Archive for July, 2010

New DMCA exemptions

Friday, July 30th, 2010

The Librarian of Congress has announced 6 new categories of exemption from the prohibitions under US law against circumventing DRM mechanisms (what we call TPM and ERMI).

The (Australian) Copyright Council has a nice bullet point summary.

Jonathon Bailey, at Plagiarism Today, looks at the politics and the ramifications from a practical perspective. I wouldn’t be at all surprised if he didn’t spend a fair bit of time on the issue in his weekly podcast, so check back to his site on, say, Monday.

Now, the Librarian of Congress’ exemptions are applicable under US law only. Our law does contemplate the introduction of additional, so-called “ad hoc” exemptions against circumventing access control tpm, by means of the Regulations: s 116AN(9), Sch. 10A of the regs has 6 nice categories of exemption. These were added way back in 2006 around the time we had a review to find out if we should have some more. Wonder if someone, somewhere is thinking we should investigate some more?

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A new approach to business method patents Down Under?

Thursday, July 29th, 2010

Patent Baristas has a guest post from Bill Bennett at Pizzeys on the Deputy Commissioner’s rejection of a patent application for (as described by the Deputy Commissioner):

“a method for commercialising inventions that includes the step of applying for patent protection. The specification indicates that the method is intended to facilitate the uptake of commercialisation of inventions taking into account the restricted timeframe to file for intellectual property rights and the effect of automatic patent publication. The latter is a reference to the practice in most jurisdictions of publishing patent applications 18 months after their earliest priority date.”

Claim 1 reproduced in the Deputy Commissioner’s decision reads:

1. An invention specific commercialization system to facilitate success of inventions, the system including the steps of:
a) applying for patent protection for the invention in a country which is party to the Paris Convention,
b) conducting a review of specific commercialization process required by the invention,
c) preparing a research and development plan, testing the business dynamics of the invention,
d) conducting prototype testing, developing a prototype cost/benefit analysis,
e) determining product positioning and packaging,
f) conducting a manufacturing checklist,
g) entry of the information collected in steps a) to f) into an electronically fillable checklist having a prescribed time limit for each step to form a commercial entry strategy (CES) with a number of sub-steps, the CES prepared on the basis that each of the sub-steps in the CES are to be completed by a corresponding deadline, all deadlines falling within 30 months from the earliest priority date of the patent application, the checklist being computer-implemented and stored in computer or human readable format in data storage means and associated with processing means to allow updating of the checklist; and
h) policing compliance with the deadlines for the completion of the sub-steps through the production of reminders based on the prescribed time limits in the checklist to ensure that all sub-steps are completed within the deadlines.

At the risk of seeming glib and/or flip, one might think this was a checklist for the commercialisation of “an invention”, where one of the items on the checklist includes applying for patent protection, and using a calendaring system to generate reminders so you don’t miss a deadline.

Wonder what business managers and patent managers have been using Excel, Outlook and any number of computerised database for until now?

Any how, Mr Bennett’s blog, focusing on the “electronically fillable” and “computer-implemented” wording in the claim, contends that the Deputy Commissioner has reinterpreted Grant (you remember: the asset protection method (formerly known as a trust) in light of the US Supreme Court’s ruling in Bilski so that the production of a physical effect will lead to a “manner of manufacture” only where the effect is:

of such substance or quality that the method considered as a whole is “proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies”.

(Do read Mr Bennett’s more detailed consideration.)
However, this seems to confer on the Commissioner a rather wide discretion. Was it really necessary?

Invention Pathways Pty Ltd [2010] APO 10

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Entitlement to a design

Thursday, July 22nd, 2010

The Federal Court, Spender J, has allowed Courier Pete’s appeal from the Registrar’s ruling that, while Courier Pete owned ARD 310528, ARD 312217 and 312218 were owned by Metroll.

Section 13 of the Designs Act 2003 prescribes who is entitled to a design.

Collymore was employed by Metroll as its factory foreman making water tanks and the like. The Registrar found that it was no part of his duties to be creating new designs for rainwater tanks and Collymore had in fact made the first design on his own time at home. Hence, following an assignment to Collymore’s own company, Courier Pete, Courier Pete was the owner. However, the Registrar found that Collymore made the two later designs pursuant to an order from his boss at Metroll, Mr Harland. Thus, the Registrar found that Metroll was the owner.

Spender J upheld the Registrar’s finding in relation to the first design. (A significant factor in this was Metroll’s failure to call the other members of the tank making team to back up Mr Harland’s claim that the team was working on the design before the application to register the first design was lodged.)

Spender J considered that Mr Harland’s direction to Mr Collymore to make up what became the second and third designs had to be considered in all the circumstances. On the evidence, his Honour found that Mr Collymore had made it clear before he agreed to carry out Mr Harland’s direction that he, Collymore, would do so only on condition that he retained ownership in the designs and Mr Harland accepted that a royalty would be payable on use of the design. Thus, he retained ownership.

Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735

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Patents: IP Litigation in the Pharma Industry talk and Patenting by Entrepreneurs survey

Thursday, July 22nd, 2010

Prof. Joel Bernstein from UWA and Ben Gurion University and Todd Shand, a partner at Wrays, will be giving a free seminar for IPRIA, IPTA and Knowledge Commercialisation Australia on:

The Importance of Patents:

IP Litigation in the Pharmaceutical Industry

in

  • Adelaide on 4 August
  • Melbourne on 5 August
  • Sydney on 6 August.

Flyer here; online registration here.

Not specifically pharma related, but Professor Robert Merges and Pamela Samuelson have been posting a three part series reporting on the results of their survey of entrepreneurs Patenting by Entrepreneurs: The Berkeley Patent Survey: Part I, Part II and Part III.

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Class actions and antitrust

Thursday, July 15th, 2010

Following on from the post earlier this week about the findings that AstraZeneca had misused its market power in the EU over Losec, the Full Federal Court in Australia (Moore, Jessup and Dodds-Streeton JJ) has largely upheld an appeal against the primary Judge’s decision to strike out a Statement of Claim.

Unlike the AstraZeneca case, this case does not involve allegations of misuse of market power relating to a patented product; it concerns allegations about a price-fixing cartel for rubber compounds.

One interesting aspect about the case is that the litigation in Australia derives from a European Commission finding that Bayer AG and others had engaged in a global price fixing cartel for the rubber compounds. The applicants in this case allege that that cartel had ramifications in Australia causing them damage.

Another interesting aspect is that the applicants are bringing a class action to recover damages for the impact of the alleged cartel in Australia. In the IP field, we have recently seen the class action mechanism deployed to challenge the validity of patenting genes. Incidentally, the applicants’ solicitors in that case are the same as the applicants’ solicitors in this action.

Wright Rubber Products Pty Ltd v Bayer AG [2010] FCAFC 85

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Who owns the news?

Tuesday, July 13th, 2010

For those who didn’t make it to last week’s IPRIA / CMCL /MBS Cite seminar, the organisers have helpfully posted the videos and some of the slides.

Of course, from a purely legalistic point of view, the copyright owner owns at least his/her/its “expression” of the news and, as the various attempts to set up pay-walls and the like expose, website owners can “block” Google/Bing’s spiders and linking if they really, really want to (see Danny Sullivan via here).

Over at Techcrunch, John Biggs speculates that paywalls and the era of micro-payments are coming. Meanwhile, the Guardian appears to be making a bid to become the blogosphere’s source of reported news (lid dip, @lods1211) which might be thought of as an application of Jeff Jarvis’ What Would Google Do?

Now, I’m all in favour of News Corp trying to put the lid on linking to its websites and the Guardian taking a different strategy. Afterall, that might be thought the essence of competition. More generally, however, do we really want to develop some additional legal protection that makes linking (when it is not technologically blocked) some sort of infringement?

Wouldn’t that mean “Bye bye world wide web” (as we know and use it)?

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Misusing a patentee’s market power

Tuesday, July 13th, 2010

The Court of General Instance (formerly (?) the EU’s CFI) has upheld the European Commission’s ruling that AstraZeneca abused its dominant position in the market by practices designed to block or delay generic drugs competing with Losec from entering the market.

The abusive practices were:

  1. submitting deliberately misleading statements to patent agents, national patent offices and national courts in order to acquire or preserve supplementary protections certificates for omeprazole to which AstraZeneca was not entitled or to which it was entitled for a shorter duration; and
  2. requesting (and obtaining) the withdrawal of regulatory marketing authorisations for Losec capsules and replacing those marketing authorisations with marketing authorisations for Losec MUPS tablets.

The result of the second practice was to delay entry on to the market of competing generic products as they could not use the abridged marketing approval process.

The Court did reduce, however, the fine from Euros 60 million to Euros 52.5 million.

The case concerned patents for omeprazole, the patent protection for which has generated some controversy in Australia.

Like the EU, Australian law does provide for supplementary protection certificates and there is the potential for abridged marketing approval processes for generics (pdf – e.g). Art. 82 of the Treaty also has some resemblance to s 46 of the TPA and, while we might think that the EU has a fairly idiosyncratic approach to determining market power, the Hoffman-La Roche ruling relied on by the Court of General Instance has been referred to with approval by the High Court in Australia.

Case T?321/05 AstraZeneca AB v Commission

which has been conveniently summarised by Linklaters and Gibson Dunn.

Now, we might think this is an application of the peculiar EU approach to

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“Whiskas” purple

Monday, July 12th, 2010

Bennett J has allowed Mars to proceed to register its “Whiskas purple” colour as a trade mark for pet food, following Nestlé’s withdrawal of its opposition.

Nicholas Weston has a helpful summary; note Mars’ deliberate emphasis of the colour as a trade mark.

Some Whiskas in the “wild“.

Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 (with nice colour trade mark representation)

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Satellite broadcast and trade mark use

Thursday, July 8th, 2010

In a further round of the Food Channel / Network war, Greenwood J has accepted that the inclusion of the trade mark on programming broadcast by ABC Asia Pacific is use of the trade mark in Australia.

ABC Asia Pacific is primarily intended to transmit ABC programming into countries in the Asia Pacific region. Depending on the satellite, however, Australia or large parts of mainland Australia fell within the transmission footprint and not on the periphery. As the ABC Asia Pacific transmissions were free-to-air, the transmissions could be received and viewed by members of the Australian public who installed appropriate satellite dishes and there was evidence before his Honour of businesses operating in Australia which sold and installed the necessary equipment.

As a result, his Honour found that the trade mark was used in relation to the television production services in class 41 for which it was registered. However, the trade mark was not used in relation to the class 38 services of television broadcasting – ABC Asia Pacific was the broadcaster.

Food Channel Network Pty Ltd v Television Food Network G.P. [2010] FCA 703

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