.
It was not in the public interest that "serious and apparently legitimate issues" had been raised elsewhere not be confronted in the Australian text.

Lessons

Leaving aside public interest, it is in the client's best interest that the very instrument that is to form the basis of a legal proceeding be reviewed and amended if necessary. Failure to do so is simply bad practice.
It is to be noted that it was more important to the court that there was a coherent reason for failing to amend than not actually amending.
Multi-jurisdictional patent portfolios should be reviewed from time to time. Setting a 6-month status check on matters is common practice where firms have large case loads per practitioner. Part of that 6-month status check could be the consideration and proposal of amendments to clients.

Effexor Patent Valid & Infringed

2010-11-16T20:35:00.002+10:00

Case: Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2010] FCA 1211

Judge: Jagot J

In this case, a patent for a sustained release formulation of Effexor was found valid and infringed. While a number of different aspects were covered, I found the discussions concerning inventive step most useful. I have distilled some points and lessons. The cross examinations of the witnesses are worth reading.

Inventive step notes:

Detailed laboratory notebooks can be used to establish a finding of inventive step.
Reference to a result can define a claim. The question is what the skilled addressee would have understood at the priority date by the reference to the result.
A finding that experiments performed are of a routine character that would be tried as a matter of course by the skilled addressee would support a holding of obviousness.
A witness's use of hindsight undermines an allegation of inventive step.
A witness's knowledge that an invention has been successful indicates the use of hindsight.
A witness's reference to publications not available at the priority date indicates the use of hindsight.
Knowledge of the existence of a patent dispute can cast doubt on the reliability of a witness's evidence.
The problem and solution approach could be unfair to an inventor of a combination or a simple solution.
Inventive step may be lacking if the available information at the priority date would support the existence of a motivation to prepare a formulation in question.

Lessons

Not only R&D teams, but all inventors should keep a careful developmental record in a form that can be readily reproduced.
Where possible, witnesses should not be made aware of the patent dispute or even of the existence of a patent.
Witnesses must be made to understand the importance of preparing their material as at the priority date, otherwise stated.

Anti-software patent campaigner changes his mind - Blog - IAM Magazine

2010-11-05T09:47:00.001+10:00

The excellent IAM blog posted this article. Another step in the right direction.

Anti-software patent campaigner changes his mind - Blog - IAM Magazine

Mud Company's Patent Valid but not Infringed

2010-11-04T21:49:00.004+10:00

Case: Australian Mud Company Pty Ltd v Coretell Pty Ltd [2010] FCA 1169

Judge: Barker J

Headnote

This court considered the question of whether or not "a device" has one or two parts. It emphasised the need to consider such questions in the context of the specification as a whole. The issue of "fair basis" was also considered. Fair basis must not be confused with any of the other requirements of s40 from which it is conceptually distinct. The fair basis test does not involve isolating an integer and then looking for its equivalent within the specification.

READ MORE.......

Online Patent Searching - IP Australia

2010-11-03T14:55:00.000+10:00

I've just received an update from IP Australia that full text searching will initially be launched in a beta environment by the end of 2010. This will allow text searching of publicly available patent specifications back to 1904.

This initial release will include about half of the full collection. It is planned that the full collection will be available by the end of March 2011.

This is good news for practitioners down under. It particularly improves the ability to carry out patent infringement searches, which have always been tricky here.

Apple Faces Legal Action over iPad Name

2010-11-02T08:30:00.001+10:00

Here's an interesting article. It appears that Apple did not coin the word I-Pad. The honour goes to a Taiwanese company called Proview that tried to market a tablet computer and failed.

FT.com / Technology - Apple faces legal action over iPad name

Coca Cola Sues Pepsico and Schweppes

2010-10-31T09:36:00.001+10:00

Thanks to ipwars for reporting that Coca Cola has sued Pepsico and its Australian licensee, Schweppes, over the shape of the new Pepsi bottle.

Here's your link - ipwars.com

China Poised to Become Global Innovation Leader

2010-10-29T07:53:00.001+10:00

Well, it's happened. Not only is China a world leader in manufacturing, it's fast becoming a world leader in global innovation.

According to this report, the patent filings in China will outpace Japan and the US in 2011. The figures are startling. China experienced an annual growth of 26.1 percent in total patent volume from 2003-2009, as compared to the US's 5.5 percent growth rate.

China Poised to Become Global Innovation Leader - Thomson Reuters

Aspirating Claims Lack Novelty and Inventive Step

2010-10-27T12:06:00.001+10:00

Case: Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061

Judge: Besanko J.

Headnote

This case is an excellent example of how the novelty and inventive step tests are carried out in Australia. It does not break new ground but provides good summaries of those two tests. The issue of Entitlement is also covered, but is not worth considering in detail. While the result of the case is probably of immense concern to the various protagonists, it is the useful round up of the principles of novelty and inventive step that interest me.

READ MORE.......

Luscious Lips Still Not Distinctive

2010-10-10T12:25:00.002+10:00

Case: Nature's Blend Pty Ltd v Nestle Australia Ltd [2010] FCAFC 117

Judges: Stone, Gordon and McKerracher JJ

Headnote

Whether or not use of a trade mark has the necessary characteristics to qualify for a finding of infringement must be tested with reference to the context in which it is used. That context includes such factors as style, size, location and the presence of other more prominent trade marks,

Introduction

In my post of 24 March 2010, I reported on the decision of a single judge of the Federal Court in connection with this dispute. That court found that the use of the words "luscious lips" in a blurb that appeared on the back of a package was not use of those words as a trade mark. The judge was influenced by the fact that the package already showed both "Allen's" and "Nestle" in a prominent manner that indicated that they were being used as trade marks, thus diluting the effect of "luscious lips" as it appeared in relatively small type together with a number of other names on the back of the package.

In this case, the Full Federal Court said that the primary judge was correct and therefore that there was no infringement.

READ MORE.......

IP Australia to Enhance Access to Patent Data

2010-10-07T20:51:00.001+10:00

In a very welcome move, IP Australia is upgrading its patent searching tool, known as AusPat. Apparently it will be capable of delivering up to "180 unique pieces" of information on each patent and patent application.

Full text searching is to made available by the end of 2010. A tool called "EDossier" will provide electronic access to a suite of documents relating to the prosecution of patent applications.

This new functionality will be a boon to the profession, particularly the smaller firms and sole proprietorships (yours truly).

IP Australia : Patents > Patent Search Strategy Project

No Patent for Commercialising Inventions

2010-08-11T20:53:00.002+10:00

Case: Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010)

Delegate: Deputy Commissioner of Patents - P.M. Spann

Comment

Patentable subject matter is not to be determined merely on the presence of a physical effect resulting from the exercise of a method as claimed. Rather, it must be an effect of such substance or quality that the method considered as a whole is proper subject matter for a patent.

Cross references in Bazpat: http://bazpat.blogspot.com/search/label/Subject%20Matter

Significant cases cited:

Software and Innovation Patents - Tread Carefully

2010-08-07T06:53:00.004+10:00

I recently had a client who had been told by someone that the innovation patent was a useful tool for protecting patents. There's no doubt that the system can be attractive. See my post of 10 June 2010 and others. Perhaps the most significant reason for that is that the innovation patent can be ready to enforce in as little as two to three months from the date of filing the application.

However, there lurks an often overlooked danger. The innovation patent is granted and published in very little time. In some cases, grant and publication occurs in as little as a month. This may not be an issue where an invention can easily be discerned in its commercial application. However, software is often best kept under wraps for as long as possible, allowing the product to develop recognition and traction in the market place. A requirement of our Patents Act is that the patent specification must disclose the best manner of performing the invention known to the applicant at the time of filing the application. So it's not possible to get away with keeping key aspects of the invention secret if you want to file a patent application.

Standard patent applications are only published 18 months after the earliest date on which a patent application covering the invention is filed. In the world of software, this can be a long time, allowing commercial objectives to be achieved while detail of the invention remains confidential. However, if you've decided to go the innovation patent route, that confidential information will no longer be so in an little as a month after the application has been filed.

So, budget permitting, my recommendation is that you file a provisional patent application, get the software commercialised as soon as possible and file a standard patent application based on the provisional patent application. If you need to enforce your rights, you can easily file a divisional application for an innovation patent based on the standard application (see my post of 21 November 2007).

Tennis Warehouse not Distinctive

2010-07-18T15:10:00.001+10:00

The Case: Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664

The Venue: The Federal Court of Australia

Judge: Kenny J

Comment

The Trade Marks Act allows the registration of trade marks with low levels of distinctiveness where sufficient use is shown by the applicant and where that is as a trade mark in the course of trade. But as Sports Warehouse discovered, there are cases where the trade mark is so descriptive that the Registrar and the Court will set strict requirements for the level and type of use required to achieve registration. The applicant will need to establish accurately that use is "as a trade mark" and that it was such that the mark was capable of distinguishing as at the lodgement date.

This case is instructive in that it provides guidelines for how a Registrar should treat evidence of use when an applicant is attempting to obtain registration relying on extensive use of a trade mark.

READ MORE.......

USPTO's Memo to Examiners - Bilski

2010-06-29T19:41:00.002+10:00

According to Gene Quinn at IPWatchdog, the USPTO has sent a memo to US Patent Examiners in response to the Bilski decision. Part of the memo reads as follows:

"Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea."

Note - Section 101 is the relevant US statute dealing with patentable subject matter.

Here's the article:

USPTO Sends Memo to Examiners Regarding Bilski v. Kappos | IPWatchdog.com | Patents & Patent Law

Bilski - Business as Usual

2010-06-29T06:41:00.001+10:00

Courtesy of Dennis Crouch's Patently-O blog.

It appears that it is business as usual. The Court has refused to state any particular rule or categorical evaluation. So the issue of patentable subject matter has been pushed to the background in patent prosecution and litigation in the US.

As far as "Business Methods" per se are concerned, the US statute does not categorically exclude such inventions. According to the Court, a prior use defence in the US contemplates the existence of at least some business method patents. By allowing this defence, the statute itself acknowledges that there may be business method patents.

Software will largely remain patentable. At minimum, this decision does not allow the categorical exclusion of software patents. That is to say that the court neither endorsed nor rejected previous decisions in connection with software as subject matter.

In this case, Bilski was related to a method of hedging risk and it was not patentable because it is an abstract idea.

It appears to me that the US and Australia are largely aligned. Here, the Full Federal Court said that an asset protection method was not patentable subject matter. See my post of 25 July 2006.

Here is the decision - http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

Will Bilski be decided on Monday (Tuesday in AU)?

2010-06-26T08:36:00.004+10:00

IPWatchdog reports that Monday, 28 April, (Tuesday in AU) may very well be the day that we get the Bilski decision from the US Supreme Court. This may or may not render a large portion of software inventions as not being proper subject matter for a patent in the US. Of course, this will have enormous consequences for us here in Australia.

Bilski Decision Day: All Eyes Turn to Supreme Court on Monday | IPWatchdog.com | Patents & Patent Law

No Bilski Decision Yet

2010-06-22T11:48:00.001+10:00

As Gene Quinn reports, we're still waiting for the Supreme Court to hand down their decision. As I've mentioned before, this decision may have a big influence on the way we here in Australia advise our clients on software inventions.

There's an off chance that we might get the decision this month. Otherwise we may have to wait until the next term, which will take us into October or perhaps even into 2011.

Monday June 21, Another No Bilski Day for the Supremes | IPWatchdog.com | Patents & Patent Law

LED Designs - Treatment of Prior Art

2010-06-17T20:07:00.002+10:00

(2 lens combination)

Case: Keller v LED Technologies Pty Ltd [2010] FCAFC 55

Venue: Full Federal Court

Judges: Emmett, Besanko and Jessup JJ

The Main Design Issues

Does the Designs Act 2003 change the manner in which a court is to have regard to the state of the development of the prior art base?

No, there is nothing in the wording of the report of the commission set up to investigate the 1906 Act that would suggest that there was anything wrong with the approach developed under the 1906 Act.

Does the Designs Act 2003 alter the task of the Court to compare Designs individually with each relevant piece of prior art?

No, it is not permitted to mosaic or produce a hypothetical amalgam of a number of prior designs in order to defeat the registration of the design in issue. That is impermissible under the Designs Act 2003.

The Power of the Innovation Patent

2010-06-10T11:20:00.001+10:00

A while ago I reported on the successful enforcement of an Innovation Patent - "Innovative Step Confirmed".

This morning while I was driving my son to school (the joy of working from home!), I saw the very reflector posts that were the subject of the Innovation Patent upheld by the Full Court. There they were, clearly of sprung steel, with the concave surface facing the oncoming traffic. Interestingly, interspersed between them was an example of the prior art cited against the innovation patent. The prior art examples look a bit broken and battered. Clearly, council (or whoever looks after the roads) is replacing them with an embodiment of the invention covered by the innovation patent. Given the amount of roadwork going on around here, someone must be making some good money out of the reflector posts. They are also being used on all the new roads I've seen.

Now, I'm not sure of what the real commercial story is here. But if it wasn't for the innovation patent, I'm pretty sure that someone else, or perhaps a whole bunch of people, would be putting those reflectors in the ground.

Sometimes the simple ideas are the best, and that's when you want to consider the Innovation Patent.

Food Channel - Opponent Fails to Discharge Onus

2010-06-08T19:56:00.006+10:00

Case: Food Channel Network v Television Food Network GP [2010] FCAFC 58

Venue: Full Federal Court of Australia

Judges: Keane CJ, Stone and Jagot JJ

Concepts
Intent to Use - Onus
Ownership of a trade mark
Deceptive Similarity

Main Issue

In opposition proceedings, does the evidentiary onus shift back to the applicant for registration where an opponent has made out a prima facie ground of opposition to registration?

Finding

If the evidence is not sufficiently clear to enable a finding to be made about whether a ground of opposition has been established, then the opponent must fail on that ground. It bears the onus of proof.

READ MORE.......

German Supreme Court software patent decision "not a landmark ruling"

2010-05-24T08:19:00.002+10:00

Here's another article in connection with the German Supreme Court ruling that I mentioned yesterday. It indicates that the decision is not a landmark ruling. Rather it's a continuation of a long line of thinking by the German courts. According to this author it's the recognition of the solution of a technical problem which is solved by a programmed computer that leads to a potential patent.

This is in line with the present European approach.

IAM Magazine - IAM Blog - German Supreme Court software patent decision "not a landmark ruling", says expert

German Supreme Court on Patents on Computer-Implemented Inventions - BLOG@IPJUR.COM

2010-05-23T13:01:00.001+10:00

Here's an excellent report by Axel Horns on a recent case heard by the German Supreme Court. Good to read that the Germans are on the right track. Hopefully, the rest of Europe will follow.

German Supreme Court on Patents on Computer-Implemented Inventions - BLOG@IPJUR.COM

USPTO's Facebook Page

2010-05-21T15:13:00.001+10:00

Nice to see the USPTO getting into Facebook. I wonder if IPAustralia will do the same...

Facebook | United States Patent and Trademark Office

High Court - Ignorance is Bliss for Registered Owners

2010-05-21T11:37:00.006+10:00

Case: E.& J.Gallo Winery v Lion Nathan Australia Pty Limited [ 2010 ] HCA 15
Venue: High Court of Australia
Judges: French CJ, Gummow JJ, Heydon JJ, Crennan JJ and Bell JJ

Concepts

"Use of a trade mark"
"Authorised use"
"In the course of trade"

Main Issue

Did the circumstances fall short of constituting "use" within the meaning of the Trade Marks Act because neither the registered owner nor an authorised user engaged in any act or conduct known by them to have had, or potentially to have, the result that the goods to which the registered trade mark was attached would be dealt with in some way within Australia in the course of trade?

Finding

It is not necessary for either the registered owner or an authorised user to have such knowledge for the use to constitute the necessary use in the course of trade required by the Act.

Introduction

In the Federal Court (E & J Gallo Winery vs Lion Nathan Australia Pty Ltd (2008) 77 IPR 69), Gallo claimed that Lion Nathan had infringed Gallo's Australian trademark registration for BAREFOOT in respect of wines. Gallo was unsuccessful in this infringement claim. But it was successful on appeal to the Full Court (E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27).

By cross-claim in the Federal Court, Lion Nathan applied to have the registered trade mark removed from the register on the grounds of non-use from 7 May 2004 to 8 May 2007.

The Full Court upheld the primary judge's finding that Lion Nathan's non-use application was made out and that Gallo's trademark should be removed from the register. Gallo appealed that finding.
READ MORE.......

Microsoft sues Salesforce.com over patents

2010-05-19T09:22:00.001+10:00

Here's one to follow. Gone are the days when Microsoft was the target of patentees. It seems that Microsoft have learnt their lesson well.

Microsoft sues Salesforce.com over patents | Beyond Binary - CNET News

Waiting, waiting - Another Day Without Bilski Decision, What Does it Mean?

2010-05-18T09:16:00.002+10:00

Here's a good article by Gene Quinn of IPWatchdog.

This decision will no doubt have a global impact. As far as Australia is concerned, a limitation on the ability to obtain a patent on software very much governs the decision to go ahead in the first place.

But it appears that the US Supreme Court is having some difficulties in reaching its own decision.

Another Day Without Bilski Decision, What Does it Mean? | IPWatchdog.com | Patents & Patent Law

From Class 99 - Stabilo Stumbles at OHIM

2010-05-13T08:04:00.002+10:00

This is an interesting post from the class 99 blog. Most of us who have spent a significant portion of our lives studying will be familiar with the STABILO markers.

http://class-99.blogspot.com/2010/05/stabilo-stumbles-in-2d3d-debacle.html

Jockey's Reputation Wins Out

2010-05-12T23:00:00.005+10:00

Jockey International Inc v Darren Wilkinson [2010] ATMO 22

Jockey is the registered owner of a number of trade marks relating to underwear featuring JOCKEY as a component. The trade mark has been used in Australia since at least 1947. It was first used in the US in 1929.

Wilkinson filed an application for registration of THROTTLE JOCKEY on 2 August 2006 in respect of "T-shirts, caps, beanies, head bands, sweat bands". The application was accepted on 31 October 2006 and advertisement of acceptance ran from 7 December 2006. Jockey filed a Notice of Opposition on 7 March 2007. Eventually, the issues to be determined related to Sections 42(b), 44, 60 and 62A of the Act.
READ MORE.......

ACTA - An Australian Viewpoint

2010-05-04T18:58:00.001+10:00

Kimberlee Weatherall, a lecturer at the University of Queensland, has analysed ACTA from an Australian point of view. Her report can be found here - http://works.bepress.com/kimweatherall/21/.

Delegate Compares LIDL to LITL

2010-05-03T21:22:00.001+10:00

Re: Opposition by Lidl Stiftung & Co KG to registration of trade mark application 1200990(9) (International Registration Designating Australia No 934438) - LITL - filed in the name of Aquent LLC.

Request to adjourn hearing refused; Section 44 - Trade marks deceptively similar to opponent's LIDL trade marks - Protection refused.

Lidl filed a notice of opposition to the registration of the trade mark LITL in respect of Class 9: Computers; mobile computers; notebook computers; laptop computers.
READ MORE.......

Trade Mark Searching in Europe

2010-04-30T22:43:00.000+10:00

This looks like a good resource for those wanting to do clearance and freedom-to-operate searches in Europe. In my experience, such searches have always been very expensive.

TMView

Delegate Finds LEAFGUARD not Capable of Distinguishing

2010-04-30T00:11:00.002+10:00

Richard Jelacic v Leafguard Gutter Systems Inc [2010] ATMO 20

Leafguard applied to register the trade mark LEAFGUARD on 12 Feb 2007 in respect of gutters, machines for producing gutters and installation of gutters. The application was advertised for opposition purposes on 13 March 2008. Jelacic filed a notice of opposition on 29 May 2008. Jelacic's grounds were based on s41 and s43. I will just consider s41, because the opponent, representing himself, became a bit confused and there was nothing in the s43 ground.
READ MORE.......

Trade Mark Today to Avoid Legal Issues Tomorrow

2010-04-28T22:17:00.000+10:00

Here's a good article from Australian Anthill - http://anthillonline.com/trademark-today-to-avoid-legal-issues-tomorrow.

Good Faith Annulled by Deliberate Use of Secondary Meaning

2010-04-25T14:22:00.002+10:00

Case: Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291

This matter follows on from a previous judgement which I reported on in my post of 13 February 2010.

Both parties let properties in a precinct called "Circle on Cavill". The applicant is the owner of a number of registered trade marks. The registered trade marks include the term "Circle on Cavill" in respect of property management and the rental of short term accommodation.

Tailly used "Circle on Cavill" in a number of websites, domain names and meta tags to promote its business.

Mantra contended that Tailly was infringing its registered trade marks. Tailly raised the defence that it was using the words in good faith to indicate the geographical origin of the services that it was offering. Tailly also filed a cross claim that Mantra's marks should be cancelled because they have become generally accepted in the trade as the sign that indicates the Circle on Cavill complex.

IPAustralia Releases TRIPS Protocol Consultation Paper

2010-04-22T23:06:00.000+10:00

IPAustralia has just released a discussion paper on implementing the TRIPS Protocol. It's available here: http://www.ipaustralia.gov.au/pdfs/news/TRIPS%20Protocol%20Public%20Consultation%20Paper.pdf

The Protocol permits WTO members to issue compulsory licences to manufacturers to produce patented products for export to address health needs in least-developed and developing countries.

The deadline for written submissions is 4 June 2010.

High Court Defines "Aggrieved"

2010-04-21T14:38:00.002+10:00

Case: Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13.

This appeal to the High Court is connected with Section 88(1) of the Trade Marks Act 1995. Only a person "aggrieved" can make use of that section to rectify the register. Rectification can take the form of cancellation, removal or amendment or entering conditions or limitations.

The factual background is worth reading, but I will skip it in this post, but for a brief summation.

Three proceedings took place between the parties before a single judge in the Federal Court and were heard together. In that court, two of the proceedings were dismissed on the ground that Health World was not a person "aggrieved". The remaining proceeding was dismissed on the ground that Shin-Sun was not a person "aggrieved".
READ MORE.......

Gasp Dresses Infringe but Designs Invalid

2010-04-15T20:42:00.004+10:00

Case: Rosemin Pty Ltd v Gasp Jeans Chadstone Pty Ltd FCA 228
Date: 16 March 2010

This case does not have any interpretative content. Rather, it is an interesting study of how our courts deal with evidence. For that reason, it's worth reading.

Rosemin is the registered owner of a number of design registrations covering various dresses. Rosemin claimed that sale of various dresses by Gasp infringed the registered designs. Gasp admitted that its
dresses are "identical to or substantially similar in overall impression" to the Rosemin designs. Gasp also admitted that it "sold or otherwise disposed of, or offered to sell or otherwise dispose of, the Gasp Dresses. It followed that Gasp would have infringed if the design registrations were validly issued.

READ MORE.......

Patent Prosecution - A Report from the ABA IP Conference

2010-04-14T20:19:00.004+10:00

My apologies for not providing a series of posts during the conference. Between jet lag, keeping my practice going and the hospitality suite, there was little time. But here is a report on the panel presentation in which I was privileged to participate.
READ MORE.......

IPONZ Introduces Standardised Format for TM Specs

2010-04-13T14:05:00.003+10:00

The Intellectual Property Office of New Zealand will apply standardised formatting to trade mark specifications. This is an attempt to align with current international best practice.

ABA Section of Intellectual Property Law | 25th Annual IPL Conference

2010-04-01T16:49:00.000+10:00

For those readers who may be interested, here is the schedule for the conference next week.

Section of Intellectual Property Law | 25th Annual IPL Conference | Schedule

I will attempt to post articles as the conference progresses. The operative word is "attempt".

It is both an honour and a privilege for me to be participating in this prestigious event. The international panel in which I represent Australia will be on at 13:45 on Thursday, April 8.

Seven Sins — IP Mistakes Start-Ups Should Avoid

2010-03-31T10:56:00.000+10:00

Here is another excellent article from IPFrontline.

The reason for my posting it on an Australian blog is that I consistently run into one or two of these "sins". The most valuable asset a start-up has is its intellectual property. Yet is remains astonishing how often these sins are committed in this country.

Seven Sins — IP Mistakes Technology Start-Ups Should Avoid

United States - Judge Invalidates Human Gene Patent

2010-03-30T14:54:00.003+10:00

Here's an interesting article from the New York Times. There is no established legal precedent in Australia against the validity of a patent for a method of isolating a gene. On the other hand, the mere discovery of the gene would not be patentable.

Judge Invalidates Human Gene Patent - NYTimes.com

Somewhat related, our courts have held that there is no justification in law or logic to distinguish a process of curative treatment of the human body from that of cosmetic treatment, and that both of these forms of treatment may constitute a manner of manufacture (that is, proper subject matter) provided they have commercial application.

Finding your brand essence

2010-03-30T08:53:00.004+10:00

As a professional who often deals with the aftermath of the destruction wrought by marketing consultants, I enjoyed this pithy article.

Seth's Blog: Finding your brand essence

Those of you who deal with brands would do well to follow Seth Godin's blog. It's full of good, practical advice.

GCFC - Where's your brand?

2010-03-29T19:02:00.001+10:00

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As a Gold Coast resident, I am excited at the prospect of having an Aussie Rules football club. But I'm finding it difficult to rave about my new team.

You see, they haven't yet decided on a personality for themselves. So now they are using GCFC. Here's the website: http://goldcoastfc.com.au/. So we'll have GCFC v Lions, GCFC v Crows, GCFC v Saints, GCFC v Cats etc. Whether or not you like lions, crows, cats or saints, it's not difficult to see how fans (and particularly undecided youngsters) can identify with those clubs. Then there's the merchandise. I can envisage inflatable lions and fluffy crows and cats. But what will happen with GCFC? Inflatable letters?

Consider their competition here on the coast. It's the other code, rugby league - http://www.nrl.com.au. Our club here is the Titans - http://www.titans.com.au/. It's like chalk and cheese as far as branding is concerned. This was demonstrated by my 6 year old son who arrived home one day after school and quizzed me with: "Dad, do you know who came to see us at school today?" After displaying my ignorance, my son answered: "The Titans!". Then I was someone indifferent to rugby league. Now I'm a keen follower and supporter of the Titans. It wasn't that he knew what "Titans" meant. It was just easy to remember and to repeat. Once I told him what it meant he was well and truly hooked.

Apparently GCFC are looking for a new name. That's good news, but imagine the cost of building up the GCFC brand, only to discard it for another name. According to their website, they've been five years in the making. If they had chosen a brand name back then, it would have been household, helping to snare a large following of young impressionable children and their doting parents. With their season starting in 2011, I fear the horse has bolted.

Don't "Describe" Your Brand

2010-03-25T16:35:00.001+10:00

IPFrontline has published an excellent article about brand enforcement. It warns against describing your brand in your marketing blurb. One of the examples given is the way in which Firefly Digital described its brand as being "descriptive of our products on many levels...". This is a dangerous admission and is sure to be used by Google as it defends a trade mark infringement lawsuit brought against it by Firefly. Read it here: What Ever You Do, Don't 'Describe' Your Brand!

As the article points out, and as I emphasise in this article, the problem with describing your brand is that it undermines a claim of "inherent distinctiveness" which you may need to make when enforcing your registered trade mark or even when you are attempting to obtain valid trade mark registration.

Laudatory Luscious Lips

2010-03-24T10:11:00.001+10:00

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Case: Nature's Blend Pty Ltd v Nestle Australia Ltd [2010] FCA 198

Result: Nature's Blend failed to show infringement.

The Robinsons own the registered trade mark for LUSCIOUS LIPS, which is registered from 12 March 2007 in respect of, inter alia, confectionery. Nature's Blend uses the mark in connection with lip shaped chocolates.

Nestle acquired Allen's confectionery business in 1989 and manufactures about 75 product lines under the ALLEN'S trade mark. ALLEN'S is well known in Australia. It has been used in connection with confectionery since 1891.

From about May 2007 to March 2009 Nestle manufactured, distributed and sold confectionary under ALLEN'S and RETRO PARTY MIX in packaging which included the expression "luscious lips" on the rear of the packaging. The expression appeared together with a description of the products: "That’s right! All your favourites are back, so put on those flares and get ready to party! Up to 7 lolly varieties including...cool Cola Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries." [emphasis added]

Sundberg J. discussed the relevant legislation. Section 120 sets out that infringement requires use as a trade mark. Also, the trade marks must be substantially identical or deceptively similar. Section 7(4) states that use in relation to goods means use of the trade mark upon or in physical or other relation to the goods. Section 17 defines a trade mark as, inter alia, a sign used to distinguish goods dealt with or provided in the course of trade by a person from goods so dealt with or provided by any other person. This would mean that descriptive or laudatory words would not usually qualify as trade marks.

In respect of trade mark infringement, the comparison is between the LUSCIOUS LIPS trade mark and Nestle's conduct. So, effectively, Nature's Blend said that Nestle was infringing its trade mark rights by selling the party mix described above.

Nature's blend said that "luscious lips" is not a phrase that ordinarily and naturally describes confectionery. They said that it is inherently distinctive and "newly-coined". Nestle cited various dictionaries which appear to indicate that "luscious" can mean "highly pleasing and pleasant to the taste or smell". According to them, the words were descriptive and laudatory.

It is possible for words to be descriptive and still serve as a badge of origin. In Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310, Gummow J said that the fundamental question is "whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “partly because” (emphasis supplied) they are described by the words in question."

His Honour held that the plain meaning of the words would be taken by consumers as being descriptive or laudatory of confectionery in the Retro Party Mix.

Whether or not Nestle used the words as a trade mark was also an important question.

The question is whether the words would have appeared to consumers as being used to indicate a connection in the course of trade between Nestle and the confectionery. As set out in Shell Co of Australia Ltd v Esso Oil (Aust) Ltd (1963) 109 CLR 407, the context of the use is all-important. Allsop J summarized it in Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [2002] FCA 390 - "The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others...The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use."

The words "luscious lips" appeared on the back of the packet as part of a description of the contents. The word ALLEN'S appeared prominently on the front of the packet. So did RETRO PARTY MIX.

In Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chip Co Pty Ltd (1996) 135 ALR 192 the Full Court held that the word ‘KETTLE” was not used as a trade mark in respect of kettle cooked potato chips. The packet also prominently displayed the well-known trade mark ‘Thins’ and another well-known phrase ‘Double Crunch’. In Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310, the Full Court held that CAPLETS on a paracetamol product called "TYLENOL’ had not been used as a trade mark. In this case Lockhart J said: "A person looking at the packaging would assume that the word CAPLETS describes or indicates the shape of the product contained in it or the dosage form."

Possibly disingenuously, Nature's Blend referred to the High Court’s decision in Mark Foy’s Limited v Davies Coop and Company Limited [1956] HCA 41 where the majority held that the defendant's use of the words "Tub Happy" constituted infringement. Although the words meant "washable" it was a meaning that required suggestion. It was not a meaning that "sprang unaided to the mind". This did not help Nature's Blend because his honour felt that "Luscious Lips" did have a meaning that could "spring unaided to the mind". That is it meant a confectionery product that has a sweet taste and is in the shape of lips.

His honour said that "Luscious Lips" were significantly less prominent than the word CAPLETS and KETTLE.

Considering the evidence, he said that he was not satisfied that there had been "use as a trade mark". The two reasons were that the words were laudatory and descriptive and the effect of the words were diluted by the prominence of ALLEN'S.

DOPI not deceptively similar to IPOD

2010-03-18T23:06:00.000+10:00

IP Now reports how an Australian company has had a win against Apple.

Here's the story:

IP Now - Australia & New Zealand Intellectual Property Law � Blog Archive � Win for the little guy in Apple “i” wars

IPAustralia's Brisbane Sub-Office Details

2010-03-18T09:08:00.001+10:00

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Here is the notice from IP Australia: http://www.ipaustralia.gov.au/resources/officialnotices_p2010.shtml

Effective 6 April 2010, the sub-office details will be:

IP Lodgement Point

Brisbane GPO

261 Queen Street

Brisbane QLD 4000

Employer's Ownership of Invention Governed by Common Law

2010-03-17T11:15:00.001+10:00

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Case: Richwood Creek Pty Ltd v Williams [2010] FCA.

I came across this unreported case recently. It's a reminder of the importance of getting the business relationship right.

The case is an appeal to the Federal Court from an opposition decision handed down by the delegate of the Commissioner of Patents. The Commissioner had found that Williams' rights in respect of the patent vested in a company called Norkres Pty Ltd as well as the applicant, Richwood Creek. Since Richwood Creek alone was not entitled to the grant of the patent, according to the delegate, opposition was established and the patent application was refused.
READ MORE.......

The Struggle to find a name

2010-03-14T18:25:00.002+10:00

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I often meet prospective clients who struggle to find a name for their new product. For those of you who are scratching your heads trying to think of a name, here is a site that looks really useful - http://wordoid.com/.

Here's a quote from that site, with which I wholeheartedly agree: "Sometimes giving something a name can be the hardest thing in the entire world. Take a look at all the successful business around you and look at their names. They all mean nothing! Esso and Texaco being a few good examples. If you’re starting a blog, website or multinational company having a name that means nothing can be one of your most important assets."

United States - Analyzing Patent Reform Chances and the First to File Provisions

2010-03-11T09:14:00.000+10:00

Here's an excellent analysis from my fellow blogger, Gene Quinn of IPWatchdog.

Analyzing Patent Reform Chances and the First to File Provisions | IPWatchdog.com | Patents & Patent Law

Updates to Trade Mark Examiners Manual

2010-03-10T10:36:00.000+10:00

IP Australia has updated their trade mark practice manual.

The updates deal with extension of time provisions, time limits for acceptance, deferment of acceptance, capacity to distinguish, deception or confusion, removal for non-use and the Madrid Protocol.

The changes will be published in the official journal of trade marks on 18 March 2010.

IP Australia : Resources > Official notices > Trade marks notices 2008

The Proposed First-to-File Statute in the US

2010-03-10T06:14:00.001+10:00

As some of my readers will know, the US is thinking about joining the rest of the world by becoming a "first to file" country. Here is the proposed statute, thoughtfully set out by Dennis Crouch in his Patently-O blog.

Patent Reform Act of 2010: Proposed First-to-File Statute - Patent Law Blog (Patently-O)

More IP litigation in China than anywhere else on earth?

2010-03-10T06:05:00.000+10:00

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Many of my clients are concerned that they won't be able to enforce their IP in China. This article from the prestigious IAM magazine should be comforting.

IAM Magazine - IAM Blog - There is more IP litigation in China than anywhere else on earth

Online Filing Facility for Patent and Design Applications New Zealand

2010-03-09T10:27:00.000+10:00

IPONZ releases information in connection with online patent and design filing - Ministry of Economic Development - Business Update

Trade Marks and Keywords

2010-03-09T08:25:00.001+10:00

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Here is an excellent article aptly entitled "When Your TM Becomes the Key to Your Competitor's Ad". It is well worth a read because it gives some useful guidelines on what to do when you discover that your registered trade mark is being used as a keyword in someone else's online advertising campaign.

New IP Australia Lodgement Points - Convenient?

2010-03-05T10:08:00.000+10:00

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IP Austraia has just announced that the new Brisbane lodgement point will become available on 6 April 2010. -http://www.ipaustralia.gov.au/about/state_transition.shtml.

I don't see any real benefit, apart from a saving for the taxpayer. I still can't go to my local post office and lodge a patent application. So I will continue to lodge online where possible.

It would really be convenient if, as in the US, we could use any post office. PCT applications are often huge and the weird PCT-Easy process that has been cooked up by the Europeans clashes with my system. Why we can just upload pdf's for PCT applications is beyond me. I would welcome an explanation.

Calling All Drafters - Free Claim Construction Dictionaries

2010-03-05T10:00:00.000+10:00

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I have found this excellent resource for those of us who draft patent specifications regularly. The downloads are big, but worth it. -http://www.pubpat.org/garrodglossariesreleased.htm

False Marking in the United States

2010-03-05T06:48:00.000+10:00

It is my usual practice to advise clients to mark their patented products in the United States. This can help when extracting a damages payment from an infringer. The advice is to mark the product with the patent number so that it is clear that the product is covered by a patent. If it is not practical to mark the product, the associated marketing material should also indicate that the product is the subject of a US patent.

A number of my associates have warned me that the courts in the US are making full use of the "false marking" punitive provisions in their legislation.

For example, In Forest Group v. Bon Tool Co., the Federal Circuit ruled that the $500 maximum false patent marking penalty of 35 U.S.C. § 292(a) should be imposed on a per article basis. Therefore, each article that is falsely marked with the requisite intent to deceive constitutes a separate offence under § 292(a), which can result in substantial damage awards against patent owners. Any person can bring a false marking claim. So there is some concern that the decision may open the floodgates.

A Lesson in Claim Construction

2010-03-02T10:37:00.010+10:00

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Case: Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108.

Inverness owns four patents related to a device for pregnancy testing at home. Inverness alleged that a number of respondents, collectively referred to as MDS, infringed its patents. The patents in question involved a parent with two divisionals and a separately filed patent. MDS challenged the validity of all four patents on the grounds of lack of utility and sufficiency.

To summarize the result:

Claim 1 of the first patent is infringed.
Claim 1 of the second patent is infringed.
Claims 1 to 4 of the third patent are invalid for lack of novelty. The third patent has expired.
Claims 1 and 22 of the fourth patent are invalid for lack of novelty and should be revoked.
Dr Appanna is personally liable for the infringement as a joint tortfeasor.
Dr Appanna is liable under s 13(1) of the 1990 Act for authorising infringement.

Claim Construction

Key issues were the meanings of certain terms. One of those terms was "specific binding reagent" which appeared as part of an essential integer of the claims. This term was important because it appeared that the only difference between the MDS kits and the example in the first patent was that the antibodies are reversed in the MDS kits. Inverness said that the reverse use of the antibodies made no difference.

Inverness asserted that the term meant the reagent could bind not only to the analyte sought to be detected, but also to other molecules related to the analyte. MDS asserted that the reagent will preferably bind only to the analyte and to no other molecule in the sample. Bennett JJ found that normal English usage in the field of immunology supported both positions. So she turned to the specification of the parent patent. She held that the specification appeared to draw a distinction between specificity and a specific binding reagent. "Specificity" defines the ability of the reagent to identify only that reagent. "Specific binding reagent" defines the characteristic that ensures that the reagent does bind with the analyte in a specific way. For example, the specification recognised the existence of cross-reactive immunoassays and made reference to antibodies that would cross-react with molecules other than the target antigen. That is, the reagents were not absolutely specific. MDS countered by finding examples in the specification where the word "specific" was not used, such that the use of that word would indicate a preferable binding. But Bennett held that it was equally likely that the claim included rather than excluded a particular embodiment of the invention. She did not accept that there was a deliberate differentiation. Furthermore, she pointed out that the specification used the term "highly specific" which did not mean "mono-specific".

In summarising this part of the judgement, Bennett held that the "untutored" approach of using the word "specific" as an adjective to describe a type of binding reagent should be rejected. The reasons included the manner in which the specification used the expression "specific binding reagent". The specification recognised the concept of degrees of specificity. The specification set out examples of antibodies which were not mono-specific.

Another term which was relevant was "dry porous carrier". It was part of an essential integer of the four patents. Inverness said that the specification focused on the function of the carrier rather than on the physical form of the carrier. So the term covered a single body or a number of discrete bodies. MDS on the other hand said that the term was limited to a a single continuous piece of material. The term was important, because the MDS device contained a number of dry, porous discrete pieces.

Bennett pointed out that the specification referred to the the carrier as a strip or sheet, but only as a preferred embodiment. The term was used in claim 1. Claim 9, dependent on claim 1, limited the carrier to a strip or sheet of porous material. This meant that claim 1 envisaged a broader interpretation. So she found that the MDS device contained a dry porous carrier within the meaning of claim 1.

Claim 1 of the first and second patents were found to be infringed.

Yet another term which came under scrutiny in the third patent was "within said casing". The claims of the third patent contained the integer of a ‘bibulous sample liquid receiving member within said casing to receive sample liquid applied to said application aperture’. The issue was whether the word "within" meant only "wholly within" as contended by MDS or also "partly within" as contended by Inverness.

MDS relied on the Oxford English Dictionary meaning of "within". Inverness responded by pointing out that figures 8 and 9 in the specification showed an embodiment with the sample member protruding from the casing. Bennett pointed out that the specification did not use the word "within" when describing figures 8 and 9. However, the specification did use the word "within" when describing a position of a carrier strip depicted as wholly within a casing. So Bennett concurred with MDS.

Inverness alleged that MDS also infringed claims that contained "porous material backed with transparent moisture-impervious material". MDS contended that its product did not take this integer because it was coated with a strip of white vinyl which was not transparent. Also the white vinyl did not perform the same function as the transparent material. Bennett concurred with MDS.

Utility

One test of utility is whether the claimed invention fulfils the promise of the specification, in that it does what was intended and claimed by the patentee (Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171), and whether the end obtained is itself useful (Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82; (2008) 77 IPR 449)

Bennett pointed out that the claims should be construed as they would be by the person skilled in the art desirous of making use of the invention. Furthermore, a claim does not need to specify a limitation that was common knowledge in the art for that limitation to apply in construing a claim to avoid want of utility. Where a claim omits a feature which proper construction leaves for the reader to supply, the claim will not be invalid for want of utility if the feature is one that the skilled addressee could reasonably be expected to supply to make the invention useful.

Bennett said that the invention would be useful if the specific binding reagents were chosen such that, in combination, they were selective for the desired analyte. Inverness asserted that a person skilled in the art would be capable of selecting appropriate specific binding reagents. The specification of the first patent was silent on accuracy.

MDS said that what was promised in the first patent and claimed in claim 1was an analytical device which would function as an analytical device for the targeted analyte and, from that, accuracy is necessarily a promise.

But Bennet said that the fact that, in theory, one could construct a device according to the claims that, in certain circumstances, would not detect the analyte is insufficient to render the claims invalid for want of utility.

Sufficiency

The test for sufficiency is whether the disclosure in each of the patents enables the skilled addressee to produce something in each claim without new inventions or additions or prolonged study of matters presenting initial difficulty.

MDS contended that, on the construction of "specific binding reagent for an analyte", the first, second and fourth patents were invalid for insufficiency. According to Bennett, MDS in effect submitted that the claimed device of each of the patents is to test for an analyte with no cross-reactivity and no false positive or negative results, so that a device within the claims is not possible in the absence of scavenger molecules.

Bennett pointed out that the claims of the patents are not limited to devices which give no false positive and no false negatives. There was no evidence that the skilled worker could not make the inventions as claimed or that he or she would make a device that failed to detect an analyte.

Clarity

MDS contended that claim 1 of the second patent and claim 22 of the fourth patent were invalid for want of clarity. Claims are required to define the invention clearly and succinctly so that readers can ascertain the precise extent of monopoly claimed. If a claim is ambiguous, the ambiguity may be resolved by reference to the body of the specification. Failing that, the claim is invalid. MDS contended that the following words in claim 1 of the second patent were not clear or capable of any sensible meaning: "..the device also containing a labelled specific binding reagent for an analyte, or which can participate in a competition reaction in the presence of an analyte....". Inverness explained that this passage referred to two types of labelled specific binding reagents. One of the expert witnesses gave evidence that she understood the words in that way. Bennett said that made sense and was consistent with the disclosures in the specification.

MDS also contended that "having" was not clear in "the labelled antibody having freely mobile within the macroporous body and the porous carrier when in the moist state." Bennett pointed out that in an almost identical passage in the body of the specification, the word "having" was replaced by "being". A reader wishing to clarify the meaning of the passage would go to the specification and see that the word "having" should be replaced by "being". So there was no lack of clarity.

Priority dates

There is a useful discussion of the requirement of "fair basis" as it applies to priority dates. I won't discuss that in this post because I have already considered a number of the cases cited in that discussion. I also wanted to limit this discussion to claim construction, in particular.

Conclusion

This case is worth reading because it gives some practical guidelines on claim construction. It is a reminder of the strong connection between the claims and the body of the specification and of the fact that one cannot properly be considered in the absence of the other.

To Headstart or Not

2010-02-18T21:00:00.000+10:00

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I have developed the habit of offering the Headstart option to my new trade mark clients. This is an effort to smooth the way with IP Australia. To date, I've only experienced courteousy and efficiency from the staff at IP Australia.

There are detractors. Some say that the inability to prepare tailored class descriptions is restrictive. It would be, were it not for the accommodating staff. If I need to tailor the description, I simply email the new description to the relevant examiner with a request that he or she amend the description accordingly. Provided you're not trying to add unrelated goods or services, chances are that you can get a decent description on file. My cynical side might think that many practitioners' avoidance of Headstart is simply a way of generating fees through searches and responding to adverse examination reports. I trust that's not the case.

One of the reasons I offer the Headstart option is that examination is carried out by a person who examines trade mark applications for a living. As a sole practitioner, I have to deal with a wide variety of tasks and could never develop that level of expertise. Not only that, but the official fee is only $90 per class. That's a lot cheaper than contracting the search out.

So for now I will continue to offer Headstart in spite of the naysayers. I'll let you know (discreetly of course) if I have a bad experience.

International Applications Dip in 2009

2010-02-16T06:10:00.001+10:00

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As I mentioned earlier, overall international applications were down 4.5% in 2009. This brings the level back to just under 2007 figures. A full report can be found here.

I was concerned to see that Australia dropped by 7.5%, particularly since we escaped the worst of the recession. The US, which was one of the hardest hit, dropped by 11.4%. Interestingly, Japan, also one of the hardest hit, actually grew by 3.6%. This is an indication of how IP ownership is shifting East, particularly when one considers the growth in a number of other East Asian countries. As usual, those countries suffer less from the West's short-term knee-jerk syndrome when it comes to investing in the future. We should take heed.

The greatest declines related to computer technology -10.6%, pharmaceuticals -8.0% and medical technology -5.9%.

Hopefully 2010 will be better.