Australian and New Zealand Intellectual Property Law

Green IP growing

2009-04-24 16:34:51

Patent and trade marks applications relating to green energy have grown in recent years according to a press release from Ministor for Innovation, Industry, Science and Research.

Government to amend Section 92A

2009-04-22 17:47:45

Further to our post on the requirement for ISPs to have a termination policy for repeat copyright infringers, the Government anounced on 23 March that Section 92 of the Copyright Act 1994, that imposed that requirement, will not come into force as proposed, but would be reviewed.

The announcement is here.

New Practice Guidelines - Swiss-type claims

2009-04-21 16:07:01

The Guidelines on applications relating to the Swiss-type claims under the Patents Act 1953 have been updated by IPONZ.

The updated Guidelines now include the examination considerations for Swiss-type claims where the novelty of the therapeutic purpose resides in the mode of administration or treatment regime.

Where a substance is already known to treat a first medical condition is found to be useful in treating a second medical condition and this second new use has previously been unrecognised - the substance itself cannot be patented because it is not new and the method of using the substance as a medicament is not a patentable invention as confirmed by the Court of Appeal in Pfizer Inc v The Commissioner of Patents [2005] 1 NZLR 362 (Pfizer).

If the use of the compound for the therapeutic purpose is new, then such a claim is considered to be novel, even if the same substance had previously been used in medicine for a different purpose (see for example Pharmaceutical Management Agency Ltd v Commissioner of Patents [2000] 2 NZLR 529 (Pharmac)).

Trade Marks Amendment Bill passes first reading in Parliament

2009-04-20 17:25:20

The Trade Marks (International Treaties and Enforcement) Amendment Bill 2008 passed its first reading in Parliament on Tuesday 7 April and was referred to the Foreign Affairs, Defence and Trade Select Committee.

The Bill contains amendments to the Trade Marks Act 2002 to enable New Zealand to join several international trade marks treaties, including the Protocol Related to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol), administered by the World Intellectual Property Organization.� Their collective aim is to reduce business compliance costs associated with protecting trade marks.� The Minister of Commerce, Hon Simon Power's media statement on the Bill is here.

IP Australia opens new patent examination centre

2009-04-02 11:24:25

IP Australia opened a new patent examination centre in Melbourne today that will� be responsible for examining patent applications in the fields of chemical engineering, mechanical engineering, chemistry and electronics.

The Melbourne Patent Examination Centre represents a decentralisation of the patent examination function and will create 41 new jobs.

Comments sought on reforms to Australia's IP system

2009-03-31 09:24:30

The Minister for Innovation, Industry, Science and Research has� called for written submissions on proposed reforms to Australia's intellectual property (IP) system.

The proposed reforms aim to:

reduce barriers in the innovation landscape for researchers and inventors;
improve certainty about the validity of granted patents; and
allow patent claims to be resolved faster.

Information on the proposed reforms will be contained in a series of papers, the first two can be viewed by clicking here and here.

A Toast (or a sip or a scull) to the Full Court

2009-03-26 14:49:52

In a decision which may yet see the Court delving into uncharted waters on the question of damages for trade mark infringement, the Full Court have in part upheld and in part overturned the decision of the trial Judge in E. & J. Gallo Winery v Lion Nathan Australia [2008] FCA 934 previously reported here.
To succeed on appeal, Gallo needed to overturn findings of the trial Judge both in relation to Lion Nathan's application for removal of its trade mark for non-use and in relation to its own infringement claim. While the Full Court decision allowed Gallo's appeal in relation to the infringement issues, the trial Judge's findings on the removal application were upheld.Non-Use

At trial, it was held that while there had been sales, albeit limited, of BAREFOOT wine in Australia in the relevant non-use period, these sales occurred without the knowledge of the trade mark owner and as such were not use of the trade mark by the owner. On appeal, Gallo argued that the test of use was an objective one, such that the trade mark owner's awareness of use of the trade mark in Australia was irrelevant. The Full Court, relying the decisions of Windeyer J and the Full Court of the High Court in the Estex cases, upheld the decision at first instance, confirming that in order to satisfy the requirement that there be use in the course of trade by the owner of a trade mark there must be:

a) conduct by the owner of the mark which the owner might reasonably contemplate would result in dealings with its goods marked with its trade mark in Australia while the goods were in the course of trade; and

b) actual display, sale or offering for sale of those goods in Australia.

The Full Court also confirmed that an order that the trade mark be removed from the register did not operate retrospectively, such that even where a trade mark is so removed, there might be infringement of that mark up until the date of the order for removal.

Infringement

The trial Judge considered a range of factors on the issue of whether the goods in respect of which Gallo's trade mark was registered, wine, and the goods on which Lion Nathan was using its mark, beer, were goods of the same description and concluded that they were not.

The Full Court noted that while "s 120(2) requires a number of discrete questions to be asked and answered":

these discrete questions arise in the context of determining, as the ultimate question, whether there has been infringement of the registered trade mark and, to that end, the object or purpose of the statutory prohibition on infringement is relevant.� It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin.� In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description.� One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner.

The Full Court found to be convincing the factors supporting the view that beer and wine were goods of the same description, such as both being alcoholic beverages distributed largely by the same major wholesale distributors and retailers and directed at the same type of consumer. By contrast, the considerations which led the trial Judge to the opposing conclusion were stated by the Full Court to be "of materially less significance". Regarding the origin of the goods and in particular the difference in the manner of manufacturing wine and beer the Full Court stated that "it is unlikely that this difference would be significant to the consuming public". In relation to another factor relied upon by the trial Judge being "the manner in which beer is consumed, that is drunk for its refreshing qualities, and not, like wine, consumed in a "sipping fashion"� the Full Court noted that "For our part, we doubt this is a relevant consideration".

Conclusion

As a result of the findings of the Full Court, Lion Nathan infringed Gallo's trade mark from the time it commenced selling its BAREFOOT beer up until the date of the order that the trade make be removed. The question of what if any pecuniary relief Gallo might be awarded in respect of this period of infringement remains to be determined.

IP Australia delays fee changes

2009-03-26 14:30:57

IP Australia's� Cost Recovery and Fee Review, commenced in 2008, has been extended as a result of economic conditions. Any fee changes as a result of the review will now be scheduled for July 2010.

Crown Use provisions explained

2009-03-25 09:25:29

IP Australia released a new information sheet on 'Crown Use' provisions for patents, designs and copyright. The information sheet explains what 'Crown Use' is, how the provisions may be applied and your rights.

Object Failure

2009-03-20 12:15:27

Object statements are typically included in the body of a patent specification to provide support for the inventive step thought to have been made. However, such statements can also have significant implications on the interpretation and validity of the claims of a patent as was starkly illustrated in the decision of Greenwood J in Uniline Australia v SBriggs [2009] FCA 222, in which the Court placed great reliance on an object statement found in the body of the patent in suit when construing the scope of the claims.
The specification of the patent in suit included a statement that "It is an object of the invention to provide a bi-directional clutch which avoids the need for a plurality of helical springs and complex configuration of the second shaft." In considering the impact of this statement on the construction of the claims of the patent, Greenwood J stated that:The object statement logically takes up two features identified by the author of the patent in suit in the author's discussion of the prior art spring clutch of AP825. That discussion identifies the functionality of sequentially engaged multiple springs in effecting the transmission of torque loads and the need, dictated by the presence of a number of helical springs within the spring clutch, for complex openings and barriers in the engagement shaft engaging those multiple springs. The object statement suggests that the object of the invention is to avoid each of these features. � That object statement suggests that both advantages of the invention need to be present to achieve the object of the invention which suggests that the object statement contemplates a monopoly to be defined by the claims in terms of a bi-directional clutch that has the advantage of simply a single spring (rather than many) and a second advantage that complex openings and barriers in the configuration of the second shaft � engaging that single spring, are avoided.

Having found that it was a requirement of the invention that both stated advantages be achieved in order to satisfy the object of the invention, the Court rejected a broad construction of the claims put forward by the patentee which would have resulted in the claims covering embodiments which achieved only one of those advantages. This resulted in a finding of non-infringement.

The Court also noted that if the claims where accepted to have the broader construction put forward by the patentee, then in light of the object statement, the claims would have been bad for lack of utility for encompassing embodiments which failed to achieve both of the stated objectives.