Most deadlines set by the Australian Patents Act 1990 are extendable after the deadline has passed. The deadline for national phase entry is no exception.

In most cases, the grant of the extension of time is discretionary. In such cases, the failure to meet the national phase deadline must be either the result of

Some examples of errors or omissions presented in extension of time applications are: fa

It is important that there was always an intention to enter national phase in Australia.

In practice, the application for extension of time must be supported by declaratory evidence that sets out the causal connection between the error or omission and the failure to do the relevant act.

The circumstance provision is essentially a "force majeure" provision. Delays by post and courier have constituted the major source of extensions under this category. However, these days, these sources would not likely be available. Anticipation of a court judgement has been held to be a circumstance beyond a person's control. Sickness or accident have also satisfied the requirement of circumstances beyond control.

Lack of funds is not regarded as a circumstance beyond the control of the Applicant.

An inordinate delay in filing the request for an extension of time could be regarded as detrimental to the public interest and so rejected. It is possible to file the request together with the prescribed fees and, within two months of the filing, provide the declaratory evidence in support.

Contact us if you need help with a missed deadline.

Written by Barry Eagar

The innovation patent system was introduced in 2001 to replace the petty patent and to stimulate innovation by local SMEs. An innovation patent provides an opportunity to obtain patent protection for novel innovations that include an incremental improvement over the prior art. Claims of a standard patent must include an inventive step, whereas claims of an innovation patent must meet the lower criteria of an innovative step.

The test to be applied for assessing an innovative step is whether the distinguishing feature of the claim under consideration makes a substantial contribution to the working of the invention as claimed. When formulating and applying the test for innovative step, the courts have stated that “not only is the “innovative step” a lower threshold than the “inventive step”, the latter of which only requires a “scintilla” of inventiveness in any event (reference omitted), but for the “innovative step” one only requires a real or of substance contribution to the working of the invention. (Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 at paragraph 231)”

The primary trade-off for this second-tier protection that is that an innovation patent term is 8-years compared to 20-years for a standard patent.

Nevertheless, since 2001 the innovation patent system has provided applicants and innovators with an alternative for patent protection of innovations that may not meet the inventive step criteria required for a standard patent. Furthermore, the innovation patent is particularly suitable for protection of high turnover products, with a potentially short commercial shelf life. The commercial value of innovation patents can be seen by the level of litigation before the courts for “simple” products, for example a roadside marker post, a self-extending/collapsing hose, and a window winder.

The Productivity Commission and former Advisory Council on Intellectual Property both recommended abolition of the innovation patent system on the grounds that the innovation patent system did not stimulate innovative activity, particularly in the Australian sector.

The Government accepted the Productivity Commission recommendation and was on the brink of abolishing the innovation patent system early in 2018. After industry consultation, the Government decided to defer abolishment of the innovation for the moment, and undergo further industry consultation to understand the requirements of SMEs before the innovation patent system is wiped from the law.

Despite a potential reprieve, the Government seems to be fixated on abolishing the innovation patent system. Since the end of the industry consultation phase in August 2018, the Government with the assistance of IP Australia has been actively drafting legislative amendments to the Patents Act 1990 to end the innovation patent system. Arguably, this decision was made without due and proper consultation with the major stakeholder of the system – Australian SMEs. It appears that the amended legislation will not be introduced into Parliament until 2019.

The Institute of Patent and Trade Mark Attorneys has been lobbying to retain the innovation patent system and has produced a video (follow this link: https://youtu.be/GnI-AvV9tsU) where Australian business owners put forth their independent views about the innovation patent and the consequences of abolishing this system.

As the fate of the innovation patent is still undecided, we strongly recommend that Applicants file an innovation patent as soon as possible prior to the potential demise of the system.

Please contactthe author, Dr Hedie Meka, if you wish to file an application for an innovation patent.

A recent decision of the Full Court of the Federal Court of Australia has clarified the law relating to what role reputation has when assessing deceptive similarity for the purposes of trade mark infringement under s 120(1) of the Trade Marks Act 1995 (the Act).

In Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207, the Australian Meat Group (AMG) appealed a decisionby the primary judge that AMG had infringed two trade mark registrations in class 29 to JBS Australia Pty Limited (JBS; the AMH marks) by use of deceptively similar marks during the course of trade. Trade mark number 1719465 is a word mark consisting of AMH. Trade mark number 515268 (reproduced below) is a device mark comprising the letters AMH within a stylised map of Australia. These features are contained within a chevron shaped ribbon device.

Evidence at trial showed that JBS is Australia’s largest meat processing company with a very strong export market. The AMH marks have been in use by JBS since 1991. The compelling market share of JBS and sales were not in contention.

There were five marks at issue that were used by AMG in respect of processed meat; the following four (4) device marks and the letters AMG (the AMG marks).

The judge at first instance held that each of the AMG marks was deceptively similar to each of the AMH marks.

On appeal, the Full Court found that the primary judge had erred when comparing the marks during an assessment of deceptive similarity. The primary judge found that “the AMH device mark and the AMH word mark had a strong reputation at all functional levels of the market”, citing the decades of use of AMH in the marketplace (paragraph 11). Moreover, the primary judge did not believe that the inclusion of “G” in “AMG” was sufficient to distinguish AMG’s marks from the AMH mark “when AMH has been used in the same market for so long” (paragraph 279). It seemed quite apparent to the Full Court that reputation played a pivotal role in the primary judge’s finding of infringement of the AMH marks. In addition, the Full Court held that the primary judge erred in how reputation of the respondent was utilised in finding an infringement under s120(1) of the Act.

In performing their analysis, the Full Court applied the Full Court’s proposition in CA Henschke & Co v Rosemount Estates Pty Ltd (Henschke), notwithstanding that the Appellant did not rely upon Henschke in submissions. The place of reputation in trade mark infringement was clearly set out in Henschke, which stands for the proposition that the essential comparison in an infringement suit under s 120(1) is between the marks involved, and a broader enquiry that might be undertaken in a passing off action (i.e. involving reputation) is not appropriate for an assessment under s 120(1) of the Act. The Full Court in Henschke also stated that reputation is relevant under s 120(3) and may be relevant under s 120(2) (paragraph 45). The Full Court conceded that reputation may have a role under s 120(1) only insofar as “deceptive similarity from imperfect recollection might be countered by showing the well-known nature of the registered mark and the lessened likelihood of imperfect recollection”.

At trial, the crux of the argument by JBS was that in light of its reputation in the AMH acronym, a customer might be confused in the face of goods bearing the AMG marks and place an order with AMG when the intent was to place an order for an AMH product.

The primary judge seemed compelled by this argument and according to the Full Court embarked on a comparison of the trade marks at issue from the incorrect starting point that a strong reputation existed in the AMH acronym, and that this reputation should be taken into account when assessing deceptive similarity. As noted by the Full Court and in accordance with Henschke, a consideration of reputation is appropriate for passing off but is the wrong test to apply under s 120(1) of the Act (paragraph 68). According to the Full Court, this weight of reputation impeded the primary judge’s ability to give proper consideration to the features of the marks other than the AMH acronym. Consequently, the AMH acronym was afforded a “predominating significance or influence” (paragraph 69), which was inappropriate for a comparison of deceptive similarity, and without that influence the act of comparing the marks is different to that taken by the primary judge. In the milieu of reputation having no place in the comparison, the Full Court then applied the well-trodden imperfect recollection test for deceptive similarity to each of the AMG marks compared to the registered AMH marks (noting the marks must be considered as a whole and through the eyes of a discerning consumer) to overturn the primary judge’s decision.

In most jurisdictions, an invention must be novel on the filing date of the first patent application covering the invention. Australia has a so-called "grace period". The grace period is 12 months from the date of disclosure by an inventor. Any disclosures made during this grace period are disregarded when assessing the patentability of an invention if the patent application is filed within the grace period. That patent application must be a standard, international or an innovation patent application. In other words, a provisional patent application will not trigger the benefit of the grace period.

New Zealand will introduce such a grace period on 30 December 2018. The New Zealand grace period will operate in much the same way as the Australian grace period. The grace period provisions will not apply to disclosures made before 30 December 2018.

Most countries don't have grace periods. So we don't recommend that you rely on them because a self-disclosure can ruin the opportunity to obtain global patent protection.

‘Selection’ inventions usually arise in the chemical or pharmaceutical space, where a subset (species) has an advantage over a broadly disclosed set (genus) of compounds. This type of invention can also be recognised in process patents, where a subset of process parameters is selected from a broad disclosure of the process.

The advantage of pursuing a selection patent is that such a patent directed to a species, fulfilling the criteria discussed below, is entitled to a new priority date, later than that of the patent directed to the corresponding genus.

An important consideration when drafting the specification for a selection patent is to clearly state the advantage/s of the species over the genus: in certain circumstances an amendment of the specification to describe those advantages may not be allowable. This, of course, assumes prior knowledge of the genus disclosure.

What defines a patentable selection?

In summary, it must be more than a mere choice between alternatives: a selection must have the quality of being unexpected (The Carlton Tyre Saving Co’s Application (1973) AOJP 1404).

A useful, albeit old, decision gives some guidance regarding the criteria for a valid selection patent (I.G. Farbenindustrie A.G.’s Patents (1930) 47 RPC 289):

1. The selection must be based on some substantial advantage gained or some substantial disadvantage avoided. 2. The whole of the selected members must possess the advantage in question.

3. The selection must be in respect of a quality of a special character which may fairly be said to be peculiar to the selected group.

A more recent case (E.I. Du Pont de Nemours & Co (Witsiepe’s) Application [1982] FSR 303) also provides that the nature of the genus disclosure does not limit the species selection: formula or enumeration are both available for consideration. In addition, the size of the genus also does not limit species selection: “A selection patent might be claimed for one or several out of a class of 10 million…or for one out of two.”

What are the novelty and inventive step requirements for a valid selection patent?

For a claimed selection to be novel, the genus patent (or any other citation) does not provide an enabling disclosure of the species.

For a claimed selection to be inventive, three criteria must be satisfied:

1. The claimed solution is one of several possible solutions. 2. There is no special inducement or reason for choosing the claimed solution.

3. There is a surprising and unexpected advantage in the claimed solution.

In conclusion, selection patents can be a valuable addition to a patent portfolio initially directed to a broad set of options, where the optimised or preferred subset/s are later identified.

Written by Clarissa Wynne, PhD. Email: cwynne@emip.com.au

I was privileged recently to host a panel during the ABA IP West conference in Newport Beach. The panel included three experts in Chinese patent practice. The purpose of this post, and possibly others, is to share some insights into Chinese patent prosecution and enforcement. In this post, I provide some tips on initial steps should be taken to ensure that you make the best of what is fast becoming the world's best destination for patent applications.

Translations

A significant proportion of Chinese patent applications find their origin in earlier patent applications prepared in English. It follows that these Chinese patent applications are supported by translations. Errors in translation might not be capable of being corrected. This is partially a result of China's strict "new matter" laws. There are also no formal provisions for for correcting a Chinese patent application after issuance. Given that an error might not become apparent until licensing law enforcement, the need to ensure that the translation is accurate is important. Therefore, the selection of a suitable Chinese agent is critical. The agent should be responsible for both the translation and national phase entry. That way, the agent will have the opportunity to ensure that any ambiguities or other issues with the translation can be attended to before national phase entry.

One practical way of addressing this is to consider that the specification you're preparing may very well require translation into Chinese at some point in time. You should choose to use short sentences. Also use simple words as opposed to highly technical terms, if possible. This is good drafting practice anyway given that a contested patent is often read by non-technical people.Draft with a view to amendments

A European patent attorney once remarked to the author that drafting should be an exercise in front-loading. This is also the case in China. Article 33 of the China Patent Laws, which restricts the nature of amendments to patent application documents can be strictly interpreted. This may mean that an amendment to narrow down a broad generic term to address prior art may be limited to specific example(s) provided in the description. It is therefore a good idea to include levels of generic language as fall-back positions for amendment.

For example, an application for amendment by Epson (Chinese Patent 00131800.4) to amend “storage means” to “memory” was refused because the only reference in the specification relating to a storage means was reference to “semiconductor memory”. Such an amendment would have passed muster in the United States, for example. It follows that wording in the specification along the lines of “the storage means may be a memory for storing data, for example, a semiconductor memory” could have avoided this issue.

This is contrast with the more practical view of what constitutes a disclosure in the United States. The approach in China is somewhat aligned with the approach in Europe. Thus, even at the drafting stage, a practitioner should be thinking about support for amendments that may need to be made during prosecution or even for pre-enforcement.

For a sufferer of any respiratory disorder, relief from symptoms provides a benefit in a number of quality-of-life parameters. The team at the Tweed Coast-based AirPhysio are passionate about improving the day to day life of patients with breathing difficulties.

The AirPhysio device (pictured) was conceived and designed to facilitate elimination of pulmonary mucus build up in conditions such as asthma, cystic fibrosis, bronchiectasis and chronic obstructive pulmonary disease. Clearance of mucus, in turn, helps with lung hygiene, and maintain or restore maximum lung capacity. The AirPhysio device is also usable as a general lung exerciser and respiratory physiotherapy device to assist with reducing breathlessness during exercise, increase exercise tolerance, and reduction of recovery times between exercise periods. Rather than provide a drug-based intervention, the device uses a physical process termed Oscillating Positive Expiratory Pressure, which is a combination of vibration of the airways and an increase in endobronchial pressure that results in upward movement of trapped mucus in the lungs for expulsion through coughing or swallowing.

Designed and made in Australia, the AirPhysio device has already attracted national and international accolades, including an international “best product” award at China’s 3rd largest import trade fair and an interview with US TV host Kathy Ireland. Click here to read more about this innovative and life-changing product, or visit www.airphysio.com.

Author: Hedie Meka PhD - Australian Patent Attorney

Case: HRB Innovations, Inc. [2018] APO 63.

HRB attempted to patent a "system for presenting a simplified tax interview to a taxpayer."

The patent examiner rejected the application. He applied the principles of D'Arcy v Myriad Genetics Inc [2015] HCA 35 and other cases that require analysing whether the claimed invention, as a matter of substance rather than form, is suitable subject matter for a patent. According to the examiner, the substance of the invention relates to presenting a personalised tax interview for a tax return which is simpler than a full tax interview. As such, it is simply a scheme and, "as a matter of substance", does not solve a "technical" problem within the computer or outside the computer.

According to HRB, the invention provides a technical contribution. For example, it provides an improved user interface. The improvements to the technology of the graphical user interface are technological in nature because they use certain analytical techniques that are technical. These techniques involve cluster analysis. As such, the claims incorporate specific technological modifications to improve the functioning of a computer, said HRB.

But the cluster techniques were part of the state of the art at the relevant time. For example, the patent specification sets out that one of skill in the art will appreciate that many different clustering algorithms are possible. Thus, the delegate held that the substance of the invention relates to the use of cluster analysis to filter information and determine appropriate indicator variables and prototypes, for simplified tax review purposes. The act of using cluster analysis, generally, for its intended purpose, cannot be said to result in improvement in the functioning of the computer.

The delegate cited Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421when considering the question of an improvement in a computer. "Improvement", according to Perram J, seems designed to capture the computer performing some activity, which it could not previously perform. Given that cluster analysis is part of the state of the art, it could not have caused the computer to be more efficient than had been previously possible.

Author: Barry Eagar

Since the High Court’s watershed decision in D'Arcy v Myriad Genetics Inc ([2015] HCA 35; “Myriad”) regarding the patent eligibility in Australia of DNA isolated from humans, the body of case law regarding nucleic acid-based inventions has been steadily evolving. This evolution is necessary since the High Court made plain that the decision in Myriad was not a blanket ban on the patentability of inventions derived from nature. Rather than draw an immovable line between what is, and what is not, a manner of manufacture, or generate a precise formulation, the High Court provided a general framework within which to assess whether such inventions satisfy s 18(1)(a) of the Patents Act 1990 (“the Act”) relating to manner of manufacture. The Court upheld a case-by-case approach having regard to the substance of the invention, and not simply the form of the claim under consideration.

The decision from the Australian Patent Office in Academisch Ziekenhuis Leiden and BioMarin Technologies B.V. ([2018] APO 49) has applied the principles established in Myriad and subsequent cases [1] to further expand patent eligibility of nucleic acid-based inventions under Australian practice. The present decision sets out with clarity for applicants and their counsel the approach taken by the Australian Patent Office to determine what is patentable subject matter for nucleic acid-based inventions.

The invention under consideration broadly relates to a therapeutic invention for the treatment of Duchenne muscular dystrophy (DMD) or Becker muscular dystrophy (BMD), both common types of childhood forms of muscular dystrophy. DMD is a severe and fatal form of muscular dystrophy. BMD is milder with sufferers remaining ambulatory until later in life and having a near normal life expectancy.

DMD and BMD are genetic disorders in which the gene that codes for the dystrophin protein is mutated. In a non-diseased individual, the dystrophin protein maintains fibre stability during contraction. The genetic mutation in DMD results in the absence of a functional dystrophin protein whereas the BMD dystrophin gene mutation permits synthesis of a partially functional dystrophin protein. This divergence accounts for the difference in severity between the diseases. The problematic mutation is the presence of exon 44 that consequently causes a disruption to production of the dystrophin protein.

The claims under consideration encompass short forms of nucleic acids (oligonucleotides) that convert the mutated dystrophin gene to a form that can produce the partially functional dystrophin protein characterised by BMD, which will prolong the viability of the muscles. The invention provides a method of treating DMD or BMD by inducing skipping of exon 44 of the dystrophin gene, which results in an increase in the partially functional dystrophin protein and/or a decrease in the production of an aberrant or less functional protein. The oligonucleotides claimed were of a specific length, had a sequence complementary to exon 44, and included a modification in the form of a nucleotide analogue that is a locked nucleic acid. The locked nucleic acid modification was included to increase the stability of the oligonucleotide, and thereby increase the functional efficiency of the oligonucleotide.

Delegate Lim reviewed prevailing authority from the High Court and application of this authority in subsequent decisions to apply the following approach for determining the patent eligibility of the subject matter of the claims (at paragraphs 93 and 94):

…to determine what is the substance of the claimed invention, and whether or not that substance has been “made”. I note that the substance of the claimed invention is not necessarily the subject matter of the claim as defined by the words of the claim.

In determining the substance of the invention, I am to consider:

the nature of the contribution to the art; and whether the nature and contribution of the features of the invention claimed as a whole, on balance, weigh towards being characterised as genetic information, or a chemical compound.

Using the above approach, Delegate Lim ruled in favour of the Applicant and thus overturned the Examiner’s objection that the claimed invention is not a manner of manufacture in accordance with s18(1)(a).

The crux of the Examiner’s objection was that the substance of the invention was genetic information that the claimed oligonucleotide encodes, and the “…invention is considered to have a natural counterpart, as the oligonucleotide is the complement of the natural dystrophin gene, and as discussed above, the claim is considered to be genetic information and not a product.” The Examiner completely disregarded inclusion of the non-natural modification of the oligonucleotide.

In response, the Applicant argued that the claimed oligonucleotide is a non-naturally occurring product for use in therapy and is thus patentable subject matter.

Saliently, Delegate Lim rejected the premise that where a claim encompasses an artificially made chemical compound incorporating a nucleic acid, the substance of the claimed invention is not genetic information and consequently is a manner of manufacture. Conversely, according to the delegate it also does not follow as a matter of course that where the subject matter of a claim is a pharmaceutical composition, the substance of the claimed invention is not genetic information and consequently is a manner of manufacture. Ultimately, “consideration must be given to the true nature of the claim, and not simply the form of the claim.”

Whilst acknowledging that the claimed oligonucleotide uses the information embodied in a specific nucleotide sequence and, in some forms, the information corresponds to that contained in genomic DNA, Delegate Lim determined via a thorough review of the specification as a whole and applying the above approach that for the present case, the manner in which the information is used in the working of invention and the result of that use weighs towards the substance of the claimed invention being a chemical compound, and thus a product that is patentable.

Furthermore, the structural features of length and presence of LNA of the claimed oligonucleotide are significant to the working of the invention, and weigh towards the substance of the claimed invention being a chemical compound.

Consequently, Delegate Lim concluded that the substance of the claimed invention is an artificially made compound and thus is a manner of manufacture in accordance with s 18(1)(a) of the Act.

A further point of note in the decision is the Delegate’s particular statement that “no single consideration is conclusive in determining the substance of the claimed invention. Some considerations may be more significant than others.”

This decision is notable not only for expanding the scope of nucleic-acid based inventions, but also the clarity with which the decision was reached. The decision by Delegate Lim provides a further ray of hope that nucleic acid-based inventions can be patentable subject matter in Australia. It is also noteworthy that Delegate Lim analysed the facts of the case de novo to reach the above conclusion and was not partisan to either the Examiner’s view, nor the Applicant’s arguments.

[1] Meat & Livestock Australia Limited v Cargill, Inc ([2018] FCA 51); Arrowhead Research Corporation ([2016] APO 70); Cargill Incorporated v Dow AgroSciences LLC ([2016] APO 43)

Author: Dr. Hedie Meka is an Australian Patent Attorney based in Brisbane and a shareholder of Eagar & Associates.

Case: Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403.

A patent confers certain rights upon the patentee. Usually, the purchaser of a patented article can dispose of that article in any way. The purchaser has an "implied licence" to do so.

Seiko sells printer cartridges covered by an Australian patent. A Malaysian company, Ninestar, refurbishes the printer cartridges. Calidad imports the refurbished printer cartridges.

Seiko sued Calidad for infringement. Calidad argued that its purchase of patented cartridges gave it an implied licence. Seiko argued that the extent of refurbishment resulted in a different printer cartridge to that which was originally purchased by Ninestar.

The original cartridges included integrated circuitry. The integrated circuitry was removed and replaced during the refurbishment.

The Court held that the refurbished printer cartridge was not the same article as that purchased by Ninestar. But the refurbished cartridge was still covered by the patent. It found that there was patent infringement by Calidad.

Burley J. set out a three-stage factual enquiry: First, what is the scope of the invention as claimed in the patent? Second, what is the manner in which the patentee’s product is an embodiment of the invention as claimed? Third, to what extent do the modifications made affect the patented product insofar as it represents an embodiment of the claims?

Author: Barry Eagar - Australian patent attorney.

In spite of the title, this is not a conventional post about to become an Australian patent attorney. Rather, it is a comment on what it takes to become an effective Australian patent attorney.

Patents are complicated intellectual property rights. The purpose of filing a patent application is to have the client (or a patent applicant nominated by the client) own those rights. The client should understand the nature of the intellectual property that is created.

The creation of rights is what makes a patent attorney's work so demanding. We have to draft a patent specification with two things in mind. First, the patent specification will be lodged in patent offices around the world. So your patent attorney should have an understanding of patent laws in major jurisdictions, such as China, Europe and the United States. Second, various experts will have plenty of time to tear the patent specification apart. A patent is a form of property. But ownership can be tenuous. The client may need to enforce the patent. This means that the alleged infringer may instruct a team of patent attorneys and barristers to revoke the patent.

So, particularly when the preparation of the specification is urgent, the pressure on the patent attorney can be significant.

What, then, makes an effective Australian patent attorney?

An effective Australian patent attorney should be able to reduce complex legal concepts into material that can be understood by a client. A good start is having the client understand the nature of a patent. Most of the complex concepts in the Act flow from the definition of a patent. Concepts like novelty and inventive step make sense when one understands the raison d'être of the patent system.

An effective Australian patent attorney should have the ability to regard their work with a jaundiced eye. How can the claims be infringed? What fall-back positions can I take if I have to amend the claims? Are there any other examples of the invention that can be described?

I hope that provides some insight into our profession. The most satisfying thing about the profession is that our clients come to us excited about innovations. This is in stark contrast to lawyers, who often have to meet with clients that are in some sort of trouble. That said, the creation of rights ab initio can be complicated and time-consuming, even if it is gratifying.

Case: Industrial Galvanizers Corporation Pty Ltd v Safe Direction Pty Ltd [2018] FCA 1192

Practice Notes:

The Summary of the Invention can provide guidance to a court. It may therefore be useful to keep the Summary (or the Statement of Invention) as broad as possible. It may even be useful to include a paragraph in the Summary that is akin to a Statement of Purpose.It remains important to provide as many embodiments of the invention as possible.

Brief Discussion

The instinct to draft a claim as broadly as possible is natural. That is "safer" than attempting the Scylla and Charybdis of drafting claims that cover preferred embodiments while still providing effective protection. However, this case indicates that such practice may result in the patentee having narrower protection than it may think. The legislation as it existed before the Intellectual Property Amendment (Raising the Bar) Act 2012, was applicable here. This post is limited to the issues of "Fair Basis". This concept is no longer applicable. However, the requirements are now stricter, so this case is useful in assessing the minimum compliance requirements. Also, the particular aspect of fair basis relevant here is that to do with the relationship between a patent before and after an amendment, referred to as "external fair basis". Safe Direction contended that the Patent discloses an invention which is a post for a guard rail system, or a guard rail assembly comprising such a post, having axially aligned apertures or slots located above the mounting hole (the axial alignment feature). It submitted that a combination of claim 1 of the Final Patent including only “said post including one or more apertures or slots spaced from spaced mounting hole and at or below said upper edge” does not adequately limit the scope of the invention claimed to meet the breadth of the disclosure in the Patent. In particular, the breadth of that integer indicates that the claim covers a non-axially aligned configuration where the apertures or slots may be spaced adjacent to or even below the mounting hole. This, Safe Direction submitted, claims matter not in substance disclosed in the Patent. On the other hand, Industrial Galvanizers (Ingal) submitted that Safe Direction mistook the nature of the matter disclosed in the Patent. It contended that each of the elements of claim 1 was present in the Patent and that Safe Direction erroneously asserted that the axial alignment feature was disclosed in the Patent as a mandatory component of the invention claimed therein. In the court's view, the disclosure of the Patent is of a post for a guard rail system and a guard rail assembly that consists of a number of features and which includes a limitation that the apertures or slots be located above the mounting hole and that they be axially aligned with a central longitudinal axis of the mounting hole (that is, the axial alignment feature). The apparent purpose of the particular alignment of the apertures or slots is, as Dr Plaxico (expert witness) said, to create a pathway for the bolt and the lands between these slots which are meant to create resistance by impeding the bolt’s upward movement through the slots. In reaching this view the court had regard to the whole of the disclosure of the Patent. According to the court, the Summary of the Invention provides the broadest description of the invention. This is an interesting approach, since it is the claims that define the invention. This would appear to be an over-reliance on the description for an assessment of the scope of the claims. The Summary, it was held, informed the skilled reader that the invention provides a combination consisting of a post for a guard rail system that includes three requirements: first, that the post includes an elongated mounting hole for the connection of the guard rail to the post; second, that it includes one or more apertures or slots located above the mounting hole; third, that the apertures or slots are axially aligned with the central longitudinal axis of the mounting hole. The second and third of these requirements contain the limitation present in the axial alignment feature referred to by Safe Direction. The purpose of the axial alignment of the apertures above the mounting holes was discerned from other parts of the specification and from the expert evidence. For example, the patent sets out that the land between adjacent slots is adapted to be torn or sheared by a bolt which is initially located in the mounting hole as the guard rail moves upwards relatively to the post during a collision. In the Detailed Description of the specification an embodiment involves the coaxial arrangement of a series of slots or apertures that are substantially the same width as the mounting hole. The slots or apertures have a central longitudinal axis collinear with each other and the central longitudinal axis of the mounting hole. The Detailed Description describes the lands being sized to enable the bolt that is located in the mounting hole to break or fracture the lands as the rail is forced upwards in a collision. The Patent describes that the post and rail assembly will ensure that the rail is secured to the post but is not clamped to it, thus making it easier for the bolt to slide up through the lands and through the adjacent slots towards the top edge in the case of a collision. The Patent also refers to the use of a nut which is preferably torqued onto the bolt so that the rail will only move upward when subjected to a force of collision of a predetermined amount. It was apparent to the court that the axial alignment feature serves the purpose of facilitating the controlled upward movement of the rail in the event of an errant vehicle coming into contact with it. Professor Grzebieta (expert witness) gives the opinion that the purpose of the lands between the apertures and slots is to allow “the guard rail to remain in place for as long as possible by its controlled released [sic] from the post, which in turn facilitates redirection of the errant vehicle away from the hazard”, and that making the lands between slots frangible or weakened in portions is to assist in that process. Nothing in the language of the Summary of the Invention suggested to the court that the invention does not include the limitation contained in the axial alignment feature. It held that the Summary of the Invention identified the broad combination of features representing the combination of the “present invention” and the subsequent paragraphs refine or explain those features. Nothing in the Summary of the Invention suggested to the court that its broad disclosure, which specifically identifies the axial alignment feature, is but one embodiment of the invention disclosed. Furthermore, the Patent describes no combination of elements where the apertures or slots are not mounted above the mounting hole and in axial alignment with the centre of the mounting hole. In a show of lip-service to the well-worn authority of claim interpretation, Decor v Dart FCA 682, the court held that the embodiments are only examples of the invention described, and do not serve to limit its scope. Nevertheless, the court held that the specification of the Patent is to be read as a whole in order to understand the matter disclosed, and the repeated references to upward force causing the bolt to move upward relative to the post reinforce the skilled reader’s understanding that the axial alignment of the mounting hole and apertures or slots is an indivisible part of the combination identified as the patentee’s invention. The court referred to a description provided by the expert witnesses as providing a technical explanation for the importance of the relative positioning of the mounting hole to the apertures and for the emphasis placed in the Patent on the particular arrangements described. That confirmed to the court the importance of the affirmative disclosure in the specification of only apertures located above the mounting hole and the importance to be attached to the Statement of the Invention (the Summary). It served to reinforce the court's view that the patentee disclosed, and intended to disclose only a form of release mechanism that involves the axial alignment feature. It is relevant to note that the court identifies a "concession tied up in Professor Grzebieta’s observations in the joint expert report" that whilst a slot could be used in another way if differently arranged, the Patent does not describe any such aperture arrangement or use. The court held that the language of the claim places no constraint on the location of the apertures or slots. They may be located in a position that is not axially aligned with the longitudinal axis of the mounting hole and they may be located next to or below the mounting hole. Thus, the patent (after the amendment) claimed matter that was not in substance disclosed as a result of amending the application.

According to the Wikipedia, a blockchain is "a continuously growing list of records, called blocks, which are linked and secured using cryptography. Each block typically contains a hash pointer as a link to a previous block, a timestamp and transaction data. By design, blockchains are inherently resistant to modification of the data." And "for use as a distributed ledger, a blockchain is typically managed by a peer-to-peer network collectively adhering to a protocol for validating new blocks. Once recorded, the data in any given block cannot be altered retroactively without the alteration of all subsequent blocks, which requires collusion of the network majority." The Harvard Business Review also has an interesting article about blockchain technology.

But how does this relate to patents?

A number of corporations have obtained blockchain patents. Security First Corporation is one of the early players. Considering their website, it is no surprise that they have an interest in this patent field.

A method for securing streaming of a data set from a first location to a second location, the method comprising: generating, using processing circuitry at the first location, at least two portions of data from the data set, wherein each of the at least two portions of data respectively contains a substantially random distribution of a respective subset of the data set; streaming from the first location to the second location the at least two portions of data over at least one communications path, wherein the at least two portions of data stream separately from each other as at least two streaming portions of data; and restoring, using processing circuitry at the second location, data from at least a subset of the at least two streaming portions of data, wherein the data is restored as the at least two streaming portions of data are being received at the second location.

The priority date of this patent is 25 October 2004. If that seems old, consider U.S. Patent 4,924,513A, which has a priority date of 25 September 1987. I began my career in 1990. The most technologically advanced machinery on my desk was an analogue Dictaphone.

I won't set out Claim 1 here. It's a little verbose. In short, it deals with transmitting data over a network channel using various encryption keys that are made known only to those network devices that are permitted to handle information encrypted with the encryption keys.

Whether this is strictly a blockchain is debatable. However, what is quite clear is that this and other old patents have long since anticipated the principles of blockchain.

Where does this leave patents?

It is trite law, particularly in Australia and the United States, that simply characterising data is not enough to clear the subject matter bar of our patent systems, as unique as the application may be.

Without getting into the intricacies, some of which are explained here, an invention needs to be a technical contribution to a particular field. Sometimes, it's enough to say that the computer works more efficiently as a result of the execution of the software. For example, a new or improved operating system may be patentable. In the case of a blockchain application, it could be argued that the establishment of a secure network is a technical contribution. Applying the tests set out in the notorious NRDC case, it could be argued that the execution of a blockchain application results in an artificially created state of affairs and in the generation of a vendible product. So, the "weed-free field" of NRDC could be compared to a secure data communications network.

However, as any follower of the blockchain movement will tell you, the field is incredibly busy, with innovators and entrepreneurs coming up will all sorts of different applications, all making use of the same underlying technology. It's going to get increasingly difficult to conceive of an application that ticks the boxes for proper subject matter.

So, what's the answer to the question in the title? In my view, hope. The rate of blockchain patent applications is rising quickly. Provided the application of a blockchain product involves technical difficulties, the product should be patentable, at least in the United States. That said, it is imperative that you do the proper research before embarking on what could be an expensive patent journey.

For those of us of a certain vintage, the term “bum bag” has connotations of stonewash jeans and National Lampoon Vacation movies.

Thankfully, Emily Bitkow and Sarah Hua, the team behind VIVRA®, have created a stylish and functional alternative for the transport of small personal items such as phones, cards, and keys. The VIVRA® pouch (pictured) has a belt-free bi-fold design that securely attaches to the waistband of clothing via a magnetic connection. Due in part to the strength of the magnetic connection, the VIVRA® pouch is suited for both leisure and fitness use. What distinguishes the VIVRA® pouch is a design that intersects between functionality and fashion.

In today’s market, the success of a product is intimately linked to the power of branding and harnessing social media. This is a facet where the VIVRA® brand excels. Emily and Sarah leverage social media through Facebook, and in particular Instagram to promote the brand values of fun, fitness, and vitality. The end result is a dynamic brand campaign, aptly dubbed the VIVRA® Movement, that embraces the vibrant personalities of Emily and Sarah whilst also appealing across a broad market share.

The VIVRA® Movement seems unstoppable, and it is particularly gratifying that VIVRA® is a Brisbane-based company represented by Eagar & Associates. For more information about VIVRA®, please visit www.vivra.com.au.

Hotel Chocolat is a UK-based chocolate maker that distinguishes itself from competitors by growing the cocoa used to make the chocolate in their products, and by the quality and authenticity of the other ingredients of their products. Hotel Chocolat has built a brand that conveys luxury and sustainable business practices. Therefore, the appearance on the shelves of a UK supermarket, Waitrose, of what is arguably a copycat product of lower quality did not sit well with Hotel Chocolat, who viewed the Waitrose product as erosion of their brand and brand values.

Hotel Chocolat alleged that the Waitrose branded chocolate slab infringed its registered European Community Design of a curved chocolate slab, and demanded removal of the product from stores. Waitrose denied the allegation. Unfortunately for Waitrose, there were reported instances of consumers questioning whether Hotel Chocolat were contracted to produce the curved chocolate slab for Waitrose. Although this matter was not litigated, demonstration of actual confusion in the marketplace undermines a defence to deception in the marketplace.

According to Hotel Chocolat, the initial demand to Waitrose seemed to fall on deaf ears. In a clever marketing move, Hotel Chocolat offered to swap a Waitrose product with a Hotel Chocolat product without charge in a so called “Slabgate amnesty”.

Despite Waitrose’s position that their product did not infringe Hotel Chocolat’s registered European Community Design, Waitrose has agreed to cease stocking the product once existing stock has been sold, citing the desire to avoid a protracted legal dispute. It was certainly brave of Hotel Chocolat to take on the might of Waitrose, and without a registered European Community Design, the strength of Hotel Chocolat’s position may be been diminished.

This story once again underscores the importance of registering and enforcing your intellectual property rights, particularly in those instances of a carefully cultivated brand.

Small and medium-sized enterprises (SMEs) understand the value of marketing campaigns but are often not in a financial position to prioritise those activities. The trade marks system can help, with the provision of two useful and directed registration options: collective and certification trade mark registrations. We will provide a taste of each in this article: don’t hesitate to call us if you think your business may benefit from one of these options.

Collective Marks

A collective mark is generally owned by an association, public institution, co-operative or the like, and is available for use only by members of that organisation. The collective trade mark registration functions as an indicator to the public that the standard of certain features of the goods or services in respect of which the mark is used, is maintained by the owner of the mark.

Collective marks are also used to promote products which are characteristic of a given region or manner of manufacture, for example PECORINO ROMANO, LAMBRUSCO and PARMA (see below).

Registration of a collective trade mark has the same requirements as a standard application. If you are considering this option, ensure that you select a trade mark that is distinctive and not descriptiveof the goods or services that your organisation provides. This will ease the process of registration.

There are currently 317 registered collective trade marks on the IPAustralia database. Some examples are:

Certification Marks

Certification marks are registered in respect of compliance with defined standards. These standards must be provided to the Trade Marks Office at the time of the application, and they are reviewed by the ACCCbefore registration is permitted. The owner can be anyone that can certify that the relevant products meet the required standards, and use of the mark is not limited to membership: anyone whose product meets the required standards can use the mark.

Once again, these registrations can be a very powerful tool for SMEs wanting to indicate to the public a consistent quality standard of goods or services. As with collective marks, registration of certification trade marks has the same requirements as a standard application. Select your mark with care, and be prepared to change it should it be found to be descriptive or otherwise difficult to register.

There are currently 513 registered certification marks on the IPAustralia database. Some well-known examples are:

Give us a call if you would like more information on collective and certification trade marks, or any other intellectual property matters.

Trade mark protection can apply not only to traditional signs such as words and images, but also to non-traditional signs such as sounds, shapes, and colours.

Colour trade marks have been, and continue to be, a controversial and powerful form of trade mark protection. In Australia, colour marks have been contested at the Federal Court level, the most notable being Woolworths Limited v BP plc ([2006] FCAFC 132) for the colour green in respect of service stations and Cadbury Schweppes v Darrell Lea Chocolate Shop ([2006] FCA 446) for the colour purple in respect of chocolates.

The value of a colour trade mark as part of the brand’s overall marketing is beyond dispute. A striking example is the Tiffany & Co blue. A further example is the red sole of a Christian Louboutin stiletto shoe. The average consumer of women’s shoes would immediately associate a red soled stiletto with Christian Louboutin, which is a luxury item that signifies glamour and prestige. Australian trade mark number 1352410 to Christian Louboutin protects the colour red applied to the sole of a high-heeled shoe, and has been registered since 2010.

In 2013, Christian Louboutin commenced proceedings in a Dutch Court against Van Haren Schoenen BV claiming trade mark infringement of a registered European trade mark. Van Haren sold a range of red-soled shoes throughout the Netherlands. The Court ruled in favour of Christian Louboutin. In response, Van Haren alleged claimed that the registered European trade mark to Christian Louboutin was invalid on the grounds that the mark consisted exclusively of a shape that give substantial value to the goods. Van Haren asserted that the mark is a two-dimensional figurative mark that consists of a red coloured surface, and as such cannot be subject of trade mark protection under European Directive 2008/95.

The Dutch Court referred the matter to the European Court of Justice to address the question of whether a sign consisting of a colour applied to the sole of a high-heeled shoe, consists exclusively of a ‘shape’. On 12 June 2018, the ECJ handed down their judgement in Christian Louboutin v Van Haren Schoenen BV (case C-163/16) in a keenly anticipated decision. The ECJ held that the mark held by Christian Louboutin for the colour red applied to applied to the sole of a high-heeled shoe is a valid mark under European trade mark law.

Saliently, the mark held by Christian Louboutin did not seek to protect the shape of the shoe, but rather sought protection only in regard to application of the colour red to a specific part of that product, namely the sole. Moreover, the scope of protection explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration. Under these circumstances, the ECJ held that a colour per se, without an outline, does not constitute a ‘shape’ under the definition of an excluded sign, and is a valid trade mark.

The decision would come to an immense relief to Christian Louboutin as the position of the authorities was placed in doubt by an opinion issued by the Advocate General of the ECJ in February 2018 that a trademark combining colour and shape may be refused or declared invalid on the grounds set out under EU trademark law. The opinion of the Advocate General seems not to have been endorsed by the ECJ.

This case also highlights how the interests of consumers are inter-related to trade mark enforcement. The red sole of a high-heeled shoe has been the badge of origin for Christian Louboutin products for 26 years, and is synonymous with luxury and quality. Consumers should feel comfortable that if they purchase an expensive red-soled high-heeled shoe, that it is a genuine Christian Louboutin product.

A recent Supreme Court (WA) case (Milankovic Designs & Project Management Pty Ltd v Di Latte [2018] WASC 14) highlights the importance of understanding the contractual and assumed relationship between an architect/designer and a client.

The facts of the case are as follows: the Client engaged the Designer to design and prepare drawings for his new home. An agreement between the parties specified that the design would be staged, as would payment to the Designer. The agreement was silent on copyright ownership of the designs and drawings, and silent on any licence of those designs and drawings from the Designer to the Client.

As in any interesting story, after preparation of plans for stage one of the new home, the relationship between the parties broke down. The Client promptly engaged an Architect to create plans (which included construction drawings of the Designer) and build the home accordingly.

The Designer successfully sued the Client AND the Architect for copyright infringement to the tune of almost $160 000 (the amount that the Designer would have earned for stage two under the agreement).

The Client argued that there was an ‘implied term’ in the agreement with the Designer that allowed the plans to be used to construct the home (essentially a licence). The Architect argued that he was an ‘innocent infringer’ as he believed that the Client was entitled to use the drawings. The Architect never reviewed the agreement.

Both defences were rejected.

The key considerations here are:

Contracts between an architect/designer and a client are a class of contracts into which a licence is implied UNLESS such a licence is excluded by an express term, OR is inconsistent with the terms of the agreement (the judge found the latter to be the case here).The implied licence extends to enable builders and the like engaged by the owner to make copies of the plans in order to construct the property

Best practice is to understand the express and implied terms of such an agreement, whether you are the client, the architect, designer, builder, or third party joining the story at a later date.

A cardinal sin in the management of a patent portfolio is to lose track of what's covered by a patent and the commercialised product. In their enthusiasm to file a patent application, inventors often lose sight of the need to ensure that the invention is capable of being designed for manufacture.

It is usually the manufactured product that is copied.

You need to bear in mind that an infringer will more than likely be copying your manufactured product. Your ability to enforce your patent rights could be severely restricted if your patent is not accurately aligned with the product. So you should at least be satisfied that the material you are presenting to your patent attorney is capable of being manufactured at an acceptable price.

Investors like to consider a commercial-ready package

I always enjoy chatting to clients about their business plans for the invention. In my experience, it is very difficult, if not impossible, for an inventor to generate any sort of investor interest without a commercial-ready package. By that I mean a design for manufacture, details of the cost of manufacture, sale price, distribution channels and at least tentative orders. In other words, an actual business that can be sold. Of course, it may not be your long-term goal to build a company that sells widgets. But you can't expect an investor to be interested in an invention that is completely untested.

Of course, not all inventions are the same. It may be necessary to file a patent application with some level of ignorance of all the commercial aspects. But you should do your best to satisfy yourself that the patent application covers a product that is as commercial-ready as possible.

Are you considering exporting your brand? Two things should concern you. Will you be infringing existing rights? Can you get trademark registration overseas?

Australian brands make great exports. So it makes sense to consider international markets. The question of intellectual property infringement looms large in the minds of many exporters. Seizing of goods by customs and injunctions against sale are examples of the consequences of infringement. And having one brand for Australia and another for the United States, for example, is impractical and expensive.

The concerns can be addressed by adopting a distinctive trademark. Please read this article. The more distinctive a trademark, the less likely it is that there will be conflicts with other trademarks.

But you may already be set on a brand. Either way, you should consider searching.

A good start is a simple Google (registered trademark) search. It is possible to select regions with the "advanced search option." This is important, because the location of your local server is known and the default is to get local results. Remember that any brands or trademarks that you find are only relevant for the same or similar goods or services in respect of which you are using or intend to use your trademark. So, if you discover similar brands, you need to check on the goods or services to which they are applied. Do call your trademark attorney if you have any doubts.

There are a few free databases that you can use.

My "go-to" database is the Global Brand Database,hosted by WIPO. It’s a good place to start.

For searching specifically in the United States, you can have a look at TESS, which is the public trademark search portal of the USPTO. However, the United States also has state trademark registries. You might think that you are clear, only to find that you infringe a trademark registered in the state in which you want to do business. You will need a search professional to help you with searching through those registers.

For Europe, there is Tmview, which is a free-to-use database. At the time of this writing the portal boasted 46 million trademarks.

So, between the above sources, you should be able to address those concerns. However, we always recommend a professional search and an in-depth discussion with your trademark attorney before launch. In fact, the best time to talk to your trademark attorney is before you even select a brand.

Written by Barry Eagar - beagar@emip.com.au

A granted patent is a powerful monopoly that allows the rights holder to control exploitation of the invention as claimed in the patent claims. Conversely, being on the receiving end of an allegation of patent infringement is not only disruptive, but potentially costly.

As such, a crucial part of any commercialisation plan is an understanding of whether the planned commercial activity infringes the intellectual property rights of others. This is also known as a freedom to operate (FTO) analysis. The prudent approach is to understand the FTO landscape prior to substantial investment into product development, marketing, and manufacture.

An FTO analysis typically starts with a search of a patent office database of pending or granted patents in the jurisdiction of interest. In the first instance, the search should be date filtered since a granted standard patent has a 20-year term. A patent term can be extended for pharmaceutical patents only, but only for a limited time period. For some products, a search of the design registration database may also be required. In addition to limiting a search by subject matter, other search terms that may be useful include name searches directed to applicants or inventors that are active in the technology field.

Due to the complexity of an FTO analysis, a patent attorney should be involved in formulating the search strategy, reviewing the results, and assessing whether there is an FTO obstacle.

If the FTO analysis identifies potential obstacles to commercialisation of the product or method, there are options available to remove these obstacles.

It may be cost and time effective to design around the monopoly carved out by the patent claims to avoid infringement. The scope of the design around may vary from minor changes, to significant modifications that may result in an improvement worthy of being the subject of a patent application. The design around option may be advantageous if the FTO analysis is conducted early in commercial development where any changes to the product or method will not result in substantial delays or financial losses.

Entering into a licensing agreement with the patent owner, or purchasing the patent outright, may be the most time effective avenue for clearing a path to commercialisation. Of course, such commercial arrangements are linked with license fees, on-going royalty payments, or when a granted patent is acquired, a one-off purchase fee. Furthermore, a licensing agreement may result in constraints on how the commercial product or method is exploited. If your product is also protected by a granted patent, a cross-licensing deal may also be available.

Although it is assumed that a granted patent is valid, there may be scope to challenge the validity of a granted patent to either (i) reduce the claim scope; or (ii) remove the patent from the Register. In Australia, it is possible to file a request to re-examine a granted patent on certain grounds. Re-examination may be particularly useful if there is prior art that was not considered by the Examiner during initial prosecution.

In light of the potential commercial and financial disruptions that a patent infringement action may have on a company, it is advisable to include an FTO analysis as part of a risk management strategy. Your patent attorney can assist with formulating an approach to suit your budget and commercial needs.

Author: Dr Hedie Meka - hmeka@emiplaw.com

Here is an excellent article by Jason Koch of Invention Steps. Jason is an experienced design engineer. He helps inventors bridge the gap between invention and commercial-ready development.

My advice to inventors embarking on this mission is to do their research, and a lot of it. Each manufacturing company is different in respect of quality and ethics. Having worked with Chinese manufacturing companies, I can fairly say that you need to nurture each company from the start. This allows you to "mould" the company to suit your needs. Many Chinese manufacturers will supply a cheap quote to hook you in and then supply poor quality items. It is going to be a challenge from the start to get your product exactly how you want it.How to do this?

When you first approach a company I suggest you have standards set in place. Those can be based on a physical sample, a 3D or a 2D drawing. Whether you need to get a die made or a fabric item sewn together you always need to be provided with samples to approve. If your samples do not reflect the standards as set out in the drawings then let them keep developing samples till you reach your desired quality. There are hundreds of issues that can arise from poor quality manufacturing. You must control and guide the manufacturer to ensure it understands the standards of quality you want. Typically poor quality comes from the manufacturer trying to cut time or using an alternative "cheap" material. You need to be able to say no. This constant back and forth sometimes pushes inventors to their limits. That's why I suggest that you work with a specialist who can take on the manufacturing and pre-empt issues before they arise.If you do get to a point where you are happy with the quality (it will come eventually) then inform the manufacturer that you will reject any item that is not similar in quality. This gives you the right to refuse payment for rejected parts. Where possible always pay 50% upfront and 50% on approval of goods. Not every manufacturer will do this but typically if you have had a long working relationship with a manufacturer there should be an element of trust.Set quality assurance systems in place. Work with your manufacturer and point out areas that are prone to be of poor quality and ensure these areas are checked at regular intervals. The way I work with my manufacturers is to check 100% of all parts to a point where we have a good continuous success rate. From that point reduce to 50% and then, depending on quantities 10% down to 5%. Please also allow for spot checks. When you get down to 10% and 5% every item that is checked needs to be documented.

Manufacturing inventions in China isn't for the faint hearted. Proper control and communication requires plenty of patience. Sometimes it's worthwhile paying to enlist the help and support of companies or consultants in this field. Hopefully this post will help inventors to understand a little more about manufacturing in China." By: Jason Koch

Let me know if you would like a meeting with Jason. Alternatively, you can email him at jason@inventionsteps.com.

A lot. But perhaps for different reasons than you might think.

A name or brand is for your prospective customers or clients to remember you by. If you can keep that in mind then most of the battle is already won. It doesn't matter that you might find the name jarring. It might even stir some unpleasant memories. So what? It's not about you, it's about your target market.

Your brand is not for you!

It's not possible to know whether or not your name will be "liked". It doesn't matter. All you want is for it to be memorable. Everyone is different, so while you may like the name, your biggest prospective customer may dislike like it for some reason. You can't win by trying to figure out what your target will "like". You can win by figuring out what your target will remember.

Avoid the expense of having your trade mark application rejected

Recall is a function of your brand's ability to distinguish your product or service over those of your competitors. This aligns directly with our Trade Marks Act that requires a trade mark to be capable of distinguishing in order to be registrable. You can avoid the expense and inconvenience of having your application for registration rejected if you choose a memorable and distinctive brand.

The power of recall

You lose the power of recall as soon as you choose a brand that's even slightly descriptive of your product or service. You don't want your targets thinking about characteristics of your product when they look at your brand. There's a danger they might forget that the brand is yours. There's an absolute plethora of "green" stuff going on at the moment. So what do the ill-informed do? They use names with "eco" or "enviro" in them. Or they choose frogs, leaves and the like. Not clever. How do we tell which from which? It's just too hard. But if I called an eco-product "Krud", it would stand out like a sore thumb. That's exactly what you want!

Words or Logos?

Word of mouth is one of the most powerful distributors of information. Logos and pictures can be pretty to look at, but how do you convey them to your friends? A word can be disseminated in a number of different ways. A logo is only visual. But should you use logos and words in combination? No, rather not. One small, highly distinctive piece of information should label you.

Think of social media. You can't tweet a logo. You're not going to post a logo into Facebook. It's all about the words.

Some General Rules

Repetition is how your name will stick. So choose a name that is easy to say. Also, keep it short. Aim for no more than two syllables. We're all wallowing in a sea of information. Your name needs to be short, sharp and disruptive.

Connotation can be important, of course. But perhaps less so than you might think. For example the word "Krud" can be regarded as being associated with sewage, which is distasteful. On the other hand, sewage and other similar organic material form an important aspect of environmental concerns. What may appear negative, might actually be positive.

Of course, you don't want to offend people. So if you're exporting your brand, cultural issues in the landing country should be considered.

Look at what your competitors are doing. Pull all their brands together and make sure yours stands out. You don't want your name to be recognized as belonging to a particular class of product or service provider, as has happened with the "green" brands.

A final word

Dare to be different! Remember that old saying: "It's the squeaky wheel that gets the oil". So it is with branding. Be loud, different and bold.

Author: Barry Eagar - beagar@emiplaw.com

The Delegate of the Commissioner of Patents recently held that a system for facilitating governmental lottery play over an electronic network failed to meet the subject matter requirements of our Patents Act (Elot, Inc. [2017] APO 55 (7 November 2017)).

The decision is useful because the Delegate cites several useful cases, including the venerable NRDC High Court case. The Delegate also cites the England and Wales Court of Appeal (Civil Decision) of Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application [2006] EWCA Civ 1371.

Distilled from these cases is the need to determine the substance of the invention. The substance of the invention is the contribution to the field of the invention that is alleged by the claims. The query is then whether that contribution is technical in nature.

The Delegate found that the substance of the invention was nothing more than a new scheme for facilitating governmental lottery play over an electronic network. The new scheme or method did not produce a practical and useful result outside the realm of business innovation. In other words, the contribution was not technical in nature.

Understanding patent claims can be a complex task. However, what is important is that the specification itself contains information that has technical value. This may allow amendments to the claims to overcome a subject matter rejection raised by a patent examiner.

The claims may still fail the test even though they describe technical features, such as servers and other devices. See, for example, this excerpt from the well-known “Myriad” case (D'Arcy v Myriad Genetics Inc [2015] HCA 35 (7 October 2015)): “Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.” Also, in the 2015 case of Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:- “A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that.

It is apparent that there are no hard and fast rules. However, it is useful to go back to the principles that form the basis of patent law in general. Patents are intended to reward technical contributions to society. That word “technical” is critical. Where devices such as computers are involved, it usually requires some mechanism by means of which the operation of the device is improved. In other cases, the contribution must be more than just information.

This aspect of patent practice in Australia is currently in flux. However, all indications are that a more liberal approach to subject matter is not likely in the near future.

Our client, Indee, is a San Francisco landing pad Alumnus. Congratulations to them!

You can read more about the landing pads helping market-ready startups and scaleups taking their businesses global.

We wish Indee all the best in their journey!

We are delighted to announce that our client, AirPhysio, won the Start-up of the year and were named a finalist in the Business of the year at the Optus MyBusiness awardsnight.

It has been our privilege and honour to work with the dynamic team and AirPhysio. We are expecting even greater achievements with their amazing products.

I have recently received a number of enquiries from inventors looking for patent protection to cover an app.

The law has changed significantly in the last few years. What seems to be happening is that the authorities are starting to look at the “gist” or “essence” of an invention. So, even though the claims are directed to technical material, they may still fail because what they are trying to do is to claim, say, a business method, using technical terms. See for example this excerpt from the well-known “Myriad” case (D'Arcy v Myriad Genetics Inc [2015] HCA 35 (7 October 2015)): “Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.” Also, in the 2015 case of Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:- “A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed."

An app is a software product and so does fall within the category of products that can be covered by a patent. But what does your app actually do? As a general rule, if you're just receiving information, re-arranging it and then presenting it, then it might be difficult to convince an examiner or a court that your invention is "proper subject matter" for a patent. But proper subject matter aside, you need to bear in mind that changing information and not structure or the manner in which that information is manipulated could result in the invention falling foul of the "novelty" and "inventive" step requirements.

How clever is your app? A patent examiner or a court is more likely to favor an invention in which the mobile device is used to perform some relatively complex or clever algorithms. So, for example, if your app is a directory-type app, it is less likely to attract patent protection than an app that is capable of predicting stock price changes using heuristic algorithms. Even so, such latter applications may still not pass muster if they are, in essence, business methods.

Then there's the timing. It could take up to 4 to 5 years from the date of our first meeting before you achieve patent protection. Some apps have been around for that long and are proving to be very successful. Others tend to fizzle out after a few years, even if they have generated significant cash flow during that time. While it is possible to put competitors on notice once a patent application is published, it might be difficult to obtain a damages award for the period that the patent application was pending. Of course, many investors will require that you file a patent application. But if that's not your model, then you do need to bear the time factor in mind.

How will you enforce the patent, if and when it is granted? A patent application must set out a full disclosure of the invention and how it is to be enabled. However, an infringer does not have the same obligation. The app may be of the type that would indicate clear infringement just from executing the copy. But there may be cases in which you simply cannot determine whether or not your invention is being copied, even though you are losing market share.

And never forget the cost. It can be very expensive to have a patent application prepared and filed for a software product. Not only that, but the cost of prosecuting the application through to grant of a patent can also be extremely costly. This is a function of the difficulty in writing software patent specifications. It is also a function of the fact that there seems to be a large amount of art out there which is difficult to filter and analyse. While the examiners are improving, it can be difficult to convey an understanding of the invention to an examiner.

So, at the end of the day, think carefully before going down this route. As a general rule, unless you have a good budget or keen investors and a product that is relatively sophisticated from an algorithmic point of view, the journey will more than likely be harrowing.

Author: Barry Eagar (beagar@emiplaw.com)

A COMPARISON OF TRADE MARK USE REQUIREMENTS BETWEEN AUSTRALIA AND THE UNITED STATES

It is fair to say that a trade mark is a powerful form of intellectual property. The value of a trade mark to an owner was embodied by the Full Bench of the Federal Court of Australia in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at 19:

"Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else." Please see this postfor some guidance on the requirement of distinctiveness.

As such, at the core of a trade mark as a strong intellectual property right is use of the mark during the course of trade. Absence of use of a registered trade mark in respect of the claimed goods and/or services for commercial purposes places the mark at risk of cancellation. The requirements for trade mark use in each jurisdiction generally differ, and failure to meet these requirements may lead to irrevocable loss of a registered trade mark. This article will outline the contrasting approaches to trade mark use requirements in the United States and Australia.

United States

At the time of filing a trade mark application in the United States (“U.S.”), the Applicant must include at least one legal basis for filing the application. Filing a U.S. trade mark application may either be based on:

use in commerce;a foreign application for the same mark;a foreign registration for the same mark; and/oran international registration for the same mark. An application can be filed on multiple bases.

For an application filed on a use in commerce basis, the mark must be used in commerce in the U.S. on all the goods and/or services claimed in the application. Use in commerce is established at the time of filing by providing the date of first use of the mark anywhere and the date of first use of the mark in commerce in the U.S. and submitting an acceptable specimen demonstrating how the mark is used in commerce.

Prior to registration of an application filed under an “intent to use” basis, the owner of the mark must file a Statement of Use (“SOU”) for the application to proceed to registration. In particular, the owner of the mark must file an SOU in respect of the all of the goods and/or services listed in the Notice of Allowance issued by the USPTO. If use in commerce cannot be demonstrated across the entire scope of the goods and/or services recited in the Notice of Allowance, a request for extension of time should be filed. The SOU or extension of time must be filed within six (6) months of the issuance date of the Notice of Allowance. Extension requests are granted in 6 month increments and a total of 5 extension requests may be filed.

A verified specimen of use accompanies the SOU. An Examiner will review and examine the SOU and specimen. It is crucial that the specimen show use as a trade mark during commerce in the U.S. Examples of acceptable specimens are product packaging tags/labels for goods, and advertisements for services. The Examiner may issue an Office Action citing deficiencies in the SOU, for example the submitted specimen/s do not show use across all the goods and/or services claimed. The applicant may file one extension request with the SOU to provide more time to overcome deficiencies in the SOU.

Regardless of which basis is claimed at filing, between the 5th and 6th year post-registration, the owner must file a Declaration of Use and/or Excusable Non-use under Section 8. Failure to file a Section 8 declaration will result in cancellation of the mark. When filing a declaration in support of use, a specimen showing the mark as used in commerce in the U.S. must be included, as well as a statement confirming that the mark has been in continuous use on all the claimed goods and/or services. If this is not the case, the classes, or goods and/or services within a class for which use cannot be demonstrated, should be deleted from the registration.

Furthermore, in order to maintain the registered mark, between the 9th and 10th anniversary of the registration date, the owner must file a Combined Declaration of Use or Excusable Non-use/Application for Renewal under Sections 8 and 9.

A word of warning. Failure to modify the claimed goods and/or services to reflect actual use of the mark in the U.S. can lead to cancellation of the entire registration, or cancellation in an entire class, on the grounds of fraud.

There are very limited circumstances upon which absence of use of the mark will not lead to cancellation of the registration. The trade mark owner must be able to show that the non-use of the mark for a period of time was due to special circumstances beyond the owner’s control and thus satisfies the excusable non-use standard. This is a significant threshold to overcome and should only be relied upon in extraordinary situations.

If a mark has been in continuous use in commerce for a period of 5 years after the date of the U.S. registration and there is no adverse decision(s) or pending proceeding(s) involving rights in the mark, the owner may file a Declaration of Incontestability. An allowed Declaration of Incontestability does not confer any additional rights per se to the registration but an incontestable registration enhances the legal presumption of registrability of the U.S. registration.

Although the ongoing post-registration use requirements for a U.S registered trade mark are onerous to a trade mark owner, this system is advantageous to the public as it serves to clear the USPTO register of marks that are not in use.

Australia

Under Australian trade mark law, there is no statutory requirement to include a basis of use in a trade mark application. There is a presumption that the mark is in either in use, or will be used during the course of trade to distinguish the claimed goods and/or services from those of other traders. Moreover, there is no obligation that the owner of the mark demonstrates use of the mark as a condition of registration, or for maintenance of the mark on the trade mark register. Therefore, a mark can remain on the Australian trade mark register indefinitely without actual demonstration of use on the claimed goods and/or services during the course of trade. Under s92 of the Trade Marks Act 1995, a person may apply to the Registrar to have a trade mark removed from the register on the grounds that the mark has not been used in respect of some, or all, of the claimed goods and/or services. The owner of the registration then bears the onus to show use, or satisfying the Registrar of the circumstances that have prevented use, and thus should remain on the register.

There are two (2) grounds for removal/cessation of protection for non-use:

The trade mark applicant had no intention in good faith to use the mark in Australia, assign the mark to another party for use in Australia, or authorise use of the mark in Australia, as at the date of application for registration. Under this ground, the non-use applicant will ultimately bear the burden of showing that the registered owner had no intention to use the mark at the filing date. This is not an insignificant task.For a continuous period of three years ending one month before the day on which the non-use application is filed, and at no time during that period, has the registered owner used the mark in Australia or used the trade mark in good faith in Australia. Under this ground, the registered owner has a grace period of five (5) years from the filing date of the application before which the mark is vulnerable to removal. For the owner to succeed in showing use during the relevant period, the evidence of use in good faith need not be for the entire period, or be widespread across Australia. It is also worth mentioning that the registered owner may rely upon defences to non-use such as, but not limited to, regulatory approval prior to release of a product.

A non-use action can be useful for removal of a competitor’s mark from the Australian trade mark register, or removal of a registration that has been cited against the registrability of an application.

Our firm has Australian and U.S. registered trade mark attorneys that can assist you with filing and maintaining a trade mark application in Australia and the U.S.

Written by Dr. Hedie Meka - hmeka@emiplaw.com

With the decision of the Full Court of the Federal Court of Australia in Commissioner of Patents v AbbVie Biotechnology Ltd [2017] FCAFC 129(“AbbVie”), it is unequivocal that patents directed to Swiss-style claims are not eligible for an extension of term, regardless of whether the pharmaceutical substance is a product of recombinant DNA technology.

This decision is of particular note as it is the first instance that construction of s 70(2)(b) of the Patents Act 1990 has been considered by the Court. Broadly, under the legislative scheme, an extension of patent term is only available in respect of a pharmaceutical substance per se that in substance falls within the scope of a claim of a patent, with the exception of pharmaceutical substances produced by a process involving the use of recombinant DNA technology. Under s 70(2)(b), one or more pharmaceutical substances, when produced by a process that involves the use of recombinant DNA technology, must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of a claim of that specification to be eligible for a patent term extension.

In 2014, Abbvie Biotechnology Ltd applied under s 70(2)(b) to extend the term of AU2012261708, AU2013203420 and AU2013257402, each of which claims the use of adalimumab (a monoclonal antibody) in the manufacture of a medicament for the treatment of ulcerative colitis, Crohn’s disease, and rheumatoid spondylitis, respectively. Adalimumab for the treatment of rheumatoid arthritis was first included in the Australian Register of Therapeutic Goods on 10 December 2003. The application was denied by the Deputy Commissioner of Patents (as a delegate of the Commissioner) based on the following rationale:

"... while notionally directed to a method or process of manufacturing a medicament, the claims are characterised by a therapeutic use. Consequently, on the basis of my reasons in ThromboGenics I do not find that a pharmaceutical substance, when produced by a process that involves the use of recombinant DNA technology, in substance falls within the scope of the claims. I must therefore refuse the application for an extension of term." (AbbVie Biotechnology Ltd [2015] APO 45 at paragraph 13)

On appeal to the Administrative Appeals Tribunal (Re AbbVie Biotechnology Ltd v Commissioner of Patents [2016] AATA 682), it was held that s 70(2) does not indicate that Swiss-style claims are to be excluded from eligibility for extension, and in particular “the fact that such patent is characterised by its specified therapeutic use as a medicament does not, on its face, suggest that there is a legislative barrier to eligibility for extension of the patent (at paragraph 62).”

Unsurprisingly, the Commissioner of Patents appealed the Tribunal decision. The FCAFC set aside the Tribunal’s decision in this regard. As a threshold matter, the Court held that Swiss-style claims are not directed to pharmaceutical substances, but rather are method claims. Consequently, Swiss-style claims are of different scope to the claims considered by s 70(2)(AbbVie at paragraph 58).

In relation to the claims under consideration, the Court held that the Swiss-style claims are not directed to adalimumab produced by recombinant DNA technology but rather, are directed to methods in which adalimumab is used to produce a medicament, wherein the medicament has a specific (and further) therapeutic use.

To enliven s 70(2)(b), not only should the pharmaceutical substance be produced by a process involving recombinant DNA technology but must also, in substance, fall within the scope of a claim of the specification. Or put another way, the pharmaceutical substance must be the subject matter of a claim, “not methods or processes (beyond recombinant DNA technology) concerning or involving the pharmaceutical substance” (AbbVie at paragraph 60).

Author: Dr. Hedie Meka - hmeka@emiplaw.com

Gene therapy was first suggested as a potential therapeutic intervention from the early 1990’s. During the initial stages of development, gene therapy focused on the replacement of disease-causing genes with normal or non-mutated genes. However, early development suffered a significant setback when an in-human trial of gene therapy treatment for a metabolic disorder resulted in the death of an 18-year old patient due to complications resulting from the adenovirus used to deliver the gene. The safety of gene therapy came under intense scrutiny by the US Food and Drug Administration (FDA), and presented scientists and companies with a dilemma about whether, despite the promises of gene therapy, the risks to patients outweighed the benefits.

Nevertheless, research and development continued for potential therapeutic interventions using gene or genetic-based therapies. A unanimous decision on Wednesday 12 July 2017 from the FDA’s Oncologic Drugs Advisory Committee to endorse regulatory approval of gene therapy to treat relapsed B-cell acute lymphoblastic leukemia (ALL) signals that the first FDA-approved gene therapy may soon be available. The drug, tisagenlecleucel, was developed by Novartis and is somewhat different to the gene therapy used in the early studies referred to above. Tisagenlecleucel is an immunotherapeutic intervention where immune cells (T cells) are removed from a patient and subjected to genetic modification by inserting a gene that expresses a protein that recognises and targets B-cells, which are normal immune cells that turn malignant in leukemia. The modified cells are injected back into the patient, where they multiply and are targeted to attack the cells of interest. This therapy is known as CAR-T therapy.

The efficacy of tisagenlecleucel was not called into question by the Advisory Committee since a number of patients went into remission with this treatment. Unsurprisingly, the safety of tisagenlecleucel was scrutinised, and indeed Novartis has made a number of commitments to ensure the safety of the patients, including limiting treatment to a restricted number of medical centres with highly qualified staff that are continually monitored by Novartis employees, and a 15-year follow up for all treated patients.

Although the Advisory Committee recommendation is non-binding on the FDA review panel, a resounding endorsement by the Advisory Committee is an important milestone towards regulatory approval of any drug. A final decision by the FDA regarding approval is expected in September, and if positive, will open a new pathway for treatment of previously recalcitrant diseases. We’ll keep you posted.

Author: Dr. Hedie Meka - hmeka@emiplaw.com

IP Australia offers two (2) options for filing a trade mark application in Australia: (i) a standard trade mark application; and (ii) a trade mark Headstart application. This article will outline the procedure and benefits of the trade mark Headstart service.

One of the major advantages of TM Headstart is that IP Australia undertakes a pre-assessment of the registrability of your trade mark before filling a trade mark application. This allows an Applicant to obtain an initial opinion from the Trade Marks Office as to whether or not the trade mark is registrable.

It is important to note that the following types of trade marks are excluded from TM Headstart service: • special kinds of signs • series trade marks • certification trade marks • collective trade marks • defensive trade marks • divisional applications.

The TM Headstart procedure involves two parts. In Part 1, a draft application is filed. Within 5 business days, an examiner will provide an initial opinion as to the registrability of the trade mark.

Here is a basic flowchart of the procedure:

A feature of the TM Headstart procedure is that Part 1 uses a drop-down list when choosing the description of goods and/or services that will accompany the application. Therefore, it is not possible to be specific in connection with the goods and/or services to which the mark is to be applied. However, once a positive response is received from the examiner, it is possible to request an amendment to specify the goods/services. Provided that the amended goods and/or services fall within the general description of the goods/services selected from the drop-down list, the amendment should be allowed. The application can be abandoned if a negative response from the examiner is received, noting that the application is not published during Part 1. Alternatively, you can decide to argue the matter when the formal examination report issues. Note that the examiner does reserve the right to issue an adverse examination report even if the initial opinion from Part 1 indicates that the trade mark can be registered. There is a non-extendable period of 5 days from the issuance of the initial opinion to make any amendments, and pay the Part 2 fee. Rights in a registered trade mark commence from the filing date of the trade mark. The trade mark application is considered filed as soon as the Part 2 fee is paid. Therefore, the filing date of the trade mark application is the date that the Part 2 fee is paid. Once the Part 2 fee is paid, the application reverts to a standard trade mark application, and is examined accordingly. The examiner will also conduct a supplemental search for any potential conflicting mark/s filed from the period between the initial opinion and payment of the Part 2 fee.

Once the Part 2 fee is paid, the details of the application will be published, and any amendment to the application cannot substantially affect the identity of the trade mark, or broaden the scope of goods and/or services. Therefore, any amendment to the application to address obstacles to registration of the trade mark should be made prior to payment of the Part 2 fee.

Although IP Australia explicitly states that the TM Headstart procedure “does not provide a faster or cheaper path to trade mark registration”, the procedure may be advantageous for use in particular situations. For example, if there is any form of uncertainty regarding registrability of the proposed trade mark, the TM Headstart procedure provides a rapid, initial assessment of the registrability of the trade mark, and allows the Applicant to implement changes to the mark in order to overcome any potential barriers to registration.

As a U.S. patent attorney operating out of Australia and New Zealand, I have been able to observe some interesting distinctions in how patents are obtained among various jurisdictions. One of those distinctions is in direct contact with an examiner. Ordinarily, the process of obtaining a patent involves a bit of negotiation between a patent examiner and a patent attorney representing an applicant as to where the line should be drawn on what a patent applicant deserves. Most examination reports will summarily reject all claims as an indication that the patent applicant is seeking to cover too much with their patent application. From there, the patent attorney and the patent examiner will exchange communications until the issues are eventually resolved. This can involve quite an exchange of paper, and when lawyers are involved (as is typical in the U.S.), the costs can be quite high.

One way to reduce costs in the U.S. is for the U.S. patent attorney to conduct an examiner interview (telephonic or in-person) to discuss the rejections. Sometimes, there are issues or misunderstandings that are not readily apparent in the written communications, but a discussion will make a particular party’s interpretations more clear. This can save considerable time (and money).

While the practice of interviewing the patent examiner is fairly normal in the U.S., it is rare elsewhere. For example, in Australia and New Zealand, from personal experience, patent examiners are quite helpful over the phone if there is a question regarding a particular rejection. However, it is virtually unheard of to conduct an in-person interview. It is also rare where an Australian or New Zealand examiner will make an “examiner’s amendment” (an amendment by the examiner to the claims that is authorized by a patent attorney). Formal interview summaries are not provided, so any discussions with an Australian or New Zealand examiner are usually off-the-record. That means that the scope of any discussion will be limited, and a written response of some sort addressing the last examination report will be required.

In Europe, from personal experience, interviews are not common. Instead, if there is doubt that a response and/or claim amendment will carry the day, the European patent attorney might include one or more “Auxiliary Requests” (sort of fall-back positions) in case the main arguments and/or amendments are unsuccessful. While such practice can reduce the back-and-forth paper shuffling between a patent attorney and a patent office, a patent applicant may walk away with a narrower scope of protection than is deserved.

The summary here is that the protocol for direct communication with a patent examiner varies from country to country. However, for the U.S., such direct communication with a patent examiner is encouraged (even by the U.S. Patent & Trademark Office) and should be utilized where the issues outlined in an examination report may not be clear.

If you are a U.S. patent applicant residing outside the U.S., you should explore the possibility of having your U.S. representative conduct an examiner interview to reduce costs and potentially unnecessary frustration. We conduct U.S. patent examiner interviews quite often for our local Australian and New Zealand clients.

Author: Todd Martin - tmartin@emiplaw.com

Barry Eagar explains the novelty requirement.