So what's the difference?

The first serious consideration of section 7(4) of the Patents Act 1990 relating to innovative step, the decision of Gyles J in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225, gives a somewhat unexpected interpretation of the phrase “substantial contribution to the working of the invention”.

Gyles J commences with a concise explanation of the approach to be taken in assessing innovative step, consistent with recent approaches to the question of inventive step, noting that:

There is no need to search for some particular advance in the art to be described as an innovative step which governs the consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim and ask whether the invention as claimed only varies from the kinds of information set out in s 7(5) in ways that make no substantial contribution to the working of the invention. It may be that there is a feature of each claim which differs from the prior art base and that could be described as the main difference in each case but that need not be so. Section 7(4), in effect, deems a difference between the invention as claimed and the prior art base as an innovative step unless the conclusion which is set out can be reached.

His Honour then considered the background to the introduction of innovation patents, including the High Court decision in Griffin v Isaacs from which the phrase “substantial contribution to the working of the invention” is derived, concluding that

The focus is upon working of the invention (as claimed) not to the degree or kind of variation from the kinds of information set out in s 7(5). In other words, the variation from the kinds of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step.

The judgement then turns to the presence or absence of innovative step in this particular instance, with Gyles J noting at [63] that:

As I have endeavoured to explain, the question is not whether flexible sheet steel is better than flexible PVC – it is certainly different. It cannot be seriously argued that the material sheet spring steel does not make a substantial contribution to the working of the roadside post claimed in each claim

And again at [78]:

The different material contributes substantially to the manner in which that invention as claimed performs. As I have said earlier, it is not a question as to whether these claims are better than the disclosure by Kennedy, or whether it was obvious to move from Kennedy to this invention. Therefore, there is an innovative step over Kennedy.

Accordingly, the test applied by Gyles J appears to be whether the feature, which varies from the prior art, in and of itself makes a substantial contribution to the working of the invention, rather than whether the nature of the variation, the extent to which that feature differs from the prior art, makes such a contribution. Indeed it appears that the feature which varies may be inferior to that disclosed in the prior art and the invention nevertheless involve an innovative step.

The judgement also implicitly confirms that all prior art information may be relied upon in assessing innovative step provided it is publicly available, in contrast with inventive step where that information must satisfy the requirement of section 7(3).

Improved Intellectual Property Office of New Zealand Website

The Intellectual Property Office of New Zealand website has now improved its navigation, search and online transactions.

For more information about the changes click here

Two Wrongs Don’t make a Right but Two Countries make an International Exhibition

The Full Federal Court has allowed the appeal in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142, overturning the decision of the trial judge and holding that a furniture fair involving 250 Australian exhibitors and seven from New Zealand was an “international exhibition”.

Section 47(1) provides that the fact that a design, or any article to which a design has been applied, has been exhibited at an official or officially recognized international exhibition … shall not prejudice or prevent the registration of the design or invalidate the monopoly therein, if the application for the registration of the design is made within six months after the opening of the exhibition.

A week prior to filing a design application, Chiropedic had displayed a mattress to which the design had been applied at the 1996 Furnishing Industry Association of Australia fair known as "The National New Products Parade". At trial, it was held that this event was an officially recognised exhibition, by reason of funding from the Victorian Government, but was not an international exhibition. Accordingly, section 47 could not be relied on.

The Full Court considered that:

the trial judge erred in formulating a test of "international" which involved the need for a significant foreign presence. Not only does it import into the section a requirement that is not expressly stated, but it introduces into the section questions of degree which are likely to be productive of uncertainty and expense. In our opinion, the fact that there were exhibitors from Australia and New Zealand was sufficient to make the fair an "international" exhibition within s 47(1).

As a result, the validity of the design registration will not be effected by the prior publication of the design caused by its display at the fair.

World’s Second Biggest Selling Drug Survives Revocation Suit

Apotex Pty Ltd (formerly GenRx Pty Ltd) v Sanofi-Aventis [2008] FCA 1194, handed down on Tuesday, determined a validity challenge to the Sanofi-Aventis patent covering the drug Clopidogrel, marketed as Plavix, the second highest selling pharmaceutical worldwide.

While claims 1, 10 and 11 were found lacking novelty and claims 6 to 9 lacking inventive step, claim 3, which would be infringed by Apotex proposed sale of generic Clopidogrel in Australia, was held to be valid.

Australian Courts and Spanish Law

In an appeal from a Trade Mark opposition, Ryan J in Neumann v Sons of the Desert SL [2008] FCA 1183, has seemingly significantly broadened the operation of section 42 of the Trade Marks Act.

Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law.

On the basis of an affidavit from a Spanish lawyer, Ryan J held that:

registration of the mark in Australia by the respondent to the exclusion of the applicant would be contrary to Spanish law, which governs the relationship between the parties. I accept this evidence and therefore consider that the opposition based on s 42 of the Act must also succeed.

The decision stands for the propositions that:

a) the law in question need not be Australian law; and

b) it is sufficient that the process of seeking and obtaining registration of the trade mark is contrary to law, irrespective of whether use (as seemingly required by the Act) of that trade mark in Australian would be so.

In this case, the appeal was not contested by the respondent, however if the decision is followed, it may require an Australian Court to decide whether certain actions would be contrary to the law of another country. One might have thought that applying Australian IP law was challenging enough!

A line drawn in the sand on what is “patentable subject matter” in Australia

In Milton Edgar Anderson [2008] APO 19 (11 August 2008) Deputy Commissioner Spann has upheld the view that inventions relating to a mere scientific theory or discovery of the laws of science without a specific practical and useful application are not a manner of manufacture as required by section 18(1)(a) of the Australian Patents Act.

In this case the invention related to “the new science of subtronics” and “a new law of electric induction” and the alleged inventive concept resided in the “revelation and utilisation of an antimatter voltage force that stems from the discovery of electrosubtronic fields and culminated in the new science of subtronics”.

Deputy Commissioner Spann noted that section 18 sets limits on the subject matter for which a patent can be granted in Australia. In addition to the requirement that a claimed invention be novel and non-obvious, the subject matter must be a manner of manufacture. Whilst the notion of what is “a manner of manufacture” has evolved over time, the Delegate considered that there are certain fields that will always be excluded such as expressions of human intellectual activity, discoveries of the laws of nature or science, scientific theories, ideas, mere schemes and plans and mathematical algorithms per se unless they have been embodied in some technical application. In this particular instance the invention claimed was a scientific theory or discovery of the laws of science without any specific practical or useful application and therefore not patentable subject matter.

It is worth noting that the patent law in New Zealand has evolved in a way similar to that in Australia. That is decision of the High Court in National Research Development Corporation v. Commissioner of Patents (1959) 102 CLR 252 has been followed on many occasions by NZ Courts and Intellectual Property Office of New Zealand. With the introduction of a new Patents Act in late 2009 and having a provision identical to section 18 of the Australian Patents Act, it is expected that the Intellectual Property Office and of course the NZ courts will continue to adopt a similar line to Australia on what is deemed patentable subject matter.

Requesting Patent Foreign Filing Permits – Section 25(5) by e-mail

Where a NZ resident wishes to file an application for a patent abroad without first filing a corresponding patent application in New Zealand, the resident must obtain a foreign filing permit from the Commissioner under section 25(5) before making the foreign patent application.

IPONZ will now accept requests for foreign filing permit by email.

The request should name the applicants for the patent in the foreign country, and the countries or organizations in which the application is to be made, and include a description of the invention, preferably as an attached copy of the specification to be filed abroad or a detailed synopsis of the subject matter.

In response to the request, IPONZ will issue a permit (if appropriate) by reply e-mail. This will be the only form of permit issued and serves as the written permit as required under section 25(5).

It should be noted that a New Zealand resident does not need a foreign filing permit where:

(a) the resident has made an application for a patent in New Zealand for the same invention at least six weeks before intending to file a corresponding foreign patent application; or

(b) the resident is making a foreign application which is claiming convention priority from an application for the same invention filed abroad by a non-resident.

New Patents Bill tightens up on patents process

The Patents Bill was introduced to Parliament on 9 July, and will replace the Patents Act 1953.

The purpose of the new Bill is to update New Zealand’s patent regime to ensure that it continues to provide an appropriate balance between providing adequate incentives for innovation and technology transfer while ensuring that the interests of the New Zealand public are safeguarded.

At present, the examination process under the Patents Act 1953 is less strict than in most other countries and in many cases had led to patents being granted that are broader in scope than patents granted on the same applications in other countries.

To address this issue the new Bill will provide NZ Examiners to consider the ground of inventive step during the examination of the application on a basis similar to that currently adopted in Australia.

The new Bill also contains measures that will assist in protecting the interests of Maori in their traditional knowledge and indigenous plants and animals and will reform the regulatory regime for the Patent Attorney profession.

Canopies Covered by a Single Valid Claim

In what may yet prove to be a hollow victory for the appellant, the decision in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139, handed down last Friday, saw the Full Federal Court overturn the trial judge’s findings on the public availability of a prior use, holding a number of the claims of the respondent’s patent to lack novelty.

However, in a move that will please many patent attorneys, the Full Court refused to find that the patentee had admitted certain matters to be common general knowledge by reference to prior publications in the patent specification.

At trial, Kiefel J held claims 1, 2 and 8 to 23 inclusive to have been infringed by each of two collapsible canopy products sold by Insta Image. Insta Image’s cross claim seeking revocation was dismissed. On appeal, Insta Image did not seek to disturb the findings on infringement but challenged the decision that the claims were novel and inventive.

The Full Court, after setting out five principles on the meaning of “publicly available” as used in section 7 (see [124]), overturned the findings of the trial judge and held that each of the claims other than claim 14 lack novelty in light of a publicly available prior use.

On the question of inventive step, the Full Court highlighted the importance of identifying the invention so far as claimed in any claim rather than what the inventor thought the invention consisted of (see [82] to [92]). The Full Court also made significant findings in relation to whether reference to prior art in the specification of the patent constituted an admission as to common general knowledge (see [97] to [104]). Relying on the decision of the High Court in Lockwood v Doric (No 2), and distinguishing the decision of Heerey J in Wrigley v Cadbury Schweppes, the Full Court held that:

The present Patent specification constitutes admissions by Mr Lynch as to his own familiarity with the inventions the subject of the earlier US patents mentioned and with the ongoing problem of instability of which he was aware, but does not constitute an admission by him as to the common general knowledge as it existed in the USA, let alone Australia, before the priority date.

Having regard to the evidence of the various expert witnesses, the Full Court upheld the trial judge’s decision that the claims were not obvious.

Accordingly, while Insta Image succeeded in showing all but one claim to be invalid and liable to be revoked, claim 14 will seemingly stand as a valid, and crucially an infringed claim.

Finkelstein J throws cold water on the Registrar’s decision to stay opposition proceedings

In proceedings before Justice Finkelstein of the Federal Court, Cadbury UK Limited successfully appealed the decision of a delegate of the Registrar for Trade Marks to stay opposition proceedings to the registration of its trade marks for shades of the colour purple in relation to chocolate and related products pending resolution of a Federal Court action for passing off and breach of section 52 of the Trade Practices Act.

By way of background Darrell Lea applied to the delegate to "suspend" the opposition proceedings "until the determination of [the passing off action]." In requesting the "suspension" Darrell Lea submitted that because Cadbury’s use of the colour purple was the subject of a Federal Court proceeding, it would be inappropriate to continue with the opposition proceedings as that may result in findings of fact that are inconsistent with those made by the Federal Court. The delegate accepted Darrell Lea’s argument. She said the judge deciding the passing off action must investigate the reputation of Cadbury in the colour purple and that such an inquiry would necessitate an investigation into similar evidence that would be useful in establishing factual distinctiveness for the purposes of section 41(6). The delegate considered that findings of fact made by the Federal Court would be based on more extensive material and would be better tested than evidence before the Registrar and a suspension would avoid duplication in the decision making process, and will reduce the chance of inconsistent findings resulting from the analysis of similar evidence. The Delegate then gave the following direction:

"[T]he present oppositions be suspended until the Federal Court decision in the passing off proceeding is handed down. If there is no appeal from that decision, the present oppositions shall be lifted from suspension, and further directions given such that the opposition will continue through the evidence stages in accordance with normal practice and procedure."

In reaching his decision that the delegate’s direction to stay the opposition proceedings for an indeterminate period could not stand and should be set aside, Finkelstein J firstly had regard to the Trade Mark Regulations in particularly reg 21.15(7). Whilst the Registrar’s power to give directions with regard to the conduct of opposition proceedings was not questioned, it was his Honour’s view that “the suspension of the opposition proceedings for an indefinite period amounted to a denial of justice and a refusal by the delegate to perform her duty to hear and determine those proceedings: R v Whiteway; Ex parte Stephenson [1961] VR 168, 170; compare Thornton v Repatriation Commission (1981) 35 ALR 485.”

His Honour also considered that in reaching the decision to stay the opposition proceedings the Delegate placed too much emphasis on the judge’s or judges’ findings. Finkelstein J stated that “(t)o proceed on the basis that it is unlikely that the Registrar will depart from the court’s findings and, that there is a public interest in avoiding inconsistent fact findings, indicates to me that there is a real risk that the delegate was not going to decide for herself the issues that must be decided to dispose of the opposition proceedings”.

This decision of Justice Finkelstein is interesting and one that will have ramifications not only on proceedings before the Registrar of Trade Marks but those before the Commissioner of Patents. Fortunately his Honour was able to provide us with some guidance on the circumstances where it would be appropriate to suspend an opposition proceeding pending resolution of a court proceeding. These are said to include: “a) the degree of similarity of the issues involved, (b) the significance of the issues to the opposition proceeding, (c) whether the Registrar has more evidence than the trial judge, (d) the likelihood of the judge’s findings being challenged, and (e) whether it may be unfair (ie a breach of the rules of natural justice) to rely on the judge’s findings or the evidence on which those findings were based.”

IP Australia surveys fashion designers

IP Australia recently sent a short survey to 450 members of the fashion industry.

The results revealed a pretty good level of awareness of IP, but with room for improvement!

Change in practice for post grant amendments to Australian Patents

The Australian Patent Office published notification in the Official Journal of Patents dated 24 July 2008 advising of a change in the way the Commissioner will handle post grant amendments.

Previously, after granting leave to amend and following the expiration of the three month period for opposition but before granting the amendments, the Commissioner issued notification requiring the patentee to provide a statement confirming that no relevant proceedings (ie court proceedings for infringement or revocation of the patent) were pending and set a one month date for the patentee to respond. For various reasons this practice led to administrative inefficiencies.

Accordingly, henceforth the Commissioner will, prior to allowance of any amendment to a sealed patent, issue a letter asking for advice on whether there are any relevant proceedings pending and give the patentee one month to provide that advice. This date is extendible by one month. It should be noted that if the requested advice is not received within the initial one month period or within the extended time, the Commissioner will move to formally refuse the request for leave to amend. It should also be noted that if relevant proceedings are pending the Commissioner will automatically refuse the amendment request and the patentee will need to reapply for leave to amend after such proceedings have been completed.

It is hoped that this change will rectify the current administrative nightmare associated with post grant amendments and bring some finality to the process.

New High Court Chief Justice

The Australian Government recently announced the appointment of Justice Robert French (currently of the Federal Court) as Chief Justice of the High Court of Australia.

Justice French takes up the position from 1 September, becoming the 12th Chief Justice appointed to the High Court since Federation, and the first from Western Australia. The current High Court Chief Justice Murray Gleeson will retire on 29 August. This appointment represents a significant change to the High Court bench and one that will prove very interesting especially in the area of IP given his Honour's experience in this area.

IPONZ - Examination delays continue

There are ongoing delays at IPONZ in considering responses to Examination Reports. Consideration of responses for substantive issues is now taking approximately 6-8 months.

Applicants are encouraged to file their responses electronically via the IPONZ website. Correspondence filed online will automatically generate a confirmation receipt and can be tracked online.

EMDG scheme extended to IP expenditure

The Export Market Development Grants (EMDG) scheme is an Australian Government financial assistance program for exporters. The scheme reimburses up to 50% of expenses incurred on eligible export activities.

A number of changes were made effective 1 July 2008 (claimable from 1 July 2009). These include allowing costs of patenting products overseas (and obtaining trade marks overseas) to be eligible for support.