IN BRIEF UPDATE - 01 March 2010 - Monday, March 01, 2010
Kookaburra and iiNet copyright decisions to be appealed
Two recent Federal Court decisions on copyright law, which were both handed down on 4 February 2010, will be appealed to the Full Federal Court.
EMI Songs Australia Pty Ltd has lodged an appeal against Justice Jacobson's decision that a flute riff in the song "Down Under" made famous by Australian band Men At Work, infringed copyright in the children's song "Kookaburra Sits in the Old Gum Tree".
Thirty-four film and music studio companies have also appealed against the ruling of Justice Cowdroy that internet service provider iiNet did not authorise copyright infringement by its users. The Court found that iiNet was aware that some of its users were downloading pirated films and music using the BitTorrent protocol, but its failure to take action to terminate those users' accounts did not constitute authorisation of copyright infringement.
Author: Miriam Zanker, Associate
IN BRIEF UPDATE - 01 March 2010 - Monday, March 01, 2010
Nothing eases for Maltesers on appeal
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174
Mars Australia Pty Ltd ("Mars") took action against Sweet Rewards Pty Ltd ("Sweet Rewards") in the Federal Court of Australia alleging that Sweet Rewards had infringed Mars' trade marks and had engaged in passing off and misleading conduct by distributing a "Malt Balls" product in red and orange jars with a get-up said to be similar to Mars' "Maltesers" chocolate confectionary.
In December 2009, the Full Court of the Federal Court upheld the trial judge's ruling that Sweet Rewards had not infringed the Maltesers trade marks because:
• Sweet Rewards uses the mark "Delfi" as a trade mark to distinguish the "Malt Balls" as goods of Sweet Rewards, not the other elements of the red jar "Malt Balls" label; and
• The distinguishing feature of the Maltesers trade marks is the word "Maltesers" and the "Delfi" trade mark used on Sweet Rewards' red jar "Malt Balls" label is not likely to deceive or cause confusion.
The Full Court also agreed with the trial judge's conclusion that the "Malt Balls" red and orange jar labels did not pass off Sweet Rewards' products as "Maltesers" and no misleading or deceptive representation had been made.
In considering whether a competing mark is deceptively similar to a registered trade mark, it is important to identify the mark that has been used by the competitor as a trade mark, that is, those aspects of packaging or labelling that identify the origin of the competitor's product. Further, the fact that a registered trade mark has attained notoriety may be taken into account in the assessment of deceptive similarity.
This case serves to highlight that to succeed in a passing off and misleading conduct action, it is necessary to establish that the features of a product get-up:
• are distinctive to a particular trader;
• are not commonly used in the trade or merely descriptive or functional; and
• are used as a badge of origin
notwithstanding the presence of other distinguishing product name branding to identify the trade source of the product.
For a full report on this decision, please refer to the March 2010 edition of the Davies Collison Cave eMag.
Author: Joy Atacador, Partner
IN BRIEF UPDATE - 23 February 2010 - Tuesday, February 23, 2010
Life after IceTV: The Federal Court revisits copyright in compilations
Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44
In the wake of the IceTV copyright decision handed down by the High Court last year, a Federal Court judge has considered the copyright in Telstra's White Pages and Yellow Pages telephone directories.
Justice Gordon ruled in the PDC case that Telstra had not established that copyright subsisted in the White Pages and Yellow Pages telephone directories, for three main reasons.
First, the Court held that although many people had contributed to the creation of the telephone directories, many of the "authors" of the directories (within the meaning of the Copyright Act 1968 (Cth)), had not been, or were not able to be, identified.
Second, the Court held that even if the authors could have been identified, much of the work done in creating the telephone directories:
(a) did not constitute "independent intellectual effort" or was not "sufficient effort of a literary nature" by the contributors such that they could be considered to be "authors" of the directories for copyright purposes;
(b) was done prior to the telephone directories taking their "material form", and therefore was not work that could be taken into consideration when determining originality; or
(c) was computer generated, rather than the result of human effort.
Third, the Court held that the creation of the White Pages and Yellow Pages telephone directories did not involve "independent intellectual effort" or the exercise of "sufficient effort of a literary nature", as discussed by the High Court in the IceTV decision. The Judge held that the telephone directories therefore did not constitute "original" works capable of protection under the Copyright Act.
The Judge also distinguished the PDC case from an earlier decision of the Full Federal Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491, which had held that copyright did subsist in various telephone directories. The Judge held that the earlier case differed from the PDC case, as the authorship of the telephone directories had not been challenged by Desktop Marketing Systems.
Author: Miriam Zanker, Associate
IN BRIEF UPDATE - 15 February 2010 - Monday, February 15, 2010
UWA v Gray
The High Court today (Friday 12 February, 2010) dismissed an application for special leave to appeal by the University of Western Australia (UWA) in a matter against former UWA academic Dr Bruce Gray, relating to ownership of patent rights covering the production and use of microspheres for targeted treatment of human tumours. At the heart of matter was the issue of ownership of patent rights by employees not bound by a specific duty to invent within their employment contracts. The facts of the case were not contested and the High Court justices hearing the application considered that there was no error in the judgement at first instance by Justice French (who is now the Chief Justice of the High Court) and whose decision was affirmed by the Full Federal Court 9[2009] FCAFC 116 (3 September 2009). This decision may have consequences not just for other universities but also for companies and organisations involved in research and development where the employment or research contracts in place do not specifically outline that a researcher is employed to invent, rather than simply to conduct research.
CHANGES TO AUSTRALIAN GRANTS SCHEMES - Wednesday, February 10, 2010
The grants available under the COMET Grant Scheme ended on 31 December, 2009 and were superseded by "Proof of Concept Grants" from 4 January, 2010. The new scheme is said to be a simpler form of assistance to companies seeking to take their ideas to market.
A Proof of Concept Grant provides funding of between $50,000 and $250,000 over a 12 months period to fund expenditure incurred to establish the commercial viability of a new product, process or service. The applicant is required to match the funding provided by the Grant on a 50:50 basis.
The types of expenditure which are eligible are labour expenditure, contract expenditure, plant expenditure, prototype expenditure and intellectual property protection expenditure. Applications for the Grant are made to Commercialisation Australia and further information is available from the website at www.commercialisationaustralia.gov.au.
Importantly, projects which predominantly consist of early stage investigation and conceptual development will not be eligible for the Grant.
Interview on ABC Radio - Trevor Stevens - Monday, February 08, 2010
ABC Radio aired an interview with Trevor Stevens, Partner of Davies Collison Cave regarding trade mark issues and recent developments during 2009, particularly with respect to colours, shapes and design trade marks. Please click here to read/listen to the full interview.
Please click here.
IN BRIEF UPDATE - 4 February 2010 - ISP Wins against Motion Picture Studios - Thursday, February 04, 2010
Roadshow Films Pty Ltd –v- iiNet Limited (No. 3) [2010] FCA 24
In a landmark decision, which has been closely watched around the world, Australia's third largest ISP, iiNet, has succeeded against the major motion picture studios in the US and Australia. The studios argued that by not acting on infringement notifications and allowing the ISP's users to continue to use BitTorrent to download the studios' copyright works, the ISP was authorising infringement by the users and therefore liable under the Australian Copyright Act.
The Court found that the users did infringe the studios' copyright using BitTorrent, and iiNet did not act to stop them. Yet, under the law of authorisation, the Court felt that there was a clear distinction between infringers, such as in the Court's Kazaa decision, who provided the "means" of infringement, as opposed to establishing some precondition for the infringement to occur. In this instance, the ISP had not provided the "means" of infringement, which was the BitTorrent system, and all it provided was access to the Internet which can be used for a wide variety of purposes. The ISP had no control over the BitTorrent system and was not responsible for the operation of it. It was also felt that adopting a notification, suspension and termination of customer accounts scheme would not give the ISP power to prevent copyright infringement itself or that it would be a reasonable step to pursue. The rationale for this conclusion derives from the technical complexities associated with determining infringement and the contractual relationship between the ISP and its users.
The ISP was found not to sanction, approve or countenance copyright infringement because it had done no more than provide an Internet service to its users.
In view of the Court's findings on authorisation it was not necessary for it to consider whether iiNet could rely on the "safe harbour" provisions to avoid infringement. Yet it found iiNet did have a repeat infringement policy, which would have allowed it to rely on the provisions to limit the orders the Court could make.
The Court said the law precludes authorisation of infringement, but does not impose a positive obligation on any person to protect the copyright of another.
The decision is a significant blow for the studios who are trying to bring about a change in the behaviour of Internet users. It is impractical for the studios to take action against all of the infringing users, and BitTorrent was developed for distributing large software files, not media files. The studios may appeal the decision to continue a campaign to make ISPs responsible for the actions of their customers.
The decision is available at: http://www.austlii.edu.au/au/cases/cth/FCA/2010/24.html
Author: David Webber, Partner
IN BRIEF UPDATE - 11 January 2010 - Monday, January 11, 2010
Austin, Nichols & Co Inc v Lodestar Anstalt [2009] FCA 1228 23 October 2009
The Federal Court recently made an Order for Security for payment of costs against Austin, Nichols & Co Inc (“Austin Nichols”), which is ordinarily resident outside the jurisdiction. Austin Nichols attempted to defend the Application for Security for Costs by relying upon a valuable portfolio of several Australian trade mark registrations for WILD TURKEY in relation to whiskey products.
However, it was held by the Court that such assets did not constitute readily realisable assets. The Judge commented that while a receiver may eventually be able to sell the trade marks, the course of doing so might well be fraught with considerable difficulty and delay. On this basis, an Order for Security for Costs was made.
Author: Fiona Brittain, Associate
IN BRIEF UPDATE - 11 January 2010 - Monday, January 11, 2010
Food Channel Network Pty Ltd – v- Television Food Network, G.P [2009] FCA 1445
In a recent Federal Court decision the Court had to consider the circumstances in which leave to appeal to the Full Federal Court would be granted to Food Channel Network Pty Ltd.
The Court applied a two step test in relation to the issue of whether leave to appeal should be granted, as follows:
a) Whether there is sufficient doubt to warrant reconsideration of the matter by a Full Court; and
b) Whether the denial of an opportunity to appeal would involve a substantial injustice supposing the decision of the primary Judge to have been wrong.
The sufficiency of the doubt and the extent of potential injustice involved must be balanced against each other.
In relation to paragraph (a), the Judge found that there was sufficient doubt in relation to the primary Judge’s decision to disallow the Applicant’s reliance at the hearing upon additional affidavit material, which related to ownership and use of the opposed FOOD CHANNEL trade mark. The additional affidavit had been prepared very shortly before the trial after Food Channel appointed lawyers to represent it at the hearing.
The Judge stated:
“Finally, I have doubts whether a sufficient (or any) allowance was made to accommodate the fact that, until the last minute before the trial, Channel was, in effect, a self-represented litigant.”
In addition, there was sufficient doubt in relation to the primary Judge’s assessment of whether the opposed FOOD CHANNEL trade mark was deceptively similar to earlier FOOD NETWORK trade marks owned by the Respondent Television Food Network, G.P.
In relation to paragraph (b), if leave was not granted, the trade mark application would be at an end as the opposition would be upheld. Therefore, the substantive rights would have been finally determined.
It was held that a small amount of doubt about the primary Judge’s decision would be sufficient given the substantial injustice that Food Channel would suffer if leave was refused.
On the basis of the foregoing, the Federal Court granted leave to Food Channel Network Pty Ltd to appeal the primary Judge’s decision delivered on 27 March 2009.
Author: Fiona Brittain, Associate
Commercialisation Australia – are you eligible for funding? - Wednesday, December 23, 2009
Commercialisation Australia is a new initiative designed to take “a radically different approach to commercialising Australian research and ideas”. The initiative is delivered by the Department of Innovation, Industry, Science and Research and is now the primary source of Australian Government assistance for commercialisation.
The scheme is a merit based, competitive program that provides assistance in four different areas. Successful applicants are assigned a Case Manager and have access to Volunteer Business Mentors.
IN BRIEF UPDATE - 21 December 2009 - Monday, December 21, 2009
THE GOOD, THE BAD AND THE UGG-LY
Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298
The dispute over liability for the sale of sheepskin boots featuring the "UGG" brand reached its final conclusion on 13 November 2009 when Justice Tracey handed down his decision on the last-remaining issues of copyright infringement, passing off and misleading and deceptive conduct in Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298. There had been a total of 23 respondents to the proceeding but a series of settlements and summary judgments had left Deckers Outdoor Corporation Inc to advance its claims only against Hepbourne Pty Ltd.
Justice Tracey held that copyright subsisted in Deckers' "UGG Logo" and its "sun device" and held that Hepbourne had both infringed and authorised the infringement of those copyright works on its "UGG" branded boots. His Honour also found that, based on Deckers' well-established reputation in the UGG brand, Hepbourne had engaged in passing off and misleading and deceptive conduct under ss52 and 53 of the Trade Practice Act 1974 (Cth) (the TPA). Compensatory damages were assessed at $3,000,000 and Justice Tracey ordered Hepbourne to pay $3,500,000 in additional damages for infringing conduct described as "one of the worst of its kind to come before the Court".
Cont...
Serengeti E-Billing Certification - Friday, December 18, 2009
Davies Collison Cave is a Serengeti certified e-billing enabled law firm. Davies Collison Cave has successfully submitted electronic invoices through Serengeti e-billing. The certification label communicates the following:
The certified firm has configured their time and billing software to produce electronic invoices. The additional LEDES 1998B certification indicates that the firm is able to produce LEDES compliant invoices.
The certified firm is actively submitting electronic invoices to one or more clients through the Serengeti system.
IN BRIEF UPDATE - 15 December 2009 - Tuesday, December 15, 2009
A Pensive Woman – Novel Claims Brought in the Supreme Court of Victoria over Claims of "Fake Art"
Blackman & Dickerson v Gant Supreme Court of Victoria Action No. 9785 of 2008
Novel claims
Three artworks are at the centre of Supreme Court proceedings that raise questions of whether the Fair Trading Act 1999 (Vic) will extend to claims that valuations and sales of "fake artworks" constitute misleading or deceptive conduct in the course of trade or commerce.
Background
In late 2008 the artists Charles Blackman and Robert Dickerson commenced proceedings for permanent injunctions preventing the owners of two Melbourne art galleries, Gretz Gallery and Peter Gant Fine Art, from selling what the artists claim are fake artworks attributed to them. The works are signed with the names of the artists and, it is claimed, were held out by the gallery owners (impliedly or otherwise) as authentic works. The artists claim the works are "fakes" and seek orders for the delivery up of the works for destruction and damages.
The artists contend that Peter Gant (the owner of Peter Gant Fine Art in Carlton) valued and sold an art work named Street Scene with Schoolgirl as a work of Blackman, although it was not created or signed by the artist. The buyer of that work returned it to Gant who refunded its purchase price after an expert viewed the work and suggested that it was not authentic. It is claimed that Gant subsequently supplied and valued the same work together with a second contentious work named Three Schoolgirls as works of Blackman to Gretz Gallery in Albert Park, owned by Helen Stewart. The Gretz Gallery then sold the two "Blackmans" on to Robert Blanche on behalf of Baymanta Pty Ltd ("Baymanta").
Gant allegedly sold another work named Pensive Woman directly to Mr Blanche on behalf of Baymanta. Valuations of the work were also provided by Gant as part of this transaction. The artists claim this work was held out to that of Robert Dickerson, when it was not made or signed by the artist. In 2008 Mr Blanche showed the works to the expert who had first questioned the provenance of Street Scene with Schoolgirl. He gave an opinion that the two "Blackmans" were not by the artist, and referred Blanche to Stephen Nall, an expert on the works of Dickerson, concerning the authenticity of Pensive Woman. The expert opinion was that Pensive Woman was not a work of Dickerson.
Status of proceedings and legal issues
Proceedings were commenced in November 2008. Since then the artists have settled out of court with the First Defendant, Helen Stewart of Gretz Gallery, on undisclosed terms. The matter remains on foot against Gant after the parties attempted, unsuccessfully, to resolve the dispute by mediation earlier this year.
Two categories of representations made by Gant are claimed to be "misleading or deceptive" for the purposes of s 9 of the Fair Trading 1999 (Vic). Firstly, the provision of the valuations of the artworks by Gant which the artists claim impliedly represented that each of the artworks were authentic and not fake works. This raises questions of whether the valuations in particular were "misleading" or made in the "course of trade or commerce" for the purposes of the consumer protection provisions. There are property valuation cases that may be useful comparative authorities on this point.
Secondly, that Gant made an implied representation that the "fake Dickerson" was authentic by selling the Pensive Woman to Mr Blanche on behalf of Baymanta. For this claim to be successful the artists will need to demonstrate that the sale of Pensive Woman carries the implied representation that the work was in fact authentic. The artists will place reliance upon expert opinion evidence to establish the works as "fake".
A similar situation was considered by the Federal Court in The Saints Gallery Pty Ltd v Plummer (1988) 80 ALR 525 in a claim run under s 52 of the Trade Practices Act 1974 (Cth). In that case Saints Gallery sold work works on consignment to Plummer, who had previously valued and authenticated works on occasion for the Gallery. The Saints Gallery relayed to Plummer anecdotal provenances for the four paintings before purchase, as told to the Gallery by the consignor. On appeal it was determined that the Saints Gallery had not engaged in misleading or deceptive conduct. Important to this finding was that the Court found (1) there was no basis to conclude that the Saints Gallery had any positive knowledge of the provenance of the works other than that related to Plummer; (2) it was apparent that the Saints Gallery was not the source of the information on provenance; (3) it disclaimed any belief in the truth or falsity of the works' "histories", merely passing it on for what it was worth; (4) Plummer placed no reliance on the Gallery owner's ability to judge the authenticity of the paintings.
A trial date for Blackman & Dickerson v Gant has been scheduled for late March, 2010.
For further information please contact:
Rodney De Boos (Partner) or Sally Wilson (Lawyer) on +61 3 9254 2777
IN BRIEF UPDATE - 10 December 2009 - Thursday, December 10, 2009
Internet Industry Association refused leave to participate in the iiNet copyright case.
Roadshow Films Pty Ltd v iiNet Limited (No. 2) [2009] FCA 1391
The Internet Industry Association ("the IIA") was recently unsuccessful in its application to participate in the copyright infringement case brought against internet service provider iiNet by Roadshow Films and various other members of the film industry.
The IIA is not a named party in the court proceedings, but sought leave to intervene because this was the first Australian case to consider the internet safe harbour provisions in the Copyright Act. Those provisions are designed to protect carriage service providers in circumstances where their customers have engaged in copyright infringement, such as by downloading illegal copies of films or music.
The IIA told the Federal Court that, as Australia's national representative of the internet industry, it could provide "unique assistance" to the Court, and could offer a broader perspective on the various policy issues surrounding the application of the safe harbour provisions.
In refusing the IIA's application, Justice Cowdroy noted that iiNet had already raised the issues that the IIA intended to raise in the case. Accordingly, His Honour held that there was no new material that IIA could bring to the Court's attention which would assist in the determination of the issues.
The case has now been adjourned after almost five weeks of hearings, and Justice Cowdroy has reserved his decision.
Miriam Zanker, Associate
IN BRIEF UPDATE - 9 December 2009 - Wednesday, December 09, 2009
THE GOOD, THE BAD AND THE UGG-LY
Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298
The dispute over liability for the sale of sheepskin boots featuring the "UGG" brand reached its final conclusion on 13 November 2009 when Justice Tracey handed down his decision on the last-remaining issues of copyright infringement, passing off and misleading and deceptive conduct in Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298. There had been a total of 23 respondents to the proceeding but a series of settlements and summary judgments had left Deckers Outdoor Corporation Inc to advance its claims only against Hepbourne Pty Ltd.
Justice Tracey held that copyright subsisted in Deckers' "UGG Logo" and its "sun device" and held that Hepbourne had both infringed and authorised the infringement of those copyright works on its "UGG" branded boots. His Honour also found that, based on Deckers' well-established reputation in the UGG brand, Hepbourne had engaged in passing off and misleading and deceptive conduct under ss52 and 53 of the Trade Practice Act 1974 (Cth) (the TPA). Compensatory damages were assessed at $3,000,000 and Justice Tracey ordered Hepbourne to pay $3,500,000 in additional damages for infringing conduct described as "one of the worst of its kind to come before the Court".
For a full report on this decision, please refer to the next edition of the Davies Collison Cave eMag.
Authors: Penny Smith, Lawyer and Ian Pascarl, Partner
e-patents - December 2009 - Tuesday, December 01, 2009
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
IN BRIEF UPDATE - 27 October 2009 - Tuesday, October 27, 2009
Commercialisation Australia Initiative.
On 21 October 2009 the Government unveiled details of the $196 million Commercialisation Australia initiative designed to fill the gap left from the axing of the Commercial Ready Scheme in 2008. Commercialisation Australia will begin operating in 2010 and involves a multi-tiered approach to assist inventors, innovative firms, researchers and entrepreneurs to rework their ideas into successful commercial projects. Participants will receive specialist advice and services from CEOs and industry mentors and successful applicants will be awarded up to $250,000 for proof of concept activities and repayable funding of up to $2 million for early stage development and commercialisation activities.
Senator Kim Carr, Minister for Innovation, Industry, Science and research said:
“The radical new program for commercialising research will take a completely new approach to innovation assistance. It will tailor assistance to applicants’ needs, not fit the applicant to the program”
“Commercialisation Australia is specifically designed to boost early stage commercialisation by leveraging private sector capital and expertise”
Senator Carr also called for expressions of interest for board membership of CA, volunteer mentors and case managers.
The CA program affords some relief to struggling inventors, innovative firms, researchers and entrepreneurs but the $196.1 million over four years and $86 million each year thereafter falls well short of the funding allocated for the program’s predecessor Commercial Ready with its budget of $1 billion.
Author: Kimberley Trainor, Associate
IN BRIEF UPDATE - 23 October 2009 - Friday, October 23, 2009
China's Disclosure of Origin law.
On 1 October 2009 China amended its patent law to require the disclosure of the origin of a genetic resource used in an invention for which patent protection is sought. Similar provisions are already in force in Bolivia, Colombia, Ecuador, Peru, Belgium, Brazil, Costa Rica, Denmark, Egypt, India, Norway, South Africa, Sweden, and Switzerland. One goal of these provisions is to ensure that the providing country obtains some of the benefits from products developed using resources obtained within its borders.
China is a country with abundant genetic resources and victim to a drain of genetic resources by biopiracy. For example, genetic materials from wild soybeans, Chinese gooseberry and even the famous Beijing duck have been taken away to develop hybrids which are patented then imported back into China.
Aiming to protect Chinese genetic resources, amendments to Article 5 and Article 26 of Chinese patent law regulate the use of genetic resources in a patent. Under the amended Article 5, if the acquisition or use of genetic resources violates relevant laws and regulations of China, then no patent will be granted for any invention that relies upon such genetic resources. Amended Article 26 further requires that, for an invention that relies on such genetic resources, an applicant must disclose in the patent application the direct and the original source of such genetic resources, and if the applicant cannot identify these, he or she must specify reasons for the failure to do so. Failure to comply with such disclosure requirements could result in the denial or invalidation of a patent.
For now, the practical implications of the amended law are that an applicant must fill in and submit a form prepared by China's State Intellectual Property Office (SIPO), named "Form for disclosure of the source of genetic resources", to indicate the source of the genetic resource. If the applicant cannot indicate the source, he or she must state why not.
Author: Anne Hendtlass, Associate
IN BRIEF UPDATE - 21 October 2009 - Wednesday, October 21, 2009
A mere collocation? - Smith & Nephew Pty Ltd. v. Wake Forest University Health Sciences
In the recent decision of Smith & Nephew Pty Ltd. v. Wake Forest University Health Sciences [2009] FCAFC 142 (9 October 2009), the Full Federal Court has delivered what is likely to be a controversial judgement in relation to a "combination patent". The case was an appeal by Smith & Nephew against a decision of a single judge to grant an injunction preventing them from entering the negative pressure wound therapy market.
The case involved a claim directed to an apparatus for applying negative pressure to a wound beneath a fluid-impermeable seal, wherein the apparatus is present in an aseptic package. It was agreed by the parties that with the exception of the aseptic package, all of the integers of the apparatus interacted to form a new product and result. However, because the apparatus and the aseptic bag were determined not to interact to bring about the new result (i.e. the application of negative wound pressure), the Court stated that "...they form a mere collocation of the apparatus on the one hand and the aseptic package on the other". On this basis, claim 49 was deemed invalid because it fails to define a patentable combination.
In arriving at its decision, the Court stated that the primary judge erred in not considering the question of whether the claim was a mere collocation separately from the question of whether the claim was novel. The Court's determination that the claim was a mere collocation was therefore reached without any apparent consideration of novelty. In the circumstances of the present case this approach appears questionable because if the apparatus itself was novel, then it follows that the apparatus and the aseptic package together cannot be a mere collocation, because the combination of the apparatus and the aseptic bag includes a novel feature. In this regard, it is well established law that where a claim comprises a number of integers, at least one of which is novel, the absence of a working interrelationship between the integers does not render the claim invalid.
This decision potentially has negative implications for patent claims which include one or more essential integers that do not interact with other integers of the claim to bring about a new product or result.
We will eagerly await the approach taken by the single judge in assessing whether the claim is a "mere collocation" when the case goes to trial next year.
Author: Nigel Lokan, Associate
IN BRIEF UPDATE - 16 September 2009 - Wednesday, September 16, 2009
IP Australia Encourages Rapid Examination of "Green Patent Applications".
On 15 September 2009 IP Australia released a public statement announcing it would be taking action to assist innovators with green technologies to fast track their patent applications through the Australian patent examination process. This initiative is intended to contribute to reducing the time to market for green technologies.
Expedited examination of Australian patent applications is already available where rapid examination is in the public interest or where special circumstances make rapid examination desirable. A request for expedited examination must be in writing and must include reasons why the particular patent application should examined ahead of its turn. Reasons currently accepted by IP Australia as justifying a request for expedited examination include an explanation that commercial dealings (such as the grant of a licence in relation to technology covered by the patent application) depend upon the early grant of a patent.
Following this announcement the simple statement that a patent application relates to a field of green technology will constitute a suitable reason in support of a request for expedited examination. Applicants of Australian patent applications covering green technologies (likely to be interpreted quite broadly) should give consideration to requesting expedited examination where there is a commercial motivation to do so. After filing a request for expedited examination an applicant can expect to receive a first examination report within a matter of two to four months.
Authors:
Kathryn Morris, Partner
Mark Roberts, Partner
IN BRIEF UPDATE - 7 September 2009 - Monday, September 07, 2009
Duty to Research Does Not Amount to a Duty to Invent.
The Australian Full Federal Court has upheld the first instance decision of Justice French in University of Western Australia v Gray 9[2009] FCAFC 116 (3 September 2009)). This complex case resulted from the claim by the University of Western Australia (UWA) that it had proprietary rights in relation to three families of patents invented wholly or in part by Dr Bruce Gray (Dr Gray), which relate to the production and use of microspheres for targeted treatment of human tumours. The patents were subsequently transferred to a company now known as Sirtex Medical Ltd. in exchange for shares in the company, reportedly valued at A$60-90 million. It was UWA’s position that Dr Gray conducted the work leading to the inventions while he was employed by UWA as its Professor of Surgery. Under the terms of his employment contract Dr Gray was required to teach and to undertake research in his field. He was also required to comply with obligations under the University’s statues.
In a single judgment Full Court Justices Lindgren, Finn and Bennett agreed with Justice French that the duty to research in Dr Gray’s employment contract did not give rise to an implied duty to invent, even though the nature of Dr Gray’s research was such that inventions could quite likely result. In making this decision the Full Court noted the distinction between ownership of employee inventions in the University context, in contrast to that in the private sector. Supporting factors in reaching the decision were that Dr Gray was not under a duty to invent anything, he had the freedom to choose the direction of his research, he was not under an obligation of secrecy and was free to publish (even to the detriment of potential patent applications), he was dependent upon significant sources of external funding to support his research and was reliant upon collaborations with researchers in other institutions.
The Full Court also agreed with the primary judge’s finding that the obligations of the UWA Patent Regulations (which relevantly required University academics to notify it of inventions, thus allowing the University the opportunity to exercise its rights in relation to an invention) could not be imported into Dr Gray’s employment contract because UWA had failed to maintain the patent committee that was an essential part of UWA’s obligations under the Regulations. Although not a matter in dispute in the appeal the Full Court referred to Justice French’s finding that even if the Patent Regulations were in force they could not have validly caused appropriation of property that did not belong to UWA; only by express contractual terms could intellectual property rights be acquired.
In light of this decision, and although there is a prospect that leave to appeal to the High Court in this matter may be sought, Australian Universities and other research institutions will have grave concerns regarding the ownership of intellectual property invented by employees not bound by a specific duty to invent within their employment contracts or where assignments of intellectual property rights have not been made. However, a more fundamental question remains – can a researcher realistically be bound by a duty to invent? While inventions may reasonably be expected to arise from research, it does not necessarily follow that researchers can be expected to make inventions?
Author: Mark Roberts, Partner
The Importance of Good Laboratory Notebook Practice - Tuesday, May 19, 2009
Poor laboratory notebook documentation could cost you! Your laboratory notebooks can be critical in establishing your rights to an invention.
Reproduced with permission from the Royal Australian Chemical Institute www.raci.org.au.
Senator Kim Carr, Minister for Innovation, Industry, Science and Research announced a new Chair to ACIP - Tuesday, December 23, 2008
On 22 December, Senator Kim Carr, Minister for Innovation, Industry, Science and Research announced a new Chair and four new appointments to the Advisory Council on Intellectual Property (ACIP). The new council chair, Mr Leon Allen is a partner of the patent and trade mark firm Davies Collison Cave, and vice president of The Institute of Patent and Trade Mark Attorneys of Australia.
Venturing into the unknown - Monday, November 24, 2008
The Minister for Innovation, Senator Kim Carr recently released a report entitled “venturousaustralia – a Report on the Review of the National Innovation System”. Three recommendations in the report have a potential significant impact on Australian Intellectual Property law.
e-patents - June 2008 - Tuesday, June 10, 2008
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Design/Copyright update - June 2007 - Thursday, June 07, 2007
Designers are encouraged to protect the appearance of new products by registration under the Designs Act rather than by reliance on underlying copyright which will subsist in most cases. This results from the legislative framework of the Copyright Act which limits the applicability of copyright when products have been produced in quantity (industrial application of the design). The part of the Copyright Act by which this regime is put in place (Part III, Div VIII) is quite complex and has given rise to a number of difficulties in interpretation. Exemptions from copyright infringement arise when the design is the subject of a design registration or, if not registered, by the industrial application and sale of products in accordance with the design. However in the latter case, an exception arises when the copyright work is a work of artistic craftsmanship.
e-patents - June 2007 - Thursday, June 07, 2007
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
World Trademark Review - Key aspects of trademark enforcement in Australia - Thursday, March 29, 2007
Many countries have similar systems for the registration and enforcement of trademarks. However, there will inevitably be differences, often borne out of the different jurisprudential bases on which these systems are based.
This article looks at trademark enforcement in Australia and highlights some aspects of the Australian legislation which differ from the US system. It also examines the main border protection methods available in Australia to trademark owners.
To contuine reading please click on the attached pdf.
Filing Design Applications in Australia - Friday, March 09, 2007
There are no forms in Australia that require the applicant’s signature at the time of filing. No Power of Attorney is necessary, however a number of documents and particulars are required to process an application.
Changes to IP Australia's Fees - Friday, March 09, 2007
Changes to IP Australia’s fees and costs under the Designs, Patents, Plant Breeder's Rights and Trade Marks Acts came into effect on 1 March 2007.
Pharmaceutical Extensions: A listing in the ARTG is an inclusion - Friday, March 09, 2007
The Full Federal Court has affirmed the previous findings of the Commissioner of Patents and a single judge of the Federal Court that, where no pre-TGA marketing approval was given, an export listing in the Australian Register of Therapeutic Goods (ARTG), prior to registration to permit marketing in Australia, is to be considered as the first inclusion in the ARTG for the purpose of determining the first regulatory approval date in calculating a patent extension term.
e-patents - February 2007 - Friday, February 09, 2007
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Swiss-style use claims vs method of treatment claims - Friday, November 24, 2006
A recent patent office decision has held that addition of “method of treatment” claims to a specification that has “Swiss-style use” claims is not an allowable amendment after acceptance of the application.
Pharmaceutical Extensions - Monday, September 18, 2006
The topic of pharmaceutical patent term extensions has again recently been the subject of consideration before the Patent Office and the Federal Court. In two separate proceedings, the issue of whether the Commissioner is entitled to amend the Register to reflect a new (shorter) extension period was considered by the Federal Court.
Assessing Sufficiency: A Temporal Problem - Monday, September 18, 2006
The Patents Act 1990 (Cth) requires that a specification fully describe the invention, including the best method known to the applicant for performing the invention. However, the Act is silent on the actual date at which the specification is to be considered for compliance with these requirements.
e - patents August 2006 - Wednesday, August 09, 2006
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Business Method Patents in Australia - Tuesday, August 08, 2006
The Australian Full Federal Court has recently clarified the extent to which business methods can be patented in Australia. A business method will be patentable provided it involves a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation. It cannot be a mere scheme, abstract idea or mere intellectual information. The court also made it clear that an invention did not have to be within an area of science or technology to be patentable.
Time for a change to Australian Intellectual Property Laws? - Tuesday, May 09, 2006
On 30 March, 2006 the Intellectual Property Laws Amendment Bill 2006 (Cth) (“the Bill”) was introduced into the House of Representatives. The Bill proposes to make some significant amendments to the Patents Act 1990 (including amendments to clarify the prior use defence, to add another ground upon which a compulsory licence may be sought, to allow the award of exemplary damages and which affect the ability to “springboard” on pharmaceutical patents), and to the Trade Marks Act 1995 (including amendments which affect the revocation of trade mark rights and access to trade mark documents filed with the Trade Marks Office).
Freeze dried generics frozen in their extended tracks - Tuesday, May 09, 2006
In February 2006 in an article titled “Freeze-dried generics frozen in their tracks”, we reported on two separate Federal Court decisions relating to a patent owned by Pharmacia Italia S.p.A. (Pharmacia). In those decisions, the court found infringement by Mayne Pharma Pty Ltd (Mayne) and granted an injunction against Interpharma Pty Ltd (Interpharma).
e-patents May 2006 - Wednesday, April 26, 2006
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
