Focus: Patents, Designs and Trade Marks – April 2005
In brief: Welcome to Allens Arthur Robinson Patent & Trade Marks Attorneys' round-up of news, notices and features on patent, design and trade mark-related matters.
News
- Managing Intellectual Property Awards
- INTA Conference 2005
- One millionth PCT application
- Australian patent grace period review: discussion paper
- Patent 'fair basis' case decided on appeal
- New Zealand trade marks and surnames
- Madrid Protocol trade mark oppositions: amendments to Regulations
- New fees schedules
- Rob Silberstein joins team
Managing Intellectual Property Awards
We are delighted to have been ranked as a top-tier firm in Australia, both for patent services and for trade mark and copyright services, in the latest Managing Intellectual Property Awards (announced in February and March 2005 respectively).
We believe that these awards recognise not only the world-renowned strength of our patent litigation practice and our trade mark and copyright expertise, but also the continued growth of our patent attorney capability.
The support of those clients and associates who voted for our firm is greatly appreciated.
INTA Conference 2005
The Annual Meeting of the International Trademark Association (INTA) will take place in San Diego, USA, from 14 to 18 May 2005.
Following the accession of USA to the Madrid Protocol and moves in Europe to bring the Community Trade Mark system and the Madrid Protocol system closer together, the Madrid Protocol was a hot topic at INTA in 2004 and is likely to be an equally hot topic this year.
Australia has been a member of the Madrid Protocol since July 2001. Since that time, Allens Arthur Robinson Patent & Trade Marks Attorneys has built a significant depth of experience in using the Protocol to protect the trade mark rights of our clients in Australia and overseas and in resolving disputes arising from the increasing use of the Protocol.
This year, we will have seven representatives at the INTA Annual Meeting, including two first-timers from our Melbourne office – Andrew Butler (partner and patent attorney) and Tony Lolis (senior associate and patent attorney) – and some familiar faces: Colin Oberin from Melbourne, Jim Dwyer, Jackie O'Brien and Andrew Wiseman from Sydney, and Ted Marr from Hong Kong. They would be pleased to discuss any aspect of the IP services we provide in any of our offices in Australia and around Asia with anyone attending this year's meeting.
One millionth PCT application
The World Intellectual Property Organization (WIPO) recently paid tribute to the world's innovators on the occasion of the filing of the one millionth international patent application under the Patent Cooperation Treaty (PCT).
The overall top 20 PCT filers between 1995 and 2003 are:
- Koninklijke Philips Electronics N.V. (Netherlands)
- Siemens Aktiengesellschaft (Germany)
- Robert Bosch GmbH (Germany)
- Procter & Gamble (United States)
- Telefonaktiebolaget L M Ericsson (Sweden)
- Matsushita Electric Industrial Co. Ltd. (Japan)
- BASF Aktiengesellschaft (Germany)
- Motorola Inc. (United States)
- E.I. Du Pont de Nemours and Company (United States)
- Sony Corporation (Japan)
- Bayer Aktiengesellschaft (Germany)
- Minnesota Mining and Manufacturing Company (United States)
- The Regents of the University of California (United States)
- Intel Corporation (United States)
- Henkel Kommanditgesellschaft auf Aktien (Germany)
- Unilever (Great Britain/Netherlands)
- 3M Innovative Properties Company (United States)
- Infineon Technologies AG (Germany)
- Nokia Corporation (Finland)
- Qualcomm Incorporated (United States)
Australian patent grace period review: discussion paper
In April 2002, the Australian Government introduced into the Patents Act 1990 a grace period for applicants to protect patents from invalidation by a publication or use of the invention made by, or with the consent of, the nominated person or patentee during the 12-month period prior to the filing date of the complete application.
To date, there have been no relevant court decisions discussing these provisions, and only a single Patent Office decision, Stephen John Grant [2004] APO 11 (26 May 2004). In introducing the grace period, the Government committed to reviewing it after two years, to ensure that it is operating effectively. IP Australia has therefore recently sought comments on the grace period from users of the patent system, specifically whether any users of the patent system are aware of applicants being particularly disadvantaged (or being particularly benefited) by the grace period, whether the wording of the provisions is sufficiently clear, whether the grace period has had any particular impact on the commercialisation of Australian research, and whether the effect of it is well understood, particularly by the research community.
Although many countries around the world have no similar provisions, it is to be noted that the Australia-US Free Trade Agreement requires that:
Each party shall disregard information contained in public disclosures used to determine if an invention is novel or has an inventive step if the public disclosure (a) was made or authorised by, or derived from, the patent applicant, and (b) occurs within 12 months prior to the date of filing of the application in the territory of the Party.
It is therefore clear that the grace period is here to stay, in some form or other.
We will be monitoring the review process closely and keeping our clients and contacts abreast of developments. In the meantime, please contact us if you have any comments or questions regarding the grace period or related issues.
Patent 'fair basis' case decided on appeal
As we reported in the March-April 2004 Intellectual Property Bulletin, the High Court of Australia granted special leave to appeal the decision of the Full Court of the Federal Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2003] FCAFC 29. The case has now been heard, with the High Court unanimously allowing Lockwood's appeal, and declaring – contrary to the decisions of both the trial judge and appeal court – that the claims of Lockwood's patent are fairly based on subject matter described in the complete specification. The case has now been remitted back to the Full Court of the Federal Court for determination of the remaining issues on the appeal to that court, such as the question of whether the claimed invention involved an inventive step.
The High Court held that both the trial judge and appeal court fell into error when applying the 'fair basis' requirement for patent claims, set out in s40(3) of the Patents Act 1990. According to the High Court, when determining whether a claim is 'fairly based' on the matter described in the specification, the relevant comparison is between the claim and the specification when read as a whole, and not between the claim and the perceived 'inventive merit' of the invention.
Considerations of 'inventive merit' should be confined to the question of whether the claims involve an inventive step, and are not relevant when considering whether the claims are fairly based on the matter described in the specification.
Determination of fair basis is not a pure mechanistic comparison between the claim wording and the wording appearing in the invention description. Statements by the patentee in the specification that identify the invention (sometimes referred to as 'consistory clauses') by replication of the words of the claims in the specification, should be taken into account, along with the rest of the specification, in determining whether the claims are fairly based on the description.
The High Court held that the claims of the patent did not travel beyond the overall teaching of the specification, despite the very functional and purposive nature of the claim terminology embracing a wide range of alternative mechanical embodiments to the one specifically described in the specification.
New Zealand trade marks and surnames
All patent attorneys in our firm are registered in both Australia and New Zealand and can therefore act in patent, trade mark and design matters before the Intellectual Property Office of New Zealand (IPONZ). Accordingly, we closely monitor developments in New Zealand as well as in Australia, and we recently noted that IPONZ has reviewed its practice regarding the eligibility for registration of trade marks incorporating surnames.
This review was conducted following the recent European Court of Justice (ECJ) decision in Nichols plc v Registrar of Trade Marks (16 September 2004 – Case C-404/02). In that case, the ECJ considered various factors in determining whether a surname has the required level of distinctiveness to qualify for registration as a trade mark.
In particular, the ECJ considered the common practice of objections being raised to registration based solely on the number of times a particular surname appears on an electoral role. The ECJ found that the criteria for assessing the distinctiveness of a trade mark consisting of a surname should be no different from that applicable to any other trade mark category.
Accordingly, IPONZ will no longer raise concerns as to the eligibility of a mark that contains a surname solely on the basis that the surname appears a certain number of times on the New Zealand Electoral Roll. Rather, IPONZ will assess such applications by applying normal principles as to distinctiveness, as well as considering other factors which may be relevant to surnames.
The IPONZ Practice Guideline was issued on 1 April 2005.
If you require assistance in relation to any patent, trade mark or design matter in New Zealand, please do not hesitate to contact us.
Madrid Protocol trade mark oppositions: amendments to Regulations
A problem was recently identified in the Australian Government's implementation of the Madrid Protocol in Australia.
The effect was that any opposition in Australia relying on a prior right in the form of an International Registration Designating Australia (IRDA) under the Madrid Protocol was technically invalid.
The Australian Trade Mark Regulations 1995 (the Regulations) have been amended with effect from 30 March 2005, so that it is now possible to rely on a prior IRDA as the basis for an opposition under s44 of the Australian Trade Marks Act 1995.
Additionally, if a Notice of Opposition was filed relying on an IRDA before 30 March 2005 (the day the amended Regulations came into effect), such a Notice will be taken to have been validly filed.
A ground of opposition based on regulation 4.15A of the Regulations can also be added to Notices of Opposition filed before 30 March 2005, provided the request is made no later than 30 June 2005.
If you are aware of such a situation and have not heard from us or would like further advice on your situation, please contact us.
New fees schedules
In keeping with our policy of providing top quality service to our clients at competitive rates, we regularly monitor the market and our own work practices. We endeavour to keep rates down through the adoption of economic work practices and have not raised our rates since 2002.
However, the time has come for us to revise our charge scales and a new scale of fees has now been adopted. Details of our new rates can be found at www.aar.com.au/patentattorneys.
We believe that our new rates will be competitive and will enable us to provide our Australian clients and overseas associates with top quality service.
Rob Silberstein joins team
We are very pleased to announce that Rob Silberstein recently joined Allens Arthur Robinson as a Patent Attorney and Solicitor. Rob has extensive patent attorney experience in private patent practice, and joins us from Johnson & Johnson Research Pty Limited. In addition to his legal and patent attorney qualifications, Rob has a Bachelor of Medicine and Bachelor of Surgery, and a Master of Health Law. He joins Dr Trevor Davies, Phil Macken and their colleagues in the growing patent attorney team in our Sydney office.
Our team
Our team of patent and trade marks attorneys is led by Dr Trevor Davies in Sydney and now Andrew Butler in Melbourne, and you can access the services of our team through any of our offices in Australia or throughout Asia. Allens Arthur Robinson Patent & Trade Marks Attorneys delivers a comprehensive patents, trade marks and designs service.
To find an expert, please go to our experts search page.
Who's who in patents
Chris Bird – Partner & Patent Attorney: Electrical & IT, Mechanical, Medical technology
Andrew Butler – Partner & Patent Attorney: Chemical, Mechanical, Medical technology
Dr Trevor Davies – Partner & Patent Attorney: Biotechnology, Pharmaceuticals
Philip Macken – Partner & Patent Attorney: Chemical, Pharmaceutical, Medical technology, Mechanical
Colin Oberin – Partner & Patent Attorney: Chemical, Mechanical, Mining technology
Michael Dowling – Partner - patent advisory and litigation
Jim Dwyer – Partner - patent advisory and litigation
Richard Hamer – Partner - patent advisory and litigation
Philip Kerr – Partner - patent advisory and litigation
Sarah Matheson – Partner - patent advisory and litigation
Andrew Wiseman – Partner - patent advisory and litigation
Who's who in trade marks
Andrew Butler – Partner & Trade Marks Attorney
Jim Dwyer – Partner & Trade Marks Attorney
Tim Golder – Partner & Trade Marks Attorney
Philip Kerr – Partner & Trade Marks Attorney
Philip Macken – Partner & Trade Marks Attorney
Sarah Matheson – Partner & Trade Marks Attorney
Colin Oberin – Partner & Trade Marks Attorney
Jackie O'Brien – Partner & Trade Marks Attorney
Andrew Wiseman – Partner & Trade Marks Attorney
