opposition

To be estopped or not …

O’Bryan J has ruled that Vehicle Management Systems (VMS) is not estopped from seeking revocation of Orikan’s patent despite earlier opposition proceedings in which VMS could have raised the allegations, but did not.

Under the pre Raising the Bar versions of the Patents Act, it was clearly established that an unsuccessful opponent was not estopped from subsequently seeking revocation on the same grounds. This was at least because of the different onus: an opponent had to show that it was “practically certain” the patent application was invalid to succeed whereas a party seeking revocation only had to satisfy the balance of probabilities standard.[1] The Raising the Bar amendments, however, sought to change the burden at the examination and opposition stages to the balance of probabilities standard. The debate since then has been whether this meant an unsuccessful opponent was estopped from seeking revocation on the same grounds.

Overview

Orikan is the registered owner of Australian Patent No. 2013213708 titled “Vehicle Detection”, having been assigned the patent by SARB Management Group. It has sued VMS for infringement. In addition to denying infringement, VMS has cross-claimed seeking revocation of the Patent. So, this is another campaign between VMS and SARB-related entities over competing systems and apparatus to detect cars which have overstayed parking.

In this particular application, Orikan was seeking to have VMS’ cross-claim stayed on grounds of Anshun estoppel or, alternatively, as an abuse of process.

Some background

Back in happier days, VMS and SARB had explored jointly developing systems for detecting vehicles which were parked without paying the fee or after the alotted time had expired.

Things didn’t work out and, by a decision handed down in 2013, VMS successfully sued SARB for infringement of one of VMS’ patents for vehicle detection systems.

In 2008, however, SARB had applied for its own patent. That application led to two divisional patents: Australian Patent No. 2011101179 (Innovation Patent), which was filed in 2011, and secondly the Patent the subject of these proceedings, which was filed in 2013. As you might suspect, there was considerable overlap between the claims of the Innovation Patent and the Patent.

In 2012, SARB sued VMS for infringement of the Innovation Patent. VMS defended, including a cross-claim for invalidity on grounds including lack of novelty, secret use and lack of sufficiency and best method. This proceeding settled before trial in 2014.

In 2016, VMS opposed the grant of the Patent. That opposition failed in both the Office and the Court.[2] The Opposition Proceeding in the Court involved extensive evidence and 5 days’ trial. According to O’Bryan J, however, it did not involve the grounds of invalidity or particulars that VMS sought to argue in this proceeding.

In addition to challenging the priority date, clarity and sufficiency grounds, VMS sought to revoke the Patent in this proceeding on grounds of lack of novelty, secret use and failure to disclose the best method.

Given this prior history, Orikan contended VMS’ cross-claim should be stayed on grounds of either Anshun estoppel or abuse of process.

Legal tests

The parties were not really in dispute about the principles.

Anshun estoppel

At [26], O’Bryan J explained:

Anshun estoppel operates to preclude the making of a claim, or the raising of an issue of fact or law, in a subsequent proceeding if the claim or issue was so connected with the subject of an earlier proceeding that it would have been unreasonable, in the context of the earlier proceeding, for the claim not to have been made or the issue not to have been raised in that proceeding …. [3]

Thus, at [28] his Honour considered three conditions needed to be satisfied:

(1) the relevant cause of action, defence or issue must be one that could have been raised in the earlier proceeding;

(2) the same or substantially the same facts must arise for consideration in the second as in the first proceeding; and

(3) it must have been unreasonable in all the circumstances for the party not to have raised the issue in the first proceeding – i.e. it is not enough that the issue could have been raised; in all the circumstances it should have been raised.

The third requirement means the test has an element of discretion and evaluation.

The requirement of “unreasonableness” is a “severe test” and not to be made lightly. O’Bryan J noted one situation where unreasonableness was likely to be established is where a judgment or order made in the second proceeding was likely to conflict with a judgment or order in the earlier proceeding. But, the doctrine is not limited only to such situations.

Abuse of process

Abuse of process is not capable of explanation in terms of closed categories. At [38], O’Bryan J noted the principles governing its application are broader and more flexible than those governing estoppels.

In general terms what needs to be shown is that the use of the Court’s procedures would be unjustifiably oppressive to the party or would bring the administration of justice into dispute. At [39], O’Bryan J noted that this brought into play considerations of the overarching purpose of civil litigation as set out in s 37M.

Why O’Bryan J dismissed Orikan’s application

At [71], O’Bryan J accepted that Orikan, as the assignee of the rights in the Innovation Patent and the Patent, could take the benefit of an Anshan estoppel arising from the earlier proceedings. It had not been a party to the earlier proceedings but, as the assignee, was a “privy” of the SARB entity which had been.

It was not in dispute between the parties that VMS could have raised the invalidity issues it now wished to argue in the earlier Opposition Proceeding. The matters VMS now sought to rely on were either known to it or it ought to have been aware of them. In fact, the grounds and particulars had been asserted by VMS in the Innovation Patent Proceeding and, while they were different patents, they were both derived from the same parent and the claims were substantially similar.

Nonetheless, O’Bryan J considered that it was not unreasonable for VMS not to have raised the issues it now sought to agitate in the Opposition Proceeding.[4]

First, at [75] his Honour considered there was not a relevant risk of inconsistent judgments. His Honour accepted that a finding that the Patent was invalid in this proceeding would be inconsistent with the result in the Opposition Proceeding. As the grounds and particulars relied on in this proceeding were different, however, the basis of an invalidity finding in this proceeding would be different to the basis of the findings in the Opposition Proceeding.

Secondly, O’Bryan J considered at [76] there was a fundamental difference between the nature and consequences of an opposition proceeding and a revocation proceeding. The Opposition Proceeding involved an election by VMS to challenge the Patent on limited grounds. In contrast, in this proceeding, VMS was being sued for infringement and so compelled to come to court. Later, at [80] O’Bryan J noted that his conclusion might have been different if VMS had initiated the proceedings rather than being the respondent.

O’Bryan J also noted that the Innovation Patent Proceeding had not proceeded to trial and so the invalidity claims had not been tested in court.

Thirdly, O’Bryan J considered that allowing the invalidity claims to go forward in this proceeding would not result in more costs and delay than would have been the case if the claims had been brought in the Opposition Proceeding.

There was one overlap with the Opposition Proceeding in that one of Orikan’s witnesses, a Mr Del Papa, had been cross-examined about a particular document and both Mr Del Papa and the document were involved in this proceeding. However, the relevance and cross-examination in the Opposition Proceeding was limited to an issue of entitlement, not in issue in this proceeding.

Finally, O’Bryan J did not place “significant weight” on the public interest in the integrity of the Register or the fact the Act specifically provided for pre-grant oppositions.

O’Bryan J dismissed the abuse of process attack for essentially the same reasons.

An observation

Interestingly, while O’Bryan J did have regard to the in rem nature of patents, the public interest in the integrity of the Register and the specific provision in the Act for pre-grant opposition (and the change in onus), his Honour did not give those considerations much weight. His Honour eschewed adopting a general principle and instead applied an approach very heavily based on the particular facts of the case.

For example, it is often said (as is the case) that defeating an opposition is not a guarantee that the patent is valid. That is also true of an unsuccessful revocation proceeding. The fact one person’s revocation proceeding failed does not preclude anyone else seeking to revoke the patent. And there are cases where the second challenger succeeded despite the failure of the first.

In considering the fundamental difference between the nature and consequences of opposition proceedings and infringement/revocation proceedings, O’Bryan J emphasised VMS’s choice to fight the Opposition Proceeding on limited grounds in light of the nature and purpose of opposition proceedings. At [76], his Honour explained:

But the Opposition Proceeding involved an election by VMS to challenge the validity of the Patent. It did so on limited grounds, and did not raise the grounds and particulars of invalidity that had been raised in the earlier Innovation Patent Proceeding. There is no proper basis to criticise that election. …. The election made by VMS confined the scope of the issues in dispute in the Opposition Proceeding and therefore the costs and time required for its determination. That course was consistent with the overarching purpose of civil litigation expressed in s 37M of the Federal Court of Australia Act 1976 (Cth). It was also consistent with the character and purpose of pre-grant opposition proceedings, which are intended to provide a swift, economical means of settling disputes: Genetics Institute at [19]. Although it is desirable to avoid a multiplicity of proceedings and to ensure that parties address, as far as possible, the issues arising between them in a single proceeding, parties ought not to be encouraged to raise each and every possible claim or issue irrespective of the time and cost associated with doing so. Anshun estoppel must operate conformably with the demands of s 37M, as well as the substantive statutory context in which it is said to arise. (Emphasis supplied)

This suggests his Honour’s conclusion might reflect a reaction to Beach J’s heartfelt paragraph 1784. It is also consistent with a number of extra-judicial comments encouraging some effort on the part of parties to simplify proceedings. It does seem a little odd, however, that an opposition proceeding taking up 5 days’ of the Court’s time and a carefully reasoned 274 paragraph judgment might qualify as a swift economical means of resolving the dispute between the parties especially when the consequences lead to a further infringement proceeding with what promises to be an even more involved revocation component.

Orikan Group Pty Ltd v Vehicle Monitoring Systems Pty Limited [2023] FCA 1031


  1. In at least one case (which I haven’t been able to find again in the time available), the judge did warn the opponent / revoker that it was at risk of indemnity costs if its revocation action also failed.  ?
  2. There was also an appeal to the Full Court which, by the time of the hearing, was limited to the issue of entitlement.  ?
  3. Citing Anshun at 598, 602–3 (Gibbs CJ, Mason and Aickin JJ); Tomlinson v Ramsey Food Processing Pty Limited (2015) 256 CLR 507 at [22] (French CJ, Bell, Gageler and Keane JJ).  ?
  4. Yes I realise that double negatives are “awkward” (to say the least) but that the point!  ?

To be estopped or not … Read More »

ToolGen’s CRISPR/Cas9 patent application rejected

Nicholas J has ruled that ToolGen’s application for a patent, AU 2013335451, for “what is now a well-known gene editing system known as the CRISPR/Cas9 system” for editing target DNZ sequences in eukaryotic cells. His Honour has allowed ToolGen until 11 August 2023 to bring any application for leave to amend pursuant to s 105(1A).

As the complete specification was filed after 15 April 2013, the Patents Act in the form amended by the Raising the Bar Act applied.

The matter came before his Honour on ToolGen’s “appeal” from an opposition in which the Commissioner’s delegate found that all but one of the claims should be refused but allowed ToolGen 2 months to amend.

At [13], Nicholas J summarised his Honour’s findings:

For the reasons that follow I have concluded:

(a)          None of the claims are entitled to priority based on P1 (s 43(2A)). 

(b)          All of the claims lack novelty or do not involve an inventive step (s 18(1)(b)).

(c)          The complete specification does not provide an enabling disclosure of the invention (s 40(2)(a)).

(d)          The claims are not supported by matter disclosed in the specification (s 40(3)).

(e)          Claim 19 lacks clarity (s 40(3)).

More detailed consideration will have to wait for another day.

ToolGen Incorporated v Fisher (No 2) [2023] FCA 794

ToolGen’s CRISPR/Cas9 patent application rejected Read More »

Monster strike …

… out, again. Stewart J has dismissed Monster Energy Corporation’s (MEC) opposition to the registration of MONSTER STRIKE by Mixi for computer gaming.

Mixi Inc. applied to register MONSTER STRIKE as a trade mark in Australia for computer games and software in international classes 9 and 41.[1] MEC lost the opposition before the Registrar and appealed.[2] okMEC argued that, because of MEC’s reputation in its MONSTER marks, Mixi’s use of MONSTER STRIKE for computer games and software would be likely to deceive or cause confusion.

Mixi launched its Monster Strike game in October 2013. By June 2014, there had been 8 million downloads and, by June 2018, more than 44 million downloads. Mixi had discontinued the English language version in 2017, so that the game was available only in Japanese or Chinese after that.

The priority date for MONSTER STRIKE was 27 December 2013, so that was the date MEC’s reputation in MONSTER fell to be determined and assessed.

MEC’s reputation

MEC claimed reputation variously in:

(1) MONSTER

(2) MONSTER ENERGY

(3) MONSTER RIPPER

(4) MONSTER REHAB

(5) MONSTER GIRL

(6) MONSTER ARMY

(7) MONSTER ASSAULT

(8) MONSTER KHAOS

and two stylised “M”s known as the M icon or M claw (illustrated below).

MEC did have trade mark registrations for these in Australia, but the goods and services were not for computer games and software.

MEC had launched the original “Monster” energy drink in 2002, with the product first being introduced into Australia in July 2009.

By the priority date, MEC had sold more than US$19 billion worth of drink in the USA and US$23 billion worldwide. Sales in Australia between 2011 and 2013 ranged from US$27 million down to US$15 million. More than 78 million cans of drink had been sold in Australia; of which 40 million were the Monster Energy Original product. The drinks were sold in Australia in over 10,000 outlets including grocery stores, convenience stores, petrol stations, bars, pubs, cafes and take-away food outlets.

MEC’s main witness conceded that there had not been any sales of Monster Assault or Monster Khaos in Australia before the priority date.

You probably already know what the cans look like, but Stewart J included images of typical get-up:

It was not in dispute that MEC did not provide computer software or games under its trade marks. MEC relied, however, on the fact that most of its advertising and promotional expenditure was spent on endorsements of athletes, gamers and musicians and sponsorships of sports, eSports (that is, competitive video gaming) and music festivals.

Between 2002 and 2013, MEC had spent more than US$2.5 billion on advertising, marketing and promotion. In Australia, MEC had spent US$50 million, with expenditure between 2011 and 2013 being US$31.4 million. Apparently, US$7.15 million was expenditure on athletes, musicians, competitions and other events.

MEC argued the target audience for its promotional activities were 18 –35 year olds, which was the same demographic as for computer games.

In addition to sponsoring the Evil Geniuses eSports team (starting in 2012), MEC had social media pages dedicated to gaming. Its Monster Energy Gaming page on Facebook had been operating since 2010. It had one million likes by the end of 2013; garnering about 10,000 “likes” from Australia each month between June and December 2013. MEC also used the Twitter handle @monstergaming.

There had also been extensive placements of MEC products, merchandise and advertising in video games, including t-shirts or other clothing, billboards and even some characters drinking MEC cans of drink. MEC had also sponsored at least one gaming developer, Ali-A, who had over 2 million subscribers to his YouTube channel.

In addition to the sports or gaming specific activities, MEC also engaged in the conventional provision of hospitality at pubs, sporting events, trade shows, gaming stores. The staff wore branded clothing, drove in branded vehicles and handed out branded samples.

MEC’s website had thousands of visits from Australians. Its main Monster Energy Facebook page had 24 million likes, of which 400,000 were Australians. The Monster Energy Girls Facebook page had 245,000 visits including 21,232 from Australia. There was a Monster Energy Facebook page with 3,450 visits from Australia; the Monster Energy Instagram account had almost 32,000 Australian followers and the main Monster Energy YouTube site had over 80 million views worldwide, with some 3.6 million views from Australia.

What MEC’s reputation was in

Unsurprisingly in the light of this evidence, Stewart J accepted that MEC had a well-established reputation in Australia. However, his Honour considered the reputation was closely bound up with the M claw mark and also generally involved the use of Monster and Energy together in combination.

From over 3,000 pages of written evidence, including photographs, MEC was able to identify only limited instances where MEC had used the word Monster on its own. For example (look closely):

Monster Energy drink label

At [146], Stewart J explained:

Many other cans of Monster energy drinks had the same or a similar slogan printed on them. In each instance the writing is small and the MONSTER® is dwarfed by the device marks which are distinctive and catch attention. I do not consider this use of MONSTER® to have generated any particular reputation for the use of the word MONSTER on its own.

His Honour considered that other references to Monster alone were really shorthand references to Monster Energy, which is “really the brand that has a strong reputation.” Some comments on social media by consumers referring only to “Monster” were similarly shorthand.

Accordingly, his Honour concluded at [151]:

In the result, the evidence does not support a conclusion that the MONSTER word mark on its own had any particularly significant reputation in Australia at the relevant time. Any reputation of the word MONSTER is derived from the M claw, stylised MONSTER and the MONSTER ENERGY word mark. It is these that create the association in the minds of consumers.

MEC’s trade marks Monster Assault, Monster Khaos, Monster Ripper, Monster Army, Monster Rehab had either not been used in Australia or, if used, Stewart J considered there was no evidence to support a conclusion that they had developed a significant reputation in Australia.

Stewart J accepted that MEC reputation was well-known and that its (stylised) Monster marks were associated with a range of eSports-related products and activities. However, that association was as “a sponsor” or “supporter” and not as a provider or publisher of video games themselves. At [159] – [162]:

[159] MEC submits that by the priority date, Australian consumers in MEC’s target demographic had a wide awareness of MEC’s Australian marks as emanating from a company with a long-standing and highly active presence in gaming and eSports. It further submits that MEC was strongly engaged with the international gaming community through its dedicated gaming internet sites and social media channels; closely connected with the generation of gaming content creators through its association with eSports athletes, teams and other content creators; and actively involved in the gaming industry through its promotion of, and licensing of its marks to appear in, a number of popular games.

[160] Those submissions can be accepted insofar as they apply only to the M claw and the words MONSTER and ENERGY in association with that mark. It can also be accepted that the marks were well-known in Australia, and that they were associated with a range of gaming and eSports-related products, programs and activities. However, the nature of that association and hence reputation was as a sponsor and supporter. Very often MEC’s marks, showing its sponsorship, appeared alongside many other well-known marks such as Vodafone, Samsung, Toshiba, Blackberry, Alliance and Pirelli, all apparently the names of co-sponsors. Of those with whom the marks had a reputation, there would have been a keen awareness that the trader behind the marks traded in energy drinks and not in other goods or services. MEC sponsored and promoted gaming and eSports events, and for that purpose it published material about such events, but its marks did not, in my assessment, have a reputation as a brand of origin for the provision of gaming event or publishing services; the reputation remained one of sponsor and promoter.

[161] In my assessment, an ordinary consumer would understand the presence of MEC’s Australian marks on athlete uniforms, equipment, event signage, apparel and the like to be for the purpose of advertising and promoting MEC’s energy drinks, and not to be functioning as a brand, or a source of trade origin, for the particular equipment, uniform, signage and apparel upon which the marks appear. This is similar to the findings in Qantas at [174] and [177]. Similarly, MEC’s sampling activities conducted at sports events and other venues, including by the Monster Girls, would be understood by the ordinary consumer to have been conducted for the purposes of advertising and promoting its energy drinks.

No real, tangible danger of confusion

At [167], Stewart J concluded there was no real, tangible danger that a reasonable number of people would be caused to wonder whether or not MONSTER STRIKE was associated with MEC in some way.

First, Stewart J considered that the very different goods and services was significant. As a result, the risk of confusion was “inevitably very much less” than it might have been if they were “the same or significantly overlapping.”

Secondly, the competing trade marks were distinctively different, bearing in mind the stylised or composite form in which MEC’s reputation lay. “Monster” was part of that form, but MEC had not established a significant reputation in that form.

Correspondingly, MEC’s arguments based on the similar linguistic structure or brand extension failed as its evidence did not establish a reputation in the various extensions – Monster Assault, Monster Ripper, Monster Khaos, Monster Army.

Thirdly, the evidence showed that at least 40 other traders had registered trade marks for or including MONSTER in respect of video games etc. While there was no evidence of any use of these, at [174], Stewart J was prepared to infer that some of these at least would have reputation. However, this played only “a small role” in reducing the potential for confusion.

Fourthly, the likely public, being young men and women interested in computers and gaming, was “brand-savvy and not gullible or easily confused.”

Finally, there was no evidence of actual confusion.

Strike 2

As the claim under s 42(b) requires demonstrating a likelihood of deception, not just mere confusion or being caused to wonder, you won’t be surprised that it failed too.

Stewart J’s decision is the second in a year or so in which MEC has failed in its attempt to extend its rights from the field of energy drinks into what might be thought rather unrelated fields. The earlier decision, involving an infringement action against Rodney Jane’s use for tyres, is under appeal. I wonder if we have heard the last of this dispute too?

Monster Energy Company v Mixi Inc [2020] FCA 1398


  1. TMA No. 1242941. (For the attorneys amongst you, it was actually an IRDA through the Madrid Protocol.)  ?
  2. Monster Energy Company v Mixi, Inc [2017] ATMO 119.  ?

Monster strike … Read More »

check your e-filing receipts carefully

Now that IP Australia has essentially moved to electronic lodgement, a recent case shows that you need to check your e-receipts carefully. The decision may also prove useful to understanding the Registrar’s obligation to give a party an opportunity to be heard.[1]

Facts

Foxtel instructed their lawyers to file a notice of intention to oppose a trade mark filed by Unicom. Foxtel’s instructions were to file on the last day available to oppose. The notice was prepared and on the last day for filing a legal secretary submitted it through eServices. A transaction receipt was received by return.

Ten days later the in-house lawyer at Foxtel rang up the lawyers, alerting them to the fact that Unicom’s trade mark was now registered. Checking the Register revealed that no notice of intention to oppose had been received. The legal secretary:

then checked her files and the transaction receipt. As it turned out, the receipt was not for the lodgement of the notice of intention but concerned a different transaction altogether. Subsequent review of the electronic log provided by IP Australia indicates that although the process for filing the notice of intention had been commenced, the payment had not been received and lodgement had timed out before the filing was complete.

The lawyers then promptly wrote to the Registrar requesting that the registration of Unicom’s trade mark be revoked under s 84A and s 84B, providing an explanation and subsequently filed the proposed Statement of Grounds and Particulars of Opposition (if the registration were revoked).

The Registrar then wrote to Unicom’s attorneys indicating that, having regard to Foxtel’s intention to oppose and the explanation why that had not been effected, her she intended to revoke the registration, but giving Unicom an opportunity to be heard.

Unicom replied; arguing that something is not regarded as filed under the eServices system until and unless a filing receipt is issued. It also contended that the proposed revocation was outside the power conferred by s84A. After considering the submissions, the Registrar decided not to revoke the registration.

Foxtel, through its lawyers, then obtained a copy of Unicom’s submissions through s 217A and made an application for judicial review under s 5 of the ADJR Act and/or s 39B of the Judiciary Act.

Decision

Burley J has dismissed Foxtel’s application.

Foxtel’s first argument was that it had been denied procedural fairness because it was not provided with an opportunity to respond to Unicom’s submissions before the Registrar changed her mind and decided not to revoke the registration.

The Registrar denied that it owed Foxtel any duty of procedural fairness. She was under no obligation to make a decision under s 84A and, in any event, the terms of s 84A required her to give an opportunity to be heard only to the registrant and people with interests recorded under Part XI.

At [40], Burley J held the Registrar did owe Foxtel a duty of procedural fairness, but the failure to provide it with Unicom’s submissions was not a material breach of that duty.

A duty to provide procedural fairness arises whenever the exercise of a statutory power affected a person’s rights, interests or legitimate expectations unless the duty has been excluded by plain words or necessary intendment.

The public interest in the purity of the Register – that the Register should not be clogged with invalid trade marks – meant Foxtel had a sufficient interest that required it be accorded procedural fairness. At [49], Burley J explained:

…. The “interest” of Foxtel is in persuading the Registrar that, in all the circumstances that existed when the trade mark was registered, the trade mark should not have been because, but for the error in filing the notice of intention to oppose there would have been an opposition on foot at the time of registration (s 84A(1)). In my view this is a form of possible adverse affectation that is sufficient to qualify as an interest to attract the protection of the rules of procedural fairness.

That s 84A did specify some people whom had to be given an opportunity to be heard did not lead an implication that Foxtel was not owed a duty. An intention to exclude natural justice was not to be inferred from the presence in the Act of rights which “are commensurate with some [only] of the rules of natural justice”.[2] While not obliged to make a decision under s 84A, the Registrar was obliged to accord Foxtel natural justice having embarked on the exercise.

While Burley J accepted Foxtel’s argument that it was owed a duty of procedural fairness, his Honour did not accept it had been denied natural justice.

Foxtel argued that, as the Registrar indicated to Unicom she would revoke the registration if Unicom did not respond, Unicom’s submissions must have been material to the Registrar’s change of mind – deciding not to revoke. Therefore, Foxtel argued that the failure to disclose Unicom’s submissions before the Registrar decided not to revoke the registration denied it natural justice.

Burley J examined the reasons the Registrar gave for deciding not to revoke; these had been outlined only in short form in the letter advising her decision. From that letter, his Honour found that the Registrar had in fact rejected Unicom’s arguments on the construction of s 84A and accepted Foxtel’s construction. Therefore, Foxtel had not been denied natural justice on the point.

Burley J was not prepared to accept Foxtel’s argument that the short form letter did not set out the real reasons for the decision, especially in circumstances where Foxtel had not sought a statement of reasons from the Registrar under ADJR Act s 13.

Burley J next rejected Foxtel’s argument that the Registrar’s decision was an improper exercise of power because it was so unreasonable that no reasonable person could have exercised the power that way.

Here, Foxtel’s conscious decision to instruct that the notice of intention to oppose be filed on the last day of the opposition period – not an uncommon practice – loomed large.

Burley J accepted that the scheme of the Act reflected an intention that the Register be pure. His Honour noted, however, that the Act and reg.s also provided for deadlines for filing documents in oppositions and, in addition, provided a further opportunity for objectors to seek rectification through s 88. His Honour also pointed out that the Explanatory Memorandum linked s 84A(6) – which explicitly states the Registrar has no duty to consider whether to revoke a registration under s 84A – to the objectives of the section:

…. Revocation of registration under section 84A is not intended to provide a way of settling competing claims to ownership of a trade mark. This can be pursued through the courts, with section 86 of the Trade Marks Act providing for the Federal Court to cancel a registered trade mark. Nor is it intended to be a mechanism for parties to file de facto oppositions after a trade mark has been registered. This provision is only intended to provide an administrative mechanism to undo a registration where it was wrongly registered.

The Registrar’s letter stated that she had considered “all of the circumstances” and so taken into account all mandatory considerations. Further, as already noted, the procedure was not intended to provide a mechanism “for parties to file de facto oppositions after a trade mark has been registered” and Foxtel could still seek rectification under s 88. In these circumstances, Burley J held the Registrar’s decision was not so unreasonable that no reasonable person would have exercised the power that way.

Rather than take up the invitation to seek rectification under s 88, Foxtel has appealed (NSD795/2019).

Foxtel Management Pty Limited v Registrar of Trade Marks [2019] FCA 605 (Burley J)


  1. Reg. 21.15 applies where the Act or the reg.s “provide for a person to be heard”.  ?
  2. Citing Annetts v McCann [1990] HCA 57; 170 CLR 596 at [2].  ?

check your e-filing receipts carefully Read More »

Don’t file in the wrong applicant’s name

Because, if you do, the Full Court has definitively ruled that the error cannot be rectified and any resulting registration will be irredeemably invalid.

This is the first of at least two rulings departing from the trial judge’s reasons which the Full Court made in the course of dismissing Pham Global’s appeal from the decision to revoke its trade mark registrations and find it infringed Insight Clinical Imaging’s trade marks. So Pham Global still lost, but with ramifications for us all.

Some background

Since 2008, Insight Clinical Imaging has been using the name INSIGHT and its composite mark for its radiology services largely in Perth, WA.[1]

Mr Pham is a radiologist and the sole director of the company through which a radiology business is conducted in NSW. Originally, the company was called AKP Radiology Consultants Pty Ltd. In December 2011, however, Mr Pham applied to register the Insight Radiology mark as a trade mark for radiology services.

Insight Clinical’s trade mark is below on the left. On the right below is the trade mark applied for by Mr Pham.

In March 2012, AKP Radiology Services first started using the Insight Radiology mark for its business.[2]

On 6 June 2013, Insight Clinical lodged its opposition to Mr Pham’s application.

On 17 June 2013, Mr Pham’s company changed its name from AKP Radiology Services to Insight Radiology Pty Ltd.[3] Then, on 1 July 2013, Mr Pham sought to assign the trade mark application to his company.

Insight Clinical Imaging’s opposition was successful before the Office and Mr Pham’s company appealed unsuccessfully. In accordance with the trial judge’s orders, Mr Pham’s company then changed its name to Pham Global Pty Ltd and sought leave to appeal.

While leave was granted, the appeal was dismissed.

Who is the applicant

The trial judge found that the Insight Radiology mark was designed for, and used by, Mr Pham’s company. It even paid the designer.

Mr Pham, however, maintained that it had not been a mistake that the application was made in his name rather than the company’s. There was no evidence that Mr Pham ever actually licensed his company to use the trade mark. Moreover, Mr Pham’s explanation for why he decided to assign the application to his company – “I just did it” – was not accepted. He explicitly rejected the proposition that he made the assignment in response to Insight Clinical’s opposition to registration of the trade mark or that it was a result of a mistake.

Accordingly, her Honour held that Mr Pham was not the owner of the application when it was made, his company was. In line with the decisions in Mobileworld and Crazy Ron’s, however, her Honour found that the assignment of the application to the company before the trade mark was actually registered rectified the error.

On appeal, the Full Court noted that Mobileworld and Crazy Ron’s were both obiter on this point.

The Full Court then noted that longstanding precedent required that grounds of opposition were assessed at the date the application was filed. That meant that, where the ground of opposition was under s 58 that the applicant was not the owner of the trade mark,[4] the applicant when the application was filed had to be the owner of the trade mark. At [32], the Full Court said:

Once it is understood that the legislative scheme operates in the context of established principle that the alternative sources of ownership of a trade mark are authorship and use before filing an application for registration or the combination of authorship, filing of an application for registration and an intention to use or authorise use, the relationship between s 27 and ss 58 and 59 of the 1995 Act becomes apparent. The grounds of opposition in ss 58 and 59 reflect the requirements of s 27. Only a person claiming to be an owner may apply for registration. That claim may be justified at the time the application is made based on either alternative source of ownership. But if the claim is not justified at that time, ss 58 and/or 59 are available grounds of opposition. Moreover, if the applicant is not the owner of the mark at the time of the filing of the application, the assignment provisions in ss 106 – 111 do not assist because they authorise the assignment of the mark and thus pre-suppose, consistent with established principle, that the applicant owns the mark.

Well, it’s a nice simple rule; should be pretty straightforward to apply in practice shouldn’t it? Of course, it does mean that the law for trade marks is way out of step with the law for patents and registered designs, sections 22A and 138(3)(4).[5]

When time permits, I shall try to do a post on the new law of substantial identity.

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ)


  1. It did not apply to register its trade mark until October 2012.  ?
  2. On 17 June 2013, Mr Pham caused AKP Radiology Consultants to change its name to Insight Radiology Pty Ltd. As a consequence of the first instance decision, however, the name of the company was changed again – to Pham Global Pty Ltd.  ?
  3. Mr Pham’s company also made a further application to register the words INSIGHT RADIOLOGY alone. Insight Clinical has also opposed it, but it appears to be stayed pending the outcome of the court case. (There was also an earlier application in 2008, TM Application No 1236945 for INSIGHT IMAGING / INSIGHT RADIOLOGY. This application was made by a Daniel Moses and a Jason Wenderoth, but lapsed after acceptance without ever becoming registered.)  ?
  4. The same principle applies under s 59, which was also in play.  ?
  5. Foster’s Australia Limited v Cash’s (Australia) Pty Ltd [2013] FCA 527.  ?

Don’t file in the wrong applicant’s name Read More »

Not “hired to invent” so no entitlement – Merial v Intervet

In Australia, we are often told our US clients get title through the “work made for hire” or the “hired to invent” doctrines under US law. Intervet has failed in its attempt to rely on the latter doctrine in its unsuccessful attempt to patent a “soft chew” medicament for pets. Moshinsky J also accepted Merial’s opposition on grounds of lack of inventive step. This post will deal with the entitlement issue. Lack of inventive step case, based on the 2001 amendments, will be the subject of a later post.

Some background

In 2002, Intervet was part of the Akzo group. Most of its R & D activities were carried out at its plant in Delaware. However, a Ms Cady was based in New Jersey and had responsibility for developing formulations for commercialisation. She did not, however, have a laboratory. She had worked with a Mr Pieloch of Pharma Chemie to develop products before. Ms Cady engaged Pharma Chemie to develop a palatable “soft chew” dosage form for companion animals such as horses and dogs.

A formulation was developed. Intervet made a provisional application in the USA, naming a Mr Huron, Ms Cady and Mr Pieloch as inventors.[1] Like Ms Cady, Mr Huron was an employee of Intervet. When the PCT came to be filed on 13 August 2003, Mr Huron, Mr Pieloch and Ms Cady were named as the inventors.

Intervet’s in-house patent attorney sent a copy of the PCT specification to Mr Pieloch was a request to sign a declaration acknowledging that Intervet owned all the rights. Pharma Chemie and Mr Pieloch rejected the request, asserting through their lawyers:[2]

It is our client’s position that Pharma Chemie invented the soft chew technology as described in the above-referenced patent application in 1992, and continued its work on the technology through the 1990’s and into the new millenium [sic]. All of the work on this technology was completed prior to Pharma Chemie’s entry into the Manufacturing and Supply Agreement with Intervet in 2002. Pharma Chemie also invented the manufacturing procedure described in the patent application cited above, and provided Formax with this information well prior to its entry into the development agreement with Intervet in 2002.

Pharma Chemie is therefore the owner of the technology described in the above-referenced patent application, not Intervet. For this reason, Mr. Pieloch will not agree to sign the Declaration and Power of Attorney for this application. ….

Intervet made various attempts to prosecute the US application without Mr Pieloch’s signature. These did not progress, however, and the application in the USA ultimately lapsed. The Australian application, the subject of Merial’s opposition, was at least a divisional from the original PCT application.

Claim 1 of the patent application was for:

A soft chew formulation for oral administration comprising a pharmaceutical for control of a parasite of Equidae, Canidae, Felidae, Bovidae, Ovidae Capridae, or Suidae organisms in a soft chew formulation, a flavouring component, a starch component, a sugar component, an oil component and an emulsifying agent that acts as a forming agent, wherein the moisture content of the composition is between 5.0 and 7.5 percent wt, the soft chew formulation is formed by knockout and the soft chew formulation is not an extrudate.

Merial has lost its opposition to the application before the Commissioner and appealed to the Court. Both Mr Huron and Ms Cady had left Intervet by this time, and Ms Cady was one of the witnesses for Merial.

Entitlement

Section 15 requires that the grantee of a patent derive its title ultimately from all of the inventors. Although Intervet had identified Mr Pieloch as one of the three inventors, Merial’s opposition succeeded because Intervet could not claim title from Mr Pieloch whom Moshinsky J found was the sole inventor.

Moshinsky J accepted Mr Pieloch’s evidence that he had developed the technology used for Intervet’s product through his company, Pharma Chemie, before Ms Cady engaged Pharma Chemie to develop Intervet’s product. Pharma Chemie had used its own technology to make a “soft chew” which used Intervet’s additive. So, at least as claimed in Intervet’s application, Pharma Chemie was the inventor of the relevant technology.[3] Mr Pieloch was careful to eschew any claim to the specific product which embodied Intervet’s additive, but the claims were very much broader than that.

Intervet argued it was nonetheless entitled to the invention through an assignment in a Manufacturing and Supply Agreement under which Pharma Chemie developed the product. Alternatively, Intervet argued the assignment was implied under the US “hired to invent” doctrine.

Manufacturing and Supply Agreement

Intervet’s main problem with this argument was that it could not produce the agreement. Instead, it relied on evidence of other agreements with Pharma Chemie (after the event and relating to other projects) which did include express assignments and the importance to companies like Intervet of ensuring they had the rights to their products locked down.

Moshinsky J was not persuaded:

a) Mr Pieloch was adamant that Pharma Chemie had already developed the technology the subject of the application before the projects with Intervet and had even applied for a patent over it.

b) In re-examination, Mr Pieloch expressly denied that he had ever signed an assignment in the terms claimed by Intervet over the relevant technology (as opposed to the specific product using Intervet’s additives).

c) In 2003 in correspondence about the PCT application, Pharma Chemie’s lawyers had explicitly denied there was any such term and Intervet had not challenged that denial then or until the present proceedings.

d) If there had been such an express assignment, Intervet would have taken steps to keep it safe and secure and would have asserted it aginst Pharma Chemie when Pharma Chemie’s lawyers denied the assignment as long ago as 2003.

Hired to invent

Intervet next argued that US law implied a term to assign into the agreement by which Pharma Chemie developed the products for Intervet.

As foreign law, whether or not US law would in fact imply such a term was a question of fact to be determined on the evidence. Both Intervet and Merial advanced lawyers’ opinions on this question.

Both parties’ witnesses agreed that, under US law, a court could imply a term requiring an assignment. Intervet’s independent expert’s, a Mr Blackburn’s, evidence was that:

US law generally permits a court to imply a contract term in appropriate circumstances to handle developments and contractual gaps; one application of this principle is the “employed to invent” or “hired to invent” doctrine, which requires or obligates an inventor to assign an invention resulting from the development of a product that it was engaged to perform where the inventor was hired specifically to make the invention; while there is no binding precedent directly on point holding that a non-employee or independent contractor can be employed to invent or hired to invent, the reasoning of Standard Peeks and Dubilier suggest that the substance of the relationship between the parties and how the invention is made is the controlling factor.[4]

Merial’s expert, Mr Kowalski, contended that the case law relied on by Mr Blackburn applied only to the employer-employee relationship and did not extend to agreements with independent contractors.

Moshinsky J accepted that the cases relied on by Intervet dealt only with situations involving the employer-employee relationship, but his Honour was not satisfied that they were necessarily so limited. Moshinsky J had earlier noted that Mr Kowalski was Merial’s lawyer and had been involved in the preparation of Mr Pieloch’s affidavits for Merial. At [48(e)], his Honour considered that Mr Kowalski’s evidence at times appeared to be an exercise in advocacy and therefore generally preferred the evidence of Mr Blackburn where there were differences between them.

Having decided to proceed on the basis “that the “hired to invent” doctrine is capable of application notwithstanding that Pharma Chemie is a corporate entity and independent contractor rather than an employee”, Moshinsky J nonetheless held at [127] that no term to assign should be implied:

…. Mr Blackburn emphasised that what “controls” is the nature of the contractual relationship between the parties and how the invention was made; and that the critical fact is whether the contract specifically required the invention to be made. In the present case, I have found that Pharma Chemie was not engaged by Intervet Inc to develop a soft chew dosage form; it was engaged, rather, to incorporate Intervet Inc’s active ingredients into a formulation, using Pharma Chemie’s soft chew technology (see [89] above). Further, I have found that the Manufacturing and Supply Agreement referred to in Ms Marsh’s letter dated 16 September 2003 related to the development projects referred to in these reasons as the Horse Project and the Dog Project (see [75] above). It appears from the 16 September 2003 letter that the agreement contained (in paragraphs 1.4 and 9.3) express provisions relating to the assignment of intellectual property rights to Intervet Inc subject to prescribed conditions. In light of these express provisions, there is no room to imply a term (in this or any other agreement relating to the Horse Project or the Dog Project) requiring Pharma Chemie to assign to Intervet Inc any invention resulting from the projects. I have also found above that there was no response to the 16 September 2003 letter (see [80] above). If Intervet Inc had had a basis to contend that, contrary to the propositions set out in the letter, it acquired rights to an invention under the Manufacturing and Supply Agreement (or any other agreement) it is likely that it would have responded. This provides further support for the proposition that a term is not to be implied in the Manufacturing and Supply Agreement or any other agreement to the effect that Pharma Chemie was required to assign to Intervet Inc any invention resulting from the projects.

Accordingly, although the “hired to invent” doctrine could apply in principle, it did not apply on the facts.

It is worth contrasting the approach taken by Moshinsky J based on the application of US law to the arrangements between Intervet and Pharma Chemie with that applied in copyright by the Full Court in Enzed Holdings. In Enzed Holdings, the Full Court held that ownership of copyright in an artistic work in Australia fell to be determined according to Australian law. So, even though the artistic work in question was created in New Zealand, it was irrelevant that under New Zealand law ownership vested in the commissioning party not the author.[5] This approach would not have saved Intervet in this case, however, as the reasons Moshinshky J found to reject the “hired to invent” argument should lead to the same conclusion under Australian law.

Merial, Inc. v Intervet International B.V. (No 3) [2017] FCA 21


  1. By the time of the trial, both Mr Huron and Ms Cady worked for competitors of Intervet and gave evidence for Merial.  ?
  2. 16 September 2003 letter from Pharma Chemie’s lawyer to Intervet’s inhouse patent attorney.  ?
  3. Patents Act 1990 s 15.  ?
  4. Referring to Standard Parts Co v Peck, 264 US 52 (1924) and United States v Dubilier Condenser Corp, 289 US 178, 187 (1933).  ?
  5. In contrast to Enzed Holdings, the US 2nd Circuit Court of Appeals applied the law of the place where the work was made to determine entitlement to copyright in the USA in *Itar-Tass v Russian Kurier Inc (1998) 43 IPR 565.  ?

Not “hired to invent” so no entitlement – Merial v Intervet Read More »

Patent application data in Australia

IP Australia has published a report looking at patent backlogs, inventories and pendency. [1]

The Report has been prepared using the same framework used by the USPTO and UK IPO.

Apparently, the number of pending applications peaked in 2009 at 100,000. By 2013, it was down to 90,000. The number of applications being filed has finally recovered to “pre-GFC” levels.

There are 278 pending applications per examiner; the lowest number since 2001. In the USA (which has a much larger number of applications) the number is 169 applications per examiner and, in the UK, 198 per examiner.

There were 26,394 applications filed in 2008. Approximately 52% passed through examination and opposition (if any) to grant. Some 9.4% were still “pending” as at May 2013.

About 20% of applications made in 2008 were the subject of a voluntary request for examination; almost all of the remainder are subject to a direction to request examination.

Almost 20% of all applications lapsed or were withdrawn when the Commissioner directs the applicant to request examination. Almost 15% lapsed or were withdrawn at the first report stage. A further 2% lapsed or were withdrawn after further reports.

950 of the applications made in 2008 (0.36%) have been subject to opposition (to date). Of those, the opposition led to only 68 (0.026%) being rejected or withdrawn.

You can read the Report here.

The UK IPO and USPTO ‘Working draft‘ from last year (pdf) (media release).

Patently-O has been looking at aspects of the US data here, here and here.


  1. Ahmer Iqbal Siddiqui, Report on patent backlogs, inventories and pendency. IP Australia Economic Research Paper 01.  ?

Patent application data in Australia Read More »

Trade mark oppositions (Australia)

Andrew Sykes, a barrister and trade marks attorney, has started a new trade mark resource: Australian Trade Mark Opposition Law.

According to the website:

The purpose of this site is to provide quick, reliable answers to practitioners working with trade mark oppositions and appeals. Therefore the aim is to keep excessive academic discussion to a minimum and make good use of relevant and helpful citation to authorities. ….

The website is a work in progress with additional details and material dealing with further grounds and links to be added. Based on what is up already, however, Andrew has some interesting ideas.

Check it out!

Trade mark oppositions (Australia) Read More »

Q1?

Mr Spagnuolo has been granted “special” leave to appeal to the Full Court from Reeves J’s dismissal of his opposition to Mantra registering Q1 for a range of accommodation, travel and holiday services.

Some background

Q1 is another one of those “iconic” high rise apartment buildings on the Gold Coast. Its 78 levels boast 526 residential apartments, a retail shopping plaza and a resort / conference complex.

In addition to operating the resort/conference part of the building under Q1 RESORT & SPA, Mantra also has arrangements for renting out 193 of the privately owned apartments.

Mr Spagnuolo owns two of the apartments himself and has arrangements to rent out a number of others’ apartments. He operates his rental business under the name Q1 Holidays Gold Coast and also holds the domain name q1holidaysgoldcoast.com.au.

Mantra’s predecessor applied to register 3 trade marks, Nos 1228706, 1228707 and 1228708 for a range of services in classes 36, 39, 35 and 43. (Not sure why they were in three different applications. has there been a change of practice about these things?)

The Registrar’s delegate had upheld Mr Spagnuolo’s opposition, but Reeves J overturned that decision on appeal.

Why?

While a party may appeal to the Court from the Registrar’s decision in an opposition proceedings as a matter of right, there is no automatic right of appeal from the Court’s decision at first instance. Leave is required: s 195(2).  It is fairly unusual for unsuccessful opponents to the registration of a trade mark to get leave to appeal to the Full Court.

One key factor in why Logan J granted leave was the legal point Mr Spagnuolo wants to run: he argues that Q1 is not inherently adapted to distinguish Mantra’s services as other people wanting to rent out their properties in the Q1 building will legitimately want to use Q1 too. That is, Mr Spagnuolo wishes to contend that Q1 is not inherently adapted to distinguish under s 41 because the Q1 building is not owned by one person. As a result of the disparate ownership of the properties comprising the Q1 building, therefore, Q1 may be the name of “a locality”.

According to Logan J and the parties, this question has not been the subject of judicial decision.

Another consideration was that there were conflicting decisions in the Office and at first instance, with the Registrar’s delegate allowing the opposition and Reeves J rejecting it.

After some rumblings about the potential for litigants with deep pockets to oppress those “not as well financially provided”, Logan J also pointed out that the parties had filed extensive evidence in the court proceedings, the benefit of which would be lost if Mr Spagnuolo was not permitted to appeal and was left to start revocation proceedings anew.

Finally, Logan J granted Mr Spagnuolo an extension of time in which to file his application for leave to appeal. Under the “old” Rules, an applicant for leave had 21 days to file the application. Under the new rules (in force since August 2011), however, applications for leave must be filed within 14 days. That wasn’t an obstacle in this case as Mr Spagnuolo’s advisers filed only 1 week late so there wasn’t really any special prejudice Mantra could point to.

Finally, Logan J granted a stay on Reeves J’s direction that the trade marks proceed to registration:

… Mantra IP has only briefly enjoyed the benefits of the judgment. Before then, its applications stood rejected. It was not greatly pressed, on its behalf, that there was any particular commercial harm that it would suffer beyond the obvious one of its position being unclear until there was a final judgment. It seems to me there would be much potential for mischief in the marketplace in the event that there were not a stay.

Spagnuolo v Mantra IP Pty Ltd [2012] FCA 1038

Q1? Read More »

A business method patent (not yet)

RPL applied for an innovation patent of a method entitled ‘Method and System for Automated Collection of Evidence of Skills and Knowledge’.

The applied for innovation relates to a method for people to obtain recognition for their prior learning. Apparently, there are some 35,000 qualifications and 34,000 units in the vocational educational and training sector in Australia. Hence it can be difficult for people to identify a particular qualification which they have qualified for as there is no single point of access to the system. The applied for innovation claimed methods for using technology, particularly the internet, to automate the process of identifying relevant criteria and applying for the relevant recognition.

Claim 1 claimed:

1. A method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard, including the steps of:

  • a computer retrieving via the Internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
  • the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
  • an assessment server presenting the automatically-generated questions via the Internet to a computer of an individual requiring assessment; and
  • receiving from the individual via said individual’s computer a series of responses to the automatically generated questions, the responses including evidence of the individual’s skills, knowledge and/or experience in relation to each of the elements of competency and performance criteria,
  • wherein at least one said response includes the individual specifying one or more files stored on the individual’s computer, which are transferred to the assessment server.
Myall opposed alleging lack of novelty based on prior use. The applicant didn’t even need to file evidence to defend this allegation which failed on the evidence submitted by the opponent.
However, it appears that the delegate hearing the opposition raised the objection that the innovation claimed was not a manner of manufacture (see [62]).
The delegate noted (at [45]) that the Full Federal Court’s decision in Grant had qualified NRDC so that a manner of manufacture required
‘an artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect’
and
A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required.
This had been further explained by the Deputy Commissioner in Invention Pathways:
I do not take [Grant] to suggest that patentability is merely determined on the presence of a physical effect. Rather it clearly must be an effect of such substance or quality that the method considered as a whole is “proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies”.
Accordingly, the Deputy Commissioner considered:
… the “concrete effect or phenomenon or manifestation or transformation” referred to must be one that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way. Consequently while the step of building a house involves a concrete physical effect it is peripheral to the method of acquiring a house and indeed could hardly be said to characterise the subject matter of the method such that it is considered an artificially created state of affairs. I consider the same to apply to a business scheme implemented in some part by computer and do not believe the patentability of such a method can arise solely from the fact that, in a general sense, it is implemented in or with the assistance of a computer or utilises some part a computer or other physical device in a incidental way.
In this case, the delegate considered at [54]:
54. It is clear that the claim relates to gathering information where the internet is used for transmitting and receiving data, and a computer is used for data retrieval, processing, presentation and storage of information in a well known manner. The process of automatically generating questions based on assessable criteria, as stated in the description, includes applying a question template into which the text of the relevant assessable criteria may be merged. In a simple form, a question may be generated from the criteria by prepending the text such as ‘How can you show evidence that’.
and so found at [55]:
55. The claimed invention defines a method for gathering information where the data retrieval, processing and storage of information appear to have no physical effect other than that would arise in the computer with standard software in conventional use. Furthermore, there is no substantial effect or transformation in generating the questions by concatenating text matters. While the internet and the computer facilitate the operation of the claimed method by retrieving, generating and conveying information, they are not central to the purpose of the claimed invention. [So unlike the loyalty card in Welcome-Catuity], the claimed invention simply monopolises a scheme where the internet and the computer are used for mere convenience for operating the scheme.
Accordingly, the delegate rejected the application in that form. However, at [59], the delegate considered there could nonetheless be patentable subject matter:
the description of the opposed patent contemplates generating the questions automatically based upon the identification of particular keywords within the assessable criteria, and upon additional contextual information obtained from Evidence Guides, Range Statements and Employability Skills associated with Qualifications and Units of Competency without requiring human intervention.
and so allowed 60 days for amendments to be brought in (the delegate also flagged a potential fair basing problem for the proposed amendment).
Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48 (link to be provided when available)
Lid dip: Patentology

			

A business method patent (not yet) Read More »