Australia & New Zealand Intellectual Property Law

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2008-09-30T10:59:00.005+10:00

To date, users of this Blog have been able to subscribe to RSS feeds for each of the IP categories, or to all stories.

For technical reasons and in light of the relatively modest number of posts, we are rationalising our RSS feed options to one covering all posts. If you previously subscribed to individual category feeds, please subscribe to this feed. We apologise for any inconvenience.

NZ Designs Act to permit restoration of a Registered Design

2008-09-29T16:28:00.006+10:00

The Regulatory Improvement Bill that, inter alia, will introduce a new procedure for restoration of a registered design through non payment of a renewal fee was introduced into the NZ Parliament in early September. This proposed legislation is now public and can be found at the following link

Regulatory Improvement Bill

Following the recent announcement of a general election for 8 November 2008, the timeframe for the enactment of this legislation is unknown. At this stage it is unlikely that the first reading will take place before the Parliament is dissolved on the 3rd of October. However given that this bill is considered non controversial and will reduce the compliance burden on business, it is likely that this Bill will pass quickly through the new Parliament early next year and come into effect in late 2009.

It is worth noting that at this stage the Bill is not retrospective in effect i.e. it will not apply to designs that have already lapsed at the time the legislation is enacted and does not seek to address the issue of restoration of lapsed registered design applications through failure to meet a prosecution deadline. The opportunity to raise these matters will come when the Bill is referred to the Select Committee for scrutiny.

Smelly trade mark accepted

2008-09-26T14:11:00.001+10:00

Trade Mark Application No 1241420 has recently been advertised as accepted in Australia. The trade mark consists of "a Eucalyptus Radiata scent" for golf tees and was accepted without the need for the applicant to file any evidence of use.

Australian confirmed as WIPO head

2008-09-23T15:04:00.002+10:00

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”

2008-09-23T10:53:00.005+10:00

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

2008-09-16T15:14:00.002+10:00

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

2008-09-16T11:36:00.002+10:00

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

2008-09-16T11:35:00.002+10:00

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

2008-09-03T16:17:00.004+10:00

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

2008-09-01T14:05:00.002+10:00

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

2008-09-01T10:18:00.005+10:00

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.

So what's the difference?

2008-08-29T10:26:00.005+10:00

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

2008-08-21T14:53:00.002+10:00

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

2008-08-15T15:12:00.003+10:00

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

2008-08-14T12:22:00.000+10:00

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

2008-08-14T12:17:00.001+10:00

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

2008-08-12T16:42:00.003+10:00

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

2008-08-12T14:48:00.003+10:00

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

2008-08-12T14:44:00.002+10:00

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

2008-08-08T14:30:00.004+10:00

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

2008-08-05T15:29:00.003+10:00

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

2008-08-05T11:28:00.001+10:00

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

2008-08-05T11:23:00.003+10:00

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

2008-08-04T15:24:00.001+10:00

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

2008-08-04T09:33:00.000+10:00

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.