raising the bar

The Raising the Bar bill comes alive

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IPSANZ and patent amendments

One of the interesting sessions at the IPSANZ conference was David Catterns QC and the 2 Gregs talking about amending patent specifications – before and after grant.

I certainly wouldn’t disagree with the view that, all other things being equal, you should amend before litigation rather than during (although how often are all other things equal, especially for patents in multiple jurisdictions). Australian law, at least insofar as it concerns amendments before the Commissioner, however, may be moving closer to the New Zealand situation.

The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 includes in Sch 1 at item 31 an amendment to s 102:

(2D) An amendment of a patent request or a complete specification is not allowable if it is of a kind prescribed by regulations made for the purposes of this section.

For some reason I have a (vague) recollection that this provision may be used to confer on the Commissioner through the Regs a discretion similar to that which the Court has under s 105. I am afraid I have not been able to re-locate wherever it was that I read or heard this.

Does anyone know any better or differently?

It doesn’t seem to be what the EM contemplates as the role for item 31 and one might have thought that there might be scope to expand the regulations made for the purposes of s 104 to effect that goal (if it were intended to be achieved) as it is the “narrowness” of those regulations which leads to the present situation.

One might question the constitutional desirability of putting such ‘substantive’ matters in the Regs rather than expressing them in the Act itself. However, that fight seems, sadly, to have been well and truly lost. In any event, if the introduction of such a discretion in the Commissioner be intended, it would surely be in everyone’s interests to amend the terms of s 104 itself to track the terms of s 105(1) rather than bury it away in the Regs.

IPSANZ and patent amendments Read More »

Raising the bar – some differences between the Exposure draft and the Bill

As noted previously, the Intellectual Property Laws (Raising the Bar) Amendments Bill was introduced earlier this week, following fairly extensive consultations on an exposure draft of the Bill.

Patentology has now looked at some of the differences in the proposed changes to the Patents Act between the exposure draft and the Bill as introduced here. His earlier post looked at the different transitional regime for the new standards for patentability.

Raising the bar – some differences between the Exposure draft and the Bill Read More »

Will unsuccessful opponents be estopped?

As noted previously, the “Raising the Bar” bill aims to change the standard of proof required for acceptance of a patent application and for successful opposition from the prevailing “practically certain” or “clear” standard to a balance of probabilities.

Currently, an unsuccessful opponent is not estopped from bringing revocation proceedings, largely because of the difference in onus applying at the opposition versus revocation stage: Genetics Institute v Kirin-Amgen at [17] and note Clinique at [13] (trade mark). At [17], the Full Court in Kirin-Amgen said:

17       During the hearing there was some discussion as to the possibility of the owner of a patent the grant of which was unsuccessfully opposed, defending a revocation proceeding instituted by the pre-grant opponent by raising an issue estoppel in respect of the findings of fact of the single judge. In the present case, however, the respondent has conceded that no issue estoppel would apply to the findings of fact of Heerey J in any revocation proceeding instituted by the applicant in respect of the patent. In any event, the difference between the issue determined by his Honour in the pre-grant opposition proceeding, and the issue that would arise for determination in any revocation proceeding instituted by the applicant, is in our view sufficient to preclude the operation of issue estoppel principles in that second proceeding. The overriding issue in the pre-grant opposition proceeding before Heerey J was whether it was practically certain that the patent to be granted on the specification would have been invalid on the ground that the content of the specification was not in accordance with the requirements of s 40 of the Patents Act 1952 (Cth) (Genetics Institute Inc v Kirin-Amgen Inc (No 3) (1998) 156 ALR 30 at 39-41). Even if revocation of the patent was subsequently sought by the applicant on the virtually identical ground of non-compliance with subs 40(2) or subs 40(3) of the current Act (see par 138(3)(f) of the Act), the issue for determination by the judge hearing that revocation application would be whether the patent should be revoked for the specification’s non-compliance with subs 40(2) or subs 40(3). The decision of Heerey J that it was not practically certain that the patent should be so revoked would be inconclusive of this issue. Accordingly, there would be no scope for the operation of an issue estoppel in relation to the decision of Heerey J in any post-grant revocation proceeding instituted by the applicant in respect of the current patent. (emphasis supplied)

What the Full Court said in the emphasised passages was obiter as the point was conceded. Given the reason why the Court accepted the concession, however, it may well be that an unsuccessful opponent will be estopped from from bringing revocation proceedings in those cases where the “practically certain” standard no longer applies.

The absence of discovery and, usually, cross-examination and, possibly, the very nature of opposition proceedings may however lead to a contrary conclusion: see the Court of Appeal’s ruling in Special Effects v L’Oreal (commentary by IPkat and Birds), albeit

(a) involving an opposition in the Registry and not the Court; and

(b) recognising the possibility that the revocation proceedings may be stayed as an abuse of process.

The fact the earlier UK proceeding was in the Registry and did not involve discovery or cross-examination could be a highly important point of distinction as cross-examination and, sometimes, discovery do occur when opposition proceedings are appealed to the Court.

When the change takes effect, prospective opponents would still be very well advised to consider carefully whether to oppose, or keep their powder dry, and, if they do oppose, do it properly right from the start. Of course, even under the current standard, a half-hearted opposition can seriously prejudice the outcome of both the opposition and subsequent revocation proceedings.

 

Will unsuccessful opponents be estopped? Read More »

The Raising the Bar Bill

Senator Carr introduced the Intellectual Property Laws (Raising the Bar) Bill 2011 into Parliament today.

Press release

Download the text of the Bill and EM from here (choose your own format).

You will remember that (according to the Press Release) the main objects of the Bill include:

  • raising patent standards to ensure Australian innovators are well placed to take their inventions to the world;
  • increasing penalties for trade mark counterfeiters;
  • improvements to border security measures for goods that infringe copyright and trade marks;
  • providing free access to patented inventions for researchers; and
  • cutting red tape and delays when seeking an IP right.

While there have no doubt been modifications to the text of the Exposure Draft (and Patentology flags a big change to the transitional provisions for the new patentability standards), you can get a very good feel for what the various parts of the Bill are trying to achieve:

in relation to patents from Dr Summerfield’s 8 part series over at Patentology:

  1. Part 1: inventive standard
  2. Part 2: usefulness
  3. Part 3: provisional specifications
  4. Part 4: enablement
  5. Part 5: claims supported by description
  6. Part 6: experimental use
  7. Part 7: miscellanea including standard of proof
  8. Part 8: transitional

Kim Weatherall also commented on a number of aspects, exploring in particular the (proposed) trade mark criminal offences.

You do need to bear in mind that these commentaries were on the text of the Exposure Draft and it was intended that anomalies identified through the Exposure Draft would be corrected in the Bill so, as I have already noted, there will be changes. Nonetheless, these comments should give you a good fell for what was being intended and issues that might be thrown up.

As you will see from the commentaries on the exposure draft, there are a host of issues to be considered. Time doesn’t permit anything but a cursory attempt on a couple of points here:

Item 113 of Sch 6 will replace the current s 41 of the Trade Marks Act (requiring a trade mark to be capable of distinguishing) with a new provision intended to reverse Blount and ensure that there is a presumption that a trade mark is registrable. It does this by requiring the Registrar to be satisfied that the trade mark is not capable of distinguishing before the Registrar can reject the application on this ground.

So clause 41(2) says “A trade mark is taken not to be capable of distinguishing … only if ….”

(Now I look at it, I wonder how long before it will be before someone tries to argue that “taken not to be capable of distinguishing” means something different to (and less than) “is not capable of distinguishing”. Oh well. Surely that one would be dispatched over the fence for six?)

While the Bill does seek to change the standard of proof against patent applications and patent oppositions from the existing “practically certain to fail” or “clear” type standard to the usual “balance of probabilities (see e.g. items 14 and 15 of Sch 1), no such amendment is proposed for trade mark oppositions. Therefore, the current state of uncertainty on this issue will continue (contrast e.g. Hills v Bitek at [43] – [55] to Sports Warehouse v Fry at [26] – [40]) , even though the school of thought favouring the “practically certain” or “clear” standard was imported from the Patents Act.

The bill will also introduce a whole new regime of oppositions to the registration of trade marks.

Item 18 of Sch. 3 will replace s 52 so that there is an obligation to file a Notice of Opposition which the Registrar, not the opponent, will serve on the applicant. Item 19 will introduce a new s 52A. This will require an applicant to file a notice of intention to defend or the application will lapse.

According to the EM, the regulations (when they are promulgated) will include power for the Notice of Opposition to specify the particulars of the grounds of opposition. The EM explains:

Opponents are currently required to state the grounds on which they intend opposing an application when they file their notice of opposition. However, they are not required to set out the particulars of those grounds. Frequently, this means that the opponent sets out all possible grounds, whether or not they have any intention of relying on them. As a result, the trade mark applicant may be faced with a number of grounds to deal with and no indication of which are key to the opposition until late in the opposition proceedings and sometimes not until the hearing

makes it difficult for the applicant to prepare their case. It also increases costs as the applicant is obliged to prepare a case in response to all grounds raised in the statement of grounds, including those on which the opponent may no longer rely.

The amendment addresses this problem by allowing for regulations to be made to require the opponent to file a statement of particulars of the grounds on which they intend to oppose. This will help focus oppositions earlier, reducing costs and unnecessary effort for the applicant.

The EM talks of the regulations conferring a power to require particulars. Whether this will be a discretionary power to be exercised on a case by case basis or an obligation on all opponents will need to await the terms of the regulations themselves. For example, the EM on items 24 and 25 states that opponents will be required to file both statements of grounds and particulars and  the last paragraph of the EM on item 17 states that the particulars will be required to be filed within 1 month of the filing of the Notice of Opposition.

The regulations will also apparently include a power to amend the statement(s) of grounds and particulars. However, the EM on items 24 and 25 states:

The regulations will only permit the opponent to amend the statement of grounds and particulars under tightly controlled circumstances.

The Federal Magistrates Court will get original jurisdiction in matters under the Designs Act and the Trade Marks Act alongside its existing original jurisdiction in copyright and (what used to be called) trade practices matters.

 

 

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