Australian confirmed as WIPO head

Dr Francis Gurry has been confirmed as Director General of the World Intellectual Property Organization (WIPO).

Dr Gurry is now the most senior Australian in the United Nations system; the first Australian to head a United Nations specialised agency since 1992, and only the third Australian to do so

Patent Office Flies the Flag for “Clear and Unmistakeable Disclosure”

The decision of the Delegate of the Commissioner of Patents in Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr Company [2008] APO 20 provides an interesting counterpoint to the decision of Gyles J in Apotex v Sanofi-Aventis.

The claims of the opposed application related to a method of coating comestibles (principally chewing gum), which included the application of a suspension coating syrup, (a “suspension coating method”) rather than a solution coating syrup, (a “solution coating method”). Each of the suspension and solution coating methods were know to have various advantages and disadvantages.

Under the ground of novelty, the Opponent relied, inter alia, on two documents identified as DA3 and DA8, which were technical application sheets produced by the manufacture of the sugar derivative Isomalt used to produce the coating syrup. In assessing whether these documents anticipated the claims of the application, the Delegate noted that:

Both documents have very specific directions about how to make a suspension of Isomalt ST in an Isomalt GS solution. However, there is little detail of how this suspension is then used in a coating process in either document apart from a table outlining general process parameters ... Without such detail, it is not clear that either DA3 and DA8 contains sufficient information to meet the Hill v Evans [supra] test of being the same as the claimed invention for the purposes of “practical utility”.

The Delegate considered whether, assuming the skilled worker could supply the missing detail, the documents otherwise anticipate the claims. It was noted that while each of the documents were individual recipes, they formed part of a larger technical document supplied by the manufacture to its customers. In the Delegates view:

Being part of a larger collection of recipes, DA3 and DA8 have to be read in the context of all the other technical application sheets because considering them in isolation might be seen as rummaging through the prior art’s "flag locker" to pull out the relevant “flag” (against the teaching of ICI Chemicals v Lubrizol Corp [supra]).

In this regard, while DA3 and DA8 both outline the suspension method, another Palatinit technical application sheet (Technical Application sheet 3.5.2b) describes an alternative method (the solution method).

The Delegate considered that having regard to the entire collection of technical application sheets, at the relevant date “the manufacturer was not necessarily recommending the suspension method to their clients”, concluding that:

Against this background unless there was a clear direction in the citation (or from the common general knowledge) to explain why a method was particularly advantageous, I am not convinced that there are clear and unmistakeable directions for the skilled worker to use the exact method outlined in DA3 or DA8.

Giving Goliath the Slingshot

It seems that the Federal Court is not the only one to take issue with the current conduct of IP litigation in Australia. The report of the Review of the National Innovation System “venturousaustralia - building strength in innovation” includes a section headed “The costs of enforcing IP rights”. The report's solution to the perceived problem of such costs takes the form of Recommendation 7.4 that “Firms asserting or defending intellectual property should have a right to opt out of ‘appellate double jeopardy’.”

The proposal effectively provides that any party may elect not to appeal the first instance decision unless it funds the costs of both itself and the other parties in doing so. If any party makes such an election, all parties would be bound by it. How this proposal is intended to “level the playing field ... between large and small firms” is unclear, given that such an election would effectively mean that only large firms (having sufficient funds) could appeal an unfavourable decision.

Counterfeit brands website shut down

The Australian Competition and Consumer Commission has shut down the 'Designer Brand Outlet' website.

The ACCC alleged that false, misleading and deceptive representations were made on the website and that some of the clothes supplied were counterfeit copies.

The ACCC release is here.

Federal Court’s Flu Shot for Patent Law

Over 100 years ago Lord Esher, in Ungar v Sugg (1892) 9 RPC 113, opined:

that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined. Whose fault is it? It is really not the fault of the law; it is the fault of the mode of conducting the law in a patent case. This is what causes all this mischief.

Today it seems little has changed, at least in the minds of the Judges of the Federal Court who have set out to change the way Patent litigation is conducted in Australia.

Following a somewhat informal release back in June, the Victorian and New South Wales district registries of the Federal Court have each now officially released a “Notice to Practitioners - Proceedings under the Patents Act 1990 (Cth)” outlining new procedures for proceedings under that Act.

The procedures are stated to be “deliberately not overly prescriptive, with an emphasis on flexibility of application to each proceeding” and are clearly aimed at narrowing the issues in dispute as early as possible. The specific matters addressed include:

• Ground of Invalidity: Particulars of invalidity are to include details of the passages of any prior publication relied upon for novelty purposes and after filing of the particulars, the party seeking revocation must explain how each ground of invalidity can be supported.
• Expert Evidence: The Court will enquire whether any expert evidence will be required, whether a single expert is appropriate for all or any part of the evidence, whether any of the evidence can be given orally or by reference to standard texts, or by a combination of summary outline and oral evidence, whether a primer is appropriate and as to the appropriate method of evidence. The last matter may include whether there should be prior meetings of experts to explain or narrow the issues in dispute


• Discovery: Before discovery is ordered, the parties must confer to discuss the issues to be addressed by discovery and the nature of the documents sought, and whether evidence should precede discovery

The procedure also provides for procedural mediation or case management conferences to try and narrow the issues in dispute and resolve interlocutory matters.

These procedures will hopefully play an important role in streamlining the conduct of certain patent disputes and may provide SME’s with the prospect of being able to enforce their patents without significant expense. However already this year the Federal Court has handed down patent decisions in relation to the pharmaceuticals Liptor and Plavix, which had global sales of USD13.5 billion and USD7.3 billion respectively in 2007. Where the monopoly rights conferred by a patent are of sufficient value, it is likely that litigants will still wish to fight every point and the procedures may have a limited impact.

The battle to keep “The Secret” continues

The dispute between the creator of “The Secret”, Rhona Byrne and her company TS Productions LLC and the Australian director Drew Heriot concerning the copyright in the film and the related book continues in Australia. Earlier this year, Justice Sundberg of the Federal Court of Australia, ordered a stay of the Australian proceeding pending the outcome of the US proceeding.

A major issue before his Honour was whether in the US proceeding, the US court would apply the law of that country or Australian law. After considering the rival opinion evidence of two American lawyers, his Honour found that US law would be applied.

After argument had concluded, but before Justice Sundberg delivered his judgment, the US District Court delivered a judgment declining to stay the US proceeding. The judge, the Honourable Suzanne B Conlon, reached the same conclusion as Sundberg J as to the choice of law in the US proceeding. Judge Conlon made various procedural directions including discovery and other dates for joint pre-trial orders.

The matter has again returned to the Federal Court of Australia where TS Production LLC has sought leave to appeal to the Full Court from the judgment and orders of Justice Sundberg. The issue before Justice Heerey was not the substantive question of leave but whether the application for leave should be dealt with by a single judge or by the Full Federal Court. Order 52 r2AA of the Federal Court Rules requires some ground to be shown as to why an application for leave to appeal should be determined by the Full Court. Heerey J noted that this case could not be “characterised as a minor interlocutory squabble over discovery or the like” but rather one in which Sundberg J’s orders could give rise to important consequences for the parties. Despite various contentions from Drew Heriot’s counsel that the only prejudice to the applicant was the cost of the US proceeding and that there was no “substantial injustice” to the applicant that would warrant the appeal being considered by the Full Court, Heerey J granted TS Production’s request on the basis that Sundberg J’s judgment deals with substantial legal issues which are appropriate for resolution by a Full Court.

Historic agreement between Australia & Korea

IP Australia reports that an agreement has been reached with the Korean IP Office relating to the PCT International Search Authority and International Preliminary Examination Authority

Gummow J sets homework assignment for IceTV and Nine

As reported elsewhere , the High Court last Tuesday granted IceTV special leave to appeal against the Full Court's finding that it had infringed Nine's copyright in its TV schedule. The transcript of the special leave hearing is now available and makes for interesting reading.

Gummow J gives some interesting clues as to how the Court may approach the appeal, noting in particular that the principles underlying the US decision in Feist, dealing with originality in compilations, may have some application to the issue of substantial part under Australian law. His Honour concludes by noting that:

we expect to have the assistance of counsel to deal with this matter thoroughly without any reticence in starting at the bottom, so to speak, and we expect counsel to be familiar with the academic writing in this field. They have already been referred, I think, to an article by Dr Deazley in [2004] Intellectual Property Quarterly 121. There is also what may be a useful article by Professor Sterk in Michigan Law Review for 1996, Volume 94, pp 1197 called Rhetoric and Reality in Copyright Law. There is a lot of other material out there as well. I hope the arguments will be informed with all of that, at least in a suitable background.