Defence export controls (limitations on exporting “sensitive” Australian technologies) and intellectual property (especially patents) have been linked for the best part of a decade.  A 2018 review predicated on strengthening the restrictions appeared to go nowhere – that is, until an interesting article in this morning’s Guardian hinted that tightening the laws is still very much on the cards.

Local inventors (and indeed, patent attorneys) may think “so what?  Unless I’m looking to patent a weapon, how is this remotely relevant to me?”  Well, if your invention falls into what’s termed the “dual use” category – inventions having potential downstream military application (and it’s the Government that decides this – not you, and not us), then please read on…     

The status quo

The Defence Trade Controls Amendment Act 2015 entered into Australian federal law on 16 May 2015 and amended the original Defence Trade Controls Act 2012 (“the DTC Act”).  The (criminal) sanctions for non-compliance took effect from 2 April 2016.  In regulating the extent to which one can communicate new technologies overseas – and in providing criminal sanctions for non-compliance, the legislation stands to impact significantly upon the day-to-day activities of Australian patent attorneys – and their clients.  On this basis, the fact that defence export controls has raised its head again places this little-known piece of legislation squarely in the public eye and provides an opportunity to issue a reminder as to the scope and significance of the DTC Act.    

Criminal sanctions for non-compliance with the restrictions

The DTC Act regulates the overseas supply and publication of Defence and Strategic Goods List (DSGL) technologies and the brokering of DSGL goods and technology.

Shelston IP actually worked closely with Defence Export Controls (DEC) throughout the 2015 public consultation process, and as a consequence, our internal systems have been fully compliant with the restrictions imposed for the best part of five years.  In short, when dealing with Shelston IP, local clients can rest assured that we fully understand the situation and will have taken the necessary steps to minimise any risks to the parties involved.

Communicating technology – restrictions on our “day jobs”

As patent attorneys, the communication and publication of “technology” is a staple of our everyday work.  Often, such communications are sent offshore.  Other times, we communicate new technologies in the form of patent specifications to our local clients, who in turn, send these documents overseas.  Depending on the nature of the “technology”, the DTC Act stands to criminalise such activities.

Because the offence provisions for supplying and publishing DSGL technology and for brokering DSGL goods and technology took effect from 2 April 2016, individuals and organisations are required to seek permits for any otherwise-offending activities. 

Why have export controls in the first place?

The DTC Act is a little-known document having significant, wide-reaching consequences.  Australia’s export control system aims to stop goods and technologies that can be used in military applications from being transferred to individuals, states or groups of proliferation concern.  As a member of various international export control regimes, Australia is part of a global effort to regulate the export of items of concern, many of which have potential terrorism or weapons of mass destruction applications.

Australia already regulates the physical export of certain military and dual‐use items under Regulation 13E of the Customs (Prohibited Exports) Regulations 1958.  However, the DTC Act is Australia’s means of closing any gaps that have appeared in the interim (as required by the Wassenaar Arrangement, to which Australia is a signatory).

Accordingly, the DTC Act regulates three main activities:

  • The intangible supply (transmission by non‐physical means, such as e-mail) of controlled technology from a person in Australia to a person outside of Australia;
  • Publishing controlled military technology; and
  • Brokering (akin to enabling another to communicate overseas) controlled military goods or technology.

How do I know if my technology is covered under the DTC Act?

The DTC Act applies to different stakeholders, depending on whether their activities involve military or “dual‐use” items listed in the Defence and Strategic Goods List (DSGL).  The DSGL, accessible here, is a 338-page legislative instrument defining as “dual use” a broad range of otherwise fairly benign-sounding technologies.  As such, one could assume (fairly reasonably) that a technology was exempt on the basis that it had no immediate or apparent primary military end use.  However, as noted above, it’s the Government that has the final say by way of the DSGL listing being the sole arbiter.  It is important to note that secondary or incidental military applications may suffice, hence the term “dual use” technologies.

International export control regimes are generally conscious of their impact upon people’s day-to-day activities, and so the controls are designed to only capture what is considered necessary.  For example, the DSGL lists computers that are specifically designed to operate below ‐45 °C or above 85 °C.  The DTC Act controls only apply to the technology which is necessary for the computer to operate at these extreme temperatures.  Technology that does not influence the computer’s ability to function at these temperatures is not controlled.  Using the above example, an Australian inventor who has created such technology for the primary purpose of, say, exploring the surface of Mars, would need to be acutely aware of the restrictions imposed by the DTC Act – as would his/her patent attorneys.

All things in perspective…

As mentioned, the offence provisions specified in the DTC Act came into force from 2 April 2016.  Although the sanctions for non-compliance are criminal in nature, this should be tempered with the knowledge that being hit with the full extent of the sanctions (10 years’ imprisonment) would require prosecutors to prove the requisite levels of intent, knowledge, recklessness and negligence.  The operation of the Criminal Code Act 1995 means that a person who mistakenly supplies, publishes or brokers controlled technology contrary to the DTC Act after diligently following institutional compliance processes would be unlikely to be prosecuted, much less to the full extent of the law.  The Code applies general principles of criminal responsibility to Commonwealth offences; in particular, the knowledge requirement is akin to having received fair warning. 

If the goods or technology at issue are listed in the DSGL, a permit or approval may be required from DECO.  The qualifier “may” is dependent upon:

  • The activity being undertaken (“supply”, “brokering”, or “publication”); and
  • Whether it is a military or a “dual‐use” DSGL technology; and
  • Whether an exemption applies (such as “basic scientific research” or material that has been lawfully placed into the public domain).

As readers will appreciate, a simple “yes/no” answer as to whether a permit is likely to be required is necessarily dependent upon the unique circumstances that each scenario presents.  

Patent-specific exemptions

As mentioned, a staple of our day-to-day activities as patent attorneys is the exchange of information relating to “technology”.  On a daily basis we communicate technology internally, domestically and internationally – and our clients do the same.  It is useful, therefore, to understand the activities that are exempted under the DSGL regulations.

Firstly, the “pre-publication” exemption amounts to recognition, on the Government’s part, that they cannot regulate the publication of information.  As such, the communication of information contained in a patent document that will later be published (e.g., a draft convention application or a draft PCT application) appears to fit comfortably within the definition of “pre-publication”.  On the other hand, provisional patent applications do not appear to fit within this category – and as such, another exemption must be invoked.

To this end, the “patent application exemption” covers activities “directly related to seeking a patent”:

This exemption applies to the supply of DSGL technology where it is done for the purpose of “seeking a patent” in Australia or overseas. “Seeking a patent” includes lodging a patent application and the supply of DSGL technology to a person or organisation (e.g., a Patent Office, patent attorney, research collaborator or a patent review panel) that is directly associated with the lodging (or potential lodging) of a patent application, or as a result of the patent examination process.

Supply for a purpose that is not directly related to seeking a patent will require a permit (unless other exemptions apply). This includes supply of DSGL technology to a research collaborator located overseas before a decision is made to seek a patent. Once a provisional patent application is filed, any supplies of DSGL technology to further develop an invention prior to preparing/submitting a complete patent application will require a permit. Supplies of DSGL technology to locate investors and determine overseas markets (including forwarding a recently-filed provisional application) will require a permit.

The process of publishing a patent (or an unsuccessful application) into the public domain is covered by this exemption. Until such time as that information exists in the public domain, it is still controlled and would require a permit to be supplied if it is not for the purpose of “seeking a patent” and no other exemptions applied.

As such, the Government would appear to have intentionally extricated the acts of overseas communication for the purposes of preparing a patent application (exempt) and communication with a view to ancillary business activities such as seeking investor funding (not exempt).

We will keep abreast of any changes to, or unusual interpretations of this new exemption.  As it is, it is clearly important to the manner in which we – and our clients – go about our everyday professional activities.    

Shelston IP’s proactive approach to the DTC Act restrictions

Being aware of the potential impact of the DTC Act, Shelston IP has closely monitored progress throughout the public consultation process (dating back to 2014).  We have liaised with DEC on a regular basis and have developed an internal best practice guide.  Adherence to such best practice will protect not only our interests, but also those of our clients.  This, in turn, means that clients dealing in controlled or dual-use technologies can be assured that their interests are in safe hands.

Based on our experience and understanding, compliance with the DTC Act can be as easy as following a few simple rules.  In some instances, a deeper consideration of the specific circumstances and legislative requirements will be necessary.  Those concerned about their own internal procedures under the DTC Act are invited to make contact with their Shelston IP patent attorney. 

Our specialist patent searcher, Frazer McLennan, is an expert in assessing technologies against what is prescribed in the DSGL register.

Authored by Gareth Dixon, PhD and Frazer McLennan

The World Intellectual Property Organisation (WIPO) have been adding a range of useful tools for many aspects of intellectual property for a while now, including searching databases for patents, trademarks and designs; classifications; statistics; and multilingual terminology across patent documents.  I’ve written before about where you might go to conduct a search, sticking mainly to free sources, but WIPO have just introduced a new tool called WIPO Inspire that is a collection of reports on patent databases and their features.

There are only 24 databases at present but I’m sure that list will grow as new entrants establish themselves in the market.  It’s weighted slightly in favour of fee paying, or commercial, databases, and the free ones are currently restricted to the IP5 (the five largest intellectual property offices), but not either of PatFt or AppFT from the United States, but including WIPO’s own PatentScope, and a few others such as The Lens.  If you need to look further afield, WIPO Inspire has incorporated the older Patent Register Portal page, so you can still locate the relevant national databases for jurisdictions outside the IP5.

The reports on each database are quite extensive, and go into detail regarding the jurisdictions covered, which patent classifications can be used, how their patent families are structured, and how you can manipulate your results through sorting, export or analysis features, plus a lot more.

While it is a short list of databases, and quickly scanned, it is also possible to filter the databases by their features.  For example if you are looking for a database that allows semantic searching, to find those that do involves checking a box within the menu on the left hand side.

WIPO Inspire includes a comparison tool that sits up to four database selections side by side so the features of particular interest can be compared easily.

WIPO Inspire looks like a good tool to help if you are unfamiliar with patent databases, in terms of knowing what their names are, and what they can do.  You may just find one that has the combination of features you’re after.

Authored by Frazer McLennan and Gareth Dixon, PhD

A recent YouTube spat over an AI created cover of Britney Spears’ 2004 song “Toxic” demonstrates that AI has now made it possible for one artist to sing a cover of another artist, no human required! In this case, a group called DADABOTS, which describes itself as “a cross between a band, a hackathon team and an ephemeral research lab”, created the rendition using software enabling generation of audio content in the voice of a particular artist, in a particular genre or as a novel fusion. The end result was a Frank Sinatra cover of the Britney Spears song.

Whilst this is a prospect that is bound to be exciting to some, from the perspective of conventional copyright law (and perhaps defamation law), the path to creating such a custom cover track using AI is fraught with complexity and uncertainty.

Yet that didn’t stop DADABOTS rendition being met with something a little more conventional, a copyright takedown notice and subsequent removal from YouTube, as Futurism’s Dan Robitzski recently reported. Futurism noted that GreyZone Inc., a company which offers copyright infringement identification and reporting services, was responsible for the complaint but wasn’t able to identify on whose behalf.

Appeal of YouTube take down

The basis for the original takedown notice is unclear – presumably representatives of either Frank Sinatra or Britney Spears’ respective record labels took the view that their copyright was infringed in some form. In Australia, their songs are likely to be covered by a suite of copyright and related rights, potentially including copyright in the lyrics, the musical work, performance rights and recording rights.

In this case, DADABOTS appealed YouTube’s decision to remove the rendition, calling in aid the US copyright doctrine of fair use. This doctrine is codified in the US Copyright Act and allows “fair use” of copyright works without infringing copyright. Unlike in Australia where the equivalent “fair dealing” is limited to quite specific circumstances, the US Courts have a broad discretion to determine what use is “fair”, depending on factors such as the nature of the copyright work, the purpose of the use and the effect of the use on the potential market for the copyright work. YouTube accepted the appeal and DADABOTS upload was reinstated, albeit with YouTube flagging it as a cover of “Toxic”. YouTube offers a service which allows eligible copyright holders to set up rules dealing with any third party copies of their exclusive copyright content uploaded on YouTube. This might include blocking the uploaded media, taking ad revenue from it or tracking the viewership information. YouTube’s flag of the DADABOTS version presumably makes it subject to any such controls in place in respect of “Toxic”.

Use of copyright works during development of AI powered applications

To make the rendition, DADABOTS used an AI software tool developed by California based OpenAI. Known as “Jukebox”, the software utilises neural networks, a form of machine learning. To become competent, Jukebox was trained by processing various datasets, which in turn allowed it to create the rendition on the basis of what it learnt from that data processing. In this case Jukebox then performed lyrics (of “Toxic”) in the voice and/or genre of the artist on which the software had been trained (Frank Sinatra). According to Open AI’s website, Jukebox was trained on 1.2 million songs, corresponding lyrics and metadata, including artist, genre, year and associated keywords.

Interestingly, Futurism’s article suggests the YouTube appeal arguments were crafted without reference to the use of AI to create the DADABOTS rendition. The fair use arguments were focussed on the end result (i.e. the new rendition) as a fair use in itself, rather than by reference to the method used to create it. Separate to issues around copyright ownership of works created wholly or substantially by AI technologies, the use of copyright works for AI related functions, such as machine learning and datamining is very much a live issue globally. The extent to which such uses are thought to be “fair uses”, is likely to influence the development of the fair use doctrine in copyright, the bounds of which already vary considerably from country to country, if not lead to specific copyright provisions. One notable mover in this space is Japan, which from 1 January 2019 enacted various provisions in its Copyright Act aimed at exempting computer data processing and analysis of copyright works from infringement in certain circumstances. The way in which the law on this topic develops globally may well be a factor which influences where companies with a focus on developing AI powered applications choose to base themselves (if it is not already). Differences in the law on this topic around the globe may also lead to potentially complicated questions of jurisdiction where AI generated material is exported from one country to another.

In Australia, the current law is likely to be less friendly to machine learning and AI powered applications, as a result of the stricter confines on fair dealing, and other limited exceptions to copyright infringement. Certainly where AI applications are used for development which is commercial in nature, it is unlikely that Australian copyright exemptions would apply. While section 40 of the Copyright Act 1968 (Cth) does provide an exemption for fair dealing for research purposes, it has generally been given a narrow reach.

Indeed, extension of the fair dealing provisions in Australia was a topic considered extensively by the Productivity Commission in its review of intellectual property laws in Australia and consequent report issued in 2016. Submissions made on this issue included those from tech companies supporting a broader fair use exception and specifically referring to machine learning in this context. The Productivity Commission ultimately recommended significant reforms in this area paving the way for a US-style fair use exception. However following two years of further consultation, the Government announced in August 2020 only a limited extension of the fair dealing exceptions for non-commercial quotation.

As a consequence, use of datasets to train AI systems in Australia appears likely to carry with it a significant risk of copyright infringement for the foreseeable future, in the absence of an appropriate licence. As the law in this area continues to develop worldwide, this is clearly a space to watch for both copyright owners and anyone using databases of copyright material to power or utilise AI technologies.

Authored by Onur Saygin and Katrina Crooks

Shelston IP assisted Legal 500 in their recent launch of The Legal 500: Patent Litigation Country Comparative Guide.

Our highly experienced litigation team have provided their expertise for the Australian Patent Litigation Chapter.

The aim of this guide is to provide its readers with a pragmatic overview of the law and practice of patent litigation law in Australia.

Each chapter of this guide provides information about the current issues affecting patent litigation in Australia and addresses topics such as direct and indirect patent infringement, patent invalidity, post-grant opposition proceedings and injunctions, and future patent litigation growth areas.

Authored by Duncan Longstaff, Katrina Crooks, Mark Vincent and Stuart Hughes

The America’s Cup (the “Auld Mug”) is the world’s oldest sailing trophy and enjoys a storied history of fierce competition – both on and off the water.  Whereas legal drama throughout the years was previously restricted to claims of sabotage, subterfuge, cheating or some far-fetched interpretations of the “rules”, the upcoming 2021 event has thrown up yet another reason to get off the water and into the courtroom – allegations of patent infringement.

Background

The 36th edition of the America’s Cup is scheduled to be held in Auckland, New Zealand, between 6 and 21 March 2021.  It pits the holders, Emirates Team New Zealand (ETNZ), up against the winner of a challenger series to be contested between Luna Rossa (Italy), Ineos Team UK and American Magic.  The concept of the challengers sailing off before matching up against the holder is nothing new.  However, what is unique to this event is the category of yacht in which the event will be contested – the new “AC75” (America’s Cup 75 class) is a 75-foot (23 metre) hydrofoil monohull vessel.  To the layperson, it’s a regular yacht that “flies” just above the waterline.

Again, the concept of a flying (or more correctly, “foiling”) yacht is nothing new.  For example, the 34th (2013) and 35th (2017) editions (held in San Francisco and Bermuda, respectively) used a class of foiling catamarans (double-hulled yachts), which, when conditions and crew-work were optimised, was able to get up on its foils (i.e., lift the hulls out of the water), thereby minimising drag and increasing speed.  The ultimate goal, of course, was to complete the entire course on foils, which was referred to as a “dry lap”.  Foiling catamarans certainly provided for spectacular racing over the two events.

Following the narrowest of misses in 2013, the 2017 event was won by ETNZ.  In accordance with the “rules” of the event, ETNZ not only got to host the next edition, but also had the authority to decide upon the class of boat in which the event would be contested.  Following lengthy consideration (much of which was centred upon conditions likely on the Hauraki Gulf where the 2021 event would be contested), ETNZ opted for a new class of boat – the AC75 foiling monohulls.

What’s a “foil”?

As shown on the official America’s Cup website, the hull of the AC75 lacks the traditional centred keel, but instead has a retractable “foil” on either side. When one of the foils is engaged with the water, and provided sufficient speed is reached, it acts in combination with the rear rudder foil to force/lift the hull out of the water, which in turn imparts the speed advantages mentioned above.  In operation, the leeward (on the side opposite to which the wind is coming from) foil is engaged with the water whilst the windward foil is retracted or held out of the water.

Shown below is an example of ETNZ’s test boat “Te Aihe” (a 50-foot scaled-down version of the AC75) foiling successfully during testing.

Despite the conceptual imagery linked above, all four syndicates are employing similar, although subtly different, foil designs.

So, what’s the patent problem?

Manoel Chaves, a Brazilian naval architect and boatbuilder, is the patentee in respect of New Zealand patent 740860, dated 31 October 2016.  NZ’860 is a granted patent derived from PCT/BR2016/050275 via WO 2017/083947.  It is entitled “Sail boat propulsion and stabilisation system and device”, which is more specifically characterised by IPONZ as a “Sail boat hydrofoil with pair of wings on opposite hull sides with downward keel and outstanding lift wing, with pivoting of keels and wings independently”.

According to media reports, Mr Chaves believes the canting foil system used in the AC75 boats is covered by NZ’860.  Mr Chaves’ representatives are understood to have contacted ETNZ in this regard.  However, the same article quotes ETNZ as having already denied patent infringement as of July 2020.

What does NZ 740860 describe and claim?

Figure 1 of NZ 740860 appears to illustrate, broadly, a hydrofoiling system arguably similar to those found on the AC75 yachts:

As we know, “similar” is a subjective term. That said, claim 1 of NZ 740860 is reasonably wordy, and construing it would no doubt account for several days’ court time should the matter ever proceed to trial:

  1. A system for propelling and stabilizing a sail boat, comprising a control panel, standard or electronic stabilization, actuated by a battery connected to a hydraulic aggregate that is connected to directional valves and solenoids through which each device of a pair of devices for propelling and stabilizing the sail boat is independently actuated respectively to larboard and starboard, and each device is provided with a wing keel, a counterweight or “lift” wing joined by a bulb, a cylindrical actuator of the counterweight or “lift” wing, a rotary hydraulic actuator for hoisting the assembly, an articulation shaft, which runs in the direction of the counterweight or “lift” wing and transverse to the keel, and a tilting shaft for the assembly, which is coupled to the boat broadside or to a mounting base provided for the boat broadside of already existing boats, beside sensors of the angle of attack of the counterweight or “lift” wing.

The dependent claims (claim 2, in particular) are even longer.  According to the above-linked media, ETNZ’s July 2020 response to Mr Chaves was that NZ’860 defines features not found on the AC75 yachts.  Quite what those features may be based upon my “elementary” understanding of the foiling system used on the AC75s and chemist’s understanding of claim 1, is uncertain.

Legal permutations

As noted above, all three challengers (Luna Rossa, Ineos Team UK and American Magic) are employing hydrofoils broadly similar, albeit subtly different to ETNZ.  If ETNZ is held to infringe, then does it necessarily follow that the three challengers are infringing also?  Alternatively, as the entity that created the new AC75 class, does ETNZ bear any responsibility for the challengers infringing?  Of course, until such time as the matter is formally contested in a New Zealand court, these questions are all strictly hypothetical.

A continuing history of more fun off the water than on it

In my time following the America’s Cup, which dates back to 1983, when Australia II defeated Dennis Conner’s Liberty, the event has been beset with a series of courtroom battles that, depending on one’s perspective, either amplify or detract from the drama on the racecourse.  From Australia’s winged keel (1983), to New Zealand’s “plastic fantastic” fibreglass boats (1987), to New Zealand’s “big boat” challenge (1988), to all the legal jostling regarding the citizenship rule, the use of technology, where the event should be staged when the Cup was held by landlocked Switzerland, etc., this has always been more than just a yacht race.

Watch this space.  The America’s Cup equals high stakes and big money. Whilst not your traditional battlefield for a patent dispute, it does have almost every other ingredient.

Authored by Gareth Dixon, PhD

As IP practitioners, you have probably noticed counterfeit watches being sold at local markets, sometimes hidden from immediate view by the seller.  Over the past ~30 years, growth in online retailing (including third party retailers) has allowed counterfeiters to flourish and expand into goods such as footwear, leather goods, perfumes, jewellery and even pharmaceuticals.  A 2019 OECD Report puts the value of counterfeit and pirated goods at US$509 Billion which corresponds to approximately 3.3% of global trade.

Criminal Offences under Trade Marks Act 1995

So what can brand owners do to combat the counterfeiters in Australia?  Apart from commencing trade mark infringement proceedings, Part 14 of Australia’s Trade Marks Act 1995 also outlines a series of criminal offences in relation to registered trade marks, including:

  • Section 145 ‒ Falsifying or removing a registered trade mark;
  • Section 146 ‒ Falsely applying a registered trade mark;
  • Section 147 ‒ Manufacturing a die, etc. for use in a trade marks offence.
  • Section 147A – Drawing etc. trade mark for use in offence;
  • Section 147B – Possessing or disposing of things for use in trade mark offence
  • Section 148 ‒ Goods with false trademarks.

Each of these criminal provisions feature both summary and indictable offences with differing fault elements (intention, knowledge, recklessness or negligence) which must be proven depending on the offence.  If there is a prosecution for an offence under Part 14, Section 160 establishes the criteria to be used in determining a natural person’s state of mind and his/her responsibility for the conduct of employees and agents.

Any person may institute proceedings to commit a person for trial for an indictable offence under the Trade Marks Act 1995.  While private prosecutions for trade mark offences are possible, they are extremely rare as the costs involved are generally considered to outweigh the benefits.  In practice, criminal proceedings for offences under the Trade Marks Act would most likely be brought by the Australian Federal Police or the Department of Public Prosecutions.   Unfortunately for brand owners, such prosecutions are rarely brought in Australia (presumably on the basis that such actions are insufficiently “important”) and are typically confined to cases which primarily involve organised crime or public health and safety issues.  The penalties for such offences range from a term of imprisonment (12 months for summary offence or 5 years for indictable offence) and/or fines (60 units for summary offence or 550 units for indictable offence) or both.  On 1 July 2020, the value of one (1) penalty unit was increased to AU$222 (~US$160).  Given the enormity of the counterfeit goods market, we think that such penalties are likely to be regarded as insignificant and simply “the cost of doing (counterfeit) business”.

Miscellaneous Offences

Section 150 to 157 also establish a number of other miscellaneous offences, namely:

  • Section 150 – Aiding and abetting offences;
  • Section 151 – False representations regarding trade marks;
  • Section 152 – False entries in Register etc.;
  • Section 153 – Disobeying summons etc.;
  • Section 154 – Refusing to give evidence etc.;
  • Section 156 – Acting or holding out without being registered;
  • Section 157 – False representation about Trade Marks Office;

The penalties for such offences range from a term of imprisonment (up to 2 years) or fines (up to 150 units) depending on the particular offence.  Section 150 relates to aiding and abetting conduct including doing “an act outside Australia which, if it were done in Australia, would be an offence against this Act.  In such circumstances “the person is taken to have committed that offence and is punishable accordingly”.

Sections 151 – 157 are largely directed toward “administrative” offences such as the use of the ® symbol on or in relation to goods or services when the relevant trade mark is not currently registered in Australia.  While brand owners should be aware of how to avoid such offences (for example, by utilising the TM symbol rather than ® or by specifying the country in which the mark is actually registered), these provisions are unlikely to offer brand owners any significant assistance with the prevention of counterfeit goods being sold in Australia.

Customs Notices and ACL

Apart from the actions outlined above, brand owners should also lodge a “Notice of Objection” which allows Australian Customs to seize potentially infringing goods when being imported into Australia.  Under Australian legislation, the importer of the seized goods must make a claim for their return, otherwise they will be forfeited to the Commonwealth. This claim must include information which will assist the brand owner in contacting the importer and prevent further importations.

As China is a global manufacturing centre, it is also a significant source of counterfeit goods.  In this regard, Chinese Customs also has the power to seize infringing goods including those being either imported to or exported from China.  Brand owners should consider recording their trade marks with Chinese Customs, in an attempt to reduce the prevalence of counterfeit goods in other parts of the world.

An action could also potentially be brought against counterfeiters (by the Australian Competition and Consumer Commission) under Australia’s consumer protection law the Australian Consumer Law (ACL) which relates to conduct that is misleading and deceptive (or is likely to mislead or deceive) but again such actions would be rare.

Remedies and options are available to brand owners, however, active policing of the marketplace is required to protect brand value and minimise the trade in counterfeit goods being sold in Australia.

Authored by Nathan Sinclair and Sean McManis

Patent searching is already black magic, wrapped in a puzzle, inside an enigma, passing through a black box, and thinking about how something could be unsearchable is an extra layer you just don’t need, so, how do you find something you can’t search for?

To assist, I’ll define what I consider unsearchable.  It’s essentially numerical ranges and relative terms.

Here’s claim 1 of US20200060950:

Carbonate- and magnesium-substituted hydroxyapatite having a part of calcium substituted with magnesium and a part of a phosphate group substituted with a carbonate group, and being composed of primary particles in a non-aggregated state, the primary particles having a particle size of 5 nm or more and 60 nm or less.

I chose this one for the last line: ‘a particle size of 5 nm or more and 60 nm or less’.  It exemplifies both of the unsearchable categories.  It’s essentially a numerical range of 5 to 60 nm, but it also includes the relative terms ‘or more’ and ‘or less’.

Other relative terms you might see are ‘greater than’, ‘less than’, ‘higher’, ‘lower’, ‘heavier’, ‘narrower’ and so on.  You learnt all of these before you were five years old, and they are back.

I summarised the numerical range as 5 to 60 nm, but I could have just as easily written 5 nm to 60 nm, or 5nm to 60nm, or 5-60 nm, and variations on that theme.  Measuring particle size in nanometres may be convenient for this inventor, but others might choose a different unit, so 50 to 600 Angstroms or 0.005 to 0.06 microns, or even 5 x 10-3 to 6 x 10-2 microns is an option.  A search conducted for 5 nm would miss almost all, if not all, of these alternatives.

Similarly a range such as 3 nm to 75 nm would not be located in a specific numerical search for 5 nm to 60 nm even though it would be a highly relevant result.  Considering relative terms again, values of ‘less than 100 nm’ or ‘greater than 2 nm’ would not be located.

So, going full circle, how do you find something you can’t search for?

Searching is a matter of filtering the entire universe of patent applications to get a searchable set you can work with.  I’ve written about that before.  That article considers filters you can apply through a patent database.  They are fairly concrete and well defined, or at least you as the searcher can define them to your satisfaction.

Numerical ranges and relative terms are much less defined, and although you can search for particular numbers, with or without a relative term, you are taking stabs in the dark if you use a patent database filter, and are unlikely to be successful.

At this point you are going to have to apply an internal filter.  No, not the sweary one; a different one.  As you consider each one of your search results (that you obtained with patent database filters) you can apply a mental filter that is equivalent to what you might have liked to apply in that patent database.

The advantage of this is that your mental filter can cope quite well with different numbers defining ranges, or differing units, or various relative terms, something a computer doesn’t do.

So, using the example claim above, a likely search will focus on non-aggregated hydroxyapatite particles with a size, possibly with reference to it being substituted with carbonate or magnesium, although that last bit could be very broad, but the point is that you have not considered at all what that particle size is.

I’ve searched (very quickly and simply, in the title, abstract or claims in PatBase) for (TAC=(hydroxyapatite) AND TAC=(nonaggregated OR (non w1 aggregated)) AND TAC=(particle w2 size*)).

Just looking at the first few I find phrases in the first claim such as:

  • an inorganic fine particle having an average particle size of 0.01.about.5 mu m
  • hexagonal primary particles and having a secondary particle size from about 50 nm to about 5000 nm
  • non-aggregated nano-sized particles,

all of which can be filtered mentally as fitting the 5 to 60 nm range in some way, including the last one which requires some digging to find a range in claim 4.

You can see that none of them would have been located had the particle size formed part of the search string, whether that included the numbers 5 or 60, or as a range, or by using greater than 5 or less than 60, and so on, possibly with the exception of the last one where claim 4 describes a range of 5 nm to 500 nm, but that all depends on how you framed the particle size search string.

The first phrase has different units; ‘mu m’ or micrometres or microns, not nanometres.  The second phrase does use nanometres but the numbers used in the range are different.  The third phrase doesn’t use numbers or units at all, but the more general ‘nano-sized’.

To reiterate, the advantage of this strategy is that your mental filter can cope quite well with different numbers defining ranges, or differing units, or various relative terms, something only a necktop computer can do.

Authored by Frazer McLennan and Gareth Dixon, PhD

Following on from our article of 14 May 2020, Australian Designs – Changes on the Way, we advise that the Australian Designs Exposure Draft BillRegulations, accompanying draft Explanatory Memorandum and Explanatory Statement have now been released.  IP Australia have invited interested parties to provide comment and Shelston IP has made a submission.

If passed in its proposed form, the Draft Bill will codify many of the recommendations accepted by the Government from the former Advisory Council on Intellectual Property’s (ACIP) review of the Designs System.  Amongst others, these changes include: the introduction of a twelve-month grace period, expanding the existing prior use defence, removal of the formal request for requesting registration, providing exclusive licensees to sue for infringement, and clarifying the meaning of the standard of the informed user.

Notable points

Of note, the Draft Bill provides exclusions to the proposed grace period for two types of publications – publications by the Registrar of Designs, and publications by foreign persons/agencies entrusted with the registration of designs. In both cases, the Explanatory Memorandum advises that publications of these types are not the inadvertent publications that the grace period is intended to protect.

Further, with regard to prior use, it is noted that the Draft Bill omits reference to the prior user activity having occurred in Australia like it does with the equivalent provisions of the Patents Act 1990.

As mentioned in our previous article, there are several proposals that will not be progressing at this time. These include: the protection of partial designs, the protection of virtual, non-physical and active state designs, and the clarification of registered’ and ‘certified’ designs. These proposals remain on IP Australia’s Policy Register and if you wish to provide a submission, IP Australia invite you to do so via the Policy Register.

IP Australia is also working on a new online filing system to make the application process smoother, improving access to information on their website, and exploring further reform measures resulting from our research into the design economy and the role of the design rights system. This includes a series of research reports that are now available online.

Authored by Rodney Dabboussy and Allira Hudson-Gofers

Patent attorneys in Australia and New Zealand, so-called Trans-Tasman patent attorneys, are registered to practise under a joint registration regime.  However, the Trans-Tasman patent laws are far from harmonized. There are a number of important differences between the two jurisdictions to watch out for and we consider some of them here in respect to commonly asked questions during patent prosecution under the Australian Patents Act 1990 and New Zealand’s new Patents Act 2013.

Once an examination report is issued, when is the deadline for placing the application in order for acceptance?

Australia

The final acceptance deadline is 12 months from the date of issuance of the first examination report.Australia does not have deadlines for responding to an examination report, meaning it’s up to the Attorney/Applicant to manage the deadline themselves (if prosecution is likely to be difficult, don’t wait 11 months before filing your first response).     

New Zealand

The final acceptance deadline is 12 months from the date of issuance of the first examination report. However, there is a 6-month response deadline within the 12-month acceptance deadline. The 6-month response deadline can be retrospectively extended by up to 1-month.Second and subsequent examination reports come with shorter response deadlines. Practically-speaking, juggling and docketing response and acceptance deadlines can be challenging. Further, response deadlines are not just for filing any response, it needs to be a “substantive” response addressing (but not necessarily overcoming) every objection.

Can we request expedited examination?

Australia

Yes – the Australian Patent Office (IP Australia) is a member of the Global Patent Prosecution Highway (GPPH) program. IP Australia and the European Patent Office (EPO) are also running a bilateral Patent Prosecution Highway (PPH) pilot program.

Under the GPPH and PPH programs, while examination is accelerated, all claims in the Australian application must sufficiently correspond or be amended to sufficiently correspond to one or more of those allowed/ patentable claims of the overseas application examined by the offices of earlier examination (OEE).   

As an alternative, there is an option to request “ordinary” expedited examination, reasons for which may include commercial and legal (infringement) considerations and if the invention is in the field of “cleantech”. This requires no corresponding amendments to the claims and examination takes place at the same pace as under the GPPH.

New Zealand

Yes – the Intellectual Property Office of New Zealand (IPONZ) is a member of the GPPH program. There is currently no bilateral PPH agreement between the EPO and IPONZ.

Under the GPPH program, while examination is accelerated, all claims in the New Zealand application must sufficiently correspond or be amended to sufficiently correspond to one or more of those allowed/ patentable claims of the overseas application examined by the OEE.

When assessing whether a patent application’s claims “sufficiently correspond” to the claims accepted by a participating overseas office, IPONZ will consider Swiss-style claims to correspond to other formats of second medical use claims allowed overseas (remembering that methods of medical treatment are prohibited by statute in New Zealand).

IPONZ also offers an “ordinary” expedited examination route on similar grounds to those offered by IP Australia.  However, the bar to a successful request is set rather high by comparison with the criteria applied by IP Australia.

When is the deadline for filing a divisional application?

Australia

A divisional application may be filed from a parent application at any time while the parent application is pending.

The deadline for filing a divisional application will depend on the fate of the parent application. Provided the parent application proceeds to acceptance, the deadline for filing a divisional application will be 3 months after advertisement of acceptance. 

In instances where an application is not placed in order for acceptance on or before the acceptance deadline, the deadline for filing a divisional application is the same as the final acceptance deadline.

Australian practice also offers the facility to maintain pendency by “daisy-chaining”  successive divisionals throughout the 20 year term of the patent, which can impede third parties with legitimate commercial interests in an invention for which an application may be pending indefinitely.   

New Zealand

The deadline for filing a divisional application is based upon the earlier of:

  1. the date upon which the parent application is accepted; and
  2. 5 years from the filing date of the complete application from which priority is derived.

If item (2) applies, then the divisional application must be filed along with a request for its official examination.

The 5-year statutory bar is a strong driver for Applicants to request early examination of New Zealand applications.  If acceptance cannot be obtained within 5 years of the filing date, the divisional route then expires and the invention cannot be patented.  This is a key limiting difference between Australian and New Zealand practices. Please refer to our earlier article on this subject.

Under what circumstances would a double patenting objection be raised?  

Australia

A double patenting objection may be raised to prevent the grant of two or more patents having the same priority date and to the same inventor(s) having claims to the same invention. Such objection is often raised during prosecution of a divisional application in light of the pending parent application or granted parent patent when there is substantial overlap between the two sets of claims.

In practice, an Australian divisional application can be broader than and can even wholly encompass the claims of the parent application/ patent, provided that their overall scope is not identical (if the differences in wording is inconsequential, the two sets of claims may still be considered the same invention).

Significantly, if double patenting is overlooked by an Examiner during prosecution, it is not a ground for subsequent opposition or invalidation.

New Zealand

Similar to the situation in Australia, a double patenting objection may be raised to prevent the grant of two or more patents having the same priority date and to the same inventor(s) having claims to the same invention.

However, New Zealand has strict laws regarding double patenting. IPONZ will typically object to the claims of a divisional application if they are identical to, are wholly encompassed by or wholly encompass the claims of the parent application/patent, or if there is any overlap between the subject matter claimed in a parent application/patent and divisional application. There is case law which can be relied on under certain conditions to address claims with overlapping scope.  However, New Zealand’s approach to double patenting is perceptibly stricter than Australia’s.

Similarly though, double patenting is not a ground for invalidity of allowed or granted New Zealand patents.  

Is there an excess claims fee? 

Australia

Yes – from 1 October 2020, excess claim fees will increase to be payable at acceptance in two tiers: AU$125 for each claim in excess of 20 claims and equal to or less than 30 claims; and AU$250 for each claim in excess of 30 claims.

There is thus an opportunity to rationalise the number of claims just before acceptance to minimise the fee payable.  Applicants do not need to rationalise the number of claims prior to examination commencing, as the claims fee is only levied at the time of acceptance, making this an exploitable loophole.

The excess claims fee will be AU$250 for each additional new claim over 20 if the claims are added after acceptance (post-acceptance amendments).

New Zealand

Yes – unlike the old regime where no excess claims fee was payable, IPONZ has now introduced an excess claims fee (as of 13 February 2020) for examination of a patent application with 30 claims or more. The excess claims fee is NZ$120 for each 5th claim over 25 – this fee will not be payable until after the acceptance of the application.   Importantly, this fee is payable based upon the maximum number of claims on file at any stage during examination. Therefore, reducing the number of claims immediately prior to acceptance does not avoid or lessen the fee, and Applicants (hopefully upon receiving proactive advice from their attorney) should consider filing an amendment prior to, or concurrently with examination being requested.

The above exemplifies some of the questions we are asked regularly during patent prosecution in Australia and New Zealand.  Important differences between the two jurisdictions require vigilant and proactive management by an attorney. Shelston IP patent attorneys indeed employ a proactive approach to effectively manage our clients’ corresponding applications across these two very similar – but at the same time, very distinct jurisdictions.

Authored by Gareth Dixon, PhD

When Winston Churchill said, “broadly speaking, the short words are the best, and the old words best of all”, he (most likely) wasn’t speaking about the words found in patent specifications.  However, in saying that, he is both right and wrong.

Old, short words would be described today as “plain English”.  Describing something in plain English adds succinctness and clarity to any document, something patent specifications, or at least the claims, are supposed to possess, but sometimes only do so in the most obscure way possible by using new, long words. There have been many years of innovation since Winston was alive, and by necessity we have had to invent new words or repurpose old ones to describe our modern world, so perhaps we can be a little forgiving when using one of our newfangled words.

He is right though, because we shouldn’t forget the old words.  They still may adequately describe a modern innovation.  Calculators weren’t always called calculators; Charles Babbage called his a difference engine, and computers once referred to humans, not machines.  They, of course, used a necktop, not a laptop.

In this article we’re going to talk about words, or as they are more commonly known in the searching world, “keywords”, and how you can use them effectively.  I’ll be straying into territory I’ve covered before, so here are links to my articles on patent classification and narrowing your search results.

Before we start manipulating our keywords, we need to determine what the keywords are.  One of the biggest mistakes is only considering the words you know to describe a concept.  This may be because it is commonly used industry jargon or simply how you have described it.  Even when you have settled on a set of keywords, be open to discovering more as you read through any specifications you think might be relevant, and add those new words into your keyword set, and search again.

Don’t be overly descriptive when determining your set of keywords.  A doohickey bolt is just a bolt; a thingummy panel is just a panel; and a whatsit tube is just a tube.  Sometimes using doohickey, thingummy or whatsit might be required, but usually when they are the industry jargon, and never when it’s something you just made up.

This is where the above reference to old words comes in.  Patent literature goes back a long way to simpler times, and with a whole lot less prior art, inventions could be described more simply and broadly without having to navigate a minefield of potential infringements, so go back further than your own time and history, and consider ye olde time technology terminology as well.

Using ‘tube’ as the initial keyword should lead you to words like cylinder, duct, pipe, pipeline, pipette, conduit, tunnel, chute or straw.  You can also go a little more abstract with ‘hollow’, or technical with ‘lumen’.  Not all of these will be relevant to your particular concept.  For instance, ‘straw’ is more likely to be used in foodstuffs or packaging applications compared to say, ‘tunnel’, so you don’t have to use every keyword you can find.  Stick to the most likely in the first instance, and broaden your search with others as necessary later.

Now that you have a set of keywords, what can be done to ensure you will capture all instances of those keywords?

If you have ‘tube’, what about tubes, tubing, tubular, and so on.  Sometimes it’s effective to just add these to your set, but it’s easier to use truncation, so tube, tubes, tubing and tubular can all be summarised with ‘tub*’.  Pipe, pipeline and pipette above can be truncated to ‘pipe*’, and cylinder can become ‘cylind*’ to also cover cylindrical, as further examples.

In most freely available patent databases an asterisk can be used to truncate, but the USPTO uses a $ symbol.  If in doubt, check the help pages available in whatever system you’re searching in.  Truncation not only allows you to get a number of keywords for the price of one, but can also be used to cover spelling variations, such as American/British spelling, or capture typos.

Here’s something else to consider.  I like to have a number of sets of keywords, each relating to a different aspect of the concept.  For example if I’m searching for ‘red bicycle tubes’, I’ll have three sets of keywords:  one for keywords relating to ‘red’, another for ‘bicycle’, and one for ‘tubes’.  It just means I can more easily manipulate them by combining them in different ways.

So, let’s start combining those sets of keywords.  To keep it simple I’ll refer to the various sets of keywords as A, B and C, and individual keywords within those sets as A1, A2, A3, etc.

There are three Boolean operators to be aware of.  These are OR, AND and NOT.

Firstly, stay away from NOT as much as possible.   Using A NOT B means you are taking everything from A that is also in B.  The problem with using NOT is that you don’t know what you’re excluding.  In many applications it is suitable, but not for patent searching.  One of the features of a patent specification that often appears is a background of the invention, or a description of related art, where earlier inventions in the field are described.  If there is a specification that happens to be all about B, for example, but also happens to describe A, your concept, in great and precise detail in the description of related art, by conducting a search for A NOT B, you will exclude that highly relevant specification from your search results.

In general, with OR and AND you will end up with search strings that look like

(A1 OR A2 OR A3) AND (B1 OR B2)

Likewise you can search for A AND C, or A AND B AND C.  What you want, ideally, is a number of search results that is manageable.  That may mean for example splitting up your sets of keywords or removing the truncation and spelling out some of those words in full.  For example when truncating tube, etc. earlier we would also pick up tuberculosis and tuberosity, among others that are clearly not relevant, although you would hope that when combining tub* with bicycle you wouldn’t find much in the field of bicycle tuberculosis (FYI, the answer to that is not zero).

The problem with using AND and OR is that they don’t care how the two words are related in a patent specification.  All you know is that two of your keywords appear in a specification, somewhere.  One could be in the first sentence and one in the last, but you won’t know until you read it.  Ideally you would like the words to be more closely related than that; at least the same sentence or paragraph.

Let’s be clear though, AND and OR are very important, and you absolutely have to use them.  What follows does not replace those primary tools, but just allows you to get your keywords a little closer together if you need to.

There are two methods for getting keywords closer together.  The first is to search for a direct phrase.  This can be as long as you want but two or three words is really all that will be effective.  If we take our ‘red bicycle tubes’ example from above, we could search for something like “red bicycle” or “bicycle tube*”.  Note how I’ve used double quotes this time.  In most freely available searching databases you will need to use double quotes to indicate a direct phrase search.  Espacenet allows you to enter the words without quotes as it will automatically consider it a direct phrase search.  You can usually use truncation on one or both of the words.

The problem with this search is that you wouldn’t pick up any combination of keywords such as ‘red racing bicycle’ or ‘bicycle inner tube’.  To find those you can use a feature called proximity searching but could be called ‘words within so many words’.  Not many freely available databases have this feature but it does allow you to expand your search beyond the restrictive direct phrase search.

PatentScope allows for the use of NEAR to find two keywords within five words of each other, but it also allows for the use of a ~ (tilde) to customise that gap, so you could search for ‘red NEAR bicycle’ which is the same as “red bicycle”~5, or you can go further to “red bicycle’~10, and these would pick up ‘red racing bicycle’.

AusPat used to let you use NEAR but that has been replaced by /n/ where n is the number of words in the gap between your keywords, so “red /5/ bicycle”.  Note that this, and the PatentScope search have to take the form of a direct phrase search using double quotes along with the words within words operators.

So, rack your brain (cerebellum, grey matter, head…), grab a thesaurus (dictionary, onomasticon, lexicon, source book…) or whatever you can, to come up with a list of suitable alternatives to your initial keywords, and try combining them in a few different ways to assist with your search.

Authored by Frazer McLennan and Gareth Dixon, PhD