01 December 2010

Great Invention - What Next?

I've put together a short article on my website for the benefit of those of you who are contemplating an appointment with a patent attorney.  Hopefully there are some useful tips to help the process get off to a flying start.

IP Australia Enhances Access to Patent Data

IP Australia has just released its full text searching service.

Apparently it has full service functionality and includes about half of the patent collection.  The full collection is to be made available free of charge by the end of March 2011.

As I've mentioned before, this is really good news.  For one thing, due diligence investigations will be a lot easier.

Here's the link: http://www.ipaustralia.gov.au/auspatbeta/

27 November 2010

Keep it Secret!

I've had a few cases recently where a (potential) client has disclosed an invention to another party without understanding the consequences.  I've written a short article in my website:

25 November 2010

Due Diligence Failure Costs CSL

Case: CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) [2010] 1251

CSL failed "promptly" to consider whether or not amendments to its Australian patent should be made in response to amendments recommended in respect of corresponding foreign patent applications.  CSL was "squarely on notice" that a claim was "problematic".  The absence of evidence of professional advice to the contrary prior to launching legal proceedings was key to the refusal to permit CSL to amend that claim.

Significant Cases Cited
ICI Chemicals & Polymers Ltd v Lubrizol Corp [1999] FCA 1417
Novartis AG v Bausch & Lomb (Australia) Pty Ltd [2004] FCA 835

  • From at least 2001, CSL was aware that certain documents were regarded as problematic to the novelty of their invention.
  • The view that those documents were problematic came from a number of examining jurisdictions.
  • There was no evidence of professional advice contrary to the opinions expressed by the various examiners.
  • CSL sought amendments in the foreign jurisdictions but not in Australia.
  • The refused amendments were sought after proceedings had been launched.
  • When a patentee is exposed to the view that prior art may be fatal to the validity of claims, the onus shifts to the patentee to provide a reasonable explanation of why inaction was preferred to amendment.
  • It is too categorical to restrict the circumstances in which amendment is refused to those in which the patentee knew the unamended patent was invalid.
  • The lack of evidence of professional advice (supra) counted heavily against CSL.
  • It was not a satisfactory response to assert that CSL did not need to take the initiative because the patent stood on the register.
  • It was not in the public interest that "serious and apparently legitimate issues" had been raised elsewhere not be confronted in the Australian text.
  • Leaving aside public interest, it is in the client's best interest that the very instrument that is to form the basis of a legal proceeding be reviewed and amended if necessary.  Failure to do so is simply bad practice.
  • It is to be noted that it was more important to the court that there was a coherent reason for failing to amend than not actually amending.
  • Multi-jurisdictional patent portfolios should be reviewed from time to time.  Setting a 6-month status check on matters is common practice where firms have large case loads per practitioner.  Part of that 6-month status check could be the consideration and proposal of amendments to clients.

16 November 2010

Effexor Patent Valid & Infringed

CaseSigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2010] FCA 1211

Judge: Jagot J

In this case, a patent for a sustained release formulation of Effexor was found valid and infringed.  While a number of different aspects were covered, I found the discussions concerning inventive step most useful. I have distilled some points and lessons.  The cross examinations of the witnesses are worth reading.

Inventive step notes:

  1. Detailed laboratory notebooks can be used to establish a finding of inventive step.
  2. Reference to a result can define a claim.  The question is what the skilled addressee would have understood at the priority date by the reference to the result.
  3. A finding that experiments performed are of a routine character that would be tried as a matter of course by the skilled addressee would support a holding of obviousness.
  4. A witness's use of hindsight undermines an allegation of inventive step.
  5. A witness's knowledge that an invention has been successful indicates the use of hindsight.
  6. A witness's reference to publications not available at the priority date indicates the use of hindsight.
  7. Knowledge of the existence of a patent dispute can cast doubt on the reliability of a witness's evidence.
  8. The problem and solution approach could be unfair to an inventor of a combination or a simple solution.
  9. Inventive step may be lacking if the available information at the priority date would support the existence of a motivation to prepare a formulation in question.


  1. Not only R&D teams, but all inventors should keep a careful developmental record in a form that can be readily reproduced.
  2. Where possible, witnesses should not be made aware of the patent dispute or even of the existence of a patent.
  3. Witnesses must be made to understand the importance of preparing their material as at the priority date, otherwise stated.

04 November 2010

Mud Company's Patent Valid but not Infringed

Case:  Australian Mud Company Pty Ltd v Coretell Pty Ltd [2010] FCA 1169

Judge:  Barker J


This court considered the question of whether or not "a device" has one or two parts. It emphasised the need to consider such questions in the context of the specification as a whole. The issue of "fair basis" was also considered. Fair basis must not be confused with any of the other requirements of s40 from which it is conceptually distinct. The fair basis test does not involve isolating an integer and then looking for its equivalent within the specification.

03 November 2010

Online Patent Searching - IP Australia

I've just received an update from IP Australia that full text searching will initially be launched in a beta environment by the end of 2010.  This will allow text searching of publicly available patent specifications back to 1904.

This initial release will include about half of the full collection.  It is planned that the full collection will be available by the end of March 2011.

This is good news for practitioners down under.  It particularly improves the ability to carry out patent infringement searches, which have always been tricky here.

02 November 2010

Apple Faces Legal Action over iPad Name

Here's an interesting article. It appears that Apple did not coin the word I-Pad. The honour goes to a Taiwanese company called Proview that tried to market a tablet computer and failed.

FT.com / Technology - Apple faces legal action over iPad name

31 October 2010

Coca Cola Sues Pepsico and Schweppes

Thanks to ipwars for reporting that Coca Cola has sued Pepsico and its Australian licensee, Schweppes, over the shape of the new Pepsi bottle.

Here's your link - ipwars.com

29 October 2010

China Poised to Become Global Innovation Leader

Well, it's happened. Not only is China a world leader in manufacturing, it's fast becoming a world leader in global innovation.

According to this report, the patent filings in China will outpace Japan and the US in 2011. The figures are startling. China experienced an annual growth of 26.1 percent in total patent volume from 2003-2009, as compared to the US's 5.5 percent growth rate.

27 October 2010

Aspirating Claims Lack Novelty and Inventive Step

Case: Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061

Judge:  Besanko J.


This case is an excellent example of how the novelty and inventive step tests are carried out in Australia.  It does not break new ground but provides good summaries of those two tests.  The issue of Entitlement is also covered, but is not worth considering in detail.  While the result of the case is probably of immense concern to the various protagonists, it is the useful round up of the principles of novelty and inventive step that interest me.

10 October 2010

Luscious Lips Still Not Distinctive

Case: Nature's Blend Pty Ltd v Nestle Australia Ltd [2010] FCAFC 117

Judges: Stone, Gordon and McKerracher JJ


Whether or not use of a trade mark has the necessary characteristics to qualify for a finding of infringement must be tested with reference to the context in which it is used.  That context includes such factors as style, size, location and the presence of other more prominent trade marks,


In my post of 24 March 2010, I reported on the decision of a single judge of the Federal Court in connection with this dispute.  That court found that the use of the words "luscious lips" in a blurb that appeared on the back of a package was not use of those words as a trade mark.  The judge was influenced by the fact that the package already showed both "Allen's" and "Nestle" in a prominent manner that indicated that they were being used as trade marks, thus diluting the effect of "luscious lips" as it appeared in relatively small type together with a number of other names on the back of the package.

In this case, the Full Federal Court said that the primary judge was correct and therefore that there was no infringement.

07 October 2010

IP Australia to Enhance Access to Patent Data

In a very welcome move, IP Australia is upgrading its patent searching tool, known as AusPat. Apparently it will be capable of delivering up to "180 unique pieces" of information on each patent and patent application.

Full text searching is to made available by the end of 2010. A tool called "EDossier" will provide electronic access to a suite of documents relating to the prosecution of patent applications.

This new functionality will be a boon to the profession, particularly the smaller firms and sole proprietorships (yours truly).

IP Australia : Patents > Patent Search Strategy Project

07 August 2010

Software and Innovation Patents - Tread Carefully

I recently had a client who had been told by someone that the innovation patent was a useful tool for protecting patents. There's no doubt that the system can be attractive.  See my post of 10 June 2010 and others.  Perhaps the most significant reason for that is that the innovation patent can be ready to enforce in as little as two to three months from the date of filing the application.

However, there lurks an often overlooked danger.  The innovation patent is granted and published in very little time.  In some cases, grant and publication occurs in as little as a month. This may not be an issue where an invention can easily be discerned in its commercial application.  However, software is often best kept under wraps for as long as possible, allowing the product to develop recognition and traction in the market place.  A requirement of our Patents Act is that the patent specification must disclose the best manner of performing the invention known to the applicant at the time of filing the application.  So it's not possible to get away with keeping key aspects of the invention secret if you want to file a patent application.

Standard patent applications are only published 18 months after the earliest date on which a patent application covering the invention is filed.  In the world of software, this can be a long time, allowing commercial objectives to be achieved while detail of the invention remains confidential.  However, if you've decided to go the innovation patent route, that confidential information will no longer be so in an little as a month after the application has been filed.

So, budget permitting, my recommendation is that you file a provisional patent application, get the software commercialised as soon as possible and file a standard patent application based on the provisional patent application.  If you need to enforce your rights, you can easily file a divisional application for an innovation patent based on the standard application (see my post of 21 November 2007).

18 July 2010

Tennis Warehouse not Distinctive

The Case: Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664

The Venue: The Federal Court of Australia

Judge: Kenny J


The Trade Marks Act allows the registration of trade marks with low levels of distinctiveness where sufficient use is shown by the applicant and where that is as a trade mark in the course of trade.  But as Sports Warehouse discovered, there are cases where the trade mark is so descriptive that the Registrar and the Court will set strict requirements for the level and type of use required to achieve registration. The applicant will need to establish accurately that use is "as a trade mark" and that it was such that the mark was capable of distinguishing as at the lodgement date.

This case is instructive in that it provides guidelines for how a Registrar should treat evidence of use when an applicant is attempting to obtain registration relying on extensive use of a trade mark.

29 June 2010

USPTO's Memo to Examiners - Bilski

According to Gene Quinn at IPWatchdog, the USPTO has sent a memo to US Patent Examiners in response to the Bilski decision. Part of the memo reads as follows:

"Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea."

Note - Section 101 is the relevant US statute dealing with patentable subject matter.

Here's the article:
USPTO Sends Memo to Examiners Regarding Bilski v. Kappos | IPWatchdog.com | Patents & Patent Law

Bilski - Business as Usual

 Courtesy of Dennis Crouch's Patently-O blog.

It appears that it is business as usual. The Court has refused to state any particular rule or categorical evaluation. So the issue of patentable subject matter has been pushed to the background in patent prosecution and litigation in the US.

As far as "Business Methods" per se are concerned, the US statute does not categorically exclude such inventions. According to the Court, a prior use defence in the US contemplates the existence of at least some business method patents.  By allowing this defence, the statute itself acknowledges that there may be business method patents.

Software will largely remain patentable.  At minimum, this decision does not allow the categorical exclusion of software patents.  That is to say that the court neither endorsed nor rejected previous decisions in connection with software as subject matter.

In this case, Bilski was related to a method of hedging risk and it was not patentable because it is an abstract idea.

It appears to me that the US and Australia are largely aligned.  Here, the Full Federal Court said that an asset protection method was not patentable subject matter. See my post of 25 July 2006.
Here is the decision - http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

26 June 2010

Will Bilski be decided on Monday (Tuesday in AU)?

IPWatchdog reports that Monday, 28 April, (Tuesday in AU) may very well be the day that we get the Bilski decision from the US Supreme Court. This may or may not render a large portion of software inventions as not being proper subject matter for a patent in the US. Of course, this will have enormous consequences for us here in Australia.

22 June 2010

No Bilski Decision Yet

As Gene Quinn reports, we're still waiting for the Supreme Court to hand down their decision. As I've mentioned before, this decision may have a big influence on the way we here in Australia advise our clients on software inventions.

There's an off chance that we might get the decision this month. Otherwise we may have to wait until the next term, which will take us into October or perhaps even into 2011.

Monday June 21, Another No Bilski Day for the Supremes | IPWatchdog.com | Patents & Patent Law

17 June 2010

LED Designs - Treatment of Prior Art

(2 lens combination)

Venue: Full Federal Court

Judges: Emmett, Besanko and Jessup JJ

The Main Design Issues

Does the Designs Act 2003 change the manner in which a court is to have regard to the state of the development of the prior art base?

No, there is nothing in the wording of the report of the commission set up to investigate the 1906 Act that would suggest that there was anything wrong with the approach developed under the 1906 Act.

Does the Designs Act 2003 alter the task of the Court to compare Designs individually with each relevant piece of prior art? 

No, it is not permitted to mosaic or produce a hypothetical amalgam of a number of prior designs in order to defeat the registration of the design in issue.  That is impermissible under the Designs Act 2003.

10 June 2010

The Power of the Innovation Patent

A while ago I reported on the successful enforcement of an Innovation Patent - "Innovative Step Confirmed".

This morning while I was driving my son to school (the joy of working from home!), I saw the very reflector posts that were the subject of the Innovation Patent upheld by the Full Court. There they were, clearly of sprung steel, with the concave surface facing the oncoming traffic. Interestingly, interspersed between them was an example of the prior art cited against the innovation patent. The prior art examples look a bit broken and battered. Clearly, council (or whoever looks after the roads) is replacing them with an embodiment of the invention covered by the innovation patent. Given the amount of roadwork going on around here, someone must be making some good money out of the reflector posts. They are also being used on all the new roads I've seen.

Now, I'm not sure of what the real commercial story is here. But if it wasn't for the innovation patent, I'm pretty sure that someone else, or perhaps a whole bunch of people, would be putting those reflectors in the ground.

Sometimes the simple ideas are the best, and that's when you want to consider the Innovation Patent.

08 June 2010

Food Channel - Opponent Fails to Discharge Onus


                                                  Case: Food Channel Network v Television Food Network GP [2010] FCAFC 58

Venue: Full Federal Court of Australia

Judges: Keane CJ, Stone and Jagot JJ

Intent to Use - Onus
Ownership of a trade mark
Deceptive Similarity

Main Issue

In opposition proceedings, does the evidentiary onus shift back to the applicant for registration where an opponent has made out a prima facie ground of opposition to registration?


If the evidence is not sufficiently clear to enable a finding to be made about whether a ground of opposition has been established, then the opponent must fail on that ground. It bears the onus of proof.

24 May 2010

German Supreme Court software patent decision "not a landmark ruling"

Here's another article in connection with the German Supreme Court ruling that I mentioned yesterday. It indicates that the decision is not a landmark ruling. Rather it's a continuation of a long line of thinking by the German courts. According to this author it's the recognition of the solution of a technical problem which is solved by a programmed computer that leads to a potential patent.

This is in line with the present European approach.

IAM Magazine - IAM Blog - German Supreme Court software patent decision "not a landmark ruling", says expert

23 May 2010

German Supreme Court on Patents on Computer-Implemented Inventions - BLOG@IPJUR.COM

Here's an excellent report by Axel Horns on a recent case heard by the German Supreme Court. Good to read that the Germans are on the right track. Hopefully, the rest of Europe will follow.

21 May 2010

USPTO's Facebook Page

Nice to see the USPTO getting into Facebook. I wonder if IPAustralia will do the same...

Facebook | United States Patent and Trademark Office

High Court - Ignorance is Bliss for Registered Owners

Case: E.& J.Gallo Winery v Lion Nathan Australia Pty Limited [ 2010 ] HCA 15
Venue: High Court of Australia
Judges: French CJ, Gummow JJ, Heydon JJ, Crennan JJ and Bell JJ


"Use of a trade mark"
"Authorised use"
"In the course of trade"

Main Issue 

Did the circumstances fall short of constituting "use" within the meaning of the Trade Marks Act because neither the registered owner nor an authorised user engaged in any act or conduct known by them to have had, or potentially to have, the result that the goods to which the registered trade mark was attached would be dealt with in some way within Australia in the course of trade?


It is not necessary for either the registered owner or an authorised user to have such knowledge for the use to constitute the necessary use in the course of trade required by the Act.


In the Federal Court (E & J Gallo Winery vs Lion Nathan Australia Pty Ltd (2008) 77 IPR 69), Gallo claimed that Lion Nathan had infringed Gallo's Australian trademark registration for BAREFOOT in respect of wines. Gallo was unsuccessful in this infringement claim. But it was successful on appeal to the Full Court (E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27).

By cross-claim in the Federal Court, Lion Nathan applied to have the registered trade mark removed from the register on the grounds of non-use from 7 May 2004 to 8 May 2007.

The Full Court upheld the primary judge's finding that Lion Nathan's non-use application was made out and that Gallo's trademark should be removed from the register. Gallo appealed that finding.

19 May 2010

Microsoft sues Salesforce.com over patents

Here's one to follow. Gone are the days when Microsoft was the target of patentees. It seems that Microsoft have learnt their lesson well.

Microsoft sues Salesforce.com over patents | Beyond Binary - CNET News

18 May 2010

Waiting, waiting - Another Day Without Bilski Decision, What Does it Mean?

Here's a good article by Gene Quinn of IPWatchdog.

This decision will no doubt have a global impact. As far as Australia is concerned, a limitation on the ability to obtain a patent on software very much governs the decision to go ahead in the first place.

But it appears that the US Supreme Court is having some difficulties in reaching its own decision.

13 May 2010

From Class 99 - Stabilo Stumbles at OHIM

This is an interesting post from the class 99 blog. Most of us who have spent a significant portion of our lives studying will be familiar with the STABILO markers.


12 May 2010

Jockey's Reputation Wins Out

Jockey International Inc v Darren Wilkinson [2010] ATMO 22

Jockey is the registered owner of a number of trade marks relating to underwear featuring JOCKEY as a component. The trade mark has been used in Australia since at least 1947. It was first used in the US in 1929.

Wilkinson filed an application for registration of THROTTLE JOCKEY on 2 August 2006 in respect of "T-shirts, caps, beanies, head bands, sweat bands". The application was accepted on 31 October 2006 and advertisement of acceptance ran from 7 December 2006. Jockey filed a Notice of Opposition on 7 March 2007. Eventually, the issues to be determined related to Sections 42(b), 44, 60 and 62A of the Act.

04 May 2010

ACTA - An Australian Viewpoint

Kimberlee Weatherall, a lecturer at the University of Queensland, has analysed ACTA from an Australian point of view. Her report can be found here - http://works.bepress.com/kimweatherall/21/.

03 May 2010

Delegate Compares LIDL to LITL

Re: Opposition by Lidl Stiftung & Co KG to registration of trade mark application 1200990(9) (International Registration Designating Australia No 934438) - LITL - filed in the name of Aquent LLC.

Request to adjourn hearing refused; Section 44 - Trade marks deceptively similar to opponent's LIDL trade marks - Protection refused.

Lidl filed a notice of opposition to the registration of the trade mark LITL in respect of Class 9: Computers; mobile computers; notebook computers; laptop computers.

30 April 2010

Trade Mark Searching in Europe

This looks like a good resource for those wanting to do clearance and freedom-to-operate searches in Europe. In my experience, such searches have always been very expensive.

Delegate Finds LEAFGUARD not Capable of Distinguishing

Richard Jelacic v Leafguard Gutter Systems Inc [2010] ATMO 20

Leafguard applied to register the trade mark LEAFGUARD  on 12 Feb 2007 in respect of gutters, machines for producing gutters and installation of gutters. The application was advertised for opposition purposes on 13 March 2008. Jelacic filed a notice of opposition on 29 May 2008. Jelacic's grounds were based on s41 and s43.  I will just consider s41, because the opponent, representing himself, became a bit confused and there was nothing in the s43 ground.

25 April 2010

Good Faith Annulled by Deliberate Use of Secondary Meaning

CaseMantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291

This matter follows on from a previous judgement which I reported on in my post of 13 February 2010.

Both parties let properties in a precinct called "Circle on Cavill". The applicant is the owner of a number of registered trade marks. The registered trade marks include the term "Circle on Cavill" in respect of property management and the rental of short term accommodation.

Tailly used "Circle on Cavill" in a number of websites, domain names and meta tags to promote its business. 

Mantra contended that Tailly was infringing its registered trade marks. Tailly raised the defence that it was using the words in good faith to indicate the geographical origin of the services that it was offering. Tailly also filed a cross claim that Mantra's marks should be cancelled because they have become generally accepted in the trade as the sign that indicates the Circle on Cavill complex.

22 April 2010

IPAustralia Releases TRIPS Protocol Consultation Paper

IPAustralia has just released a discussion paper on implementing the TRIPS Protocol. It's available here: http://www.ipaustralia.gov.au/pdfs/news/TRIPS%20Protocol%20Public%20Consultation%20Paper.pdf

The Protocol permits WTO members to issue compulsory licences to manufacturers to produce patented products for export to address health needs in least-developed and developing countries.

The deadline for written submissions is 4 June 2010.

21 April 2010

High Court Defines "Aggrieved"

Case: Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13.

This appeal to the High Court is connected with Section 88(1) of the Trade Marks Act 1995. Only a person "aggrieved" can make use of that section to rectify the register. Rectification can take the form of cancellation, removal or amendment or entering conditions or limitations.

The factual background is worth reading, but I will skip it in this post, but for a brief summation.

Three proceedings took place between the parties before a single judge in the Federal Court and were heard together.  In that court, two of the proceedings were dismissed on the ground that Health World was not a person "aggrieved". The remaining proceeding was dismissed on the ground that Shin-Sun was not a person "aggrieved".

15 April 2010

Gasp Dresses Infringe but Designs Invalid

Case: Rosemin Pty Ltd v Gasp Jeans Chadstone Pty Ltd FCA 228
Date: 16 March 2010

This case does not have any interpretative content. Rather, it is an interesting study of how our courts deal with evidence. For that reason, it's worth reading.

Rosemin is the registered owner of a number of design registrations covering various dresses. Rosemin claimed that sale of various dresses by Gasp infringed the registered designs. Gasp admitted that its
dresses are "identical to or substantially similar in overall impression" to the Rosemin designs. Gasp also admitted that it "sold or otherwise disposed of, or offered to sell or otherwise dispose of, the Gasp Dresses. It followed that Gasp would have infringed if the design registrations were validly issued.

14 April 2010

Patent Prosecution - A Report from the ABA IP Conference

My apologies for not providing a series of posts during the conference. Between jet lag, keeping my practice going and the hospitality suite, there was little time. But here is a report on the panel presentation in which I was privileged to participate.

13 April 2010

IPONZ Introduces Standardised Format for TM Specs

The Intellectual Property Office of New Zealand will apply standardised formatting to trade mark specifications. This is an attempt to align with current international best practice.

01 April 2010

ABA Section of Intellectual Property Law | 25th Annual IPL Conference

For those readers who may be interested, here is the schedule for the conference next week.

Section of Intellectual Property Law | 25th Annual IPL Conference | Schedule

I will attempt to post articles as the conference progresses. The operative word is "attempt".

It is both an honour and a privilege for me to be participating in this prestigious event. The international panel in which I represent Australia will be on at 13:45 on Thursday, April 8.

31 March 2010

Seven Sins — IP Mistakes Start-Ups Should Avoid

Here is another excellent article from IPFrontline.

The reason for my posting it on an Australian blog is that I consistently run into one or two of these "sins". The most valuable asset a start-up has is its intellectual property. Yet is remains astonishing how often these sins are committed in this country.

Seven Sins — IP Mistakes Technology Start-Ups Should Avoid 

30 March 2010

United States - Judge Invalidates Human Gene Patent

Here's an interesting article from the New York Times. There is no established legal precedent in Australia against the validity of a patent for a method of isolating a gene. On the other hand, the mere discovery of the gene would not be patentable.

Judge Invalidates Human Gene Patent - NYTimes.com

Somewhat related, our courts have held that there is no justification in law or logic to distinguish a process of curative treatment of the human body from that of cosmetic treatment, and that both of these forms of treatment may constitute a manner of manufacture (that is, proper subject matter) provided they have commercial application.

Finding your brand essence

As a professional who often deals with the aftermath of the destruction wrought by marketing consultants, I enjoyed this pithy article.

Seth's Blog: Finding your brand essence

Those of you who deal with brands would do well to follow Seth Godin's blog. It's full of good, practical advice.

29 March 2010

GCFC - Where's your brand?

As a Gold Coast resident, I am excited at the prospect of having an Aussie Rules football club. But I'm finding it difficult to rave about my new team.

You see, they haven't yet decided on a personality for themselves. So now they are using GCFC. Here's the website: http://goldcoastfc.com.au/. So we'll have GCFC v Lions, GCFC v Crows, GCFC v Saints, GCFC v Cats etc. Whether or not you like lions, crows, cats or saints, it's not difficult to see how fans (and particularly undecided youngsters) can identify with those clubs. Then there's the merchandise. I can envisage inflatable lions and fluffy crows and cats. But what will happen with GCFC? Inflatable letters?

Consider their competition here on the coast. It's the other code, rugby league - http://www.nrl.com.au. Our club here is the Titans - http://www.titans.com.au/. It's like chalk and cheese as far as branding is concerned. This was demonstrated by my 6 year old son who arrived home one day after school and quizzed me with: "Dad, do you know who came to see us at school today?" After displaying my ignorance, my son answered: "The Titans!". Then I was someone indifferent to rugby league. Now I'm a keen follower and supporter of the Titans. It wasn't that he knew what "Titans" meant. It was just easy to remember and to repeat. Once I told him what it meant he was well and truly hooked.

Apparently GCFC are looking for a new name. That's good news, but imagine the cost of building up the GCFC brand, only to discard it for another name. According to their website, they've been five years in the making. If they had chosen a brand name back then, it would have been household, helping to snare a large following of young impressionable children and their doting parents. With their season starting in 2011, I fear the horse has bolted.

25 March 2010

Don't "Describe" Your Brand

IPFrontline has published an excellent article about brand enforcement. It warns against describing your brand in your marketing blurb. One of the examples given is the way in which Firefly Digital described its brand as being "descriptive of our products on many levels...". This is a dangerous admission and is sure to be used by Google as it defends a trade mark infringement lawsuit brought against it by Firefly. Read it here: What Ever You Do, Don't 'Describe' Your Brand!

As the article points out, and as I emphasise in this article, the problem with describing your brand is that it undermines a claim of "inherent distinctiveness" which you may need to make when enforcing your registered trade mark or even when you are attempting to obtain valid trade mark registration.

24 March 2010

Laudatory Luscious Lips

Case: Nature's Blend Pty Ltd v Nestle Australia Ltd [2010] FCA 198

Result: Nature's Blend failed to show infringement.

The Robinsons own the registered trade mark for LUSCIOUS LIPS, which is registered from 12 March 2007 in respect of, inter alia, confectionery. Nature's Blend uses the mark in connection with lip shaped chocolates.

Nestle acquired Allen's confectionery business in 1989 and manufactures about 75 product lines under the ALLEN'S trade mark. ALLEN'S is well known in Australia. It has been used in connection with confectionery since 1891.

From about May 2007 to March 2009 Nestle manufactured, distributed and sold confectionary under ALLEN'S and RETRO PARTY MIX in packaging which included the expression "luscious lips" on the rear of the packaging. The expression appeared together with a description of the products: "That’s right! All your favourites are back, so put on those flares and get ready to party! Up to 7 lolly varieties including...cool Cola Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries." [emphasis added]

Sundberg J. discussed the relevant legislation. Section 120 sets out that infringement requires use as a trade mark. Also, the trade marks must be substantially identical or deceptively similar. Section 7(4) states that use in relation to goods means use of the trade mark upon or in physical or other relation to the goods. Section 17 defines a trade mark as, inter alia, a sign used to distinguish goods dealt with or provided in the course of trade by a person from goods so dealt with or provided by any other person. This would mean that descriptive or laudatory words would not usually qualify as trade marks.

In respect of trade mark infringement, the comparison is between the LUSCIOUS LIPS trade mark and Nestle's conduct. So, effectively, Nature's Blend said that Nestle was infringing its trade mark rights by selling the party mix described above.

Nature's blend said that "luscious lips" is not a phrase that ordinarily and naturally describes confectionery. They said that it is inherently distinctive and "newly-coined". Nestle cited various dictionaries which appear to indicate that "luscious" can mean "highly pleasing and pleasant to the taste or smell". According to them, the words were descriptive and laudatory.

It is possible for words to be descriptive and still serve as a badge of origin. In Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310, Gummow J said that the fundamental question is "whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “partly because” (emphasis supplied) they are described by the words in question."

His Honour held that the plain meaning of the words would be taken by consumers as being descriptive or laudatory of confectionery in the Retro Party Mix.

Whether or not Nestle used the words as a trade mark was also an important question.

The question is whether the words would have appeared to consumers as being used to indicate a connection in the course of trade between Nestle and the confectionery. As set out in Shell Co of Australia Ltd v Esso Oil (Aust) Ltd (1963) 109 CLR 407, the context of the use is all-important. Allsop J summarized it in Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [2002] FCA 390 - "The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others...The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use."

The words "luscious lips" appeared on the back of the packet as part of a description of the contents. The word ALLEN'S appeared prominently on the front of the packet. So did RETRO PARTY MIX.

In Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chip Co Pty Ltd (1996) 135 ALR 192 the Full Court held that the word ‘KETTLE” was not used as a trade mark in respect of kettle cooked potato chips. The packet also prominently displayed the well-known trade mark ‘Thins’ and another well-known phrase ‘Double Crunch’. In Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310, the Full Court held that CAPLETS on  a paracetamol product called "TYLENOL’ had not been used as a trade mark. In this case Lockhart J said: "A person looking at the packaging would assume that the word CAPLETS describes or indicates the shape of the product contained in it or the dosage form."

Possibly disingenuously, Nature's Blend referred to the High Court’s decision in Mark Foy’s Limited v Davies Coop and Company Limited [1956] HCA 41 where the majority held that the defendant's use of the words "Tub Happy" constituted infringement. Although the words meant "washable" it was a meaning that required suggestion. It was not a meaning that "sprang unaided to the mind". This did not help Nature's Blend because his honour felt that "Luscious Lips" did have a meaning that could "spring unaided to the mind". That is it meant a confectionery product that has a sweet taste and is in the shape of lips.

His honour said that "Luscious Lips" were significantly less prominent than the word CAPLETS and KETTLE.

Considering the evidence, he said that he was not satisfied that there had been "use as a trade mark". The two reasons were that the words were laudatory and descriptive and the effect of the words were diluted by the prominence of ALLEN'S.

17 March 2010

Employer's Ownership of Invention Governed by Common Law

Case: Richwood Creek Pty Ltd v Williams [2010] FCA.

I came across this unreported case recently. It's a reminder of the importance of getting the business relationship right.

The case is an appeal to the Federal Court from an opposition decision handed down by the delegate of the Commissioner of Patents. The Commissioner had found that Williams' rights in respect of the patent vested in a company called Norkres Pty Ltd as well as the applicant, Richwood Creek. Since Richwood Creek alone was not entitled to the grant of the patent, according to the delegate, opposition was established and the patent application was refused.

14 March 2010

The Struggle to find a name

I often meet prospective clients who struggle to find a name for their new product. For those of you who are scratching your heads trying to think of a name, here is a site that looks really useful - http://wordoid.com/.

Here's a quote from that site, with which I wholeheartedly agree: "Sometimes giving something a name can be the hardest thing in the entire world. Take a look at all the successful business around you and look at their names. They all mean nothing! Esso and Texaco being a few good examples. If you’re starting a blog, website or multinational company having a name that means nothing can be one of your most important assets."

10 March 2010

Updates to Trade Mark Examiners Manual

IP Australia has updated their trade mark practice manual.

The updates deal with extension of time provisions, time limits for acceptance, deferment of acceptance, capacity to distinguish, deception or confusion, removal for non-use and the Madrid Protocol.

The changes will be published in the official journal of trade marks on 18 March 2010.

IP Australia : Resources > Official notices > Trade marks notices 2008

The Proposed First-to-File Statute in the US

As some of my readers will know, the US is thinking about joining the rest of the world by becoming a "first to file" country. Here is the proposed statute, thoughtfully set out by Dennis Crouch in his Patently-O blog.

Patent Reform Act of 2010: Proposed First-to-File Statute - Patent Law Blog (Patently-O)

More IP litigation in China than anywhere else on earth?

Many of my clients are concerned that they won't be able to enforce their IP in China. This article from the prestigious IAM magazine should be comforting.

IAM Magazine - IAM Blog - There is more IP litigation in China than anywhere else on earth

09 March 2010

Online Filing Facility for Patent and Design Applications New Zealand

IPONZ releases information in connection with online patent and design filing - Ministry of Economic Development - Business Update

Trade Marks and Keywords

Here is an excellent article aptly entitled "When Your TM Becomes the Key to Your Competitor's Ad". It is well worth a read because it gives some useful guidelines on what to do when you discover that your registered trade mark is being used as a keyword in someone else's online advertising campaign.

05 March 2010

New IP Australia Lodgement Points - Convenient?

IP Austraia has just announced that the new Brisbane lodgement point will become available on 6 April 2010. -http://www.ipaustralia.gov.au/about/state_transition.shtml.

I don't see any real benefit, apart from a saving for the taxpayer. I still can't go to my local post office and lodge a patent application. So I will continue to lodge online where possible.

It would really be convenient if, as in the US, we could use any post office. PCT applications are often huge and the weird PCT-Easy process that has been cooked up by the Europeans clashes with my system. Why we can just upload pdf's for PCT applications is beyond me. I would welcome an explanation.

Calling All Drafters - Free Claim Construction Dictionaries

I have found this excellent resource for those of us who draft patent specifications regularly. The downloads are big, but worth it. -http://www.pubpat.org/garrodglossariesreleased.htm

False Marking in the United States

It is my usual practice to advise clients to mark their patented products in the United States. This can help when extracting a damages payment from an infringer. The advice is to mark the product with the patent number so that it is clear that the product is covered by a patent. If it is not practical to mark the product, the associated marketing material should also indicate that the product is the subject of a US patent.

A number of my associates have warned me that the courts in the US are making full use of the "false marking" punitive provisions in their legislation.  

For example, In Forest Group v. Bon Tool Co., the Federal Circuit ruled that the $500 maximum false patent marking penalty of 35 U.S.C. § 292(a) should be imposed on a per article basis.  Therefore, each article that is falsely marked with the requisite intent to deceive constitutes a separate offence under § 292(a), which can result in substantial damage awards against patent owners. Any person can bring a false marking claim. So there is some concern that the decision may open the floodgates. 

02 March 2010

A Lesson in Claim Construction

Case: Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108.

Inverness owns four patents related to a device for pregnancy testing at home. Inverness alleged that a number of respondents, collectively referred to as MDS, infringed its patents. The patents in question involved a parent with two divisionals and a separately filed patent. MDS challenged the validity of all four patents on the grounds of lack of utility and sufficiency.

To summarize the result:
  1. Claim 1 of the first patent is infringed.
  2. Claim 1 of the second patent is infringed.
  3. Claims 1 to 4 of the third patent are invalid for lack of novelty. The third patent has expired.
  4. Claims 1 and 22 of the fourth patent are invalid for lack of novelty and should be revoked.
  5. Dr Appanna is personally liable for the infringement as a joint tortfeasor.
  6. Dr Appanna is liable under s 13(1) of the 1990 Act for authorising infringement.

Claim Construction

Key issues were the meanings of certain terms. One of those terms was "specific binding reagent" which appeared as part of an essential integer of the claims. This term was important because it appeared that the only difference between the MDS kits and the example in the first patent was that the antibodies are reversed in the MDS kits. Inverness said that the reverse use of the antibodies made no difference.

Inverness asserted that the term meant the reagent could bind not only to the analyte sought to be detected, but also to other molecules related to the analyte. MDS asserted that the reagent will preferably bind only to the analyte and to no other molecule in the sample. Bennett JJ found that normal English usage in the field of immunology supported both positions. So she turned to the specification of the parent patent. She held that the specification appeared to draw a distinction between specificity and a specific binding reagent. "Specificity" defines the ability of the reagent to identify only that reagent. "Specific binding reagent" defines the characteristic that ensures that the reagent does bind with the analyte in a specific way. For example, the specification recognised the existence of cross-reactive immunoassays and made reference to antibodies that would cross-react with molecules other than the target antigen. That is, the reagents were not absolutely specific. MDS countered by finding examples in the specification where the word "specific" was not used, such that the use of that word would indicate a preferable binding. But Bennett held that it was equally likely that the claim included rather than excluded a particular embodiment of the invention. She did not accept that there was a deliberate differentiation. Furthermore, she pointed out that the specification used the term "highly specific" which did not mean "mono-specific".

In summarising this part of the judgement, Bennett held that the "untutored" approach of using the word "specific" as an adjective to describe a type of binding reagent should be rejected. The reasons included the manner in which the specification used the expression "specific binding reagent". The specification recognised the concept of degrees of specificity. The specification set out examples of antibodies which were not mono-specific.

Another term which was relevant was "dry porous carrier". It was part of an essential integer of the four patents. Inverness said that the specification focused on the function of the carrier rather than on the physical form of the carrier. So the term covered a single body or a number of discrete bodies. MDS on the other hand said that the term was limited to a a single continuous piece of material. The term was important, because the MDS device contained a number of dry, porous discrete pieces.

Bennett pointed out that the specification referred to the the carrier as a strip or sheet, but only as a preferred embodiment. The term was used in claim 1. Claim 9, dependent on claim 1, limited the carrier to a strip or sheet of porous material. This meant that claim 1 envisaged a broader interpretation. So she found that the MDS device contained a dry porous carrier within the meaning of claim 1.

Claim 1 of the first and second patents were found to be infringed.

Yet another term which came under scrutiny in the third patent was "within said casing". The claims of the third patent contained the integer of a ‘bibulous sample liquid receiving member within said casing to receive sample liquid applied to said application aperture’. The issue was whether the word "within" meant only "wholly within" as contended by MDS or also "partly within" as contended by Inverness.

MDS relied on the Oxford English Dictionary meaning of "within". Inverness responded by pointing out that figures 8 and 9 in the specification showed an embodiment with the sample member protruding from the casing. Bennett pointed out that the specification did not use the word "within" when describing figures 8 and 9. However, the specification did use the word "within" when describing a position of a carrier strip depicted as wholly within a casing. So Bennett concurred with MDS.

Inverness alleged that MDS also infringed claims that contained "porous material backed with transparent moisture-impervious material". MDS contended that its product did not take this integer because it was coated with a strip of white vinyl which was not transparent. Also the white vinyl did not perform the same function as the transparent material. Bennett concurred with MDS.


One test of utility is whether the claimed invention fulfils the promise of the specification, in that it does what was intended and claimed by the patentee (Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171), and whether the end obtained is itself useful (Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82; (2008) 77 IPR 449)

Bennett pointed out that the claims should be construed as they would be by the person skilled in the art desirous of making use of the invention. Furthermore, a claim does not need to specify a limitation that was common knowledge in the art for that limitation to apply in construing a claim to avoid want of utility. Where a claim omits a feature which proper construction leaves for the reader to supply, the claim will not be invalid for want of utility if the feature is one that the skilled addressee could reasonably be expected to supply to make the invention useful. 

Bennett said that the invention would be useful if the specific binding reagents were chosen such that, in combination, they were selective for the desired analyte. Inverness asserted that a person skilled in the art would be capable of selecting appropriate specific binding reagents. The specification of the first patent was silent on accuracy.

MDS said that what was promised in the first patent and claimed in claim 1was an analytical device which would function as an analytical device for the targeted analyte and, from that, accuracy is necessarily a promise.

But Bennet said that the fact that, in theory, one could construct a device according to the claims that, in certain circumstances, would not detect the analyte is insufficient to render the claims invalid for want of utility.


The test for sufficiency is whether the disclosure in each of the patents enables the skilled addressee to produce something in each claim without new inventions or additions or prolonged study of matters presenting initial difficulty.

MDS contended that, on the construction of "specific binding reagent for an analyte", the first, second and fourth patents were invalid for insufficiency. According to Bennett, MDS in effect submitted that the claimed device of each of the patents is to test for an analyte with no cross-reactivity and no false positive or negative results, so that a device within the claims is not possible in the absence of scavenger molecules.

Bennett pointed out that the claims of the patents are not limited to devices which give no false positive and no false negatives. There was no evidence that the skilled worker could not make the inventions as claimed or that he or she would make a device that failed to detect an analyte.


MDS contended that claim 1 of the second patent and claim 22 of the fourth patent were invalid for want of clarity. Claims are required to define the invention clearly and succinctly so that readers can ascertain the precise extent of monopoly claimed. If a claim is ambiguous, the ambiguity may be resolved by reference to the body of the specification. Failing that, the claim is invalid. MDS contended that the following words in claim 1 of the second patent were not clear or capable of any sensible meaning: "..the device also containing a labelled specific binding reagent for an analyte, or which can participate in a competition reaction in the presence of an analyte....". Inverness explained that this passage referred to two types of labelled specific binding reagents. One of the expert witnesses gave evidence that she understood the words in that way. Bennett said that made sense and was consistent with the disclosures in the specification.

MDS also contended that "having" was not clear in "the labelled antibody having freely mobile within the macroporous body and the porous carrier when in the moist state."  Bennett pointed out that in an almost identical passage in the body of the specification, the word "having" was replaced by "being". A reader wishing to clarify the meaning of the passage would go to the specification and see that the word "having" should be replaced by "being". So there was no lack of clarity.

Priority dates

There is a useful discussion of  the requirement of "fair basis" as it applies to priority dates. I won't discuss that in this post because I have already considered a number of the cases cited in that discussion. I also wanted to limit this discussion to claim construction, in particular.


This case is worth reading because it gives some practical guidelines on claim construction. It is a reminder of the strong connection between the claims and the body of the specification and of the fact that one cannot properly be considered in the absence of the other.

18 February 2010

To Headstart or Not

I have developed the habit of offering the Headstart option to my new trade mark clients. This is an effort to smooth the way with IP Australia. To date, I've only experienced courteousy and efficiency from the staff at IP Australia.

There are detractors. Some say that the inability to prepare tailored class descriptions is restrictive. It would be, were it not for the accommodating staff. If I need to tailor the description, I simply email the new description to the relevant examiner with a request that he or she amend the description accordingly. Provided you're not trying to add unrelated goods or services, chances are that you can get a decent description on file. My cynical side might think that many practitioners' avoidance of Headstart is simply a way of generating fees through searches and responding to adverse examination reports. I trust that's not the case.

One of the reasons I offer the Headstart option is that examination is carried out by a person who examines trade mark applications for a living. As a sole practitioner, I have to deal with a wide variety of tasks and could never develop that level of expertise. Not only that, but the official fee is only $90 per class. That's a lot cheaper than contracting the search out.

So for now I will continue to offer Headstart in spite of the naysayers. I'll let you know (discreetly of course) if I have a bad experience.

16 February 2010

International Applications Dip in 2009

As I mentioned earlier, overall international applications were down 4.5% in 2009. This brings the level back to just under 2007 figures. A full report can be found here.

I was concerned to see that Australia dropped by 7.5%, particularly since we escaped the worst of the recession. The US, which was one of the hardest hit, dropped by 11.4%. Interestingly, Japan, also one of the hardest hit, actually grew by 3.6%. This is an indication of how IP ownership is shifting East, particularly when one considers the growth in a number of other East Asian countries. As usual, those countries suffer less from the West's short-term knee-jerk syndrome when it comes to investing in the future. We should take heed.

The greatest declines related to computer technology -10.6%, pharmaceuticals -8.0% and medical technology -5.9%.

Hopefully 2010 will be better.

13 February 2010

Public Recognition Evidence for Lack of Distinctiveness

It may be possible to defend an infringement action if you can show that a mark has lost the capacity to distinguish goods or services in respect of which it has been registered. In Mantra Group Pty Ltd v Tailly Pty Ltd [2010] FCA 66, an affidavit of a witness, Dennis Porter included the following paragraph: "In my opinion, the name, Circle On Cavill has since become common knowledge recognised as a location. As a central location within Surfers Paradise the area is regarded as a meeting place, a destination, to go to, or to go from. And therefore “Circle On Cavill” provides a pinpoint descriptor location address".

Mantra objected to the admission into evidence of that paragraph. It held that Porter was not qualified to make that statement and was trying to give factual evidence in breach of our evidence legislation. Tailly responded by saying that Porter was a long time resident and had much experience as a marketing and advertising consultant on the Gold Coast (the municipality of the location in question).

Reeves J. explained that before a person’s opinion can be admitted as evidence, it must meet a number of criteria. Those were expressed by Lindgren J in Harrington-Smith and Others on behalf of the Wongatha People v State of Western Australia and Others (No 2)[2003] FCA 893(2003) 130 FCR 424 at [20], as follows:

  • The opinion must be relevant (including that the field of knowledge is one in which expert opinion can properly be called).
  • The person put forward as an expert must possess specialised knowledge in that field.
  • The specialised knowledge must be based on the person’s training, study or experience.
  • The particular opinion tendered must be based on the specialised knowledge.
  • The expert’s evidence must clearly expose the reasoning leading to the opinion arrived at and distinguish between the assumed facts on which an opinion is based and the opinion itself.

Porter failed to explain his reasoning. It could not be said whether his opinion was based on his specialised reasoning. Porter also failed to define "common general knowledge". Furthermore, Reeves stated that: "I do not consider long-term residency of an area the size of the Gold Coast or South East Queensland equips a person to express an opinion about the common knowledge of the population of that area. Even if Mr Porter was only purporting to express an opinion about the common knowledge of persons involved in the advertising and marketing industries on the Gold Coast, I do not consider his experience, extensive as it may be, equips him to express such an opinion."

So it would appear that some form of survey evidence would have been necessary to satisfy the court. Or perhaps the evidence of a number of witnesses would have sufficed. But this case does emphasise the need to be careful when preparing affidavits and particularly to keep an eye on probative requirements.

It will be interesting to see how this ends, especially since I like to visit "Circle on Cavill" from time to time.

12 February 2010

University Hits a Dead End

IP Now reports that the High Court has refused the application by the University of Western Australia for special leave to appeal the decision of the Full Federal Court in University of Western Australia v Gray [2009] FCAFC 116. In short, a failure by the University to ensure that one Dr. Bruce Gray executed a proper assignment documents resulted in the University being unable to claim any proprietorship over Dr Gray's invention. A hard lesson learnt.

09 February 2010

Which countries have been filing the most International Applications?

The Economist reports that overall the number of international applications fell by 4.5% in 2009 compared with the year before. However, applications from east Asian economies increased slightly and those from China grew by 30%.

Before we get too excited, we should bear in mind that the vast majority still emanate from the United States, making up about 45 000 of the 159 000 filed worldwide.

Peer-to-Patent trial enters second phase

IP Autralia has reported that the peer-to-patent trial has entered its second phase. Read more...

08 February 2010

Commercialisation Australia to Cover IP Costs

Commercialisation Australia is offering up to $50 000 to cover specialist business advice, including IP management. Eligible expenditure includes fees for the cost of filing a patent application, patent search, examination and maintenance fees. Have a look at the website for more information.

If you would like me to recommend a consultant, please email me.

06 February 2010

Patents in China

The Wall Street Journal reports that China issued a record number of patents in 2009. But regulations could dampen growth. Read more.

05 February 2010

A Branding Tip

One of my clients has positioned itself very successfully in a particular market. This success is reflected in the popularity of its website. It ranks consistently high in Google searches. However, more recently, its ranking is coming under attack from competitors, both numerous and aggressive.

The problem is that its brand is weak. Weak in the sense that it is descriptive of the service offered. As a result, the chances of obtaining trade mark registration are not good, in spite of the extent of use it has had of the brand. Competitors are using the words of the brand as keywords in their online marketing campaigns with impunity. As I explained to client, those words describe the service offered and so competitors should be able to use them to describe their own services. If client had originally chosen words that were distinctive and thus registrable, its competitors would not be in a position to leverage themselves into a position in which they could constitute a serious threat to its business.

My advice is that the traffic to the website should be used to expose a carefully selected, distinctive brand to site visitors. In time, this will shift reputation from a weak brand to a much stronger brand. For more information on brand selection see my article on brand name selection.  The stronger brand will allow it to stand out from its competitors in an increasingly busy field, ensuring longevity and increasing its value significantly.

03 February 2010

Delegate rules on the filing of further evidence in oppositions

Commonwealth Scientific and Industrial Research Organisation and Novartis AG v Vistakon [2009] APO 24

This matter had to do with the serving of further evidence during opposition proceedings. 

The patent application relates to contact lenses and materials suitable for contact lenses. Vistakon opposed the grant of a patent on grounds that are not relevant for this discussion. When an application is opposed, the opponent must lodge evidence-in-support of the opposition. The applicant for the patent then has an opportunity to lodge evidence-in-answer to the evidence-in-support. The opponent can then lodge evidence-in-reply. The evidence lodged by the parties is considered during a hearing before a delegate of the Commissioner if the matter gets that far.

In this case, the applicants (CSIRO and Novartis) wanted to file further evidence based on their assertion that parts of Vistakon’s evidence-in-reply was not properly in reply. The applicants wanted to address Vistakon’s evidence-in-reply that the applicants’ declarants had insufficient experience and qualifications with respect to various technical aspects of the invention. Also, the applicants' declarants proposed to address new evidence or issues raised for the first time in Vistakon's evidence-in-reply. The applicants also wanted to file further evidence relating to what was known in Australia at the priority date of the application.

According to the regulations, the Commissioner may permit the serving of further evidence. The regulations provide a broad discretion that cannot be reduced to compliance with particular requirements.

The Delegate pointed out that public interest calls for a balance between the requirements that oppositions be dealt with expeditiously and economically, and that a serious opposition be dealt with on its merits. In this case the evidence-in-reply appeared to add a degree of discussion and analysis of measurement techniques that went beyond the applicants' evidence-in-answer and appeared to have significance in its own right. Consequently, the Delegate held that it would be in the public interest to allow the applicants the opportunity to serve the further evidence.

As far as the interests of the parties was concerned, the Delegate held that the evidence-in-reply appeared to be substantial in the degree of evidence covering material additional to the evidence-in-support. He accepted that the evidence-in-reply required a response by the applicants.

20 January 2010

ABA - Annual Intellectual Property Law Conference

I am delighted to be part of a prestigious panel of presenters at the ABA's 25th Annual IP Law Conference.

The panel will be discussing patent procurement in China, Europe and Australia and we are also joined by one of the Directors of WIPO. That is particularly interesting given that foreign patent procurement is usually via the PCT that is governed by WIPO. Preparing an international patent application to be filed under the PCT is fraught with difficulties because of the need to take a large number of countries into consideration at a very early stage. Therefore, no doubt significant time will be spent on what us practitioners can do to smooth the way for prosecution in the major jurisdictions. The discussion will also be interesting because it should highlight some strategies that can be adopted to speed up enforcement.

Please email me at barry@beagar.com.au if you want any further information or a copy of the brochure.