Archive for November, 2009

The patent was valid, but not infringed

Monday, November 30th, 2009

Foster J has ruled that Bitech’s patent for an apparatus that simulates log flames or coal fire in electric or gas fired domestic room heaters is valid, but not infringed.

An essential feature of the patent was that the simulated flames resulted from reflected light, however, the alleged infringements used directly projected light, not reflected light and consequently did not infringe.

The novelty attack failed because the relevant prior art did not possess all the features claimed. The attack on obviousness failed because s 7(3) was not available – the complete specification was filed before the 1990 Act came into force and so the Alphapharm rules were all that was relevant.

Of potentially greater interest, if there had been infringement, Foster J would have found the importer and retailer (Bunnings) were engaged in a common design.

Somewhat bizarrely, on of the respondents denied it had imported the allegedly infringing products, but led no evidence on the point. As a result, Foster J has foreshadowed some consequences in costs for putting the applicant to proof on this point.

Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393

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2nd round consultations on IP reform in Australia

Friday, November 27th, 2009

IP Australia has published a second round of consultation paper (pdf) on its proposals for reform of intellectual property laws and procedures in Australia.

Topics covered include:

  • Getting the Balance Right
    Exemptions to Patent Infringement
    Resolving patent opposition proceedings faster
    Resolving trade mark opposition proceedings faster
    Resolving divisional applications faster
  • Getting the Balance Right
  • Exemptions to Patent Infringement
  • Resolving patent opposition proceedings faster
  • Resolving trade mark opposition proceedings faster
  • Resolving divisional applications faster

Submissions are due by 12 February 2010.

In a move definitely to be encouraged, the proposed drafting instructions have also been published (pdf) for comment.

(Links to the “Word” version as well as the pdf version and the previous round of consultation papers via here.)

Some further papers will be published soon on:

  • Flexible Search and Examination
  • Streamlining the Patent Process
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The mobile (iPhone) confidentiality agreement

Friday, November 20th, 2009

iPhone J.D. reviews an intriguing development: a standard from Non-disclosure Agreement “app” for your iPhone – iNDA.

The developer told iPhone J.D.:

“People often have informal meeting where they would like to discuss ideas with colleagues, friends, or prospective employees. We want to promote these meetings by giving people legal protection available to them at all times.”

STOP LAUGHING, this is fascinating:

The discloser actually signs the document with his or her finger on the iPhone and the signed document is emailed to both parties. Read the review and watch the demo.

A couple of  points about this (1) enforceability and (2) ramifications.

First, although it is available in the Australian iTunes store ($5.99) and the developer’s website says the agreement has been drafted by “a leading contract law firm”, the developer’s conversation with the iPhone J.D. suggests the app was drafted in line with US laws. Whether or not it would be enforceable in Australia may well be another matter. One can’t tell from the screen shots what the wording is. Also, it doesn’t look like you can add details like what the information claimed to be confidential is. On the other hand, we have electronic signature laws too and a relationship of confidentiality can arise where the confidential nature of the circumstances is apparent from the circumstances. Signing up to such a document might, just might, lead to such an inference. You should form your own views.

Secondly and in many respects far more intriguingly, think about the ramifications.

We already go along to mediations toting our laptops and maybe a printer, type up the terms and print them out for signature.

With this product people can have in their pockets – well in their iPhones – and with them at (pretty much) all times a document which is intended to create binding legal relations with some other party and actually get them signed up on the spot.

OK, this particular document is pretty rudimentary and I personally don’t often find myself suddenly desperate to sign the person I’m talking to up to an NDA. How much longer will it be though before the number of fields in the document that can be customised is increased and you can actually start tailoring some form or other to the particular circumstances?

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Trade marks as security for costs

Tuesday, November 17th, 2009

Lindgren J has ordered that the owners of the WILD TURKEY trade mark (which those of you who drink bourbon may be familiar with) provide security for costs before they can pursue their Federal Court application to have WILD GEESE removed from the Register of Trade Marks.

Lindgren J accepted that the owners, members of the international Pernod Ricard or Davide Campari groups, would have sufficient funds to satisfy an order of costs if they were unsuccessful. However, the purpose of s 56 of the Federal Court of Australia Act was to ensure that there was a fund available within Australia to satisfy the costs order.

His Honour accepted that there were procedures available to enforce money judgments against the owners in their home base(s) eg New York, but those procedures placed an additional burden on a party seeking satisfaction of a costs order over and above the difficulties a party litigating against an Australian based entity would incur.

Lindgren J then rejected the owners’ argument that their registered trade marks in Australia were sufficiently liquid assets within the jurisdiction. They were indeed assets, but they were not “sufficiently liquid”.

44 With respect, the applicants’ submissions fail to grapple with the critical question whether the bare trade marks would be readily convertible into cash by sale to satisfy an adverse order for costs.

45 The evidence to which the applicants refer is not evidence of a sale of the trade marks as items of property distinct from a sale of the underlying business.

46 Considerable difficulty might be experienced in realising the trade marks if Lodestar ever had to take that course. The underlying business would remain that of Rare Breed. A prospective buyer of the trade marks would know that Rare Breed would remain a competitor in the Australian market, albeit under a mark or name dissimilar to the trade marks.

47 Moreover, the only prospective buyers would be sizeable corporations that were in the same line of business in Australia or wished to embark upon such a line of business in Australia. If they already traded under a trade mark or business name, they might not be prepared to abandon it in order to buy and use Rare Breed’s trade marks. Would they be interested to acquire those trade marks in addition?

48 It may be that a receiver would eventually be able to sell the trade marks but the course of doing so would or might well be fraught with considerable difficulty and delay.

With respect, the applicants’ submissions fail to grapple with the critical question whether the bare trade marks would be readily convertible into cash by sale to satisfy an adverse order for costs.
The evidence to which the applicants refer is not evidence of a sale of the trade marks as items of property distinct from a sale of the underlying business.
Considerable difficulty might be experienced in realising the trade marks if Lodestar ever had to take that course. The underlying business would remain that of Rare Breed. A prospective buyer of the trade marks would know that Rare Breed would remain a competitor in the Australian market, albeit under a mark or name dissimilar to the trade marks.
Moreover, the only prospective buyers would be sizeable corporations that were in the same line of business in Australia or wished to embark upon such a line of business in Australia. If they already traded under a trade mark or business name, they might not be prepared to abandon it in order to buy and use Rare Breed’s trade marks. Would they be interested to acquire those trade marks in addition?
It may be that a receiver would eventually be able to sell the trade marks but the course of doing so would or might well be fraught with considerable difficulty and delay.

Similarly, his Honour rejected the Australian distribution rights for Wild Turkey.

Austin, Nichols & Co Inc v Lodestar Anstalt [2009] FCA 1228

Lid dip POF

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EU: patentability of stem cell

Monday, November 16th, 2009

Greenpeace’s attempts to have “stem cell” patents of Oliver Brüstle revoked moves to the European Court of Justice: The Budnesgerichtshof (German Federal Supreme Court) has referred to the ECJ several questions about the patentability of the use of stem cells to treat various neural diseases.

IPKat has details here, summarising the issues as :

The ECJ will now have to rule on the interpretation of “human embryo” in the sense of art. 6 Directive 98/44/EC. Is a stem cell derived from a blastocyst which has lost its ability to develop into a human still an embryo? If so, is a blastocyst a human embryo? If so, is purely therapeutic use of stem cells a “commercial or industrial purpose” in the sense of art. 6?

By way of comparison, section 18(2) of our Act baldly declares:

Human beings, and the biological processes for their generation, are not patentable inventions.

This provision was introduced at a late stage of the legislative process. Deputy Commissioner Herald had to try and work out its meaning in Fertilitescentrum AB and Luminis Pty Ltd’s Application [2004] APO 19 where he considered that:

36. It seems to me that of these three approaches, only the third approach provides a satisfactory interpretation of s.18(2). Accordingly, in my view the correct interpretation of s.18(2) is ascertained by recognising a human being as being in the process of generation (in either of the two ways I refer to in paragraph 31) from the time of the processes that create a fertilised ovum (or other processes that give rise to an equivalent entity) up until the time of birth.
37. The prohibition of `human beings’ in my view is a prohibition of patenting of any entity that might reasonably claim the status of a human being. Clearly a person that has been born is covered by this exclusion. But to the extent that there is a process of generation of a human being that lasts from fertilisation to birth, I consider that a fertilised ovum and all its subsequent manifestations are covered by this exclusion.

36. It seems to me that of these three approaches, only the third approach provides a satisfactory interpretation of s.18(2). Accordingly, in my view the correct interpretation of s.18(2) is ascertained by recognising a human being as being in the process of generation (in either of the two ways I refer to in paragraph 31) from the time of the processes that create a fertilised ovum (or other processes that give rise to an equivalent entity) up until the time of birth.

37. The prohibition of `human beings’ in my view is a prohibition of patenting of any entity that might reasonably claim the status of a human being. Clearly a person that has been born is covered by this exclusion. But to the extent that there is a process of generation of a human being that lasts from fertilisation to birth, I consider that a fertilised ovum and all its subsequent manifestations are covered by this exclusion.

In application of that ruling, the Examiner’s Manual indicates that the Commissioner’s policy with respect to stems cells is that:

it follows that human stem cells and human stem cell lines per se are patentable because these cells are not considered to be human beings or potential human beings within the meaning of s18(2).

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Substantial part of a video game

Friday, November 13th, 2009

The UK Court of Criminal Appeal has dismissed an appeal against a criminal conviction for selling modchips to enable Sony Playstations, Nintendo and Microsoft to play counterfeit games.

The 1709 [delete mouthfull of title] blog has a detailed report.

Those of us living in the autochthonous realm hidden away in the summer sun may find some interest in the reasons why the playing of the (counterfeit) games would result in a reproduction of a substantial part of the copyright – a point doubted or left open in Stevens v Sony [2005] HCA 58 at [80] – [99].

However, a considerable degree of caution will be required:

First, (what I guess constitutes a plurality of) the High Court has already ruled that a single image (or “frame”) from a film is not (or is not necessarily) a substantial part – at least of a television broadcast (Network Ten v Nine Network):

Secondly, as Stevens v Sony shows, Australia has very definitely embarked on its own course in relation to technological protection measures and this whole area of “meta” copyright.

Thirdly, at least 3 of the judges in the IceTV case resoundingly declared that it is not appropriate to test substantiality by reference to the taking of  the skill and effort of the author. Well, that is what they said; whether or not it is what they did is another matter. The 3 judges in the other judgment, of course, appear very much to have applied that misappropriation of the skill and effort (in expression) approach.

Those of you who are political philosophers or constitutional scholars may also look with some bemusement, or perhaps appreciation, on the Court of Criminal Appeal’s thundering against the idea of leaving to that engine of democracy, otherwise known as the jury, such recondite questions as copyright infringement, when perfectly well-trained Chancery judges were ready and waiting to serve. Of course, those of us who practise in the civil jurisdiction where IP cases are usually heard might well be horrified by the prospect of trying to present such a case to 12 men and women good and true!

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ACTA coming a little bit more out of the shadows

Thursday, November 12th, 2009

Michael Geist has a link to the leaked EU comments on the chapter for third party liability on the internet – being drafted by the USA.

The Guardian has weighed into the debate.

Kim Weatherall has emerged from her self-imposed seclusion to comment here, here and here.

DFAT’s must recent summary and overview of key elements. Anondyne USTR statement.

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Parallel imports, books and Australia

Wednesday, November 11th, 2009

The Australian Government has announced today that it will not be changing the limitations in the Copyright Act on the parallel importation of books.

According to the Press Release:

Australian book printing and publishing is under strong competitive pressure from international online booksellers such as Amazon and The Book Depository and the Government has formed the view that that this pressure is likely to intensify.
In addition, the technology of electronic books (e-books) like Kindle Books will continue to improve with further innovations and price reductions expected.
The Government has not accepted the Productivity Commission’s recommendation to remove the parallel importation restrictions on books.

Australian book printing and publishing is under strong competitive pressure from international online booksellers such as Amazon and The Book Depository and the Government has formed the view that that this pressure is likely to intensify.

In addition, the technology of electronic books (e-books) like Kindle Books will continue to improve with further innovations and price reductions expected.

The Government has not accepted the Productivity Commission’s recommendation to remove the parallel importation restrictions on books.

You could write a book on the rules governing parallel importation of books so I won’t attempt to summarise them here.

The Productivity Commission’s report. I still don’t think there has been any answer to the question whether the prices of music CDs or computer software fell after open markets were introduced for those products.

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In re Bilski

Tuesday, November 10th, 2009

Patently-O has extracts from and links to transcripts of the oral argument before the US Supreme Court and some informed reportage.

Also, make sure you read Prof. John Duffy’s rebuttal of the charge that the Federal Circuit’s decision in State Street “opening the floodgates” to business method patents is a case of judicial activisim gone wild.

Then ask yourself, would the world really be a better place if we all adopted the European practice of banning the patenting of  business methods and computer programs “as such“?

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Vegemite iSnack 2.0

Monday, November 9th, 2009

Kraft’s attempt to extend the Vegemite range has been attracting attention around the world.

Neil Wilkof considers what the impact from a trade mark or branding perspective was.

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