IP generally

Global Innovation Index

Leave a Comment / IP generally, Technology / /

WIPO has published its annual global innovation index.

The top 5 countries in order are Switzerland, the UK, Sweden, the Netherlands and the USA.

Australia came in at 17, maintaining its position from last year. Interestingly, Australia was ranked No. 10 in the innovation inputs sub-index, but only 24 in the innovation outputs sub-index.

Also, according to the infographic “In a perfect world for innovation, who would do what?”, the printing and publishing industry is the perfect size .

The report also includes chapters on innovation policy and perspectives.

Global Innovation Index Read More »

Productivity Commission to review all IP laws

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

The Harper Review[1] recommended that the Government should direct the Productivity Commission to undertake an overarching review Australia’s IP laws.

The Treasurer and the Minister for Small Business have now announced that review.

According to the Harper Review:

an appropriate balance must be struck between encouraging widespread adoption of new productivity-enhancing techniques, processes and systems on the one hand, and fostering ideas and innovation on the other. Excessive IP protection can not only discourage adoption of new technologies but also stifle innovation.

Given the influence of Australia’s IP rights on facilitating (or inhibiting) innovation, competition and trade, the Panel believes the IP system should be designed to operate in the best interests of Australians.

The Panel therefore considers that Australia’s IP rights regime is a priority area for review. (emphasis supplied)

In reaching that view, the Harper Review flagged concern about entering into new treaties with extended IP protections.

The terms of reference state:

In undertaking the inquiry the Commission should:

  1. examine the effect of the scope and duration of protection afforded by Australia’s intellectual property system on:

    a. research and innovation, including freedom to build on existing innovation;

    b. access to and cost of goods and services; and competition, trade and investment.

  2. recommend changes to the current system that would improve the overall wellbeing of Australian society, which take account of Australia’s international trade obligations, including changes that would:

    a. encourage creativity, investment and new innovation by individuals, businesses and through collaboration while not unduly restricting access to technologies and creative works;

    b. allow access to an increased range of quality and value goods and services;

    c. provide greater certainty to individuals and businesses as to whether they are likely to infringe the intellectual property rights of others; and

    d. reduce the compliance and administrative costs associated with intellectual property rules.

Then follows a catalogue of 9 matters for the Commission to have regard to. These include the Government’s desire to retain appropriate incentives for innovation, the economy-wide and distributional consequences of recommendation and the Harper Review’s recommendations in relation to parallel imports.[2]

The Commission must report within 12 months.

  1. The Competition Policy Review, recommendation 6.  ?
  2. Rec. 13 and section 10.6 of the Competition Policy Review: i.e., repeal any remaining restrictions unless the benefits outweigh the costs and the objectives of the restrictions can only be achieved by restricting competition. Cue diatribe about “restricting competition” especially given the oft mouthed formula that IP rights rarely (if ever) restrict competition.  ?

Productivity Commission to review all IP laws Read More »

IP Australia consults on red tape streamlining and costing

Leave a Comment / Designs, IP generally, Patents, PBR, Trade marks / / / , , , , , , , , , ,

IP Australia has issued to discussion papers:

  • Proposals to streamline IP processes and support small business; and
  • Proposals to streamline IP processes and support small business – Regulatory costs,

apparently following Parliamentary Secretary Karen Andrews’ announcement.

According to IP Australia’s website, the “streamlining” paper:

The … Consultation Paper outlines 22 proposals to align and simplify our IP processes, support small business and make some technical fixes relating to the regulation of IP attorneys.

The first 10 proposals apply across the board (as it were) to patents, trade marks, designs and PBR and relate to matters such as aligning renewals re-examination/revocation, extensions of time, writing and filing requirements.

There are 3 further proposals affecting patents: third party requests for examination, colour drawings and extensions of term – notices to the department of health.

The 14th proposal relates to the acceptance timeframe for trade mark applications.

15 and 16 affect the registration of designs and multiple copies of representations.

There are 6 proposals “supporting small business” including unjustified threats of infringement and trade marks and shelf companies.

And 2 “technical fixes” relating to publishing the personal information of “IP attorneys” and prosecuting “IP attorney” offences.

There are some 84 pages in the paper. So this post is not going to do the paper anything approximating “justice”.

One proposal is to reduce the acceptance period for trade marks from 15 months to 6 months. There are also substantial changes proposed for the regimes relating to extensions of time:

 – Align PBR extensions with those for patents and for a wider range of actions

 – Specify the grounds for the ‘special circumstances’ extension in the trade marks legislation and align circumstances beyond control across the rights

 – Allow extensions of time for renewal grace periods but not renewal dates, for all IP rights

– Make the ‘despite due care’ extension available for all IP rights and have no limit on the period of the extension

– For all rights, limit the ‘error or omission by applicant/owner’ extension to 12 months

 – Streamlined process for short extensions of time

– Simplify and align fees

– Make all extensions of time non-discretionary.

Certificates: you know, things like Certificates of Registration:

The IP legislation would be amended so that certificates would not be required to be issued for examination, registration and grant. Also, the patents and trade marks Acts would be amended to no longer provide that a certificate signed by the Commissioner or Registrar is prima facie evidence of a matter. Instead, the Acts would provide that any document approved by the Commissioner or Registrar (or similar wording) would constitute prima facie evidence of a matter. This would enable IP Australia to continue to provide documents for such purposes, without requiring them to be signed certificates. Signed copies or extracts of the Registers would continue to be admissible in proceedings as if they were the original Register, and therefore prima facie evidence of the particulars on them.

Unjustified threats: this would see removal of the defence under s 129(5) of the Trade Marks Act of bringing infringement proceedings reasonably timely (which is not currently a defence for patent or designs threats), providing the remedy for PBR and introducing a power to award additional damages in respect of blatant and unjustified threats against another party.

Trade marks and shelf companies: this proposal would see amendment of s 27 so that it would not be necessary to incorporate the company that is intended to use the trade mark, but purchase of a shelf company would suffice.

The renewals proposal would see a grace period of 6 months introduced for renewing PBR and provision that all IPR could be infringed during the grace period if subsequently renewed.

In coming up with those proposals, IP Australia has used a costing framework and developed detailed costings which are set out in the “costings” paper. We are being invited to comment on those too.

If you are feeling excited, you should get your submissions in to IP Australia by 7 April 2015.

Proposals to streamline IP processes and support small business (pdf)

Proposals to streamline IP processes and support small business – Regulatory costs (pdf)

IP Australia consults on red tape streamlining and costing Read More »

Computer Hacking and “property”

Leave a Comment / Enforcement, IP generally / / / , , , , ,

Software hacking and “property”

Clive Elliot QC draws attention to a New Zealand Court of Appeal decision ruling that downloading data from a computer does not constitute dishonestly obtaining property.

Watchorn was an employee of TAG. He downloaded to his personal computer files containing geophysical data relating to oil and gas exploration TAG had engaged in. The files were downloaded between 4:00pm and 9:30pm. The next day he went on holiday to Canada where amongst other things he met with officers from one of TAG’s competitors; the end result being he resigned from TAG on his return to start work for the competitor.

Watchorn was convicted in the District Court on 3 counts of accessing a computer system and thereby dishonestly obtaining property contrary to s 249 of the Crimes Act.

As the data downloaded was not “property”, the Court of Appeal quashed the convictions. The Court also refused to substitute convictions for dishonestly obtaining a benefit as the Crown had not sought to articulate what the “benefit” was. The Court did, however, accept the benefit could be a non-pecuniary advantage.

It might be possible to fit Watchorn’s actions within the scope of s 247H of the Crimes Act 1958 (Vic), but the other “serious computer offences” seem like a stretch[1] and, on the Court of Appeal`s approach the “theft” provisions shouldn’t apply.

Watchorn v R [2014] NZCA 493

  1. Is it, e.g. “impairment of reliability, security or operation of data”?  ?

Computer Hacking and “property” Read More »

Review of Plant Breeder’s Rights Advisory Committee

Leave a Comment / IP generally, PBR / /

IP Australia has published consultation paper on the Plant Breeder’s Rights Advisory Committee.

The PBRAC is established under the Plant Breeder’s Rights Act 1994 to advise the government about issues arising under the Act. As part of the Government’s commitment to efficiency and streamlining the public service, the National Commission of Audit recommended that the functions of PBRAC be considered for consolidation into the department with portfolio responsibility for PBR.

The Government, through IP Australia, is now seeking input about the role of PBRAC and whether there are other, more efficient ways to access the technical expertise that PBRAC is expected to provide.

Submissions are sought by 31 October 2014.

Consultation paper here (pdf).

ps The National Commission of Audit also questioned the continuation of ACIP, but that will be the subject of a separate paper.

Review of Plant Breeder’s Rights Advisory Committee Read More »

Something to think about in drafting an exclusive licence

Leave a Comment / IP generally, Patents / /

The Full Court has declared that a former exclusive licensee has to contribute towards the costs of patent infringement litigation. Cementech has a patent, No 2007219709, for a “matrix of masonry elements and method of manufacture thereof”. It had granted Austral an exclusive licence for a term of 4 years commencing in February 2010. Austral had an to renew, but didn’t take it up. There were provisions in the licence agreement dealing with infringements. There was the usual clause requiring Austral to tell Cementech if it came across any infringements. Then clause 9.2 provided:

9.2 Infringement Actions

(a) Upon receipt of an Infringement Notice [Cementech] may, at its sole discretion, take all steps reasonably required to protect the Intellectual Property from infringement.

(b) In the event that [Cementech] elects to initiate proceedings for prosecuting or defend any Claims with respect to the Intellectual Property, all expenses incurred by [Cementech] in conducting any such proceedings or defending any Claims will be borne by the parties equally and all amounts received (including in respect of costs) from settlements or adjudications will be dealt with in the manner described in clause 9.2(f).

….

Cl 9.2(f) went on to provide for distribution of any monetary awards resulting from the litigation to pay down the costs and the balance to be split between the parties in proportion to their losses suffered.

Cementech started infringement proceedings against Adbri during the term of Austral’s licence. Austral first tried to argue that, since it hadn’t given notice of the infringement to Cementech, cl. 9.2 didn’t apply. That went for six (well, five reasons):

  • the words “in the event that” in cl 9.2(b) established a condition, but not one triggered by any notice from Austal
  • the parties had a common interest in stopping infringements
  • Cementech could take proceedings regardless of receipt of a notice from Austral
  • (as is quite common) the scheme of the clause allowed Cementech first choice whether to sue or not – Austal did get rights to sue during the term if Cementech did not take action
  • under the terms of the licence, Austral did not have a discretion to notify infringements, if it became aware of one, it had an obligation to notify.

The real bite in the clause, however, is that the Full Court held it meant Austal had to pay half the costs of the infringement action against Adbri even after the licence had come to an end. Austral argued that the licence having terminated, the obligation terminated too citing the Westralian Farmers case. The Full Court however held:

It must have been in the common contemplation of the parties that Cementech might commence proceedings during the term which would continue after the expiry of the term. Clause 9.2(b), if engaged by the commencement of proceedings during the term, survives termination of the Licence Agreement, as does cl 9.2(f). It is apparent from the scheme of cl 9.2, which is a code in respect of litigation commenced during the term as Cementech submitted, that the parties intended the cost burden provision (cl 9.2(b)) and the proceeds benefits provision (cl 9.2(f)) to survive. That intention prevails …

The Full Court pointed out that under clause 9.2(f) Austal had a right to claim its proportionate share of any pecuniary remedies even after the licence terminated. The Full Court noted tersely:

The examples of commercial impracticality advanced by Austral apply equally during the term. The parties simply did not provide details about how their relationship in respect of the litigation other than in respect of cost sharing and benefit sharing would be regulated. But that is no reason to rewrite the commercial deal they did. Nor is the fact that, as it turns out, Austral does not wish to fund these particular proceedings.

If you are thinking about using this clause as a model for your future contracts, the Full Court recognised that the scheme set up by the parties might not work to either’s benefit in different cases:

Austral’s reluctance to be bound by cl 9 is understandable. The provision is capable of working to its disadvantage. For example, Austral (as apparently in the present case) may not agree that there has been any infringement and thus may not wish to fund any part of the proceedings. Austral’s interest in the proceedings may be limited depending on the nature of the alleged infringement and the time during the term when the proceedings are commenced (presumably, Austral’s interest might be greater if proceedings are commenced earlier rather than later in the term). Austral may well perceive, accurately, that it will pay 50% of the costs of expensive proceedings which will lead to no or little reward for it if Cementech manages to obtain any proceeds from the litigation. But all of these circumstances might apply equally to Cementech in different circumstances. As Cementech submitted, the potential for an unequal commercial interest in proceedings results from the deal the parties did when they entered into the Licence Agreement.

Austral Masonry (NSW) Pty Ltd v Cementech Pty Limited [2014] FCAFC 72 (Jagot, Nicholas and Yates JJ)

Something to think about in drafting an exclusive licence Read More »

Dr Gurry re-appointed

Leave a Comment / IP generally / / / , , ,

Last week, 8 May, WIPO’s General Assembly re-elected Dr Francis Gurry to a second 6 year term, beginning 1 October 2014 as Director-General of WIPO.

Congratulations, Dr Gurry!

In his acceptance speech, Dr Gurry highlighted the challenge facing WIPO:

I believe that the fundamental challenge that we face as an Organization is to achieve a shared understanding of the contribution and value of intellectual property to economic, social and cultural development. This is by no means an easy task. Many obstacles lie in the path – different competitive interests in an economy in which knowledge- and technology-intensive industries account for an increasing 30% share of global economic output; asymmetries of wealth, opportunity and knowledge; historical and contemporary trust deficits; and the reality of a multi-speed and multi-tiered world in which multilateralism, while being the highest expression of inclusiveness and legitimacy, is nevertheless the slowest solution.

It would appear this means continued development of the international agenda on specific issues.

Press Release

Acceptance Speech

Dr Gurry re-appointed Read More »

Intellectual Property Laws Amendment Bill 2014

Leave a Comment / Designs, IP generally, Patents, PBR, Trade marks / / / , , , , , , , , ,

After the consultation, the Intellectual Property Laws Amendment Bill 2014 has been introduced.

  • Schedules 1 and 2 aim to implement the TRIPS Protocol:

    According to the EM:

    Under the new scheme, Australian laboratories will be able to apply to the Federal Court for a compulsory licence to manufacture generic versions of patented medicines under specific conditions, and export these medicines to developing countries. Adequate compensation for the patent holder will be negotiated, to ensure that they are not disadvantaged by the arrangements.

    Schedule 1 introduces provisions to implement the “interim waiver” agreed in the Doha Declaration 2001; Schedule 2 implements the TRIPS Protocol regime agreed in 2003 (or, I think, 2005).

    According to the EM, only one licence has been issued under these regimes – Canada in 2007. Apparently, Canadian generics would like to engage in further licensing, but the procedures are too complicated. Also, Least Developed Countries do not need to provide patent protection until 2016 and there is said to be a lack of awareness of the regime.[1]

  • Schedule 3 confers jurisdiction over plant breeder’s rights matters on the Federal Circuit Court (in addition to the Federal Court)
  • Schedule 4:
    • introduces the “single examination” model for patent applications in Australia and New Zealand;[2]
    • the single regulatory regime for patent attorneys and trade mark attorneys in both countries – the so-called trans-Tasman regulatory regime; and
    • provides for a single address for service in either Australia or New Zealand to be used under the patents, trade marks, registered designs and plant breeder’s rights legislation.
  • Schedule 5 is headed “Technical Amendments” which include repealing “unnecessary document retention provisions” and addressing “minor oversights in the drafting of” the Raising the Bar Act. These include:
    • amending s 29A so that an international applicant under the PCT cannot require anything to be done in Australia until the application enters the national phase;
    • amending s 29B so that only the prescribed period under s 38(1A) applies to Paris Convention applications;
    • amending ss 41 and 43 in relation to disclosure requirements for micro-organism inventions
    • amending s 43 to permit reference to the combination of prescribed documents, not just to individual prescribed documents alone
    • the defence in s 119(3)(b) will be amended to bring it into line with the amended form of s 24(1)(a)
    • amending s 191A so that the requirement for the Commissioner to hear both parties prescribed in s 191A(4) applies only in entitlement disputes.

Intellectual Property Laws Amendment Bill 2014

Explanatory memorandum

  1. The Regulatory Impact Statement included in the EM estimates that 63 in-house legal professionals and 128 patent attorneys in external firms will need to familiarise themselves with these changes for a total start up cost to business of $13,782.60 and an ongoing annual cost of $105. These costs include allowance for savings in legal costs because it will be possible to bring proceedings for infringement of plant breeder’s rights in the Federal Circuit Court, rather than the Federal Court. Perhaps confusing costs with earnings, the Regulatory Impact Statement relies on the ABS Employee Earnings and Hours Survey to estimate the average cost of patent and trade mark attorneys as $50 per hour (junior solicitors $60 per hour, IP attorneys $74.10 per hour and barristers $92.70 per hour, after including a 50% loading for overheads). The Statement does recognise that charge out rates “for lega”for legal professionals can range from $120 per hour to $800 per hour or more, viewed on 4 December 2013 at http://www.legallawyers.com.au/legal-topics/law-firm-sydney/solicitor-prices/. These costs do not reflect the opportunity cost of labour.” You may also be interested to know that the Regulatory Impact Statement estimates the costs of an application to the Federal Court for a licence at around $21,650 for the applicant.  ?
  2. The substance of the two countries’ respective patent laws is not being harmonised (yet).  ?

Intellectual Property Laws Amendment Bill 2014 Read More »

Securities over IP

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

IP Australia has published a reminder:

The transitional period to register any securities (charges, mortgages etc.) you may have taken out over IP ( registered trade marks, patents, designs etc.) on the Personal Property Securities Register expires on 31 January 2014.

The Personal Properties Security Register is a national register of claims to security interests over personal property (which includes our imaginary subject matters) in essence to provide a one stop shop for notice about such claims.

If you (or your client) has taken out a security over someone else’ intellectual property or where the other person’s intellectual property is being used as collateral for repayment, the security should be registered on the Personal Property Securities Register. In very broad terms: if the security isn’t registered in the Personal Property Securities Register, its claim to priority over any later security or even enforceability could be lost.

IP Australia’s warning points out that it is not enough to have registered the security interest in a register of IP such as the Trade Marks Register, the Patents Register, the Register of Designs or the Register of PBR. These registrations will not be transferred automatically to the Personal Property Securities Register. Morever, registration of the security interest on one or more of those IP Registers will not take priority over a later registration on the Personal Property Securities Register.

So, if you or your client have taken out such a security and haven’t registered it in the Personal Property Securities Register yet, ‘hurry, hurry, hurry; quick, quick, quick’ (with apologies to Alexis Jordan).

Although IP Australia’s warning relates specifically to the registered IP it administers, the legislation also applies to unregistered IP such as copyright.

IP Australia’s media release.

IP Australia’s general overview of PPS

PPS R.

Securities over IP Read More »

Summer must be over …

1 Comment / IP generally, Patents, PBR, Trade marks / / / , , , , , , , , ,

IP Australia has released a consultation paper (pdf) (with exposure draft bill (pdf) and draft EM (pdf)) on the proposed Intellectual Property Laws Amendment Bill 2014.

According to the overview, the proposed bill will:

  • implement the Protocol amending the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Protocol – links via here), enabling Australian medicine producers to manufacture and export patented pharmaceuticals to countries experiencing health crises, under a compulsory licence from the Federal Court
  • extend the jurisdiction of the former Federal Magistrates Court, the Federal Circuit Court, to include plant breeder’s rights matters
  • allow for a single trans-Tasman patent attorney regime and single patent application and examination processes for Australia and New Zealand, as part of the broader Single Economic Market (SEM) agenda
  • make minor administrative changes to the Patents, Trade Marks and Designs Acts to repeal unnecessary document retention provisions that are already adequately governed by the Archives Act 1983
  • make minor technical amendments to the Patents Act to correct oversights in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which was passed by Parliament in March 2012.

The proposed bill succeeds the Intellectual Property Laws Amendment Bill 2013, which proved rather more controversial than the former government, or its advisors, expected (see, for example, here (pdf)) and lapsed with the calling of the election.

According to the consultation paper, the proposed bill largely replicates the lapsed bill, but there have been changes in 5 key areas.

The provisions relating to Crown Use in the lapsed bill have been withdrawn and will be the subject of a separate bill in the future.

The provisions to implement the TRIPS Protocol drew much of the controversy. According to the consultation paper, these have been amended in a number of important respects. First, it is proposed that separate applications will be required for each patent that a person seeking a licence to manufacture under the TRIPS Protocol requires. It is hoped that this will address concerns about an imbalance of negotiating power if the patentee of one patent also required access to someone else’s patent(s) to take advantage of the proposed compulsory licence.

Secondly, the proposed compulsory licence will be to exploit the patent for the relevant purpose rather than the more limited “work” the patent.

To preclude the need to change the regulations when (perhaps that should be “if”) there is a change in a country a country qualifies as a permissible import destination, and the notification requirements according to whether the country is a member of the WTO or an LDC, the regulations will refer simply to the relevant lists maintained by the WTO and/or the UN.

Whether these changes will meet the substantive objections raised against the lapsed bill remains to be seen.

Unfortunately, the draft bill fails to address one important oversight from the Raising the Bar Act. The Raising the Bar Act replaced the standard applicable during examination and opposition to the grant of a patent from one of practically certain to be invalid to one of balance of probabilities: see Sch. 1 Part 2 items 39 to 54.

It has not been determined finally what standard applies in trade mark proceedings, although the preponderance of authority in the Federal Court appears to support the “practically certain to be invalid” standard to the examination and opposition of trade marks. See for example NV Sumatra v BAT at [16] – [38]. This position was adopted by analogy to, and for conformity with, the position then prevailing for patents. The reasons why this was changed for patents are equally applicable for trade mark applications. One would think it was high time to address this.

Comments and submissions are required by 7 February 2014.

Links to IP Australia’s documents via here.

Summer must be over … Read More »