Infringement of copyright - damages

In Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) [2008] FCA 746, the Court awarded only nominal damages of $10 pursuant to s115(2) of the Copyright Act 1968, having regard to the failure of the Applicant to show any economic loss flowing from the Respondent's infringement of copyright. However, after noting that the flagrancy of the infringing conduct is a factor to be considered but not a precondition of an award of additional damages under s115(4), the Court found that in this case the infringement was flagrant. Having regard to that finding and other circumstances of the case, the Court awarded additional damages of $10,000. The decision is here.

False suggestion in specification

The most significant aspect of the recent Full Federal Court decision in Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC [2008] FCAFC 82 is the discussion of false suggestion and in particular, representations made in both the specification itself and during prosecution. In this case, the patentee was found to have made representations that the activity of a particular enantiomer compared to the racemate was "surprising and unexpected" and included data in the patent suggesting a tenfold increase in activity to support that representation. It was held that based on all the data available to the patentee, the increase in activity was only twofold.

In paragraph 99 the court states:

"While an applicant for a patent is not under an obligation to include all available data, where specific material is included, that material, if unqualified, should be representative of the available data."

The decision is here.

Colorado trade mark leave to appeal refused

On Friday 23 May 2008, the High Court rejected an application for leave to appeal the decision of the Full Federal Court in Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184. A review of this case appeared on page 6 of Phillips Ormonde & Fitzpatrick's March 2008 newsletter, available here.

While leave was not granted, the Court suggested that there may be some uncertainty about the correctness of the Full Court's approach to s 41(5). The applicant argued that the "other circumstances" refered to in s 41(5)(a)(iii) do not include use of the mark by other traders which would only be relevant under s 60.

The transcript is here.

A note of caution about expert witnesses

On 12 May 2008, Tambelin J of the Federal Court handed down a decision in Esco Corporation v PAC Mining Pty Ltd [2008] FCA 640. Amongst other findings, his Honour gave significantly reduced weight to the evidence of the expert witness put forward by the respondent on the question of obviousness on the basis that he had been provided with a copy of the patent in suit prior to giving his evidence. At paragraph 83, his Honour commented that:
"a posteriori reasoning, which starts with an understanding of the solution to a given problem and then seeks to draw a conclusion as to how obvious it was to reach that solution, has been correctly criticised by the Courts. Where both the problem and the solution are put before a person from the outset, it becomes a simpler task to reason backwards from solution to problem, which may lead that person to draw an incorrect or flawed conclusion as to obviousness of the solution."

High Court rejects leave to appeal in patent case

On Friday 16 May 2008, the High Court rejected DuPont's application for special leave seeking to appeal a finding of the Full Federal Court that ICI was not estopped from defending patent opposition proceedings brought by DuPont. The opposed patent was a divisional application, the parent of which had previously been held invalid by Branson J of the Federal Court. The transcript is here.

WIPO nominates Australian as next Director General

Dr Francis Gurry has been nominated by WIPO's Coordination Committee to be the WIPO's next Director General. Dr Gurry is an Australian national, who studied law and commenced practice here before joining WIPO in 1985. The General Assembly needs to formally appoint him at it's next meeting in September.

The WIPO announcement is here.

IPONZ streamlines patent applications acceptance process

From 1 June 2008, IPONZ will be streamlining the patent applications acceptance process.

The current acceptance process includes an examiner issuing an examination report indicating that the application is in order for acceptance and then a Notice of Acceptance is issued by IPONZ some time thereafter. In the new process, the examiner will issue the Notice of Acceptance when an application is considered by the examiner to be in order for acceptance. There will no longer be a separate examination report and Notice of Acceptance issued by IPONZ.

The new process will be applied to all patent applications where a response to an examination report places the application in order for acceptance and where a response is received by IPONZ on or after 1 June 2008.

Where an applicant has requested that acceptance of an application be delayed under s20(1), then acceptance will be delayed as requested.

Where an application is in order for acceptance at first examination, then an examination report will be issued providing the applicant with one month to file voluntary amendments or attend to filing of any divisional applications before the application is accepted.

Restoration of priority claims for PCT applications

The Patent Cooperation Treaty (PCT) Rules have been amended to allow Member States acting as a Receiving Office or as a Designated Office to provide restoration of a priority claim up to two months beyond the 12 month Paris Convention deadline for international patent applications filed on or after 1 April 2007. Under the amended rules two grounds are available for filing of requests for restoration of priority i.e. that the international application was not filed within the 12 month convention period either in spite of “due care” required by the circumstances having been taken, or that the failure to file in time was “unintentional”.

IPONZ has advised that it will only allow restorations of priority on the condition of “due care” having been exercised. That is IPONZ will not allow the priority to be restored under the ground of “unintentional” failure to file. In applying the “due care” requirement, the provisions of section 93A of the Patents Act 1953 will apply.

New Practice – contrary to morality objections

IPONZ has reviewed its practice with regard to raising objections under s17(1) of the Patents Act 1953.

Following this review, IPONZ will continue to raise objections under s17(1) where it appears that the use of the invention would be contrary to morality for New Zealand society as a whole or for a significant section of the community, including Maori.

As a general guide, claims to the following subject matter are likely to attract an objection under s17(1):
human beings;
processes which give rise to human beings and biological processes for their production;
methods of cloning human beings;
totipotent human stem cells;
human embryos and processes requiring their use;
placental and umbilical cord tissues and processes requiring the use of placental and umbilical cord tissues; and
transformed host cells within a human and other cells and tissues within a human.