Dr Francis Gurry

You may have already received notification about this but, just in case, this year’s Francis Gurry lecture will involve a “conversation” with Dr Gurry himself.

Following his recent retirement as Director General of the World Intellectual Property Organisation – or WIPO to you and me, Dr Gurry “will reflect on his 35 years of work within the United Nation’s multilateral system – and what the future holds for IP.”

The talk will be streamed online on 25 November 2020 – 6:00pm AEST. Times in other jurisdictions and registration here. Registration is free.

Tobacco Plain Packaging Laws Upheld by WTO Appellate Body

The WTO’s Appellate Body has dismissed the appeals by Honduras and the Dominican Republic against Australia’s tobacco plain packaging laws (TPP measures).

In summary, the Appellate Body upheld the Dispute Panel’s findings that:

  • the TPP measures were not more restrictive than necessary to fulfil a legitimate objective within the meaning of art. 2.2 of the TBT Agreement
  • the TPP measures were not inconsistent with art. 16.1 of the TRIPS Agreement; and
  • the TPP measures were not inconsistent with art. 20 of the TRIPS Agreement.

(Strictly speaking, the Appellate Body found that Honduras and Dominican Republic did not demonstrate the TPP measures were inconsistent with the relevant obligations.)

Cuba and Indonesia did not proceed with appeals against the Panel decisions rejecting their complaints. Ukraine’s complaint never proceeded to a Panel hearing.

Report and Addendum

Just the findings and conclusions (in pdf format)

Summary of key findings (DS435 – Honduras) and (DS441 – Dominican Republic).

Yellow tops and labels

It’s not exactly front page news, but over at news.com.au they have a short video explaining the battle between Kraft and Bega over who can market peanut butter in that yellow get-up. This follows news that Kraft has applied for special leave to appeal the dismissal of its complaint.

A Current Affair also has a go with a lot more flag waving and some gruesome finger dipping.

If you’re looking for the more formal legal analysis, the Full court decision is here.

So far, the moral of the story is that an unregistered trade mark is not property in its own right. Such a “thing” can be assigned only as part of the transfer of the goodwill of a business as a going concern. If you are going to sell your business, or its assets, but you don’t want to the purchaser to use an unregistered name, or get-up, after the sale, you will need to impose appropriate contractual restraints.

Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65 (special leave application pending)

auDRP: .com.au and .net.au allocation rules

auDA is in the process of reviewing the rules for name allocation in the .com.au and .net.au spaces.

According to the Explanatory Guide the significant areas of the proposed changes include:

(1) eligibility rules for the .au namespace (these include allowing registration of second level domain names – i.e., not requiring registration in .com.au or .net.au); 

(2) changes to the use of the State and Territory namespaces to include Peak State and Territory bodies; 

(3) the use of internationalised domain names in the .au namespace; 

(4) the omission of the Domain Monetisation test for com.au and net.au namespaces; 

(5) a new prohibition on sub-leasing, renting or otherwise allowing another party to use a licence, except where the Person is a related body corporate; 

(6) a public interest test to deal with government requests; and 

(7) a new suspension power to provide a more proportionate response to non-compliance with the Licencing Rules. 

A roadshow concludes with a public workshop in Brisbane today.

A draft of the proposed rules for allocation can be found here and a statement of Key Consultation Issues here.

The Consultation page with further documents can be found here.

As part of that review, it is undertaking a survey to gauge community / stakeholder views.

You can take the survey here.

Trade Mark 2,000,000

IP Australia has published details of Trade Mark No. 2,000,000:

Trade Mark No. 2000000

I am not sure whether the sequence has been unbroken right from Trade Mark No. 1. Even so, the meter has ticked over and it is definitely a milestone of sorts.

It does seem a little strange, in these days of tobacco plain packaging laws, that someone is pursuing a trade mark registration for a new brand, but it does also extend to smoker’s articles and e-cigs.

By way of interest, Trade Mark No. 1,000,000 was filed by Anchor Foods on 23 April 2004.

That is, it took almost 100 years to get to the 1,000,000 mark; but it took only 15 years for the next million.

I wonder whether “Northern Lights” will achieve the same degree of notoriety as the equally colourful “Golden Lights“.

Lid dip: Dave Stewart

ps. Trade Mark No 1 is still there and, all right, it was only filed on 2 July 1906 so strictly speaking it took just under 98 years to clock up 1 million.

A designs case – spare parts

Burley J has handed down our first case dealing with the “spare parts” defence in the Designs Act 2003.

At 709 paragraphs, any considered analysis will have to wait for another day (or days). In the meantime, here are his Honour’s conclusions:

707. In these reasons, I conclude that GMGTO has failed to establish the bulk of its claim for design infringement. Despite extensive forensic examination of the business of SSS, it has not established infringement in respect of the importation, keeping for sale or offering for sale of the impugned SSS products in respect of any of the SSS respondent companies. In its claim for infringement by selling, GMGTO has established infringement in respect of 4 representative transactions made by SSS Sydney, 2 representative transactions entered into by SSS Melbourne (but only in part in relation to Transaction 17) and 2 representative transactions entered into by SSS Queensland. The parties must now, on the basis of these reasons, attempt to agree on a formula by which the balance of the transactions the subject of GMGTO’s claim might be resolved. They should also confer and attempt to agree to directions to bring these proceedings to a close. 


708. I have concluded that SSS has substantially failed to establish its case on the cross-claim. It has established that there were unjustified threats insofar as they relate to designs that were never certified, which involves the threats made to Panel House, Carparts and Torq. SSS has also established an unjustified threat in relation to copyright infringement in the case of Holmart. I will hear submissions from the parties as to the appropriate relief to grant, if any.

GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd [2019] FCA 97

GSK’s extended release paracetamol patent 2

In addition to dismissing GSK’s appeal against the construction of “basket” (noted here), the Full Court also dismissed Apotex’ cross-appeals on fair basis and best method.

Fair basis

Apotex and Generic Partners also lost their appeals against the trial judge’s ruling that GSK’s patent was fairly based and there had been no failure to disclose the best method.

On fair basis, the claims were consistent with the consistory clauses, but Apotex argued the body of the specification showed that the invention was narrower than the broad consistory clauses. This appears to have been an attempt to read the claims down to two specific formulations discussed in the specification, Formulations C and D.

A key point was whether the trial judge had impermissibly taken into account information in an FDA report to ascertain if the claims travelled beyond the disclosure in the specification. Apotex argued this was excluded by the High Court’s decision in the first Lockwood decision, where it had said at [48]:

If all that is essential in assessing a fair basing objection is recourse to the contents of the specification, there is no call, for example, for an examination (except on construction questions) of common general knowledge (which is essential when considering an objection based on want of an inventive step), or of prior art (which is essential when considering novelty (s 7(1))) …

The Full Court, however, rejected this attack; concluding that the information in the FDA Report (which was common general knowledge) informed how the skilled addressee would understand the claims. At [166], the Full Court said:

What is critical to the pharmacokinetic behaviour of the many formulations within the claims is the dissolution profile (or release rate) of the formulation. The primary judge accepted that the FDA Report recognised that a variation of ±10% percentage points in the release rate was acceptable to the FDA even where no IVIVC had been established. This provides evidentiary support for the finding that the skilled addressee would know that various formulations within the claims apart from Formulations C and D were likely to have similar pharmacokinetic properties. This also provides a complete answer to Apotex’s argument that the skilled addressee (equipped with the common general knowledge) would approach the Patent with an understanding that there would be no reason to think that other formulations within the claims would have a similar pharmacokinetic profile to Formulations C and D in the absence of any established IVIVC.

The Full Court also rejected Apotex’ argument that a claim could not be fairly based unless the specification explained why the claims worked. Making it clear that they were dealing only with the position before the Raising the Bar Act reforms, the Full Court said at [170]:

Of course, it is important to note that s 40(2)(a) requires that the complete specification “describe the invention fully”. A complete specification may still “describe the invention fully” without explaining why the invention works. After all, the inventor, who presumably believes that the invention described works, may not understand why it works. But this does not prevent him or her from obtaining patent protection for the invention.

Best method

For best method, the argument built on the Servier ruling to argue there had been a failure to disclose the best method because the specification did not disclose the particular grade or viscosity of the high viscosity HPMC or the granulation end points used to make Formulations C and D.

At [192], the Full Court accepted that there could be a failure of best method if information was withheld even though it could be ascertained by routine experiment. The Full Court rejected the best method attack, however, finding that the information omitted was inessential manufacturing and production information. According to the Full Court at [201]:

It does not follow merely because the patent applicant uses a particular manufacturing process or a particular excipient in formulating its commercial embodiment that it will form part of the best method. The patent applicant may have adopted a particular process, or used a particular excipient, for reasons that are associated with its own particular circumstances rather than because it believes that they reflect the best method. The best method known to the patent applicant may be one that allows for the optimisation of a formulation by the skilled addressee rather than one that adheres to one specific formulation that the patent applicant seeks to commercialise.

Those preparing specifications might want, first, to note the reservation that the Full Court was not dealing with the “new” post-Raising the Bar regime. Secondly, [192] appears to carry with it the warning that, if one leaves something out, one does so at one’s own peril.

 

 

Feedspot’s Top 25 Australian Law blogs

Honoured to be included in Feedspot’s Top 25 Australian law blogs and websites for Australian lawyers.

No 1 is Melbourne Uni’s Opinions on High which is a “must read” for following developments in the High Court.

K & L Gates’ IP Law Watch, which includes posts about Australian law as well as the USA, the UK and EU comes in at No. 10.

There are also two competition / consumer law blogs which I should check out.

Primary Health Care

The Full Court has dismissed Primary Healthcare’s appeal from the decision rejecting its attempt to register “Primary Health Care” for medical services.

The judgment is 438 paragraphs long; Greenwood J providing 77 paragraphs on aspects of s 41 (old form), Katzmann J providing 80 paragraphs and the balance being the leading judgment of Rangiah J.

While Greenwood J and Katzmann J agreed generally with Rangiah J on s 41 (old form), it appears there are some nuances to consider! Katzmann J disagreed with Rangiah J about the application of s 43.

Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174

More consultations – copyright edition

The Copyright Regulations 1969 and the Copyright (Tribunal Procedure) Regulations 1969 are due to “sunset” – by which they mean “expire” – on 1 April 2018.

The Department of Communications and the Arts, therefore, has released exposure draft regulations for the Copyright Regulations 20171 (pdf) and the Copyright Legislation Amendment (Technological Protection Measures) Regulations 2017 (pdf) for consideration and comment. Fortunately, there is also a 47 page consultation paper (pdf) which identifies various ways in which the new regulations are proposed to differ from the old Regulation through 13 questions.2

Submissions are required by 6 October 2017.

Some of the new matters addressed include

  • prescribed requirements for industry codes under the carriage service provider safe harbours;
  • a number of new prescribed acts where it will be permissible to circumvent technological protection measures:
    • for use of copyright material by a student enrolled in a course of study in an educational institution solely for the purpose of and in circumstances set out in sections 40, 41, 41A, 103A, 103AA or 103C of the Act provided that the use was solely for the purposes of a student complying with the requirements of the course of instruction
    • for use of copyright material by a person who carries out research for an educational institution solely for the purpose of and in circumstances set out in sections 40, 41, 41A, 103A, 103AA or 103C of the Act provided that the use was solely for the purposes of a person carrying out his or her research duties for an educational institution
    • for use of copyright material for educational purposes by or on behalf of a body administering an educational institution, acting under section 200AB of the Act
    • use of copyright material by or on behalf of a person with a disability under Division 2, Part IVA of the Act
    • use by libraries, archives and Key Cultural Institutions (as prescribed in the Copyright Regulations), under Division 3 of Part IVA of the Act
    • use in relation to access by or for persons with a disability (under Division 2 of Part IVA of the Act)
    • for use of copyright material for educational purposes undertaken under the statutory licence under Division 4 of Part IVA of the Act
  • as is the case now, there are provisions for all sorts of notices and even new questions about how they should be published.

At the grumpy old man level:

Why does reg. 12 dealing with “industrially applied” refer to 50 “articles” when section 77 refers to “products”?

Also, in a move designed to cause confusion or which fails to appreciate the difference between a section in an Act and a provision3 in a regulation, we apparently now must refer to provisions in regulations as “sections”. That should make it much easier for everyone!

There is also a Review of the Code of Conduct for Copyright Collecting Societies. If that one keeps you awake at night, you need to get you submissions in by 29 September 2017

  1. The Tribunal Procedure regulations will be rolled into the general Copyright Regulations. ??
  2. At 96 pages in length, I am certainly not to be taken to be guaranteeing those matters are the only new matters or changes. ??
  3. Formerly known as a “regulation”. ??