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Government consultation papers on patent and trade marks

Government consultation papers on patent and trade marks

Government consultation papers on patent and trade marks

The Australian government has issued 5 consultation papers on how to implement some of the recommendations it has accepted from the Productivity Commission’s Final Report into Intellectual Property Arrangements:

Submissions are required by 17 November 2017 (with a view to introducing a bill as soon as possible).

I can’t say that introducing yet another inventive step test (there are 4 if you count common general knowledge alone – depending on which regime applies to the patent in question) makes much sense.

Most of the Productivity Commission’s reasoning was based on the common general knowledge alone test used in Alphapharm.1 It did find, however, that there had not been much change in the Commissioner’s rate of granting patents relative to the EPO since the Raising the Bar act was passed. However, so far as I could see, it doesn’t tell us how many applications the Commissioner had examined under the Raising the Bar regime and you would have to guess a large number were still under the 2001 regime.2

Essentially, the Raising the Bar regime allows any piece of prior art to be combined with common general knowledge to test obviousness. It also allows prior art information to be combined in the same way as one might expect an English court or an EPO board would.3 The Raising the Bar regime should in fact operate just like the UK/EPC regime and one would have thought we should give it a good chance to work!

  1. See e.g. the reliance on Angiotech Pharmaceuticals v Conor Medsystems Inc. [2007 EWCA 5 at [43]. ??
  2. The Merial case is the only judicial consideration I am aware of applying the regime introduced in 2001 but, if you know of others, let me know. ??
  3. See e.g. KCI Licensing v Smith & Nephew [2010 EWCA Civ 1260 at 6. ??

 

Unregistered design or registered design – UK

Over at the IpKat, Darren Meale has an extensive post explaining some of the intricate differences that arise when litigating an UK unregistered design right versus a registered design right. As he explains:

But UKUDR is quite powerful. As noted above, a designer can essentially make up what it says its rights are once it has seen an alleged infringement appear on the market, and it can lawfully do so in an immensely complex way. Only robust case management can deal with the menace….

Definitely well worth reading!

The case is Neptune v DeVol Kitchens [2017 EWHC 2172 (Henry Carr J)

Cutting the costs of designs litigation

Justice Carr in the UK has weighed into case management of design infringement cases in a big way.

Clingabeez[1] are apparently the runaway toy of the last year or so, being the Activity Toy of 2016 in the UK. They are the subject of a Registered Community Design. So, when what they allege are “copycats” hit the market, the letters of demand started flying. “Bunchem[2] is one such competitor.[3] It sued for unjustified threats and challenges the validity of the Registered Community Design. “Clingabeez” cross-claimed for infringement and denied invalidity.

At the initial case management conference, Clingabeez estimated a six-day trial and £776,000 costs; Bunchem estimated a four day trial and £360,000 costs.

Justice Carr considered both estimates were well out of order. His Lordship considered that a case relating to a registered design for a consumer product should be much simpler, largely dependent on the Court’s visual assessment of the evidence. In line with Court of Appeal decisions,[4] at [6], Justice Carr said:

(i) Registered design cases are concerned with the overall impression of the registered design, the alleged infringement and the design corpus. It is easier to see this than to describe it in words.

(ii) Admissible evidence in such cases is very limited, and is most likely to comprise technical evidence about design constraints. Such evidence is unlikely to require substantial cross-examination. It should be possible to decide a registered design case in a few hours.

(iii) If permission for expert evidence is to be given, then the precise ambit of that evidence should be defined. The expert should be told what question to address and the evidence should be confined to those questions.

(iv) It is clear law that whether the defendant has copied is irrelevant. It is equally irrelevant for the defendant to prove or to give disclosure about how his design was arrived at.

On the question of admissible evidence and further discovery, Justice Carr excluded evidence going to copying at this stage. Copying was not relevant to the question of infringement. However, it could be relevant to the remedy of additional damages. Accordingly, his Lordship postponed discovery and any evidence directed to that issue to any subsequent hearing on remedies if the trial on liability and validity resulted in a finding of infringement.

Both parties had already filed detailed particulars of, respectively, differences and similarities. Justice Carr did not consider the parties’ requests for further information about these matters would be helpful. However, his Lordship directed that each side should exchange concurrently enlarged photographs of the products alleged to infringe marked up to indicate the points it relied on.

His Lordship limited the expert evidence to the following matters;

There are very limited issues upon which expert evidence is admissible. The issues on which I intend to allow expert evidence are as follows. First, are any of the features listed in subparagraphs (1) to (9) of paragraph 6.5 of the Amended Particulars of Claim features of appearance of a construction toy such as Bunchems which are solely dictated by its technical function? Second, to what extent, if any, is the degree of freedom of design limited by the functional nature, if any, of the features of subparagraphs (1) to (9) of paragraph 6.5 of the Amended Particulars of Claim?

Bunchem” was happy with its expert evidence being limited to 10 pages and two pages (excluding exhibits) directed to the design corpus. “Clingabeez”, having asked for 20 pages, was permitted 15.

Justice Carr fixed the trial duration at three days including reading time, and did not think it would be necessary for any adjournment for preparation of final written submissions. His Lordship then set out at [23] eight “lessons for the future” to achieve shorter trials more expeditiously in such matters:

(i) The parties should, in appropriate cases, produce images at an early stage to show the differences or similarities upon which they rely, and in the case of the defendant, those features which are wholly functional or in which design freedom is said to be limited. Requests for further information are unlikely to be helpful.

(ii) Claimants should not try to introduce or seek disclosure in relation to copying. The parties should carefully consider why, if at all, disclosure is necessary, rather than agreeing to standard or even issue based disclosure.

(iii) Expert evidence as to whether the alleged infringement produces on the informed user the same or a different overall impression as the registered design should not be included in cases concerning consumer products.

(iv) The parties should try to limit the length of expert evidence to an agreed number of pages.

(v) If any evidence of fact is to be introduced, the court will need to be satisfied of its relevance.

(vi) The parties should be prepared at the pre-trial review to identify issues on which cross-examination is necessary, and to explain why.

(vii) Where multiple designs, or multiple infringements, are alleged, the parties should each select a limited number of samples on which the issues can be tested.

(viii) The parties should give careful thought to those issues which can be postponed to a damages enquiry, which will only need to be considered if liability is established.

Justice Carr’s approach would no doubt commend itself to Justice Finkelstein, were he still on the bench. It may also be rather more difficult for an Australian court to exclude evidence going to the “ultimate question”, given section 80 of the Evidence Act and the first Cadbury/Darrell Lea appeal. On the other hand, the relevance of copying is exactly the same.[5] Nonetheless, as both the Federal Court and the Federal Circuit Court are striving to make litigation more costs effective,[6] there may well be considerable interest in exploring Justice Carr’s admonitions DownUnder.

Spin Master Limited v PMS International Group [2017] EWHC 1477 (Pat)


  1. Otherwise known as PMS International Group.  ?
  2. Spin Master Limited.  ?
  3. Indeed, a Google search or visit to Youtube might see the two brand names used interchangeably. For example  ?
  4. Procter & Gamble Co v Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936; [2008] Bus LR 801 and repeated and expanded by the Court of Appeal Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206; [2013] Bus LR 328  ?
  5. Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588.  ?
  6. See also chapter 19 of the Productivity Commission’s Intellectual Property Arrangements – Final Report.  ?

Annual IP Report 2017

IP Australia has published its Australian Intellectual Property Report 2017.

Some key points:

  • there were 28,394 applications for standard patents filed in 2016, a one per cent decline from 2015. At the other end, 23,734 patents were granted last year, an increase of 3 per cent from 2015;
  • there were 2,322 innovation patent applications in 2016 up by 27% from 2015;
  • there were 71,344 trade mark applications in 2016, down by 3 per cent from 2015 – Madrid filings decreased by 14 per cent;
  • there were 7,202 design applications filed in 2016, a 3 per cent increase over 2015;
  • in 2016, IP Australia registered 6,644 designs and certified 978;
  • the number of PBR applications increased by a whopping 8 per cent: from 359 to 387. IP Australia registered 111 PBRs.

IP Australia has completed a draft of its cost-benefit analysis for Australia joining the Hague Agreement and “will look to share the draft and seek feedback on the research later in 2017”.

There is also a long(-sh) chapter challenging the view that there is an Australian crisis in university-business collaboration. The chapter includes convoluted node diagrams showing the types of collaboration by institution and concludes that, rather than being at the bottom of the OECD rankings, we are merely “middle of the road”; in about 13th place.

With a view to geographical indications, IP Australia and Melbourne University have been building a world-first database linking Australian registered trade marks to a global atlas of place names. Apparently, this database will be released later this year.

On the research front, IP Australia has also released the 2017 edition of “IPGOD”. This year IP Australia should also release a database of pharma substances subject to patent term extensions. IP Australia has also made available the literature review on grace periods it commissioned from the University of California, Davis here (pdf). There is also a paper (pdf) on how grace periods affect innovation.

Download the report from here.

Minister’s press release here.

Exposure draft not stillborn

Back in the dying days of 2016, IP Australia landed us with the early Christmas present of an exposure draft of a proposed Intellectual Property Laws Amendment Bill 201? and associated regulations and explanatory materials.

After everyone (well, 17 different organisations) ran around getting in their comments so that IP Australia had something to do after they came back from the holidays …

… IP Australia has announced that the bill itself is still coming, but will be delayed until the Government has finalised its response to the Productivity Commission’s Final Report on Intellectual Property Arrangements.

IP Australia explains:

This is because if any legislative amendments are required as a result of the Government’s response, two intellectual property Bills might be in Parliament at the same time, leading to great complexity and uncertainty.

In the meantime, you could spend World IP Day (or what’s left of it) reviewing the sterling efforts of those brave souls who responded to the call for comments.

Intellectual Property Laws Amendment Bill 2017 – exposure draft

IP Australia has published an exposure draft of an Intellectual Property Laws Amendment Bill 2017 and the proposed accompanying regulations, explanatory memorandum and statement. So that everyone at IP Australia has something to do when they come back from their summer hols, you have to get your comments in by 22 January 2017.

A large part of the changes seem to be about aligning the administrative processes under the different statutory regimes According to the EM:

The patents, trade marks, designs and plant breeder’s rights (PBR) systems have a number of different administrative processes and rules specific to each IP right. A number of these differences are unnecessary or too onerous. Some processes take too long to resolve. This needlessly increases complexity, uncertainty and cost for users of the IP system.

This Bill will align and streamline the processes for obtaining, maintaining and challenging IP rights. Using similar processes for the different IP rights will make the IP system simpler and assist businesses dealing with more than one right. A simpler IP system will decrease administration costs for the Australian Government and reduce the regulatory burden for businesses that use it. The Bill will also enable greater use of electronic systems to manage and monitor IP rights.

A laudable objective! But, there are some 23 Parts and 596 items in the exposure draft bill alone. However, lots of them are plainly necessary changes such as replacing “reject” with “refuse” in the PBR Act, but there are others which will have more impact.

Overall, the broad topics addressed are:

  • Part 1 relating to renewals and terminology
  • Part 2 relating to re-examination and re-consideration
  • Part 3 relating to extensions of time
  • Part 4 relating to written requirements
  • Part 5 relating to the filing requirements
  • Part 6 relating to Official Journals
  • Part 7 relating to amendments of applications or other documents
  • Part 8 relating to signature requirements
  • Part 9 relating to computerised decision-making
  • Part 10 relating to addresses and service of documents
  • Part 11 relating to examination of patent requests and specifications
  • Part 12 relating to requirements for patent documents
  • Part 13 relating to acceptance of trade mark applications
  • Part 14 relating to registration of designs
  • Part 15 relating to unjustified threats of infringement
  • Part 16 relating to ownership of Plant Breeder’s Rights and entries in the Register
  • Part 17 relating to trade mark oppositions
  • Part 18 relating to seizure notices
  • Part 19 relating to publishing personal information of registered patent or trade marks attorneys
  • Part 20 relating to (criminal) prosecutions
  • Part 21 relating to the Secretary’s role in the Plant Breeder’s Rights Act
  • Part 22 relating to updating references to Designs Act
  • Part 23 abolishing the Plant Breeder’s Rights Advisory Committee.

I have no hope of trying to cover all that. Some of the things that caught my eye:

Part 15 introduces substantive changes to “unjustified threats”. The provisions in the Trade Marks Act will be amended to remove the defence of bringing infringement proceedings with due diligence. This will bring the trade marks regime in line with that for patents, designs and copyright. A corresponding regime is to be introduced for PBR.

Part 15 will also introduce a right for a victim of an unjustified threat to seek additional damages. What will be a flagrantly unjustified threat should be fun to explore.[1] Curiously, this remedy is not proposed for copyright.[2]

Part 13 proposes to reduce the period for acceptance of a trade mark, but expand the grounds for deferment. Items 421, 423 and 425 of the exposure draft regulations propose to reduce the period under reg. 4.12 from 15 months to 9 months after an adverse first report. However, item 427 inserts a new ground for deferring acceptance on the basis that:

(1A) The Registrar may, at the request of the applicant in writing, defer acceptance of an application for registration of a trade mark if:

(a) the request is made within the period applicable under regulation 4.12 or that period as extended under section 224, 224B or 224C of the Act; and

(b) the Registrar reasonably believes that there are grounds for refusing the application under section 41 or 177 of the Act; and

(c) the applicant is seeking to gather documents or evidence as to why the applicant considers there are no grounds for so refusing the application.

For renewal and re-examination (Part 2), apparently, it is possible to request examination of a registered design even after it has already been examined and certified. A formal re-examination process will be introduced. A re-examination regime is also proposed for PBR. The regimes for re-examination of patents and trade marks will also be clarified.

For re-examination (Part 3)

The EM says there are three broad issues with the current regimes:

> There are three broad issues with the extension of time system. The first issue is the differences in the number and types of extensions available between the IP rights. This increases complexity and confusion as to which extension is applicable and what evidence is required for supporting the request in a given situation. The second issue is the administrative burden placed on customers and IP Australia. Short extensions rarely have a significant impact on third parties, yet require the same declarations from applicants and assessment by IP Australia as long extensions. The third issue is that the protection for third parties that used an invention or trade mark while the IP application or right was lapsed or ceased can be inadequate or burdensome to obtain.  

The EM then says the main changes are:

  • repeal the ‘despite due care’ extension for patents;
  • remove the Commissioner’s and Registrar’s discretion for all general extensions, for all rights. This will
  • simplify the process and ensure compliance with the Patent Law Treaty and Patent Cooperation Treaty;
  • require all requests for extensions to be filed within two months of the removal of the cause of the failure to comply, to ensure there are no unreasonable delays;
  • improve the compensation for third parties that use inventions when a patent lapsed or ceased to reduce the burden on third parties;
  • expand the protection against infringement for third parties that use a trade mark while it was ceased to include while a trade mark application was lapsed;
  • introduce a streamlined process for short extensions, but ensure IP Australia can review and remake a decision on an extension of time;
  • prevent applicants from obtaining consecutive ‘short’ extensions for the same action;
  • provide general extensions and corresponding third party protection for PBRs.

Part 6 plans repeal of the requirements to publish information in the Official Journals, replacing them instead with an obligation to publish some information on the website or other electronic means.

Part 7 plans changes to the processes for amendments of information entered on the Registers and in documents. Perhaps alarmingly, these include plans to allow rights owners to make some changes to the Registers themselves!

Part 9 proposes introducing the potential for computerised decision making. An example of what is intended is the situation where an application has been accepted and the opposition period has expired without an opposition being filed. In such a situation “the computer” will “decide” to grant the right (presumably after,checking the fee has been paid). This seems intriguing, but you will have to go to a proposed legislative instrument to find out what decisions can be (have been) automated.

No doubt there will be something else to meet your curiosity lurking in the details!

You can find links to the exposure draft documents here. Remember though, get your submissions by 22 January 2017.


  1. Of course, in line with the existing provisions for additional damages for infringements, it may be possible to “score” even if the threat itself is not flagrant.  ?
  2. It can’t be because copyright falls under a different department because the exposure draft amends the Copyright Act to allow for electronic notifications (“notice” is also deprecated in this new simplified regime) relating to customs seizures – see Part 18.  ?

Selected links from the last week (or so)

Here is a selection of links to IP-related matters I found interesting this week:

Patents

Trade marks

Copyright

Designs

Not categorised

I hope you find something interesting. If you did or have a question, leave a comment or send me an email

Selected links from last week

Here is a selection of links to IP-related matters I found interesting last week:

Patents

Trade marks

  • Is the US Olympic Committee’s [#TwitterBan Fair or Foul?](https://t.co/kmG0Avith) compare
    Telstra ‘Go to Rio’ campaign cleared by Federal Court, AOC case dismissed

Copyright

Remedies

  • Want An Enforceable Online Contract? Don’t Use A Footer Link Called “Reference”–Zajac v. Walker (USA)

Designs

Not categorised

Future of the profession

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

A “new” Act designs case!

Nicholas J has ruled that by selling its Razor fan Martec has infringed Hunter Pacific’s registered design for a ceiling fan hub, ADR No. 340171.

On the right below are two of the representations in the design:[1]

ADR 340171 perspective
ADR 340171 perspective
796.12
Martec’s Razor

 

 

 

 

 

 

 

 

 

ADR 340171 hub
ADR 340171 hub

 

Martec's Razor hub
Martec’s Razor hub

 

 

 

 

 

 

 

 

 

 

 

 

and on the left above are corresponding views of Martec’s infringement.

On the s 19 analysis mandated by s 71, Nicholas J recognised a number of obvious differences between the registered design and the Razor. However, the overall impression conveyed was one of similarity. In particular, the lower “hubs” were similarly proportioned and conveyed a generally sleek and flat appearance. This was particularly important as this was the feature which contributed most to the informed user’s assessment of the design. As Hunter Pacific’s expert pointed out, that was significant as a ceiling fan hub would be viewed from underneath, looking up. Thus, his Honour concluded:

Although they exhibit a number of obvious differences in shape and configuration, these differences are in my view insufficient to displace what I consider to be significant and eye-catching similarities that create an overall impression of substantial similarity.

It is a bit difficult to tell as images of the prior art are not included. That said, the verbal descriptions suggest that the Razor was much closer to the registered design than any of the prior art. The number of prior art advanced by Martec served to emphasise that there were many different ways to achieve the same functional outcome. Accordingly, while the designs were to some extent dictated by function, there was no significant restriction on the designer’s freedom to innovate.

Nicholas J did not explicitly take sides on the debate about who was the informed user, simply restating the statutory test.[2] His Honour did follow Yates’ J lead, however, in emphasising that the impression that the informed user would form was not based on a fleeting or casual inspection. Rather, it required a careful and deliberate visual inspection.

Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796


  1. The annotations were marked up by one of the witnesses.  ?
  2. Contrast the “Review” approach vs Multisteps discussed by Yates J at [57] – [71].  ?

The Government has published its response to ACIP’s Designs Report

On 6 May 2016, the Government published its response to ACIP’s review of designs law. Who knew?

ACIP came up with 23 recommendations. For the most part, the Government accepted ACIP’s recommendations. Those accepted include:

  • introducing a 6 month grace period before filing an application for registration, with a requirement that an applicant relying on the grace period provide a declaration to that effect (recommendation #12);
  • introducing a prior user defence (recommendation #12);
  • retaining the requirement of distinctiveness in s 19 in its current form (recommendation #10);
  • not introducing an unregistered design right (recommendation #22);
  • allowing amendment of a statement of newness and distinctiveness up until certification (recommendation #11 – “in principle”);
  • not extending the maximum term of a registered design from 10 years to 15 years unless Australia decides to join the Hague Agreement (recommendation #3) as to which IP Australia should investigate further and continue to monitor usage by our major trading partners;[1]
  • changing the name of a registered, but uncertified, design to something less misleading like “uncertified design” (recommendation #4);
  • retaining the current requirement that a design be registered for the whole product, while investigating further whether allowing partial product registrations would substantially advantage Australian applicants and does not give rise to substantial practical or legal issues overseas (recommendation #13);
  • take steps to make s 18 consistent with the overlap provisions of the Copyright Act;
  • correcting a miscellany of anomalies (including conferring power on exclusive licensees to being infringement proceedings) (recommendation #18), but aligning s 71 with the exclusive rights granted by s 10[2] is not necessary as the current position has not given rise to any problems and fixing the anomaly would create uncertainty and could have unintended effects (recommendation #17).

The Government has specifically rejected introducing customs seizure provisions for infringing products in line with the regimes currently in force for other intellectual property rights. This:

would pose a range of practical difficulties, and would be resource intensive for the Australian Border Force (ABF) to implement.

Moreover, design owners can currently obtain orders from the Courts which ABF could act on to prevent release of particular imported products.

A number of other recommendations were noted (such as requiring examination to be requested by the first renewal period and introducing an opposition system following certification). The Government considers action on these should await IP Australia’s further investigations into whether Australia should join the Hague system for international registration.

Another recommendation “noted” was the recommendation to improve the process for multiple design applications by reducing the fees. This needs to be considered “further in the context of IP Australia’s current fee review, to be completed in 2016.”

For the full response to all recommendations, go here (pdf).


  1. The Productivity Commission of course is going to say “Don’t do it” – much louder than that! See chapter 10.  ?
  2. Although s 10 confers the right to authorise exercise of an exclusive right, authorising someone to do an infringing act is not itself an infringement under s 71 and, of course, what is required for liability at common law for directing or procuring and infringement is so much clearer following Keller.  ?
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