IP generally

Re-thinking the role of IP: Francis Gurry lecture

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Last week, the 5th Francis Gurry Lecture at the University of Melbourne was given by Dr Francis Gurry, the Director-General of WIPO (and so the highest ranking Australian official in UN organisations), himself. The topic “Re-thinking the Role of IP’.

Dr Gurry’s central theme was that the context in which intellectual property operates has changed so much that the way in which we think about IP and its role in society needs to be reconsidered.

One of the key changes Dr Gurry identified was the economic shift from wealth derived from tangibles to wealth generation deriving from intangibles. As one indicator of this, Dr Gurry pointed out that US industries in the IP field accounted for some 35% of its GDP. Another indicator showed that in 1978 95% of the value of the Standard & Poors 500 came from tangible assets, down to 20% in 2010.

The second key change Dr Gurry identified was the economic shift from the West to the East. China is now the second largest investor in R & D in absolute terms in the world. Japan the third.

The third key change identified was the empowerment of non-state actors. One illustration of this was the Day the Internet went Dark. More than 115,000 websites closed or limited access. More than 2.4 million anti-SOPA tweets were generated. One of my favourite images (lid dip Marty Schwimmer was the impact on the US Congress:

sopa-pipa-one-day

We are seeing a little bit of that here.

Of course, the Department of Homeland Security, or the FBI, also flexed its muscles.

Among the many consequences arising from these changes:

  • much greater focus on IP and much greater intensity – Smartphone wars anyone, industrial espionage
  • much greater attention to what IP rights are granted for and focus mediating what is acceptable to the general public

Although not an example used by Dr Gurry, we have seen that here too. Dr Gurry did point out, however, an apparent paradox:

No one minds, it seems, someone making billions out of new social networking or media technology, but there is widespread social unease at someone making billions out of a new life-saving drug. Which outcome do we want to achieve in the innovation system?

Dr Gurry went on to explain that this changes in turn raised many questions for entitlement, appropriability and policy-making. Dr Gurry’s presentation in written form can be found here (pdf). Definitely repays reading. Lid dip @MsSamMcHugh

 

Update: A video of the lecture and the paper itself can now be found here.

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Another IP amendment bill

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The Intellectual Property Laws Amendment Bill 2013 was introduced into Parliament today.

The changes include:

  • amendments to the Crown use provisions in the Patents Act to ensure they apply where the relevant Commonwealth, State or Territory government has primary responsibility for funding or providing the service and to include a requirement for approval by the relevant Commonwealth, State or Territory Attorney-General
  • implementation of the TRIPS protocol to enable generics to apply to the Federal Court for a compulsory licence to manufacture a patented drug for export to developing countries experiencing a serious public health problem (or, as the EM puts it, a Health Crisis) to which the drug relates
  • conferring jurisdiction over plant varieties rights matters on the Federal Circuit Court (formerly the Federal Magistrates Court)
  • implementation of the Trans-Tasman patent attorney regime (whereby patent attorneys registered in Australia or NZ are entitled to practise in the other country as well)
  • so-called “technical amendments” to ensure that the amendments made by the “Raising the Bar” Act operate as intended.

Intellectual Property Laws Amendment Bill 2013

Explanatory Memorandum

IP Australia’s announcement

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Raising the Bar update

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Following the conclusion of consultations about the draft Intellectual Property Legislation Amendment Regulations (the regulations to implement the “Raising the Bar” amendments), IP Australia has published a document outlining the outcomes of the consultation process.

The document outlines what IP Australia is proposing to do/implement in relation to:

 

Schedule 1

 

  • preliminary search and opinion
  • search fee
  • priority date
  • other things

 

Schedule 3

 

  • filing of evidence in oppositions
  • extensions of time to file evidence
  • confidentiality
  • fees for notice of intention to defenddefence (TM oppositions) (lid dip: Andrew Sykes)
  • cooling off period for patent oppositions (not in the public interest)
  • dismissing trade mark oppositions for inadequately particularised grounds
  • document service
  • no changes to basis for adding grounds / particulars to a notice of opposition
  • no change to costs provisions

 

Schedule 4

 

  • suspension regime for patent / trade mark attorneys will be retained

 

Schedule 5

 

  • customs seizure: regulations will be amended to require importers to provide full name, telephone number and address for service in ‘claim for release’ forms
  • email address will not be made mandatory

 

Schedule 6

 

  • applicants for patents will have 2 months to respond to a direction to request examination after examination has been deferred
  • acceptance period after 1st report on patent application has been issued will be reduced to 12 months
  • “IP Australia will not require a statement of entitlement at filing for standard patents (or at national phase entry for PCT applications). Instead, the statement will be required when the applicant requests examination, as part of the approved form.” Applicants for an innovation patent will still need to provide the statement when filing the application
  • The Commissioner / Registrar will retain discretion to decide whether hearings should be decided on the papers without oral presentation
  • Apparently, there are technical corrections that will be implemented to

Links to:

 

Public Consultation Update papers

IP Australia’s Press Release

 

 

IP Australia’s helicopter summary of Raising the Bar, more links and IP Australia’s summaries for patents, copyright, trade marks and designs.

Patentology looks at the good news for SMEs and some of the things rejected, here.

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Raising the Bar regulations

Leave a Comment / Copyright, Designs, Enforcement, IP generally, Patents, Trade marks / / /

IP Australia has published the first tranche of draft regulations to implement the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (most of which comes into force on 15 April next year).

This tranche includes the draft regulations for:

  •  Schedule 1 – Raising the quality of granted patents,
  • Schedule 4 – Assisting the operations of the IP profession, and
  • Schedule 5 – Improving mechanisms for trade mark and copyright enforcement.

Comments should be submitted by 21 November 2012.

Download all the gory details, including draft EMs, here.

Lots have people have had a go at trying to explain some, or all, of the ramifications of the Act. If you don’t want to Google, or bing, or duck duck go, the EM can be found on Parliament’s site here and the Bills Digest prepared by the Parliamentary secretariat is here.

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The Chief Justice’s address

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A video of Chief Justice French’s 4th Annual Francis Gurry address A Public Law Perspective on Intellectual Property Law is now online.

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ACTA in trouble in Australia

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The Age is reporting that a Parliamentary committee has “struck down” Australia’s signing of ACTA.

As it turns out, the Joint Standing Committee on Treaties has unanimously recommended that Australia should not ratify ACTA at this time. Recommendation 8 states:

That the Anti-Counterfeiting Trade Agreement not be ratified by Australia until the:

  • Joint Standing Committee on Treaties has received and considered the independent and transparent assessment of the economic and social benefits and costs of the Agreement referred to in Recommendation 2;
  • Australian Law Reform Commission has reported on its Inquiry into Copyright and the Digital Economy; and
  • the Australian Government has issued notices of clarification in relation to the terms of the Agreement as recommended in the other recommendations of this report.

Recommendation 9 goes on to exhort any future Committee on Treaties to take into account what is happening with ACTA in other jurisdictions including the EU and the USA.

Recommendations 3 to 7 relate to more specific matters such as, for example, a need to clarify the meanings of ‘aiding and abetting’ and ‘commercial scale’.

Apart from specific matters of particular detail, the Joint Standing Committee seems to have had two main concerns about ratification:

First, the Treaty was tabled in Parliament with a National Interest Assessment  (NIA). However, the NIA did not include an analysis of the economic impact that ratifying ACTA would have on Australia.

One reason why there was no economic analysis feeds into the Joint Standing Committee’s second major concern: the NIA stated that ACTA would not require any changes to existing Australian law. The benefit of ratifying ACTA (early) was that it would give Australia influence:

2.13 The NIA encourages the early ratification of ACTA, so as to enable Australia to play an influential role in the ACTA Committee, which will consider, inter alia, rules and procedures for reviewing the implementation and operations of ACTA.

In the absence of an economic assessment, however, the Joint Standing Committee noted there was an absence of reliable evidence that there is a “problem” that needs to be addressed. See [3.6] and reference to the concerns expressed, amongst others, by the US Government Accountability Office.

Secondly, the Joint Standing Committee received a number of submissions which challenged the view that no changes would be required to Australian law. For example, what does “aid and abet” or “commercial scale” mean? To what extent, if at all, are patents caught up in what is counterfeit?

How valid those concerns are may require further investigation but, as As. Prof. Weatherall pointed out, the ACTA Committee will have a role in developing more detailed enforcement mechanisms. The Joint Standing Committee also noted in several places that ACTA does not include the defences or exceptions expressed in TRIPS.

So far as I can work out (it is a long time since I studied constitutional law so let me know if you know better), the Joint Standing Committee has not in fact “struck down” ACTA or Australia ratifying it. The Committee’s recommendations do not constitute a resolution of a House of Parliament and ACTA is not a legislative instrument subject to disallowance on such a resolution.

As a treaty, ACTA would become part of our domestic law only if Parliament passed a statute to implement it. The Government could still ratify ACTA but the Joint Standing Committee’s recommendations are the unanimous recommendations of a cross-party committee so they plainly reflect a level of disquiet with ACTA within Parliament at a high level: a level of disquiet which appears to be felt even within the EU (one of the IP-exporting parts of the world one might think likely to support such a regime).

Download copies of the Committee’s report from here (pdf).

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The Chief Justice is coming to town

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to give this year’s Francis Gurry Lecture on Intellectual Property:

‘A public law perspective on Intellectual Property’

Wednesday 25 July, 6:00pm at Melbourne Uni’s Law School.

Free.

More information here; register here.

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Arbitrating IP disputes in Australia

1 Comment / Enforcement, IP generally, Patents / / / , , , , , , ,

Last year, IPwars reported on Hammerschlag J’s ruling that arbitrators under the Commercial Arbitration Acts 1984 (here and here (repealed and replaced by a 2010 Act)e.g.) can settle disputes about (1) the ownership of improvements under a technology licence agreement and (2) the licence fees payable if the technology be exploited in various ways in the future.

The arbitrator has now made an award finding that the patents owned by Lloyd or its subsidiary Solfast, the Solfast and Asura patents, were improvements covered by the licence and so should be assigned to Larkden.

Larkden has secured from Hammerschlag J orders enforcing that award and so requiring Lloyd to transfer ownership to Larkden.

Section 35 of the Commercial Arbitration Act 2010 (NSW) provides that an arbitrator’s award must be recognised and is enforceable subject to the formal requirements of s 35 and substantive grounds in s 36. The substantive grounds are:

Grounds for refusing recognition or enforcement

(1)Recognition or enforcement of an arbitral award, irrespective of the State or Territory in which it was made, may be refused only:

(a)at the request of the party against whom it is invoked, if that party furnishes to the Court proof that:

(i)a party to the arbitration agreement was under some incapacity, or the arbitration agreement is not valid under the law to which the parties have subjected it or, failing any indication in it, under the law of the State or Territory where the award was made, or

(ii)the party against whom the award is invoked was not given proper notice of the appointment of an arbitrator or of the arbitral proceedings or was otherwise unable to present the party’s case, or

(iii)the award deals with a dispute not contemplated by or not falling within the terms of the submission to arbitration, or it contains decisions on matters beyond the scope of the submission to arbitration, provided that, if the decisions on matters submitted to arbitration can be separated from those not so submitted, that part of the award which contains decisions on matters submitted to arbitration may be recognised and enforced, or

(iv)the composition of the arbitral tribunal or the arbitral procedure was not in accordance with the agreement of the parties or, failing such agreement, was not in accordance with the law of the State or Territory where the arbitration took place, or

(v)the award has not yet become binding on the parties or has been set aside or suspended by a court of the State or Territory in which, or under the law of which, that award was made, or

(b)if the Court finds that:

(i)the subject-matter of the dispute is not capable of settlement by arbitration under the law of this State, or

(ii)the recognition or enforcement of the award would be contrary to the public policy of this State.

Lloyd argued that the award in relation to the Solfast patents fell foul of s 36(1)(a)(iii) because the shares in Solfast, originally owned by Lloyd, had been transferred to GENV. Hammerschlag J found this was untenable: the transfer of shares in Solfast was void and set aside under s 267(1) of the Corporations Act. In addition, although developed by Solfast, the Solfast patents were improvements within the meaning of the licence because Lloyd had developed the patents through the medium of Solfast.

Lloyd’s second argument was predicated on s 36(1)(b)(ii) contending that some of the orders in the award were too vague and uncertain to be enforceable. This allegation included the order that Lloyd take all necessary steps to ensure that [Lardken]’s interests in the prosecution of the Assigned Patent Applications are protected and secured.

Hammerschlag J rejected this ground too. The orders were not vague and uncertain. Further, his Honour doubted they would offend public policy as not sufficiently concerning “the State’s basic notions of morality and justice”.

Larkden Pty Limited -v- Lloyd Energy Systems Pty Limited [2011] NSWSC 1331

The arbitrator.

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More on de-linking IP from exclusivity

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Sir Gustav Nossal marked World Pneumonia Day by reporting on the roll-out of pneumococcal vaccine to 16 developing countries, which had been developed using an alternative to the traditional marketing approach.

The surprising thing here is that patients in developing countries are getting access to the vaccine at pretty much the same time as those in the developed world. According to Sir Gustav, this has been achieved by a group of donors, the Global Alliance for Vaccines and Immunisation, or the GAVI Alliance, creating an Advance Marketing Commitment.

According to Sir Gustav:

The Pneumococcal AMC was a pilot program, in which donors committed funds to guarantee the price of vaccines once they were developed. These financial commitments provided vaccine manufacturers with the incentive they needed to invest in research and development and to expand manufacturing capacity. In exchange, companies signed a legally binding commitment to provide the vaccines at a price affordable to developing countries.

By concluding supply agreements at a ceiling price, the AMC reduced market uncertainty, allowing manufacturers to supply vaccines at lower prices. ….

Read more. James Love’s presentation on De-linking ….

 

Sir Gustav Nossal

GAVI Alliance

AMC here and here

World Pneumonia Day

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De-linking intellectual property from exclusive rights

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The videocast of the 3rd Annual Francis Gurry Lecture is now available:

De-linking intellectual property from exclusive rights

by James Love, Director, Knowledge Ecology Limited. The blurb says:

The traditional justification for IP rights-atemporary monopoly to stimulate innovation and inverstment-is increasingly being questioned. If knowledge is more valuable when widely shared, and if freedom to use knowledge is socially and economically important, we need to de-link intellectual property protection from exclusive rights. But how?

I personally found the Q & A session helped crystallise what Mr Love was arguing. Very thought-provoking.

Apparently, the written paper will provide more explanation and amplification in due course. In the meantime, you may get an understanding of how Mr Love’s proposals could work in a pharmaceutical context here and here

Lid dip: Andrew Christie

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