Archive for September, 2009

Patentable Subject Matter: ACIP options paper

Monday, September 21st, 2009

ACIP has published an Options Paper in connection with its review of “patentable subject matter”.

Press release here.

Options Paper here.

The options under consideration are too far reaching for a “sound bite”.

For example (from the Press Release)

“The test for patentable subject matter in Australia is linked to legislation introduced
in England in 1623 so it really does need addressing within the context of modern
research and business,”

“The test for patentable subject matter in Australia is linked to legislation introduced in England in 1623 so it really does need addressing within the context of modern research and business”.

Of course, the fact that this disparaged Jacobean test is perhaps the most  modern, flexible, telelogical concept on our statute book since the NRDC case (in 1959) could be overlooked.

Also (from the Press Release):

ACIP have also proposed possible safeguards to ensure public concerns are reflected in decisions to grant patents.

Submissions by Friday 13th (!) November 2009.

Selected microblog posts (w/e 11/09/09)

Sunday, September 13th, 2009

Selected microblog posts from the past week:

  • RT @VogeleLaw: Found: Mary Beth Peter’s testimony (via @cathygellis – thanks!) http://bit.ly/Cijau #gbs_hearing [US Copyright Register opposes Google Book Settlement]
  • Google Book in the EU? http://ff.im/-7OYfA
  • RT @MegLG: A Billion Dollar Test of the DMCA Safe Harbors in Viacom v YouTube http://ow.ly/om66 via Cyberlaw Cases
  • RT @michaelgeist: Microsoft wins stay of injunction on Word. Case arises from patent claim by Toronto’s i4i.http://bit.ly/oDmLU
  • IP Think Tank Blog looks at i4i v Microsofthttp://ff.im/-7zfKp
  • AAR on UWA v Gray – Universities and their employees: who owns developed IP? http://ff.im/-7RmgI
  • Hannahland: Ph D candidate on UWA v Gray http://ff.im/-7WcoR

Test – please ignore

Sunday, September 13th, 2009

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Shape and colour trade marks

Friday, September 11th, 2009

Julian Lee, in the Age yesterday, reported on the concerns of “marketers” about how hard Australian regulators are making it to register a shape as a trade mark, in the wake of:

  1. last month’s ruling by Sundberg J against Guylian’s sea-horse shaped chocolate; and
  2. the commencement of Nestle’s appeal against Aldi’s successful opposition to registration of the shape of a Kit Kat bar as a trade mark (BDW discussed the decision here, but the decision itself seems to be hiding on-line).

To digress for a moment from the “shape” issue – Mr Lee also reports that Cadbury and Darrell Lea have settled their long running litigation and Cadbury has secured registration of its trade mark for the colour purple.

Back to “shape” marks, you might have thought from the tenor of Mr Lee’s article that Australia is yet again embarking on anutochthonous experience, but it seems that the Europeans are playing hardball too; e.g. here and here.

IPRIA, parallel imports

Thursday, September 10th, 2009

IPRIA has organised a seminar in Melbourne on 15 September and Sydney on 16 September to discuss whether freeing parallel imports will make books cheaper.

Speakers include both Prof. Fels, who started it all, and Dr Rhonda Smith.

Details from here.

Has anyone established how far the prices of CDs and computer software fell once the markets for those products became open?

Injunctions or damages?

Wednesday, September 9th, 2009

This week’s Victorian Reports publish a 2007 decision in which the Court of Appeal (Dodds-Streeton JA, Ashley and Cavanough JJA agreeing) exhaustively reviewed the relatively limited circumstances in which equitable damages will be awarded in place of an injunction.

Now, the Court of Appeal was dealing with a question of trespass to land but, having regard to the House of Lords’ remarks in Fisher v Brooker, may be worth bearing in mind in intellectual property cases as, generally, an IP owner seeks an injunction when their rights are being infringed.

[135] The appellant’s reliance on an alleged divergence of principle in the applicable authorities was, in my view, ill-founded. The relevant authorities evince no fundamental difference of principle. They uniformly uphold the established view that an injunction is the prima facie remedy for trespass and that the alternative remedy of damages will be ordered exceptionally, as indicated by the working rule in Shelfer or by such other relevant considerations as may apply in a particular case. The authorities do not dictate or authorise the balancing of potential detriment to the parties on the basis of equivalent entitlement, or indicate that trespass may be negatived by undertakings to minimise its potential
20 VR 311 at 336
effect on future use. The tests embodied in the working rule of Shelfer are cumulative, and assume a significant inequality of entitlement between the parties (as the injury to the plaintiff from the trespass must ordinarily be small and the harm occasioned by an injunction to the defendant must be so disproportionate as to constitute oppression). Oppression in that context imports consideration of, inter alia, specific detriment, including disproportionate harm to the defendant relative to injury to the plaintiff, the deliberate or unintended quality of the trespass and all other relevant circumstances.
[136] The authorities’ consistent recognition that damages in this context may properly be assessed by reference to the advantage or gain to the defendant where the injury to the plaintiff is small facilitates an award of damages where that is otherwise appropriate, but does not disturb the traditional primacy of injunctive relief.

[135] …. [The relevant authorities] uniformly uphold the established view that an injunction is the prima facie remedy for trespass and that the alternative remedy of damages will be ordered exceptionally, as indicated by the working rule in Shelfer or by such other relevant considerations as may apply in a particular case. The authorities do not dictate or authorise the balancing of potential detriment to the parties on the basis of equivalent entitlement, or indicate that trespass may be negatived by undertakings to minimise its potential effect on future use. The tests embodied in the working rule of Shelfer are cumulative, and assume a significant inequality of entitlement between the parties (as the injury to the plaintiff from the trespass must ordinarily be small and the harm occasioned by an injunction to the defendant must be so disproportionate as to constitute oppression). Oppression in that context imports consideration of, inter alia, specific detriment, including disproportionate harm to the defendant relative to injury to the plaintiff, the deliberate or unintended quality of the trespass and all other relevant circumstances.

[136] The authorities’ consistent recognition that damages in this context may properly be assessed by reference to the advantage or gain to the defendant where the injury to the plaintiff is small facilitates an award of damages where that is otherwise appropriate, but does not disturb the traditional primacy of injunctive relief. (my emphasis)

Her Honour had earlier quoted the good working rule in Shelfer which (in part) was:

In my opinion, it may be stated as a good working rule that —

(1) If the injury to the plaintiff’s legal rights is small,

(2) And is one which is capable of being estimated in money,

(3) And is one which can be adequately compensated by a small money payment,

(4) And the case is one in which it would be oppressive to the defendant to grant an injunction:

then damages in substitution for an injunction may be given.

Doods-Streeton JA did immediately point out how limited this all was:

[46] While the factors potentially relevant to the exercise of the discretion cannot be exhaustively stated, Shelfer, in my opinion, correctly accorded primary importance to identifying a small injury to the plaintiff, and disproportionate hardship constituting oppression, to the defendant.

[47] In determining whether a substitution of damages for in specie relief is just, the interests of the parties are not of broadly equivalent weight. It will not suffice that the hardship entailed to the defendant by an injunction marginally outweighs the relief that the plaintiff will obtain thereby. Rather, the courts have typically required a significantly disproportionate damage to the defendant, reflected in the criterion of oppression in the Shelfer working rule.

This might be another area where US law is different, following eBay v MercExchange.

Break Fast Investments Pty Ltd v PCH Melbourne Pty Ltd [2007] VSCA 311

Uni of WA v Gray

Thursday, September 3rd, 2009

The Full Court (Lindgren, Finn and Bennett JJ) have dismissed the University’s appeal against the trial judge’s (the then French J) findings that the University did not own the targeted microsphere technology inventions Professor Gray made (partly) while a professor at the Uni.

The full 380 paragraphs – University of Western Australia v Gray [2009] FCAFC 116

Lid dip @pofip