12 September is R U OK? Day. A national day of action dedicated to reminding everyone to ask, “Are you OK?” and to remember every day of the year to support people who may be struggling with life’s ups and downs.

Shelston IP started the conversation at morning tea today. We are encouraging everyone to Trust the Signs, Trust your Gut & Ask R U OK?

We encourage everyone to know the signs when someone might need support by listening to what they’re saying, seeing what they’re doing or knowing what’s going on in their life. Whenever you notice a change, no matter how small, we want you to trust your gut and  start an R U OK? conversation.

The truth is, some conversations just become too big for family and friends. If you’re worried about someone and feel urgent professional support is needed, contact your local doctor or the agencies listed here.

Shelston IP R U OK

In Trident Seafoods v Trident Foods Pty Ltd, the Full Federal Court examined the issue of whether use of a registered trade mark by the parent company of the registered owner of the trade mark amounted to an authorised use sufficient to protect the registration from cancellation for non-use.

Background

Trident Foods Pty Ltd (Trident Foods) owns two Australian trade mark registrations for TRIDENT in relation to goods in class 29 including fish and fish products. The TRIDENT brand has been used in Australia in relation to a range of food products since the early 1970s, in particular Asian flavourings and ingredients

Trident Foods is a wholly owned subsidiary of Manassen Foods Australia Pty Ltd (Manassen) who uses the TRIDENT trade marks in Australia.

Trident Seafoods Corporation (Trident Seafoods) wanted to sell its TRIDENT SEAFOOD branded products in Australia. The TRIDENT registrations blocked its application and Trident Seafoods filed applications for non-use removal of the marks. In response, Trident Foods secured acceptance for a subsequent application for TRIDENT relying on the “other circumstances” provisions of s44(3)(b).

The Registrar’s delegate was not satisfied that Trident Foods had used the TRIDENT trade mark during the relevant three year non-use period, or had authorised Manassen’s use of the mark, but exercised discretion to leave the marks on the Register due to Trident Foods’ residual reputation in the trade marks and the likelihood of confusion if they were removed.

Federal Court

The primary judge agreed with the delegate in finding that Trident Foods had not used the TRIDENT trade mark for any fish or fish products. Her Honour found that Trident Foods could not rely upon any use by Manassen because Trident Foods did not control the activities of its parent company, Manassen. However, she exercised discretion in favour of leaving the TRIDENT registrations on the Register having regard to Manassen’s uses of TRIDENT for fish products up until 2007, during and after the relevant non-use period.

Trident Seafoods prevailed in its opposition to Trident’s later application. The primary judge found that Trident Foods could not rely on the “other circumstances” discretion because Manassen was the owner and user of the trade mark not Trident.

The Federal Court decision is reported here.

Appeal

The Full Court disagreed with the primary judge and found that use of the TRIDENT trade mark by Manassen was authorised by Trident Foods. This rendered the primary judge’s exercise of discretion unnecessary as it resulted in a finding that the trade mark owner had made use of the trade mark sufficient to defend the non-use action. The question is not whether one company controlled the other but whether Trident Foods had control over Manassen’s use. In this regard, it was considered sufficient that the two companies had the same directors and the evidence indicated that they operated with a unity of purpose to maximise sales and to enhance the value of the TRIDENT brand.

The opposition was also dismissed as the Court found that there were sufficient circumstances to justify acceptance under the provisions of s44(3)(b). The Court considered that the discretion to accept the application under that provision should be exercised according to the circumstances as they exist at the time of exercising the discretion rather than as at the priority date of the application. At that time, it was known that the blocking application filed by Trident Seafoods could not succeed because the earlier registrations owned by Trident Foods were not being removed from the Register.

This decision may make it easier for companies in a corporate group to establish the existence of control sufficient to maintain a trade mark registration. It remains to be seen whether the “unity of purpose” test can apply to arm’s length arrangements. In those circumstances, trade mark owners should ensure that appropriate licence agreements are in place that clearly define the ownership and control of the trade mark.

Authored by Kathy Mytton and Sean McManis

It’s time to talk of mice and McCaw. While that Richie won’t be playing in 2019 edition of the Rugby World Cup soon to be held in Japan, it is time to wonder which ball the new Richie (Mo’unga) will be kicking off with in the final on November 2.

This will be the seventh rugby world cup for which Gilbert have supplied the official match ball, and they continue to make changes to improve handling and aerodynamics. Gilbert have been producing footballs since 1823, and it is said that the ball picked up by William Webb Ellis all those years ago was a Gilbert.

While Adidas have sought to improve their world cup soccer balls by reducing the number of seams, getting down now to a six-piece ball, rugby balls have been settled in their four-piece configuration for many decades. It’s even defined as such within the Laws of Rugby.

So, where then have the changes been made?

After problems with the aerodynamics of the ball used in the 2003 tournament, the shape of the ‘pimples’ on the surface of the ball were changed from round to star shaped to improve handling and kickability for the 2007 tournament. Remarkably, Gilbert (and their new owners, Grays International) don’t seek protection for very much of their innovation, but in this case they did, which was published as WO2006/061608.

The next development was for the 2011 tournament where a new valve was produced, which distributed weight along the seams of the ball to improve rotational stability and accuracy.

Both these features were retained for the 2015 world cup ball, and most of the improvement appears to have been in the polymers and laminations of the synthetic cover material.

Moving forward to the latest ball to be used in 2019, Gilbert have made further improvements to the pimples, making them ‘dual height’, and altering their distribution across the surface. This needed to be done without increasing the actual height of the pimples as it would have affected the aerodynamics, but as there doesn’t appear to be any patent protection and hence publication of the details, all I can say is they claim to have produced a ball with the largest total surface area of any international match ball.

These changes seem to be getting more and more infinitesimal and highly technical, which someone has suggested is creating a rugby ball that is close to perfection, so it will be interesting what Gilbert come up with as we approach 2023.

Authored by Frazer McLennan and Charles Tansey, PhD

Part IV of the Competition and Consumer Act 2010 (Cth) (the Act) prohibits certain anti-competitive conduct.

Following the repeal of s51(3) of the Act, which provided an exemption for some IP dealings, various prohibitions in Part IV will now apply to certain IP arrangements from 13 September 2019. Amongst other things, those prohibitions will apply to licences and assignments of patent, design, copyright and eligible circuit layout rights. The prohibitions will also apply to licences between registered trade mark owners and registered users that were previously exempted. Importantly, it will be an offence to continue to give effect to provisions of relevant IP licences, assignments and other arrangements that contravene Part IV even if those licences, assignments or other arrangements were entered into before 13 September 2019.

The ACCC recently released its final Guidelines on the repeal of s51(3), with the intention of providing further clarity on what conduct involving IP rights is likely or unlikely to contravene the prohibitions that now apply to IP arrangements, and on the ACCC’s approach to assessment and enforcement. The following is an overview of some of the key parts of the final ACCC Guidelines.

The final Guidelines can be accessed here.

So what is prohibited?

The following will now be prohibited in connection with arrangements/conduct involving relevant IP rights:

  1. making or giving effect to a contract, arrangement or understanding, or engaging in a concerted practice, for the purpose, or with the effect or likely effect, of substantially lessening competition;
  2. engaging in exclusive dealing for the purpose, or with the effect or likely effect, of substantially lessening competition – this would generally involve imposing conditions which restrict the other party’s freedom to choose how it engages with third parties (for example, by requiring the other party to obtain goods/services from or supply goods/services to a specified third party or refusing to supply goods/services to the other party unless they agree to deal with a specified third party); and
  3. cartel conduct – IP contracts/arrangements will generally constitute cartel conduct if they are between parties that are, or are likely to be, competitors and include a provision that has the: (a) purpose or likely effect of fixing the price of goods/services supplied or acquired by any of the parties (Price Fixing); (b) purpose of preventing, restricting or limiting the production, supply or availability of goods/services (Output Restriction); (c) purpose of allocating or dividing certain customers, suppliers or territories between any of the parties (Market Allocation); or (d) purpose of rigging a bid for tender (Bid Rigging).

Cartel conduct is prohibited even if the conduct does not have any effect on competition. However, the prohibition on making or giving effect to cartel provisions will not apply if the only parties to the arrangement are related companies or if the conduct is for the purposes of a joint venture relating to the production of goods or the supply or acquisition of goods/services, which is not carried on for the purposes of substantially lessening competition.

Following public consultation and submissions made by some industry bodies, including INTA and LESANZ, it appears that the ACCC is seeking to provide some comfort by suggesting that the repeal of s51(3) will not necessarily disrupt existing IP arrangements, hamper investment in innovation and IP commercialisation or necessarily put IP owners or licensees at broad risk of non-compliance. In particular, the ACCC has acknowledged the exclusive nature of IP rights; acknowledged that exclusivity is an important incentive for investment in and promotion of innovation and IP commercialisation; suggested that the exercise of exclusive IP rights will not have significant anti-competitive implications; and noted that the licensing/assignment of IP rights usually encourages competition by allowing IP to be accessed, exploited and commercialised to a greater extent than would otherwise be allowed if the IP is not made available via licence or assignment.

IP arrangements that substantially lessen competition

Engaging in concerted practices, giving effect to contracts/arrangements (including specific contractual terms) and engaging in exclusive dealing involving IP rights will only contravene the prohibitions on anti-competitive conduct if they have the purpose, effect or likely effect of substantially lessening competition.

The ACCC will usually apply a “with or without” test when assessing the effect or likely effect of certain conduct on competition – by comparing the likely state of competition “with” and “without” the relevant conduct. In the case of IP licences/assignments, the ACCC has indicated that the “without” scenario for the purposes of its assessment will be where there is no IP assignment/licence at all, rather than a scenario where there is an IP licence/assignment without the potentially prohibited provisions. If the position is accepted that IP licences/assignments generally encourage competition by making IP accessible in circumstances where it would not be accessible “without” the licence/assignment, then there is a good argument that IP licences/assignments generally should not substantially lessen competition.

The purpose, effect or likely effect of the relevant conduct is assessed at the time the conduct occurs. Given that the prohibitions applying to IP contracts/arrangements relate to both the “making” and “giving effect” to the IP contract/arrangement, the ACCC will assess the purpose, effect or likely effect of the relevant provisions of the contract both at the time the contract is made and at the time the relevant provisions are given effect. Significantly, the effect or likely effect of a contractual provision on competition within a particular market may vary over time if market conditions change. This could pose a challenge to IP owners and licensees, as it may become necessary to continue to monitor market conditions to ensure that existing compliant IP arrangements do not subsequently become prohibited anti-competitive arrangements because of changes in the relevant market.

Examples of some relatively common IP contract terms that may be at risk of contravening the prohibitions on anti-competitive conduct include those which: (a) impose restrictions beyond the statutory term of the relevant IP right; (b) automatically grant the licensor a licence to improvements made to the IP by the licensee; or (c) require a party not to challenge the validity of the other party’s IP rights. Again, these terms would only be prohibited if they have the purpose, effect or likely effect of substantially lessening competition. The ACCC has indicated that these types of terms will “only occasionally” have that purpose, effect or likely effect when applying the “with or without” test.

Cartel conduct

Cartel conduct can only occur if both of the following are satisfied:

  1. the parties to the conduct are, or are likely to be, competitors for the relevant goods/services; and
  2. the conduct, or contractual provision, has the purpose/effect of Price Fixing, Output Restriction, Market Allocation or Bid Rigging (as applicable).

Parties would generally be considered competitors for the purposes of the cartel provisions if one party’s goods/services being the subject of the cartel conduct are substitutable for similar goods/services of the other party. However, for the purposes of IP licences/assignments, the ACCC has pointed out that it is relevant to consider if both parties already had the capacity to supply substitutable goods/services before the IP licence/assignment – implying that the parties may not be considered competitors for the purposes of the prohibition on cartel conduct if they did not both have that capacity before the IP licence/assignment.

Generally, the ACCC will assess what the parties actually intended in determining whether the relevant conduct or contractual provision had the substantial purpose/effect of Price Fixing, Output Restriction, Market Allocation or Bid Rigging, but by reference to available evidence surrounding the nature and circumstances of the arrangements between the parties. It is therefore possible that the parties to an IP licence/assignment will not be liable for engaging in cartel conduct even if certain contractual provisions have the inadvertent effect of Price Fixing, Output Restriction, Market Allocation or Bid Rigging, provided it is clear that the parties did not agree or give effect to the relevant contractual provisions for the substantial purpose of Price Fixing, Output Restriction, Market Allocation or Bid Rigging (as applicable).

Penalties and next steps

A range of penalties may apply if conduct or contractual provisions relating to IP are found to contravene the prohibitions on anti-competitive conduct. Amongst other things, a party may be ordered to pay damages and/or be restrained from engaging in the relevant conduct or giving effect to the offending contractual provisions. Pecuniary penalties may also apply, with the potential for fines of up to $10 million per contravention for corporations and $500,000 per contravention for individuals. Significantly, certain cartel conduct may also constitute a criminal offence for which a sentence of up to 10 years imprisonment and/or a fine of up to $420,000 may be imposed.

Where specific IP licence/assignment terms are at risk of contravening the prohibitions on anti-competitive conduct, the most obvious way to mitigate risk would be to amend the IP licence/assignment to remove the relevant term and vary arrangements to ensure that the relevant term is not given any effect. Of course, this may not be ideal or simple to achieve in the context of certain IP arrangements and such terms should not necessarily be removed or varied without an appropriate assessment of whether they are likely to substantially lessen competition or comprise cartel conduct in the particular circumstances. As an alternative, parties to an IP licence, assignment or other arrangement can also seek the ACCC’s authorisation of the arrangement. The ACCC may authorise the IP licence, assignment or arrangement if it is likely to result in a net public benefit, which may be the case in the context of IP arrangements involving research, development, innovation and IP commercialisation with a public benefit. If the IP arrangements are authorised by the ACCC, neither the ACCC nor any other person may take legal action on the basis that the IP arrangements contravene the prohibitions on anti-competitive conduct.

The ACCC Guidelines do not cater for all scenarios. Whether or not specific conduct or contractual provisions relating to IP will contravene the prohibitions on anti-competitive conduct will depend on the specific context and circumstances of each case. At the very least, IP owners and licensees should familiarise themselves with the ACCC Guidelines and review their IP arrangements to identify and mitigate any apparent risks of non-compliance. While the ACCC Guidelines are not exhaustive or determinative, they at least provide some examples of the types of clauses in IP agreements that may be at risk of contravening the prohibitions on anti-competitive conduct; IP arrangements that are likely or unlikely to contravene the relevant prohibitions; and the ACCC’s approach to assessing each arrangement.

Authored by Michael Deacon

The Senate Committee inquiring into the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 has recommended in their report that the Bill be passed by the Senate.

As we previously reported, the Bill includes provisions to abolish Australia’s second-tier patent system, the innovation patent, and introduce an objects clause into the Patents Act.

Significantly, 51 written submissions were made to the Senate Committee, the clear majority of which (42) opposed the abolition of the innovation patent, while only 3 submissions, including one from IP Australia, supported abolition. Those who made submissions in support of the innovation patent were predominantly small/medium-sized Australian businesses, but submissions were also received from several industry groups such as the Australian Chamber of Commerce and Industry, the Australian Industry Group, Medicines Australia, AusBiotech as well as the Law Council of Australia and several Universities, all of who supported retaining the innovation patent.

A brief public hearing was held on August 19, at which only representatives from IP Australia, John Gibbs, an intellectual property law lecturer and Peter Strong, CEO of Small Business Australia appeared. Notably, both Mr Gibbs and Mr Strong were allocated only 5 minutes at the hearing with up to 25 minutes of questions, while IP Australia was allowed 45 minutes to present their case against the innovation patent. Significantly, requests to appear at the hearing from business owners and the Institute of Patent and Trade Mark Attorneys of Australia were refused.

Relevantly, the Committee’s Report included “dissenting comments” by Senator Rex Patrick from the Centre Alliance Party and the Committee’s Labor Party Senators. Senator Patrick’s comments, entitled “Creative thinking not evident in plans to abolish the IPS” cites “comprehensive and disturbing” evidence submitted by Mr John Gibbs, an IP law lecturer, indicating that abolishing the innovation patent is a “step in the wrong direction” as it is clearly useful and valued by SMEs and, as acknowledged by IP Australia, will not result in any cost saving. Senator Patrick also powerfully rebuked those supporting abolition of the innovation patent by stating “there’s a certain arrogance of officials, or indeed many politicians for that matter, who have little if any experience of research, development or business and who enjoy regular pay in their bank accounts courtesy of the taxpayer, dictating to entrepreneurs and businesses what’s best for them”.

Labor Senators, Alex Gallacher and Jenny McAllister also expressed significant concerns that “the evidence provided from a number of parties suggests a significant gap could emerge if the innovation patent is removed without alternative mechanisms being put in place to specifically assist small- and medium-sized enterprises (SMEs) to access the patent system and innovate”. Thus, at this stage, it is not clear if the Opposition will support the Bill without a clear alternative to the innovation patent being proposed by the Government.

Seemingly in the shadow of the innovation patent provisions, is the introduction of an objects clause into the Patents Act, which several submissions opposed because it has the potential to introduce uncertainty and restrict patent eligible subject matter in Australia. Concerns about the use of the proposed object’s clause to narrow patent eligible subject matter in Australia were particularly detailed in IPTA’s submission. IPTA’s concerns appear to have been confirmed by economist Dr Hazel Moir, who responded to IPTA’s submission by stating that if Judges do use the object’s clause to restrict patent eligible subject matter, a by-product will be fewer patent attorneys.

Both houses of Parliament resume sitting on September 9 and it is expected that the IP Amendment Bill part 2, will be debated. Shelston IP will, of course, provide updates.

Authored by Gareth Dixon, PhD

This important decision by the Full Court of the Federal Court in Calidad Pty Ltd v Seiko Epson Corporation [2019] FCAFC 115 clarifies the position on an area of law that, surprisingly, is still developing in Australia, namely the scope of the implied licence issuing from the sale of a patented product.

Re-manufacturers that refurbish and repurpose used patented products should take heed of this decision, as work that goes beyond mere repair of damaged or broken parts, or that replaces or refurbishes parts that extend the useful life of the product, may be considered an infringement of the patentee’s exclusive right to make the product.

Calidad has foreshadowed a request for special leave to appeal to the High Court on the anterior question of whether the “implied licence” or the “patent exhaustion” doctrine is the correct approach in Australia. Calidad has until 2 August 2019 to apply to the High Court for that leave to appeal.

Background

Seiko Epson sells Epson printer cartridges worldwide. The Epson cartridges embody the invention claimed in the two Australian patents in suit. The cartridges are designed as a consumable product, and are intended to be discarded and replaced when the ink runs out. This is achieved by memory chips programmed to recognise when a cartridge is spent, thereby preventing the cartridges from being refilled. Each cartridge is also configured to be compatible with only certain Epson printers.

After initial sale of the original Epson cartridges, a third party modified the used cartridges to enable them to be re-used. Calidad then imported and sold the cartridges in Australia, in competition with the original Epson cartridges.

Calidad asserted an implied licence to treat the cartridges as an ordinary chattel deriving from Seiko’s unconditional sale of the original Epson cartridges. In the alternative, it asserted that a patentees’ right to exploit the patented product under the Patents Act 1990 (the Act) did not include the right to prevent a subsequent owner of the product from repairing or refurbishing the product and dealing with the refurbished product.

The Modifications Made

The process of refurbishment carried out by the third party, first, involved cartridges being emptied and cleaned in preparation for refilling. Replacement ink was then injected into the cartridge through a new entry port created in the cartridge, which was subsequently sealed.

Next, for some cartridges, the memory chip was reprogrammed so that the cartridge would not read as spent (referred to as the “current products”). For other cartridges a new memory chip was inserted and the modified circuit boards refitted to the cartridges. Some cartridges were further modified by changing their interface pattern to allow them to be used with a wider range of Epson printers than originally intended. These latter categories were referred to as the “past range of products”.

There was no dispute that all the modified cartridges supplied by Calidad fell within the scope of claim 1 of each of the patents in suit.

Opposing Doctrines: Implied Licence vs Patent Exhaustion

The right of a patentee to control what may be done with a patented product, once sold, gives rise to competing rights: the patentee’s exclusive right to “exploit” the patented product under the Act, which includes the right to make, use, sell and import the product inter alia, and the personal proprietary rights of ownership in a chattel at common law.

Two opposing doctrines have developed to address this tension.

  • The doctrine of patent exhaustion was endorsed by the United States Supreme Court in Impression Products v Lexmark (2017) 581 U.S. 1523. Under this doctrine, upon the first authorised sale of a patented product by or with the consent of a patentee, all patent rights in that article are exhausted. The Full Court in the present case confirmed unequivocally that under Australia’s current law there is no doctrine of exhaustion.
  • The implied licence doctrine provides that the sale of a product embodying a patented invention with the authority of the patentee carries with it an implied licence permitting the purchaser to use, maintain, re-sell and import the product without infringing the patent. Such implied licences are subject to any conditions of sale the patentee imposes and “brings home” to the purchaser at the time of sale. This approach was adopted in the United Kingdom and Australia following the Privy Council’s decision in National Phonograph Co of Australia Ltd v Menck (1911) 12 CLR 15 (Menck).

At first instance Justice Burley found that Menck applied in Australia. Both parties advanced the appeal and cross-appeal on this basis. However Calidad has reserved the right to challenge the approach taken in Menck in any subsequent appeal to the High Court, including raising at that stage its contention that the doctrine of exhaustion should apply in Australia, as it does in the United States.

The First Instance Decision

Material modifications?

Justice Burley held that Calidad infringed the Seiko patents in relation to the past range of products (where memory chips were replaced or the interface pattern was changed), but not the current products. Burley J’s analysis turned on whether the implied licence, which was taken to have arisen validly, was terminated by the modifications carried out by the third party. This was to be determined by whether the product was “materially altered” by the modifications.

The Full Court

Scope of the Implied Licence

The Full Court (Greenwood, Jagot and Yates JJ), each in separate judgments, found entirely in favour of Seiko. The Full Court concurred in finding that the primary judge erred by asking the wrong question – that is, was the implied licence brought to an end by the materiality of the modifications. Instead, the question to be addressed was whether the modifications constituted conduct outside the scope of any implied licence arising from an unrestricted sale. Each of the Full Court judges held that the modifications brought into existence a new article, which could only be properly characterised as an impermissible making of the patented product, and unequivocally outside any possible licence recognised by Menck. The licence did not come to an end by reason of the materiality of the modifications – it never authorised the relevant conduct of Calidad and the third party from whom it procured the cartridges.

Yates and Jagot JJ, in their separate reasons, pointed to the fact that none of the modifications amounted to repair on any reasonable view. The cartridges were not damaged – they had instead been consumed in the manner intended by Seiko upon their manufacturer and sale. An implied licence did not authorise modifications or refurbishment after the useful life of a patented article. Jagot J also observed that the refurbishment process involved “unmaking” the patented cartridges by effectively removing one integer of the patent claims (by creating a hole in the ink container) and then making a new patented article when adding that integer back in (by sealing the newly-made hole to re-establish a functional ink container). Yates J considered that Calidad’s assertion of a right of refurbishment was an unsupported embellishment of the subject matter dealt with in the United Kingdom cases, as the cases themselves refer only to repair.

Licence to repair?

The question of whether Australian patent law recognises an implied licence to repair did not arise on the facts of the present case, leaving this question, ostensibly, to be resolved on another occasion.

However the exclusive right to “exploit” the invention granted to a patentee under s 13 and Schedule 1 of the Act does not include (at least expressly) the exclusive right to repair a patented product. Under the current legislative regime, arguably, an implied licence to repair is not required, provided the work performed does not cross over into an impermissible making of the invention. Consistent with this view, the United Kingdom courts have long recognised a right to repair (essentially as an implied contractual term associated with the purchase of a product), but more recently have characterised this as a residual right to do whatever does not amount to making the invention (Lord Hoffman in United Wire Ltd v Screen Repair Services (Scotland) Ltd [2001] RPC 24).

Patent Exhaustion – would the outcome be any different?

Even if the patent exhaustion doctrine were found to apply in Australia, the outcome of this case may be unchanged. As Jagot J persuasively states in obiter, neither an implied licence nor the doctrine of exhaustion would “result in the loss of the right to prevent the making of new embodiments of the invention, whether or not the new embodiment involved starting from scratch or re-using and modifying parts of the patented product as sold”. Patent exhaustion applies to the particular product as sold, and not to the making of a new embodiment of the invention.

Implications for Re-manufacturers 

Re-manufacturers will need to carefully consider whether their activities may infringe the patent rights of original product manufacturers, particularly where work goes beyond mere repair of damaged or broken parts, or where parts are replaced or refurbished thereby extending the useful life of the patented article.

Each case will, however, turn on its facts – both with respect to the nature of the patented invention and the article that embodies it. As observed by Jagot J, “…all the cases, in one way or another, are about the scope of the implied licence which necessarily arises on the sale of every patented article, the scope of which will depend upon all relevant circumstances including but not limited to the nature of the patented article, the circumstances of the sale, and the imposition at the time of sale of any express restrictions on the use which the purchaser may make of the article after sale”.

We await with interest any further developments in the law should the High Court choose to address this question.

Authored by Duncan Longstaff

IP Australia have just released the new Australian Design Search into the wild, replacing the (now) old Australian Designs Data Searching system, or ADDS.

It’s a vast improvement over the old system, although if you’re familiar with IP Australia’s efforts over the last few years you’ll see a lot in common with the Australian Trade Mark Search.  None of the glitchy bits or unsearchable fields of the old system have been carried over, which will be a relief for those of you who search designs regularly.

The link above will take you to the Quick Search.  It has a limited range of search options, most of which are non-technical; a name or a number.  You can also search images from here but I’ll go into that later.  If you’re not sure what to do, there is a range of colourful help tabs relating to each of the options below the searching field, otherwise try the Help link at the bottom of the search page.

Here’s the Quick Search page.

quick search page

The Advanced Search is exactly what it says.  You can now search multiple search options including images, numbers, keywords, statuses, dates and classification codes.  If you enter data into more than one field it treats the search as if you had an AND between the two fields.

Here’s the Advanced Search page.  You can open this page using the link towards the top right of the page.

design numbers

Many of the fields are similar to the old ADDS search, but are easier to use.  I’ll focus here on some that are different.

The major changes in what you can now search are the addition of status searching, and being able to search the text of the Statement of Newness and Distinctiveness, or the SOND.

Status searching is important to have when you want to limit your search to relevant designs.  I’m simplifying things, but for instance a freedom to operate search is generally limited to active statuses, i.e., pending or registered designs, or you may be interested in whether a registered design is under examination so that you can anticipate it being certified.  The point is, you now have options that you never had before.

Being able to search the SOND is also important.  I’m not saying they are always brilliant works of literature as they often just refer you to the images, but occasionally they contain relevant keywords not found in the product name, allowing you to locate that hidden gem that has been inaccessible in past searches.

Another major change is being able to look up classification codes, and enter them directly into the search page.

The symbol to the right of the classification codes text field, as shown below, opens up the Australian Designs Classification Codes popup.

classification codes

If you’re not familiar with the designs classification, you can search for a class in the text field at the top of the popup.  It looks for words appearing in the classification descriptions so be aware that you may need to try a range of keywords to find what you want.

design classification codes

Otherwise you can click on the text to open up the next level of classification, and in some cases a third level, and select the classes you want by clicking on the plus symbol.  You can select multiple classes as well.

The last new search option is image searching.  It’s an interesting exercise to search for an image, and I’m sure further refinement will happen, but for now you should treat an image search as supplementary to a search of classes or keywords.  It’s simple enough to conduct an image search.  Clicking on the Select Images link on the right hand side of the page allows you to choose an image file from your computer.

select images

Once that’s open you can crop it to any part of the image you wish to search for, before conducting the search.  I think best results are obtained from an image that is a drawing on a white background, but try it for yourself and give feedback to IP Australia about how it might be improved.

Once you’ve conducted your search there are a number of ways you can view the results.  The default grid view is customisable to show between two and five images across the screen.  Mousing over each design provides basic details, and clicking through reveals more detail including the entire gallery of representations for that design.  You can also choose a list view with one line per design.

From your search results, or from My List once you’ve selected a few designs that are relevant, you can export your results to Excel, or produce a pdf search report that outlines the searches you conducted, the relevant designs you selected, and the details of those selected designs.  The Excel spreadsheet is good if you like a lot of detail, including a thumbnail image, and want to customise a report, and the pdf provides a nice summary of your efforts for distribution purposes to management or investors for example.

IP Australia have done a nice job on the new Australian Design Search, and this has been done by consulting widely with users of ADDS and other interested parties to get the best possible outcome.  I say give it a go and conduct some design searching today.  You never know what you might find.

Authored by Frazer McLennan and Charles Tansey, PhD

In July 1969 the United States of America put two men on the moon. Years later in 2011, the then Prime Minister of Australia, Julia Gillard, stood before US Congress and recalled the same moon-landing memory and with acquiescence wept that “Americans could do anything!” Today, the US seems to have entered, what was once described in an episode of Seinfeld as, “Bizzaro world” – Donald Trump is in the White house and, even more astonishingly, researchers are unable to protect what have been described judicially as “truly meritorious” and “ground breaking” innovations in the diagnostics and personal medicine space. Today it is Australia that reigns supreme over the US, as the Federal Court in Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] FCA 1011 (27 June 2019) confirmed that a non-invasive method of detecting fetal characteristics and abnormalities is patent eligible subject matter in Australia!

The set up

The inventors of the patent-in-suit, Australian Patent No 727919, in the name of Sequenom, Inc., discovered that the cell-free fractions of a pregnant woman’s blood contain surprisingly large amounts of cell-free fetal DNA (cffDNA). Traditionally, this portion of the plasma or serum was discarded as medical waste. This pioneering discovery led to the development of the claimed non-invasive method to determine fetal characteristics and abnormalities, such as Down syndrome. Ariosa Diagnostics Inc, who sought to revoke Sequenom’s Patent, conducts and licenses others to conduct a non-invasive prenatal diagnosis test, marketed under the name “Harmony”, which Sequenom claims infringes their patent.

The significance of the Australian Sequenom decision has been fuelled by the corresponding US case where the claims of the Sequenom’s patent were found to be patent ineligible because they were held to be directed to naturally-occurring matter. The ensuing detrimental impact on US diagnostics industry has subsequently resulted in a proposal for changes to the patentable subject matter legislation, which is currently being considered by US congress.

Issues and findings

Under Australian law, patent eligibility is guided by the principles of the High Court’s decision in National Research Development Corporation v Commissioner of Patents(‘NRDC’) [1959] HCA 67. In that landmark decision, it was held that subject matter was considered patent eligible if it was “an artificially created state of affairs” having “economic significance”.

Ariosa’s case relied heavily on the approach that proved successful in the US, namely that the claims cover a mere discovery, that being the presence of cffDNA, which can be detected in the plasma or serum of pregnant women, and that the end result of each claim is not an artificially created state of affairs. Ariosa further submitted that the claims involve nothing more than the use of well-known techniques to detect cffDNA in maternal blood.

Ariosa also suggested that the Court should follow the US position, which they suggested was in harmony with the Australian Myriad decision. Judge Beach’s response was an emphatic, “I hardly think so”. In fact, in considering the Australian High Court Myriad decision, Beach J emphasised the difference between the gene product claims considered in Myriad and the method defined in the claims of Sequenom’s patent. In particular, he stated that “in nature, the presence of cffDNA in the maternal blood has not and cannot be detected without human action. Accordingly, unlike the claims considered in Myriad, the invention claimed adds to human knowledge and involves the suggestion of an act to be done which results in a new result, or a new process”.

The Court also agreed with Sequenom that the substance of the claimed method is distinct to simply the identification of a natural phenomenon, namely the presence of cffDNA in maternal blood. This, the Judge said, is made clear by the patent specification, which explains that the invention offers a new approach for non-invasive prenatal diagnosis, which only occurs through human intervention and provides a significant advantage over existing fetal DNA detection methods, thus producing a result possessing economic utility.

Consistency with foreign law

Given the intense spotlight that has illuminated patentability issues in the US for diagnostic methods in recent times, the consistency of the Australian decision and the corresponding UK proceedings between Ariosa and Sequenom (Illumina, Inc v Premaitha Health Plc[2017] EWHC 2930), will likely go unnoticed. Those, however, looking for controversy in the conflicting Australian/US findings should look no further than Judge Beach’s swatting away of the issue by stating that the conclusion reached in the US decision is problematic because of the US Court’s dissection of the claims into their constituent parts, which is contrary to Australia’s NRDC and Myriad decisions, – end of story.

Conclusions

This decision, and the recent decision in Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51, make it clear that claims directed to practical applications of naturally-occurring phenomena, including gene sequences, used in methods of diagnosis and prognosis are patent eligible subject matter in Australia. This will come as a welcome relief to the diagnostics and personal medicine industry and can be considered as “one small step” forward for Australian patent law but also, hopefully, “one giant leap” that influences beneficial change to the patent eligibility laws in the US.

Across most jurisdictions, the facility to file a divisional application is an essential part of a patent attorney’s toolkit.  It is also an avenue of potential strategic advantage to patent applicants.  As Trans-Tasman patent attorneys, we’re presently seeing the two jurisdictions we service move further and further apart in respect of divisional practice.  Australia remains nice and friendly whereas New Zealand seems to be going in the opposite direction.  In New Zealand over the past 4-5 years, at least one of legislation (Act and Regulations), precedent law, Patent Office throughputs, examination protocols and international/bilateral obligations has remained somewhat fluid – and with it, the challenge for patent prosecutors to strike an appropriate balance between cost, scope and expediency has remained an imperfect science.  In this article, we play some of these factors off against each other – and come up with some ideas as to how attorneys and applicants alike can effectively manage the prosecution of New Zealand patent applications so that the facility to file (at least one) divisional application is not compromised.

First things first – why file a divisional?

The reasons why an attorney/applicant may wish to file a divisional application are by no means unique to New Zealand practice.  In general, they are the same as they are anywhere: to maintain pendency, for defensive or commercially-strategic reasons, and/or to satisfy a unity of invention rejection.  Article 4G of the Paris Convention requires that the facility to file a divisional application is made available to patent applicants.  More on this, later…

Brief history

As readers will know, New Zealand patent law has recently changed; on 14 September 2014, the Patents Act 1953 (the “old Act”) was replaced by the Patents Act 2013 (the “new Act”).  On the one hand, this creates a binary old Act/new Act distinction – and as we will see, divisional practice differs appreciably depending upon which legislation governs a particular New Zealand application.  However, as we will also see, life under the new Act is itself divisible into distinct pockets of time, each of which has caused our coveted “best practice” to fluctuate somewhat.

Life under the Patents Act 1953

Prosecuting applications under the old Act was (as remains, for any old Act divisional applications still pending) a fairly easy gig.  Automatic examination, local novelty, no consideration of inventive step, fairly gentle written description requirements, no time limit on filing a divisional (other than it must be filed pre-acceptance of its immediate parent) and relatively slow Patent Office throughputs meant that somewhat broad New Zealand patents could generally be obtained with a relative minimum of time, hassle and expense.  Often (albeit with a few notable exceptions relating to patentable subject matter), IPONZ was effectively only rubber-stamping what had gone before it in IP Australia, the EPO, USPTO or wherever.  Under the old Act, New Zealand was very much a follow-on jurisdiction.

Critically though – at least within the context of this article – “divisional best practice” essentially took care of itself.  As IPONZ throughputs were relatively slow (certainly, much slower than those of IP Australia for counterpart AU/NZ cases), and because divisional applications could be “daisy-chained” indefinitely, applicants faced little by way of time pressure.  Arguably, it was all biased a little too heavily in favour of the applicant and New Zealand’s patent landscape was becoming encumbered with thickets of overly broad (and possibly invalid, remembering that inventive step wasn’t examined, but was a ground for opposition and revocation) patents, granted principally to foreigners, at relatively minimal expense.  Many, including the Government, felt that change was overdue.

For completeness, it is worth noting that the facility to daisy-chain old Act divisionals is presently under threat.  The Government has recently released a discussion paper ahead of the impending IP Omnibus Bill, which details three potential mechanisms by which daisy-chaining may be phased out over the short-medium term.

The Patents Act 2013 – the “honeymoon” period

Applications filed in IPONZ on or after 14 September 2014 are subject to law and practice governed by the new Act(divisional applications filed from old Act cases notwithstanding).  Generalising slightly – and with a few notable exceptions, new Act law and practice at the time of commencement was closely akin to life under Australia’s Raising the Bar reforms of 2013.  To some extent, this was a natural consequence of the now-abandoned Single Application Process and Single Examination Process initiatives that took place between IP Australia and IPONZ.  Examination was now commenced by way of formal request, inventive step was examined, heightened support and written description standards applied, and Patent Office turnarounds were published, somewhat aspirationally, on the IPONZ website.  In a nutshell, New Zealand practice was now going to be quicker, stricter – and as a consequence, more labour-intensive and ultimately more expensive.

Under the new Act, divisional applications still had to be filed pre-acceptance.  However, in addition, a new 5-year statutory bar on requesting examination was introduced (which, due to the speed at which IPONZ was then operating, was unlikely to be a problem – more on that, below).

As with the old Act, best practice under the new Act was effectively self-governing: IPONZ dictated the speed at which an application progressed through examination – and so long as a divisional was filed before acceptance of its immediate parent, the 5-year statutory bar was unlikely to raise its head for at least one further generation of application.

The new Act effectively represented a 180-degree change in New Zealand practice – from slow, broad and cheap to fast, narrow(er) and more labour-intensive.  However, the principal take-home has already been alluded to above: best practice under both the old Act and during the early days of the new Act was effectively self-governing.  If an applicant did what IPONZ told them to do (when they told them to do it), their interests would be effectively preserved; attorneys didn’t need to exercise a great deal of imagination in terms of how best to manage timelines (including the 5-year statutory bar) during the early days of the new Act.

The Patents Act 2013 – post-honeymoon

Around mid-2016, things began to change again – for a variety of reasons, IPONZ started to fall behind and application pendency began to increase as a result.  Now, if this were Australia (and assuming the applicant didn’t have cause for wanting to expedite prosecution), it wouldn’t necessarily represent a problem – but remember that with New Zealand’s new Act came the 5-year statutory bar on requesting examination.  The kicker, here, being that the five years commenced at the filing date of the application (or antedated filing date – generally the PCT filing date of its eldest parent application in the case of divisional applications).  As IPONZ throughputs continued to slow, readers will appreciate that the action of requesting examination began to converge for both parent and any divisional applications.  This really now sets the cat amongst the pigeons…

During the early days of the new Act, a direction to request examination would generally issue around 7 months from the date of national phase entry.  First exam reports issued fairly quickly – around 3-4 months later, setting in place a 12-month acceptance deadline.  Adding everything up, the final acceptance deadline for a New Zealand national phase entry would generally fall around 40-45 months from its filing date, i.e., well within the 5-year/60-month statutory bar for not only filing, but also requesting examination of any subsequent divisional application/s.  In other words, an applicant knew where they stood (relative to whether or not they needed to file a divisional application) comfortably within the deadline for doing so.  Remember also, that the quoted 40-45 months is an “outside” timeframe also – for applications prosecuted actively (part of the reason for IPONZ’ new response deadline), further time could be saved – perhaps even enough to allow a full prosecution cycle for a first-generation divisional application before any decision on a second-generation divisional needed to be made.

Fast forward to today.  The backlog at IPONZ is now so deep that directions to request examination are no longer issuing at all; it’s all now on an applicant’s attorney to keep them apprised of the 5-year deadline and what is required of them within this period.  Here’s an everyday example of “passive” attorney work (let’s call it “worst” practice): An applicant, in the absence of a direction, instructs its attorney to request examination shortly before the 5-year deadline; an examination report issues 6 months later raising a unity of invention objection that would otherwise be addressed by filing a divisional application.  Oops…  Alternatively, if an obviousness (or any other) objection cannot be overcome within the 12-month acceptance deadline, the facility to maintain pendency via a divisional application is again extinguished.  In such circumstances, an applicant really does rely on its NZ attorney to have its back and come up with something a little more constructive than a passive prosecution strategy.

Note, however, that any delay at IPONZ’ end is not with respect to the time taken to produce a first examination report; in fact, they remain fairly quick in this regard.  Timeframes published on the IPONZ website range from 3 months (mechanical) to 6.5 months (biotech); this is considerably faster than the Australian Patent Office, which presently generates first reports in around 12-14 months across all technology spheres.  Any delay, as such, relates strictly to the absence of examination directions – and this is where “the problem” lies.

The problem, summarised

In the absence of proactive case management by an its attorney, time can be a New Zealand patent applicant’s worst nightmare.  If the applicant finds itself backed into a corner from which the only escape is a divisional application, they had better hope that the 5-year statutory bar has not yet passed.  As readers will appreciate, slower, stricter examination in IPONZ only serves to heighten this possibility – and with it, the imperative that attorneys are proactive in managing the deadline.

Is the problem incompatible with the Paris Convention?

Imagine this scenario:  A first examination report issues from IPONZ raising unity of invention.  The applicant wishes to address the rejection by filing a divisional directed to the “second” invention – there’s just one problem: the 5-year statutory bar has passed and the divisional route is therefore closed.

However, Article 4G of the Paris Convention (to which New Zealand is signatory) requires member states to make the divisional route available to applicants:

“If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any”.

On the face of it, there seems to be an essential incompatibility between Article 4G and the 5-year statutory bar.  This has been raised previously and will no doubt surface again during the consultation process prior to drafting the upcoming IP Omnibus Bill (Intellectual Property Laws Amendment Bill – Patents Act 2013, Trade Marks Act 2002, Designs Act 1953).  However, until such time as it is firstly agreed upon by Government and then legislated around, the issue remains – and the only way around it is via proactive attorney involvement in managing the 5-year deadline.

The solution

Short of legislative reform to allow New Zealand law and practice to live together, there appears no “perfect” solution to this problem.  The only way to effectively tackle the 5-year statutory bar is for an attorney to be both vigilant and proactive in managing it.  If IPONZ isn’t going to issue a direction requiring an applicant to request examination, then this responsibility effectively now vests in the attorney – and internally, at our firm, we have adopted this practice.

As such, the suggested action is clear: encourage the applicant to request examination as soon as possible upon NZ national phase entry.  This maximises the chances that an applicant will have, at least, a first examination report prior to expiry of the statutory bar – and as such, will have at least a pointer as to where they may stand in relation to a potential divisional application.

However, what is the perfect number?  When should attorneys be reaching out to clients encouraging them to request examination?  Of course, there is no right or wrong answer to this question – only a very general “the sooner, the better”.  We’ve heard 3 years suggested recently (i.e., about 18 months post national phase entry) – and on the face of it, this seems as good as any other suggestion.  It allows an applicant a period of financial recovery following national phase entry (remembering that national phase entry day is the most expensive time a patentee will face), and means that an examination report will issue in good time, setting the acceptance deadline (and with it, the first deadline for filing a divisional) comfortably before the 5-year statutory bar.

NZ NP2

We have attempted to show this in the timeline above.  However, it will be appreciated that with the time increment between requesting examination and acceptance relatively consistent (depending upon technology) at around 15-18 months, the sooner examination is requested on a “parent” application, the more time is available for prosecuting a first-generation divisional prior to expiry of the statutory bar.  In fact, if an applicant requests voluntary examination upon entering the NZ national phase, there is sufficient time (without rushing unduly) to begin prosecuting a second-generation divisional prior to expiry of the statutory bar.

NZ NP exam2

In the appreciably-rare cases where more than two divisional are required, the applicant of course has the option of filing several at once (it doesn’t need to be one at a time).  The take-home is that despite its apparent rigidity, New Zealand practice is flexible enough to accommodate any number of prosecution strategies.  It simply requires proactive case management on the part of the attorney responsible.

Other measures to help manage the 5-year statutory bar

Whereas current IPONZ throughputs and the 5-year statutory bar may be, in practice, somewhat incompatible, there are some other measures available to an attorney that may help mitigate the risk that an applicant misses the deadline.

Firstly, an attorney should review any international phase prosecution history for potential unity of invention issues.  In this respect, New Zealand law is that same as that expressed under PCT Rule 13.2; if it is foreshadowed during international phase, there’s a good chance it will be raised during examination in IPONZ – all the more reason to request early examination and find out for sure.

Secondly, an attorney should make use of the comprehensive online file wrapper facilities at either the USPTO or EPO.  The majority of New Zealand patent applications are PCT national phase entries from US or EP first filings.  Often, by the time the New Zealand national phase is entered, the precursor application will already be well advanced in its jurisdiction of origin.  Is there anything in the recent file history that would suggest prosecution before IPONZ may be problematic?  Patentable subject matter, strong obviousness citations, restriction requirements – any one of these would give an applicant cause to keep a close eye on the 5-year statutory bar.

Is the 5-year statutory bar here to stay?

Although it is still possible that the upcoming IP Omnibus Bill may provide applicants with some relief from the 5-year absolute bar restriction, this is probably unlikely in practice (it was not foreshadowed in the recent discussion paper).  Rather, we believe that IPONZ will maintain its current position that management of the deadline is an applicant’s responsibility (of course, via its attorney).  The reason we expect the status quo to be maintained reflects what has been a palpable shift in focus from the somewhat applicant-friendly old Act to the more third party-centric new Act – in other words, the New Zealand Government considers it in the public interest that an applicant’s position is established as quickly as possible so that third parties are not encumbered by the eternal pendency of divisional-upon-divisional-upon-divisional (i.e., daisy chaining).  All things considered, this position is unlikely to change (although we’d be very happy to be proved wrong here).

Any reasons why early examination might not be “best” practice?

Perhaps the most significant downside to early examination is that post-acceptance amendments in New Zealand are fairly heavily restricted.  Aside from correcting obvious mistakes, an applicant can generally only amend down (i.e., narrow) an accepted claim – you can’t broaden, and you can’t move sideways should a killer piece of prior art emerge after an application has been accepted.

Although readers will appreciate that this is, of itself, a good reason to delay (rather than expedite) examination in New Zealand, it should be tempered with the observations that: a) international phase searching is generally fairly comprehensive; b) IPONZ only rarely uncovers new prior art itself; and c) with the majority of New Zealand applications coming by way of the US or Europe, additional high-quality searching will usually have been completed well before the counterpart New Zealand case is due for acceptance – even if examination is brought forward, as suggested.

Are there any other aspects of NZ divisional practice requiring proactive management?

Unfortunately, yes.  Self-collision is the big one.  Although it’s outside the scope of this article, we’ve written previously on the subject of poisonous priority.  Popular opinion seems to be that if the IP Omnibus Bill is going to correct any aspect of NZ divisional practice, it’s probably going to be this, rather than the 5-year statutory bar.

(Don’t) fear the walking dead

For completeness, another aspect of current NZ divisional practice that may/should be cleared up by the Omnibus Bill is the concept of the “zombie” divisional.  This occurs where a divisional is filed outside the 5-year statutory bar.  The Patents Regulations 2014 don’t actually prevent filing outside of the deadline; they only prevent the act of requesting examination.  As such, current NZ practice provides for zombie divisionals, which are filed validly, but cannot ever be examined and won’t ever have any legal effect; they just metaphorically roam the patent landscape in a permanent state of undead.  This is probably a loophole worth closing in the upcoming legislation.

Conclusion – what is current New Zealand divisional “best practice”?

With so many moving pieces to consider, the notion of “best” practice is perhaps a little subjective.  Rather, let’s only make the claim that we’re suggesting “good” practice.  To this end, even though such pieces will probably never synchronise, a proactive attorney can effectively manage the 5-year absolute bar for requesting examination and with it, mitigate any attendant risks by:

  • Reviewing international phase/EPO/USPTO prosecution histories shortly (g., 2-3 months) following NZ national phase entry.
  • Incorporating any potential issues that may give an applicant cause to want/need to file a divisional into early advice following NZ national phase entry.
  • Assuming it is in an applicant’s best interests, counsel them to request examination sooner, rather than later.
  • Proactively managing IPONZ’ new response deadline (this action is largely self-regulating; IPONZ sets the deadline and attorneys/applicants need to comply).
  • Avoiding, to the extent possible, applications going “down to the wire” in terms of the 12-month acceptance deadline. Rather, address the Examiner’s objections as soon as possible and if necessary or advisable, maintain the postponement of acceptance.
  • Maintaining postponement of acceptance until such time as the applicant has made an informed decision regarding a divisional (remembering that acceptance of a NZ application triggers an unextendible bar on filing a divisional from it).
  • Being cognisant of the restrictions on post-acceptance amendments under New Zealand practice – what are the chances of close prior art surfacing after the case has been accepted?
  • Whilst juggling each of these seven balls, keep the closest eye on the 5-year statutory bar deadline – and remember it’s not just for filing a (or all) divisional application/s – it’s for requesting examination of any such application/s.

To conclude, if there’s one thing to take away from this article, it’s that these considerations are perfectly manageable – both individually and in sum.  However, it requires an attorney who is in sync with the requirements and their limitations working in combination with an applicant who is prepared to prioritise – at least during the initial stages, a filing in what is likely one of the smaller jurisdictions in which they have elected to pursue.  Whereas our general preference is to request examination at the time of entering the NZ national phase, this must be offset against incurring costs that can always be deferred.  As always, it’s a case-by-case, client-by-client proposition – but it is eminently manageable.

Authored by Gareth Dixon, PhD

Congratulations to Allira Hudson-GofersDuncan Longstaff and Michael Deacon, Shelston IP’s newly appointed Principals. Congratulations also goes to Nathan SinclairSerena White, and Danielle Spath for their promotions. This is well deserved recognition for their hard work and dedication shown towards their IP practice  and clients each day.

Allira Hudson-Gofers
Principal
BE(Mechatronic) (Hons 1), MBiomedEng, MIP, BA(Technology)Allira specialises in the provision of commercially relevant advice regarding patents and registered designs. Her expertise includes medical devices and diagnostic technologies; robotics; building and construction; sustainable technologies; and manufacturing processes.

Duncan Longstaff
Principal
LLM(IP) LLB(Hons1st) BSc(Biol)With over a decade of experience and higher degree training specialising in IP topics, Duncan’s IP litigation practice focuses on patent disputes involving pharmaceuticals, biotechnology, medical devices, mining and information technology.

Michael Deacon
Principal
BA LLB (Hons) GradCert TMLPMichael is a Lawyer and Registered Trade Mark Attorney with a focus on IP commercialisation. He has broad experience providing legal advice and drafting agreements across various commercial transaction types and assisting with brand protection, enforcement and strategy.

Nathan Sinclair
Senior Associate
BSc (Hons) (Chem) MIP (UTS)Nathan manages all aspects of Australian and overseas trade mark filings and prosecutions, filing strategies and trade mark portfolio management.

Serena White, DPhil
Senior Associate
MChem (Hons) (Oxon), DPhil (Oxon)Serena is a European qualified patent attorney, a UK and trans-Tasman patent attorney. She has
a strong technical background in organic chemistry.

Danielle Spath
Associate
GradCert TMLPDanielle maintains client trade mark portfolios and deals with the registration and protection of trade marks in Australia and overseas.