The Pope on IP
Howard extracts from, and links to, Pope Benedict VI’s Encyclical on Social Issues which includes some pronouncements on intellectual property: via here.
What’s the priority date for a divisional patent?
Mont has an innovation patent for a travel pack.
It sued Phoenix for infringing the innovation patent; Phoenix counter-claimed for invalidity on the grounds of Mont’s own use commencing in October 2004.
Patents Act 1990 s 24 (read with Reg. 2.2(1A)) provides a patentee with a grace period: protecting the patentee against attacks on grounds of lack of novelty or inventive step/innovative step by reason of the patentee’s own authorised use or disclosure within the 12 months prior to “the filing date of the complete specification”.
The background was as follows:
In October 2004, it had started offering travel packs made according to the invention for sale.
In May 2005, it filed a complete application (with a complete specification) for a standard patent.
In November 2006, however, it filed a complete application (and of course a complete specification) for an innovation patent as a divisional application from the earlier standard application and this application matured into the innovation patent.
The trial judge had found that the “grace period” had to be calculated from the date of filing the complete specification for the divisional application, not the parent.
The Full Court has now allowed an appeal ruling that “the complete specification” referred to in reg. 2.2(1A) in the case of a divisional application is the complete specification for the parent.
Jagot J (with whom Emmett J agreed) explained the rationale:
76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.
77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.
76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.
77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.
Similarly Bennett J said [49]:
49 The scheme of the Act provides that, where the invention of the divisional was disclosed in the parent, the publication or use of the invention within 12 months before the filing date of the parent must be disregarded for the purposes of assessing the novelty and inventive/innovative step of each of the parent and the divisional, provided that a patent application for the invention is filed within the prescribed period. This applies where the divisional is of a parent standard patent or a parent innovation patent. Where the invention of the divisional was disclosed in the parent, the words “the complete application” in reg 2.2(1A) refer to the parent application and not to the divisional application.
Jagot J also provided a detailed rebuttal of Phoenix’ contentions.
Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84
ps: IPTA was granted leave to intervene (and while advocating the view that the Full Court adopted, was ordered to pay any additional costs incurred by the parties as a result of the intervention).
pps:a patentee who needs to rely on a grace period to preserve the validity of the patent in Australia may well still lose the patent outside Australia where the grace period does not apply
What’s the priority date for a divisional patent? Read More »
Linking should infringe?
Judge Posner (of the 7th Circuit Court of Appeals in the USA) writing extra-judicially on his blog has stirred up a maelstron in the blogosphere with a typically thoughtful and provocative post contending that linking to websites should be copyright infringement. (At the time of writing, there are only 211 comments!)
Less contentiously (at least in terms of blogosphere reaction), Prof Becker’s reaction is that newspapers are doomed:
That the Internet is a more efficient provider of news and opinion than newspapers is seen in the fact that hardly anyone under age 40 now reads papers. Readership is also declining among older persons ….
Although the printed newspaper industry is doomed, and will be missed by those of us that remember newspapers in their heyday, they are being replaced by good substitutes in the form of blogs, social networks like Facebook and Twitter, online news gathering by various groups, including newspapers, and other electronic forms of communication. People in democracies will continue to have access to independent and often quite accurate, reports on events in their own countries and most other parts of the world.
from The Social Cost of the Decline of Newspapers? Becker
Marty Schwimmer rounds up some of the reaction to Judge Posner.
Judge Posner has seized on what is widely seen as a crisis in the newspaper industry. That crisis has led Rupert Murdoch and Associated Press, in particular, to start waging a public relations war against Google. The difficulty is, if they really don’t want the links (and all the incoming traffic), they can block them quite simply.
Read Danny Sullivan’s thoughtful expose of the threadbare nature of these Emperors’ clothes: esp. here and here.
(ps Of course, here in Australia, you do have to be careful you are not linking to websites that contain infringing content themselves – Cooper v Universal.)
Linking should infringe? Read More »
Upcoming copyright and patent talks
Ben Fitzpatrick will be giving his highly regarded annual update of patents for IPSANZ on 16 July at 12.15 at the RACV Club in Melbourne.
Details will be available here (in due course).
After talking in Melbourne on 3 August, Dr Gurry will be delivering a speech at the National Press Club in Canberra on 4 August and then
on 6 August, the keynote speech at the Reimagining copyright for the 21st century in Canberra at the National Gallery. In what promises to be an exciting conference, there will also be papers by:
-
Professor Brad Sherman: Key developments in the last 40 years of copyrightthat shape our thinking about the future* Professor Sam Ricketson: Copyright and functional products* Sophie Goddard SC: Development of copyright by the courts* Dr Matthew Rimmer: The role of fair use in creative freedom* Associate Professor Melissa de Zwart:The role of copyright in innovation
- Professor Brad Sherman: Key developments in the last 40 years of copyright that shape our thinking about the future
- Professor Sam Ricketson: Copyright and functional products
- Sophie Goddard SC: Development of copyright by the courts
- Dr Matthew Rimmer: The role of fair use in creative freedom
- Associate Professor Melissa de Zwart:The role of copyright in innovation
More details from here.
Finally, details about the biennal Copyright Society Symposium on 14 and 15 October 2009 in Sydney are up here.
Upcoming copyright and patent talks Read More »
Parallel imports and UPC codes
Marty (The Trademark Blog) extracts from the 11th Circuit’s ruling in Davidoff v CVS, where the parallel importer was found liable for infringement by removing the UPC codes (which, of course, are not put there to detect parallel import leaks, but in case of product recall requirements).
He appends the text of the decision.
Off the top of my head, I don’t think that argument would help Davidoff down here as s 123 operates on consent in respect of ‘similar goods’. The 1994 Act, which never came into force and was repealed by the 1995 Act did make an attempt to deal with quality issues in s , but that ultimately fell be the wayside.
What chance of arguing misleading or deceptive conduct under s 52?
Parallel imports and UPC codes Read More »
US patent instructions
A committee comprised of judges and attorneys has published the National Patent Jury Instructions.
As its name suggests, a set of model instructions for juries in the USA for patent actions.
Apart from when your client might be litigating in lawyer paradise, you never know, you might find some useful ideas – bearing in mind that their law and our law are not exactly the same!
Download from here. Lid dip Patently-O.
US patent instructions Read More »
Dr Gurry in Melbourne
Francis Gurry, the newly appointed Director General of WIPO will be speaking in Melbourne on 3 August 2009:
Intellectual Property, Innovation
and Creativity – Future Global Directions
Intellectual Property, Innovation and Creativity – Future Global Directions
Registration is free, but bookings essential.
More details here (pdf).
Dr Gurry in Melbourne Read More »
Harvard Bus School on the impact of file sharing
Felix Oberholzer-Gee at Harvard and Koleman Strauss at Uni. of Kansas take an empirical look at the effect of file sharing on copyright industries.
They accept that file sharing has weakened copyright protection (although they are quite sceptical about the studies trying to prove this). They argue this is only part of the question, however, for policy-makers. They contend that, if the role of copyright is to provide incentives to create new works, it is necessary to look rather more widely.
For example, they note:
- the publishing of new books increased by 66%
- the number of new albums released more than doubled;
- the number of feature films produced has increased by 30%,
in the early years of the 21st century.
They also note that revenues from concert sales and merchandising and the like has also increased.
Exploring this, their tentative conclusion for policymakers:
The role of complements makes it necessary to adopt a broad view of markets
when considering the impact of file sharing on the creative industries. Unfortunately, the
popular press – and a good number of policy experts – often evaluate file sharing looking
at a single product market. Analyzing trends in CD sales, for example, they conclude that
piracy has wrecked havoc on the music business. This view confuses value creation and
value capture. Record companies may find it more difficult to profitably sell CDs, but
the broader industry is in a far better position. In fact, it is easy to make an argument that
the business has grown considerably.
The role of complements makes it necessary to adopt a broad view of markets when considering the impact of file sharing on the creative industries. Unfortunately, the popular press – and a good number of policy experts – often evaluate file sharing looking at a single product market. Analyzing trends in CD sales, for example, they conclude that piracy has wrecked havoc on the music business. This view confuses value creation and value capture. Record companies may find it more difficult to profitably sell CDs, but the broader industry is in a far better position. In fact, it is easy to make an argument that the business has grown considerably.
Download the pdf here.
Lid dip Joshua Gans
Harvard Bus School on the impact of file sharing Read More »
Secrecy laws
The ALRC has released a discussion paper outlining 65 proposals:
“to balance a growing commitment to increased openness and transparency in government with the legitimate need to maintain the secrecy and confidentiality of some Commonwealth information.”
Submissions should be made by a leisurely 7 August 2009.
According to the Media Briefing:
The chapters fall into four broad areas:
concepts and comparisons;
a general criminal secrecy offence;
specific secrecy offences; and
administrative duties, practices and procedures.
The chapters fall into four broad areas:
-
- concepts and comparisons;
- a general criminal secrecy offence;
- specific secrecy offences; and
- administrative duties, practices and procedures.
and the centre piece would be:
the ALRC proposes that the new general secrecy offence should only impose criminal liability where a particular disclosure did, was reasonably likely to, or was intended to:
- harm the national security, defence or international relations of the Commonwealth;
- prejudice the prevention, detection, investigation, prosecution or punishment of criminal offences, breaches of a law imposing a penalty or sanction, the enforcement of laws relating to the confiscation of the proceeds of crime, or the protection of the public revenue;
- endanger the life or physical safety of any person;
- pose a serious threat to public health or public safety;
- have a substantial adverse effect on personal privacy; or
- have a substantial adverse effect on a person in respect of his or her lawful business or professional affairs or on the business, commercial or financial affairs of an organisation.
There are also chapters on the administrative obligations of the Public Service and fostering effective information handling practices.
(I guess that wouldn’t be: we can’t give you that for privacy reasons?).
Discussion paper here.
$80,000 (USD) per download
In case your newsfeed hasn’t beeped you, the jury in Minnesota has awarded the record companies US$1,920,000 against Jammie Thomas for her 24 infringing downloads.
That’s right, $80,000 per infringement.
The original award, which the judge quashed “sua sponte“, was “only” $220,000. Presumably, there are going to be some interesting motions “non obstante veredicto“?
Evan Brown has some links. The Age (lid dip Matt Bromley).
Howard predicts (hopes?) this is the end for record companies.
$80,000 (USD) per download Read More »
