5 min read

How do you make a cup of tea?  Pot or cup…or mug? Loose leaves or a teabag?  Milk first or last?  Don’t worry, this article is not about any of that.

You take a cup (or a mug), grab a teabag, and carefully place the teabag bit inside the cup, and then dangle the tag bit over the rim of the cup.  So far, so good.

The kettle boils, and you lift it to pour water into the cup.  The water hits the teabag, and the velocity of the water imparts sufficient momentum to the teabag such that the string and tag are pulled into the cup, which is now half filled with boiling hot water.  You resort to fishing around for the tag, scalding your fingers (because it is always your fingers in that mad rush), and emitting a few words that will shame your family for generations.

It’s an age old problem, but what have people done to solve it?

I conducted a very limited search* for teabag-related patents in PatBase, and culled anything not related to this topic.  I finished with a set of about 50 patent families, from which I have determined these technology groups.

ObjectTechnologyExample
Cup or potCleats for tying off




Grooves or incisions

NL1002810
AU2011101068
CN105686558


KR200404017
KR20080010469
CN208439552
TagSticky tags




Big tags


Grooves or incisions



Magnets
US4153153
US20060045935
WO2016209316


US4875574


KR101022889
CN201929560
CN210708847

CN204324057
StringSemi rigidGB304115
OtherSeparate devices for holding the teabagUS5129524
DE10308740
DE202004018654
KR20110037156
KR101352223
US9902557
CN209142847

As with many things in life, it’s complicated.  Some of these technologies overlap, and I’ve had to make a decision as to which technology group some fall into.

Starting with technologies for cleats for tying off the string, I’ll focus on the more permanent types, as the last group, ‘Other’, is directed more to temporary or removable devices.

Here are three examples.  The first is a cleat head that can be attached to a cup or pot in any position with an adhesive or by suction, the second is a cleat head specifically for a handle, while the third is part of the handle design.

The next group, where there are grooves or incisions in the cup, appears to relate to paper cups, although there would be nothing to stop it being applied to a ceramic cup.  The three examples below range from a single incision in the rim of the cup, to a more sophisticated shaped groove combined with a cleat arrangement at the base, to a slit in the side of the cup where the tag can be slipped into and secured.

Moving to what is arguably the most popular method of solving the problem, we get to technologies involving sticky tags.  The idea is simple.  The tag has an adhesive or gum on one side, sometimes with a peelable cover, that allows the user to temporarily attach the tag to the outside of the cup, and provide sufficient counterforce to the poured water imparting momentum to the teabag.

It’s pretty self-explanatory but here are a couple of examples.

There is one notable example that is just that little bit different to the rest of this group.  It also falls into the first group to some degree as part of this solution is a permanent addition to the cup or pot, and that’s because it uses Velcro, with the hooks attached to the cup or pot and the loops attached to the tag.  It does the job it is designed to do but is perhaps not the most environmental solution in this group.  Here are a couple of images from the specification.

The next group also utilises a simple solution.  Why not just make the tag so big that there is no way it could ever fall into the cup?  Here it is, although admittedly it is part of a bigger idea to do with packaging and squeezing the wet teabag.

In addition to grooves and incisions in cups, we also find them in tags.  There are two types:  those with an incision within which the string can be secured after it has been wrapped around the handle, and those that have a larger groove that is wide enough to sit on the rim of the cup as a form of anchor.

The first example shown here is the closest to my preferred method where I slip the tag under the string to form a loose knot.

The last group in tag technology is the use of a pair of magnets, with one on the tag and the other on the teabag.  The idea is that the two magnets attract each other through the wall of the cup.  Again, this is not an environmentally sound solution.

The third part of the modern teabag triumvirate is the string, and this has not been forgotten in a solution to this problem.  The example here is also the earliest I have seen in patent literature, and dates to 1928.

I’m calling it semi-rigid string but it is an aluminium wire with a rudimentary teabag at one end and a tag at the other.  The wire is rigid enough to be able to swirl the bag in the hot water, but also malleable enough to bend to form a hook to hang over the rim of the cup.

The very last technology group I have found is a bit of a catch-all class, but these devices are all removable or independent of the whole cup-teabag relationship, and some of them are a little wacky.

If you have an interest in making a bucket of tea, or in craning your teabag into the cup, then these two are for you.

Next are a few devices that hang over the rim of the cup in some way.  Most are reusable but the third image shows a folded piece of card, and so would be recyclable after its usefulness has ended.

Lastly, there is this.

Not only does it hold the teabag and prevent the tag falling into the cup, but you can also wind it up and set it loose around the rim of your cup and swirl the teabag in the hot water at the same time.

There is one further teabag I found.  It doesn’t fit into the theme of this article but it demands to be mentioned.  It looks simple enough, and this image gives it no justice.

The innovation here relates to making the tag fluorescent, and the reasoning behind it is that a person might want to make a cup of tea at night, and in an effort to save energy, they don’t need to turn on the light to find a teabag.  No mention is made of the energy required to heat the water for said cup of tea, nor of a fluorescent teapot.

That ends our journey through the world of teabags.  I hope you have found a useful way of preventing wet teabag tags and scalded fingers.

* (TAC=(teabag*, ((tea, coffee) w1 bag*)) OR IC=(b65d85/808, b65d85/812)) AND TAC=(cup, mug, tumbler) AND TAC=(label, tag, string)

Authored by Frazer McLennan and Paul Harrison

4 min read

A design application by Aristocrat Technologies Australia Pty Limited (Aristocrat) for a bank of gaming machines has been refused because the representations were inconsistent with the product name for the design.  The decision shows that products made of assembled components must be carefully illustrated or run the risk of refusal.

Key takeaways

  • Components of products must be shown connected together in assembled form to be registered as a single product
  • Expert evidence may be of little use during prosecution of design applications
  • Arguments in favour of registration of a design based on previous registrations of similar designs are unlikely to succeed

Background

Aristocrat filed design application AU 201816709 for a “bank of gaming machines” (the Design) in relation to four gaming machines arranged in pairs back to back, as shown below.

During formalities examination, the Design was objected to for not showing the named product – a bank of gaming machines – in a “fully assembled” state because the gaming machines were spaced apart from each other in the representations.  For this reason, the Design was not in relation to a single product, but four separate gaming machines.

Aristocrat unsuccessfully argued that there was a single product – the “bank” of gaming machines.  As the objection was maintained, Aristocrat sought a hearing before a Delegate of the Registrar of Designs (the Delegate) to overcome the formalities objection.

Arguments

Aristocrat submitted evidence from a long time employee, Mr Attwood, asserting that it was common to install and replace gaming machines in groups or “banks”.  The representations illustrated this type of bank.

Aristocrat further submitted that the bank was a “complex product” under the Designs Act 2013 (the Act), which enabled designs for separately made components of a complex product to be registered. In this case, the individual gaming machines were separately made components of the bank, being a “complex product” and so were registrable.

Aristocrat also submitted that the bank could be a “kit”, which may be assembled by an end user.  The Act permitted the registration of designs for kits.

Aristocrat further submitted that the Designs Office had previously registered designs for banks of gaming machines.  Accordingly, the Design should also be registered for consistency in decision making by the Designs Office.

Decision

The Delegate cast doubt on the usefulness of the Attwood’s evidence.  Formalities examination did not require any consideration of an informed user, as represented by Mr Attwood.  Also, Mr Attwood was not independent, being an employee of Aristocrat. 

The Delegate then considered the definitions in the Act for the terms “product”, “complex product” and “kit”. 

The Delegate noted that the definition of “complex product” states that it must be capable of disassembly and re-assembly.  This implied that a complex product must be an assembly of its component parts.  Based on the ordinary meaning of “assembly”, the Delegate held that there must be some physical connection between the component parts. 

However, in the Design, none of the gaming machines were physically connected.  Accordingly, the bank of gaming machines was not in an assembled form and so did not show a complex product.

Aristocrat conceded that the gaming machines were not physically connected in the bank.  Aristocrat argued that they were in fact connected by electronic connections hidden from view and thus were not shown in the representations. 

The Delegate rejected that this argument as it assumed that a complex product was shown in the representations when this was not the case. 

The Delegate also rejected that the hidden connections should be read into the representations.  Such an approach was speculative as there was not any detail of those connections and it would render the scope of the design registration unclear.

The Delegate further rejected that the Design could be a registrable kit.  The definition of “kit” was qualified by the requirement that it is only taken to be a product “when assembled”.  Since the Design did not show the bank of gaming machines as assembled, the Design failed to meet this definition.

Finally, the Delegate agreed that there should be consistency in decisions made by the Designs Office, but said that each design application must be considered on its own merits.  The existence of similar registrations does not override the correct application of the Act and there was a small sample of prior registrations cited by Aristocrat.

Accordingly, the Delegate found that the representations did not illustrate a single product, being a bank of gaming machines.  Instead the Design showed four separate gaming machines and thus multiple designs.  Consequently, the Delegate refused to register the Design because Aristocrat had the opportunity to pay the extra official fees for the additional designs but chose not to do so.

Significance

The decision illustrates that care must be taken when preparing representations for a design that it shows a “product” within the definitions of the Act.  In this instance, the apparent lack of connections between the gaming machines was fatal to the registration of the Design.

The decision also illustrates that expert evidence may be of little assistance during formalities examination.  Also, arguments in favour of registration based on previously registered designs have little persuasive merit and are unlikely to succeed.

Authored by Andrew Lowe and Allira Hudson-Gofers

3 min read

I’m exploring statuses, patent expiries and kind codes in a three part series of articles.  The first article on statuses can be found here, and the second article on patent expiries can be found here.

This third, and final, instalment takes a closer look at how to read kind codes.

Kind Codes

If you’ve ever looked at a patent specification you’ve seen a kind code.  They are the As, Bs and Cs, usually with a number, tacked on to the end of a patent number.

Kind codes have meaning.  They tell you what significant events have occurred in the lifecycle of a patent.  Those significant events range from being filed to grant to amendment, and can also tell you what type of application you are looking at.  In Part 2 of this series on patent expiries, we considered the shorter patent terms for utility model applications.  Kind codes will tell you if you have one.

In Australia, there are kind codes starting with A, B and C.  Standard applications such as convention completes or national phase entries get the kind code A1 with their first publication, and B1 when they are granted.  If they are amended post-grant, they get the kind code C1.  Corrections to bibliographic data get A8/B8/C8 kind codes when the corrected specification is published.

The utility model/innovation patent applications get A4 or B4, and even C4 if corrected during its short lifespan.

The United States has a set of similar looking kind codes but they don’t mean exactly the same things.  Published applications get A1, or A9 if corrected, but the granted patents get B1 if there was no A1 published (first published on 15 March 2001), and B2 if there is an A1 published.

Other United States kind codes include a C for a re-examined patent, and E for a re-issued patent.

Patent Cooperation Treaty, or PCT, applications don’t get granted so we generally just see a range of “A” kind codes.  There is A1 when the specification is published with a search report, A2 when it isn’t, and A3 when they do eventually publish the search report.

Other letters used often in kind codes are U or Y for utility model patents, and T for translations of foreign language specifications.  Sometimes, in the spirit of the Zeroth Law of Thermodynamics, where an extra, more fundamental law was determined after the other three laws, provisional applications are given an A0 kind code, because they are the initial application upon which the rest of the patent family arises.

Each country has its own set of kind codes, some with just a couple to indicate filing and grant, and many more with an extensive array, especially where they have utility model applications and working in a number of languages.  There are many lists available online, some for specific countries if that’s all you need, but this list from Clarivate is a nice summary of kind codes around the world.

To tie this series together, while you’re searching, you can use kind codes on the fly to see where a patent is up to, the patent expiry date to see if it could be alive, and the status to determine if it is truly dead or alive.

Authored by Frazer McLennan and Gareth Dixon, PhD

4 min read

FemTech is surging around the world with new start-ups and technology entering the marketplace every day, but what’s going on Down Under?

Need for FemTech

As of June 2019, just over half of Australia’s population faced complicated genetic, physiological and hormonal factors making them prone to and more severely affected by certain conditions in comparison to the other half of the population.

Conditions such as heart diseases, osteoarthritis, cancers, strokes and autoimmune diseases present in women differently and pose considerable health risks. 

While FemTech is rapidly growing in Australia, increased health technology options are still needed to support Australian women. This has become even more apparent during the pandemic where existing inequalities in healthcare for women have been laid bare. 

Research is currently well placed in Australia with the Australian Government announcing they will be investing $354 million over the next four years to support the health and wellbeing of Australia’s women, including funding for cervical and breast cancer, endometriosis and reproductive health.

Current market snapshot

FemTech in Australia is still relatively new and unchartered territory. No official study has been conducted about Australian FemTech companies, however, the rise of new FemTech companies and products is undeniably on an upward trajectory.

The Women’s Health Summit 2021 hosted by the Royal Australian and New Zealand College of Obstetricians and Gynaecologists highlighted issues and deficiencies in the Australian healthcare system about health equity for women; access to mental health, contraception, abortion, sexual health and reproductive services; preventative approaches to chronic diseases; and areas in the medical industry where data about women lack.

Australian companies

FemTech typically spans across medical devices, digital health applications and direct to consumer products. Even though medical related digital health applications have only entered the market within the last decade, they are fast becoming the front runner for providing women with access to crucial information about medical conditions, including their diagnosis, treatment and management. Their popularity, which has reached new heights, is primarily due to their accessibility and ease of use.

The following Australian companies have redesigned, reinvented and recycled technology to benefit the health of women:

Menstrual pain

Transcutaneous electrical nerve stimulators (TENS) have typically been used for musculoskeletal pain, such as chronic back pain or knee joint arthritis.

Ovira, a female owned start-up had other ideas for TENS and have developed a non-invasive and instant period pain relief through their device, Noha. The Noha device sends low-level pulses of electric vibrations to the abdomen to block pain signals from being sent to the brain.

Menstruation

Since their conception, menstrual products have made their way from rags to riches. Starting off from cloth, bandages, cotton and wool in the 1800’s to disposable pads, winged pads, and tampons in the 1900’s, menstrual products have come a long way.

Modibodi, are at the forefront of menstrual technology and provide reusable and sustainable leak-proof period apparel that replaces the need for disposable products such as panty liners, tampons, pads, and incontinence products.

Juju, a socially responsible and environmentally conscious company manufactures Australia’s only made menstrual cup.

Payment solutions for the adult industry

Businesses and workers operating in the sex industry find themselves facing discrimination and often struggle to get finance or financial services.

Intimate.io, a blockchain startup, has taken this issue into their own hands. Intiamte.io is focused on solving issues inherent in the adult industry by establishing a cryptocurrency to operate as a digital payment option for adult or sexual products, services or offerings.

Fertility solutions

Despite major technological advancements in IVF, the success rates of IVF still remain very low.

Life Whisperer, an AI focused company, has been using AI to increase the chance of pregnancy through IVF by identifying morphological features that constitute a healthy embryo.

Future of FemTech Down Under

With women comprising over 50% of the population, these emerging companies have a huge opportunity to improve the health and wellbeing of millions of Australians. We expect the Australian FemTech market to continue to grow with local start-ups and from the expansion of international FemTech companies.

It is encouraging to observe the recognition by the Australian Government of the need for better understanding of pressing health challenges faced by women and the injection of money into the women’s health sector to combat some of the challenges.

Companies like Ovira, Modibodi, Juju, Intimate.io and Life Whisperer continue to break boundaries and use technology to find solutions to age old women’s health issues.

Shelston IP are proud supporters of FemTech, assisting FemTech businesses to protect their innovative new products and develop and implement intellectual property strategies to achieve a sustainable competitive advantage.

Authored by Connie Land and Allira Hudson-Gofers

5 min read

The Australian Patent system is relatively forgiving in terms of missed deadlines.  The Patents Act provides extensions of time for complying with most deadlines, provided that a genuine error or extenuating circumstances can be demonstrated.  The extensions are at the discretion of IP Australia, which is generally pragmatic in their acceptance of the fact that mistakes do happen.

However, there are a small number of deadlines that are specifically excluded from the general extension of time provisions.  Perhaps most significantly, the general extension of time provisions exclude the  deadline for filing evidence during patent oppositions.  Rather, in order to extend an evidentiary period in an opposition, the party seeking the extension must be able to demonstrate that either a) they made all reasonable efforts to comply with all relevant filing requirements, and have been unable to file their evidence despite acting promptly and diligently to ensure it is filed in time; or b) there are exceptional circumstances that warrant the extension.

In general, requests for extensions falling under the “despite all reasonable efforts” limb of the test receive little sympathy from the IP Australia if they consider there has been any unexplained delay at any stage during the evidentiary process.  A delay in identifying or engaging an expert or settling the expert evidence are likely to fail the test for appropriate diligence.

Most Australian attorneys engaged in opposition work find themselves in the squeeze between IP Australia, who appear determined that the parties must complete their evidence in the minimum allotted time, and independent expert witnesses who have multiple competing priorities for their time.

The “exceptional circumstances” test requires a) a Court order or direction from the Commissioner to stay the proceedings, b) an error or omission by the Commissioner that prevents a party from filing the evidence or c) a circumstance beyond the control of a party that prevents them from filing evidence.

Previous decisions by the Commissioner have ruled that unavailability of experts due to leave, work commitments, personal commitments or short illness should be expected and is not exceptional.

Exceptional circumstances were recently tested in QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 (22 June 2021). In that case, the patent applicant had failed to meet their original deadline for filing their evidence in reply, but were ultimately successful in demonstrating that exceptional circumstances did apply, and an extension to file that evidence was justified.

In this case, the patent applicant was located in the US, and their US attorney only became aware of the existence of an opposition to their application one month before their evidence in answer was due.  That is, the US attorney was unaware of the filing of a notice of opposition, unaware of the opponents filing their statement of grounds and particulars  (3 months into the opposition), and unaware of the filing of the opponent’s evidence in support filed (6 months into the opposition).  Two of the three months of the applicant’s window for filing evidence in answer had elapsed before the applicant first became aware of the opposition.  In short, the opposition had progressed for eight months without the applicant’s knowledge.

All of the opposition correspondence was duly received by the Australian attorney and passed on to the applicant’s US attorney, however, unbeknownst to all parties, the US attorney’s  spam filter was diligently capturing and destroying the relevant correspondence upon receipt.  Notably, no bounce back was received by the Australian attorney.  This capture and destruction of the emails only appears to have been detected by good fortune when, for some reason, a reminder email from the Australian attorney did indeed manage to avoid the US attorney’s spam filter.

The Applicant initially requested an extension of time to file their evidence which was refused by the  opposition division.  The opposition division  acknowledged that the email communication failure was unintended, but overall, they considered that the applicant’s attorney did not act reasonably, promptly and diligently because they did not follow up on emails that were not acknowledged by the client.  In refusing the request for an extension, the opposition division said “It is reasonable to believe that the information associated with those emails would generally elicit a response and the failure to do so, especially over an extended period of time and in view of the strict deadlines in opposition matters, is quite remarkable and failing to follow up on the lack of response does not appear to be commensurate with acting reasonably or promptly and diligently.” 

The initial refusal noted a number of points, such as the failure of the applicant to check on the grant of the patent, the US attorney’s  processes involved in  checking their spam filter was not blocking legitimate emails, and the failure of the Australian  attorney to follow up on a lack of acknowledgement of their emails.

The applicant sought a hearing on the matter, arguing that “the Senior Examiner’s proposed approach is a counsel of perfection, made with the benefit of hindsight. Email is a highly reliable, mature technology. Users are accustomed to receiving non-delivery or bounce-back messages if an email is not delivered and it is entirely reasonable to assume, as [the Australian attorneys] did, that, in the absence of receiving any non-delivery message, the email has been safely delivered to its intended recipient. That was the assumption made in the present case. It was a reasonable assumption. It is not for [the Australian attorneys] to second-guess why a client does not respond to emails or indeed why a client may not wish to defend an opposition proceeding.”

In his decision, the hearing officer sided with the patent applicant, finding that “Although with the benefit of hindsight it can be envisaged that the situation could have been avoided (such as [the Australian attorneys] making a ‘follow up’ phone call when no response was received to the emails), such speculation is beyond the realm of what was reasonably beyond the control of the parties. I consider that the emails not being received (with no indication that the email was not delivered) was beyond the control of both the sender … and receiver … of the emails.”

The decision is pleasing to those in the patent profession, who in some cases deal with hundreds of emails every day, as it demonstrates that a “perfect” practice is not the starting point for determining whether “exceptional circumstances” exist when determining whether extensions of opposition deadlines are warranted.

Authored by Charles Tansey, PhD

2 min read

After a COVID-induced “false start” last year, the International Olympic Committee (IOC) and Japanese Government decided to proceed with the “2020” Tokyo Olympic Games last month. Following reports that Tokyo was experiencing its highest number of new COVID-19 cases in six months, the relevant governing authorities decided that all sporting events in the host city would take place without spectators.

Given the various levels of COVID-19 “lockdown” restrictions currently in place around the world, the number of viewers watching the Tokyo Olympic Games is expected to rise into the billions.  Given the power of their Olympic brand (and associated value in corresponding commercial sponsorships), the IOC is well known for vigorously defending their rights in relation to any unauthorised use, particularly those involving so called “ambush marketing”.

Olympic levels of protection

The Tokyo Olympic Organising Committee have helpfully issued Brand Protection Guidelines about who may use the relevant properties and the context of acceptable use – see gtimg.tokyo2020.org/image/upload/production/eryzza4bg3fzqtd7g9ox.pdf. This document confirms the intellectual property and images associated with the Olympic (and Paralympic) Games are protected by the Japanese Trademark Act, the Unfair Competition Prevention Act, the Copyright Act, and other laws in Japan.

Beyond the protection afforded to the Olympic properties by this Japanese legislation, there are numerous other laws and treaties in place to prevent unauthorised use of these properties.  For example, the Nairobi Treaty (of which Australia is not currently a signatory) requires party states to protect the “Olympic rings” symbol against commercial use unless it has been authorised by the IOC. 

Further, it has now become commonplace (since the 1976 Montreal Olympics) for individual countries to pass permanent national legislation to protect the Olympic properties, particularly in countries which are hosting the games.  In Australia, the relevant legislation protecting these Olympic properties is the Olympic Insignia Protection Act 1987 which defines terms such as OLYMPICS and OLYMPIC GAMES as “Protected Olympic Expressions”.  Apart from these protections, the IOC also seeks to register trade marks properties to protect the various editions, such as LONDON 2012, RIO 2016, TOKYO 2020 (even TOKYO 2021!) and associated logos, design elements and mascots.

Let the Games begin!

The Olympic Games are undoubtedly one of the world’s most famous brands. To ensure the Olympic brand maintains its premium status, the IOC carefully selects its partners and exerts full control over who broadcasts the events and how its brands are marketed. 

The IOC is primed to enforce its legal rights (where necessary) to prevent unauthorised use, often employing technology to track and take down unauthorised content particularly in relation to social media and ambush marketing.  The IOC’s proactive approach toward brand protection of the Olympic image has provided it with unmatched control and helped to prevent brand dilution.

Authored by Nathan Sinclair and Sean McManis

3 min read

I’m exploring statuses, patent expiries and kind codes in a three part series of articles.  The first article on statuses can be found here.

This second instalment looks at patent expiries around the world.

Looping back to the article on statuses for a minute, patent term expiry dates are both theoretical and precise.  Precise in that a definitive end date for the maximum patent term can be calculated, but theoretical in that other events occur to prevent the patent reaching that date.  These events include non-payment of renewal fees (Ceased, Ended), and revocation of the grant of the patent (Revoked).

Patent Expiries

Let’s get United States patent expiries out of the way.  There are a couple of rules to follow, and I have covered those in an earlier article

There’s a transition date of 8 June 1995 where rules moved from the latter of 20 years from filing/17 years from issue to just 20 years from filing.  That date is over 25 years ago now, and almost all of those filed before it have now expired.  I say almost all because I can find a small number with an earliest effective filing date before June 1995 and an issue date after 2004 (because that’s 17 years ago), not to mention any submarine patents we will never know about until they are granted. 

These days most United States patents will expire 20 years after the earliest effective filing date, which is in line with the rest of the world.  That’s not taking into account any patent term adjustments which add days to the expiry date as a result of patent office delay, or any terminal disclaimer that limits the term of a patent to that of another patent.  The number of days of adjustment, and details of terminal disclaimers can be found in PAIR.

Article 33 of the WTO’s TRIPs Agreement states

“The term of protection available [for patents] shall not end before the expiration of a period of twenty years counted from the filing date.”

As such, patents around the world, including the United States, have 20 year patent terms, calculated from the filing date for convention applications, and the international filing date for PCT applications.

The calculation is easy.  A patent filed on 10 April 2017 expires on 10 April 2037.

There are a few exceptions.  Every rule has at least one.

Divisional applications or continuation applications, although physically filed on a later date, take the filing date of the original, or parent application.  Shown below is an example from Australia, for the application 2019210667.  It’s just one in a chain of divisionals stemming from the original application filed in 2007.  Although this application was filed in August 2019, the effective filing date is in September 2007, making the expiry date of this application 7 September 2027 and not 2 August 2039.

The other exception to patent expiries being less than 20 years is through applications such as Australia’s innovation patents or Chinese utility patents, where the application is subject to less scrutiny in exchange for a shorter patent term.  For innovation patents this is eight years, and for utility patents it is ten years.  WIPO helpfully provide a list of countries that have this model of patent filing, and more detail can be found here.

Those two examples cover shorter patent terms but what about patent terms that are longer than 20 years?

Some biologically active ingredients, such as for use in human and veterinary medicines, can take a long time to obtain regulatory approval and get to market, so it is possible to obtain an extension of the patent term for up to five years as compensation for the time lost.  These are generally known as supplementary protection certificates (SPCs) or patent term extensions (PTEs).  Not all countries allow for such extensions of the patent term, but those who do include countries through Europe, North America and Asia, as well as Australia.

So, in summary, patent expiries can easily be calculated, especially for anything filed so far this century, but take care with older United States patents, and check whether an patent is a utility model filing or is subject to a patent term extension, in order to determine the expiry date, and don’t forget to use this in combination with status information to determine if a patent is dead or alive.

In part 3 I’ll look at how to read and understand kind codes.

Authored by Frazer McLennan and Paul Harrison

4 min read

Crowdsourcing can currently be defined as “the practice of obtaining needed services, ideas, or content by soliciting contributions from a large group of people and especially from the online community rather than from traditional employees or suppliers” (Merriam Webster Dictionary).  However, the idea of crowdsourcing itself is not new and existed well before the age of the internet.  Here, we consider crowdsourcing and its merits and risks in the context of intellectual property. 

Why use crowdsourcing?

Crowdsourcing has the potential to open up new ideas and possibilities by harnessing ideas which would not otherwise have been realised.  In principle, crowdsourcing can facilitate results via outside-of-the box thinking and by increasing the number of minds applying themselves to a particular problem or challenge. 

What are some examples of crowdsourcing?

Crowdsourcing strategies are used in a variety of technical and non-technical fields. 

One example of crowdsourcing that pre-dates the internet era is the design of the Sydney Opera House.  The winning design for this iconic landmark, by Danish architect Jørn Utzon, was chosen from an international competition in the mid-1950s.  

An example of an internet-based crowdsourcing site is the Lego Ideas Platform, which is used as a community for fans to share their own Lego creations.  The most popular ideas are assessed for potential production into new Lego sets to be sold to the public. 

Various online crowdsourcing platforms exist for logos, brand names, images, product redesign, software solutions, as well as problem-solving challenges.  Global companies are using crowdsourcing platforms seeking new innovations in technical fields including pharmaceuticals, clean tech and engineering to mention but a few.

How is intellectual property relevant?

Intellectual property rights present an opportunity to protect valuable innovations and creations and in turn realise value through exclusive rights with a defined scope and period of time.  In the hands of third parties, intellectual property rights pose a barrier and risk to new market entrants.  Therefore, it is important to consider:

  • Patent law – when solutions to technical problems are sought via crowdsourcing
  • Trade mark law – when crowdsourcing is used to come up with new product names, logos or brands
  • Design law – with respect to the visual appearance of new and distinctive products
  • Copyright law – with respect to artistic works such as drawings and literary works (any original text)

Managing intellectual property when crowdsourcing ideas

Crowdsourcing might raise issues regarding ownership of the resultant intellectual property.  Ownership of rights to crowdsourced intellectual property will generally not be governed by the usual laws which relate to contracts of employment – except, perhaps, if a company runs an internal crowdsourcing exercise in which only its own employees participate.  

Express and clear contractual terms (such as in terms and conditions which contributors are required to actively acknowledge) dealing with intellectual property ownership and licensing/use are therefore critical, just as they would be when engaging any third party contractor/consultant.  Payment for a winning response can be arranged as consideration for an assignment by agreement of all of the associated intellectual property rights.  An alternative mechanism for the formal legal transfer of the relevant intellectual property rights is by way of a deed, which does not require any consideration but does have other requirements. 

Novelty and inventive step are requirements for securing patent protection in Australia and virtually all other jurisdictions.  So, until a patent application is filed, it is prudent to avoid publishing too many (or, ideally, any) details of an invention (e.g. on a website).  If too much information is disclosed, this could later cause an invention to be ineligible for patent protection.  This is incredibly important, especially because some key jurisdictions have no grace period (Australia does have provisions protecting against self-disclosure within a specified period before a patent application’s filing date).  In this regard, we would recommend getting professional advice before making any disclosure.  

Also, it is important to be mindful of possible secret use issues associated with making commercial gain from an invention before the patent application is filed.  If the invention has been exploited commercially before the first patent application is filed, this could render the subsequently-filed patent invalid.  

In addition, it is worthwhile remembering that any information disclosed in a crowdsourcing context is available to competitors. 

A crowdsourced solution still needs the usual due diligence checks.  For instance, a granted patent confers an exclusive right to exploit the claimed invention (including but not limited to importing, using, making, selling or offering to sell a patented product or using a patented method), and to prevent others from doing so (via court proceedings).  However, the patent does not give the owner the right to exploit the invention without infringing other parties’ intellectual property rights or without obtaining any necessary regulatory approvals, so it is recommended to carry out relevant investigations to find out if exploiting the invention would infringe a patent belonging to somebody else (“Freedom to Operate”).  

Similarly, trade marks, registered designs and copyright also confer exclusive rights, so due diligence checks are needed to establish whether the proposed name or brand, design or appearance, or associated literature or artistic work might infringe the existing intellectual property rights of others.

Conclusion

Crowdsourcing has the ability to unlock ideas not previously considered, but it is not guaranteed to provide solutions. 

We recommend evaluating the potential benefits of crowdsourcing against the associated risks before proceeding.  Intellectual property can be the cornerstone of a business so it is critically important to take into account when developing a business strategy.  For advice, please contact Shelston IP. 

Authored by Serena White, DPhil and Duncan Longstaff

4 min read

You’ve found a patent of interest but how do you know if it’s dead or alive, and if alive, when it expires, and what exactly do those kind codes indicate?

I’ll explore all these in a three part series of articles, starting with where to find status information and what it means.

Statuses

Some patent offices explicitly report the status of an application, while others make you dig a little deeper, and some make you work hard for that information.  Before we get to who’s who and what’s what, let’s look at what the language around statuses is.

At the most basic level a patent is dead or alive, but within those labels there are a number of ways to describe where in the patent lifecycle they are.  Statuses in both categories are split into pre-grant and post-grant.  Every patent office has its own language around statuses.  Here’s a selection.

Pre-grantPost-grant
AliveAccepted
Filed
Pending
Under examination
Under opposition
Unexamined
Certified
Granted
Issued
No opposition filed
Patented
Registered
Sealed
DeadAbandoned
Converted
Lapsed
Refused
Rejected
Void
Withdrawn
Ceased
Dead
Ended
Expired
Revoked

Although data aggregators such as commercial patent databases often have status data, the recognised place to go for accurate status information is the national register for the patent of interest.  In Australia that’s AusPat, and in New Zealand it’s IPONZ.  Other sources include PAIR (United States), the European Patent Register, KIPRIS (South Korea), J-Plat-Pat (Japan), and thanks to Brexit, Ipsum (United Kingdom) now has more relevance than it used to.  Of course the list of national registers is far too long to mention every one here, but you can find a list at the WIPO Patent Register Portal.

In some national registers all you need to do is search for a patent number (or any search) and the status will be provided as part of the search results or record view, such as AusPat below.

Others in this group include IPONZ, KIPRIS and Ipsum.

National registers in the next group don’t explicitly state the status of a patent, and usually require a single click, or maybe two, from the search results page through to the record view.  For example the search results page for J-Plat-Pat is shown below, and a click on ‘Details’ will take you to the information required.

Others in this group include In-PASS (India), PRV (Sweden) and the Canadian Patents Database.

The last group of national registers make you work harder to find the status of a patent.  I’m looking at the European Patent Register, and giving death stares to the United States’ PAIR in particular, and for different reasons.

First to the European Patent Register.  The initial view is straightforward as shown here.

The status ‘No opposition filed within time limit’ refers to the period after acceptance where an application can be opposed before grant, and in this case that time has expired and the patent has been granted.  Simple isn’t it?  Not quite.  Europe is a group of countries, and a number of these get designated so that the EP patent is applicable in each of them, so your country of interest has to be on that list, as shown below.  To find this list just scroll down the register page for this application.

Are we there yet?  Sorry, no.  We still need to scroll down the page a little further.  The list of designated countries is essentially an ambit claim, hedging that the patent is going to make it big.  They usually don’t so many of the designated states find themselves on the ‘lapsed’ list, shown here in part.

Now you need to conduct a reverse search to see if the country of interest is on the list or not, made all the harder by having the list in date order, not alphabetical order.  If the country of interest is here, the patent is dead, if not, possibly still alive.  At first glance I can see Germany, France, Great Britain and Ireland are still potentially alive.  A trip to their respective registers (Depatis, INPI, Ipsum and IPOI) is necessary to confirm that.

Now to PAIR.  Many national registers will change the status of a patent when a significant event such as ceasing through non-payment of renewal fees, or expiry after the full term of the patent, but the USPTO do not. Take the example shown below where the initial view in PAIR indicates it is a ‘Patented Case’.

The image doesn’t show the application filing date or the earliest effective filing date but it is 3 May 1999 for both.  If you’ve read my previous article on calculating United States patent expiries you’ll know the expiry date is 3 May 2019.  That’s a date in the past so this patent has expired, but PAIR does not say so.  You have to do all the work here.

There’s always the possibility of a patent term adjustment of more than two years, but with an issue date just over three years after filing, that’s unlikely, so you can assume it is well and truly dead.

This example is for a patent around the end of its expected life, but for others, in addition to calculating the expected expiry date, you may need to check the patent maintenance fees to see if they are up to date.  You can access that information through PAIR.

That’s a brief rundown on statuses, where to go to find them, and what language is used to describe them.  I touched briefly on patent expiry dates for the United States.  In Part 2 I’ll look at patent expiries in other parts of the world.

Authored by Frazer McLennan and Gareth Dixon

4 min read

Females make up half of the population of the world, but many of the issues they have to deal with, from menstruation to menopause, have often been considered taboo subjects. In fact, until very recently, medical technology and devices for women have been considered niche.

For many years, medical technology and products have historically been developed by men, tested on men and for men, with women expected to adapt. As a result, many diagnoses in women are still undetermined, and it takes several years longer to establish comparable diagnoses in women than in men.

The rise of trailblazing innovators and entrepreneurs creating, designing and developing products and apps for women has started a women’s health revolution by lifting health taboos around the world and giving rise to a global “Femtech” industry worth many billions.

What is Femtech

Femtech, also called female technology, is a newly recognised health sector that relates to technology such as mobile apps, wearables, diagnostic tools and software that is specifically geared towards the needs of women.

Opportunities in Femtech sectors

Today, Femtech accounts for more than 200 start-ups worldwide, many of which have been founded and led by women. 

Numerous spaces and new opportunities in areas such as sex and reproduction, menstruation, fertility, and pregnancy have emerged as age-old issues are being addressed by the unification of modern technology and a focus on women’s health.

While the Femtech industry is still relatively young and underfunded, it is predicted that the industry will grow exponentially in the coming years. Revolutionary steps are continually being taken to balance out gender disparities in the healthcare industry, propelling the agenda of Femtech into the modern world.

In fact, the topic of Femtech has been searched more than ever previously recorded and is on an upwards trajectory.


(Graph obtained from Google trends. Numbers represent search interest relative to the highest point on the chart for the given region and time. A value of 100 is the peak popularity for the term. A value of 50 means that the term is half as popular.)

The shift towards women’s health has also coincided with the next wave of wearable tech products prompting an explosion of wearable technology focused on women’s health, for example, wearable smartwatches to track mensuration and pregnancy and temperatures trackers to identify fertility phases.

On the other hand, the menopause market is an area of enormous opportunity as technology is lacking and largely unexplored. While all women will experience menopause at some point, the availability of products to assist wth tracking symptons is poor, including analogue charts, and very little technology exists for treating symptoms. For that reason, we expect to see this area thrive in the future.

Ongoing challenges in Femtech

While the medical technology and device industry is shifting a considerable amount of time and effort towards women’s health, the industry still faces many challenges.

Breaking down barriers, taboos and getting health data into the hands of those who can utilise it has been a real hurdle within the industry. A particular challenge within Femtech is securing funding. In essence, this requires overcoming the hurdle of pitching female specific products to mostly male investors which solve a problem they don’t understand and can’t relate to.

Other challenges include:

  • Receiving public support about subjects people are less likely to talk about.
  • Fewer researchers in women health fields mean fewer people to apply for grants.
  • Concerns about trust, security and privacy and fear of repercussions if sensitive data was released.

Future of Femtech

The future of Femtech is bright as the awareness of female-oriented health and technology continues to gain momentum, while the taboo around women’s health dissipates.

So far we have only seen the tip of the iceberg in female-focused technology. Notably, the developments in AI and the Internet of Things have largely contributed to the rise of Femtech and will continue to do so. Only recently have tech juggernauts, Fitbit and Apple, developed technology aimed at women’s health. In April 2018, Fitbit unveiled a woman focused smartwatch which allows women to track their menstrual cycle, followed by Apple in June 2019, who added a reproductive health tracking feature to their operating platform.

According to a report by research consultancy Frost & Sullivan, the value of the industry is increasing rapidly. It was estimated that the Femtech industry was worth US$200 million in 2018 and will skyrocket to a potential worth of US$50 billion by 2025.

Conclusion

As Femtech continues to pave the future, we will continue to explore other aspects of Femtech in Australia and Femtech in relation to Intellectual property through a series of focused articles.

Authored by Connie Land and Allira Hudson-Gofers