4 min read

In addition to Australia and New Zealand, Shelston IP has extensive experience in managing trade mark portfolios in other countries in the South Pacific region.

IP registration systems vary significantly around the South Pacific region with some countries operating under independent trade mark legislation, others allowing for re-registration of United Kingdom marks, while some of the smaller Pacific Island nations are yet to adopt a formal registration system and must rely on common law use and publication of a cautionary notice.

While outwardly, the procedures for securing trade mark protection in the South Pacific appear relatively straightforward, extended delays are often experienced when dealing with the smaller Pacific Island nations which have limited resources and which, from time to time, are affected by political instability and natural disasters.

Following is a brief overview of the IP protection systems available in key Pacific Island nations.

Fiji

Shelston IP use a local agent in Fiji to file trade mark applications.

Trade mark protection in Fiji can be sought by way of an independent national application under the Fiji Trade Marks Act or by an application based on an existing registration in the United Kingdom.

Fiji adopts the old British classification of goods (50 classes). Upon filing an application for registration of a trade mark designating goods under the International Nice Classification, they need to be reclassified according to the relevant Fiji class.

Service marks are not registrable and multi-class applications are not permitted.

Filing for re-registration of a United Kingdom registration is often a simpler and quicker process than filing a national application in Fiji.

Papua New Guinea

Shelston IP acts directly before the Intellectual Property Office of Papua New Guinea to file trade mark applications under the Papua New Guinea Trade Marks Act.

Service mark registration is possible but multi-class applications are not available.

Samoa

Shelston IP use the service of a local agent for trade mark filings in Samoa.

Trade mark protection can be obtained in Samoa by way of an independent national application under the Samoa Trade Marks Act. Since 4 March 2019, it is also possible to designate Samoa as part of an International Application under the Madrid Protocol registration system.

Service mark registration is possible and multi-class applications are accepted.

Tonga

Shelston IP use the service of a local agent for trade mark filings in Tonga.

Tonga has its own independent registration system for trade marks. Service mark registration is possible and multi-class applications are accepted.

Vanuatu

Shelston IP act directly before the Vanuatu Registry although we maintain a local address for service for transmission of correspondence from the Registrar.

Trade mark protection can be sought in Vanuatu by way of an independent national application under the Vanuatu Trade Marks Act. It is no longer possible to apply for trade mark registration based on a United Kingdom registration.

Service mark registration is possible and multi-class applications are accepted.

Kiribati, Solomon Islands and Tuvalu

Shelston IP act directly before the Registries in Kiribati, Solomon Islands and Tuvalu in trade mark matters.

These countries have no independent trade mark legislation and registration may only be obtained by re-registration of a United Kingdom trade mark registration. The resulting registration is entirely dependent on the corresponding UK registration and should that be cancelled for any reason, the corresponding right in the South Pacific country will also lapse.

There is no provision for service mark registration in these countries and multi-class registrations are not permitted.

Cook Islands, Marshall Islands, Micronesia, Niue, Palau and Tokelau

A registration obtained under the New Zealand Trade Marks Act 2002 automatically extends protection to Niue. While the 2002 Act does not apply to the Cook Islands or Tokelau at this time, a registration obtained under the former Trade Marks Act 1953 will cover these island countries.

There is no trade mark legislation in the Marshall Islands, Palau or Micronesia. Trade mark rights in these countries are based on the common law and may be asserted through use of the mark in the relevant jurisdiction and the periodic publication of cautionary notices in a local newspaper or government journal.

New trade mark legislation in Nauru

Until recently, trade mark registration was not possible in Nauru and the only means of protecting trade mark rights was under the common law. After many years in development, on 10 November 2020, the Republic of Nauru Trademarks Act 2019 and implementing regulations were brought into force and the Registry is now accepting applications for registration of trade marks.

Service mark registration is possible but it appears that multi-class applications may not be available.

Shelston IP can act directly before the Nauru Trade Marks Registry to obtain registration of trade marks for our clients.


While trade mark registration in the Pacific Island countries can often present challenges, Shelston IP is well placed to navigate around any difficulties to secure protection for your trade marks throughout this region.

If you require further information or assistance, please let us know.

Authored by Kathy Mytton and Sean McManis

4 min read

Patent classification titles are usually pretty boring, but occasionally one will jump out at you and fire up your imagination.  A62B33 is one of those.  Its full title is Devices for allowing seemingly-dead persons to escape or draw attention; Breathing apparatus for accidentally buried person.

See what I mean?  Right now your mind is conjuring up images such as:

This one isn’t even that old.  It dates back to 2013, and it’s not even the most recent disclosure of this type.

Generally though, devices such as these have a very long history with the first recorded back in the late 18th century.  The earliest patent I can find dates to about one hundred years later, in 1892, but it’s just one of a flurry of patents in this area over the next decade or so.

It’s a simple mechanism comprising a bush of feathers in a tube, protruding above the ground, and triggered essentially by the seemingly dead person attempting to sit up, and as such bumping their head, releasing the bush of feathers out of the tube to be noticed by eagle-eyed cemetery goers.  It’s not all bad though as the point at which one bumps their head has been thoughtfully padded.  An egg on your head is probably the least of your worries in that situation.

If we switch for a moment to filings in the class over time, you can see three distinct periods: from the late 1800s to the mid 1960s, from there to the mid 1990s, and from there to today.  The number of families filed within these periods steps up four-fold each time, so is this by necessity or technological advance?

If I was to generalise regarding the subject matter within these three distinct periods, I would have to say that the first period corresponds with what are known as safety coffins.  These are coffins with mechanical mechanisms that allow someone to signal that they are indeed alive, and breathe while waiting for that signal to be seen.  Here are a few more examples: US500072, GB191006409 and FR1065868.

The second period would appear to coincide with the rise of electronics and personal devices.  There is also a move away from safety coffins, and towards buried persons of other types such as avalanche or landslide victims or lost scuba divers.  Advancements in the field of electronics mean beacons carried by skiers or mountaineers allow a person to be located by rescuers easily when there is no visible sign of their presence, but other personal devices still rely upon a mechanical device in the same way a safety coffin would have.  Gas canisters with balloons on long ropes can be activated in the event of an avalanche to expand the balloon to provide a visible signal to rescuers.  The balloons also serve as possible buoyancy aids while you’re sliding down the mountain, leaving you close to the surface, or as possible snow free refuge and air providers if they end up close to the person and can be deflated.  Examples in this group include CH450499, US3786406, US3911913 and US5490501.

The third period still appears to electronics driven, although now the devices are getting smaller, more sophisticated, and reliant upon communication networks, even those being filed in the safety coffin space.  There is also a focus on wearables such as jackets and helmets, with more features such as air bags, an air supply or illumination, providing more time before rescue.  Here are some examples from this period:  DE19957408, US2003208890, US2009121930, and US2018326233.

I’ve drawn the line for the most recent period as flat, but really filings are trending positively.  Much more than the previous two periods did.  One of the first things to do is see where these patent families are originating from.  As Chinese originating applications are surging in general, I looked to see if that is the case here, and it’s not.  No one country appears to stand out.  Some of the higher filing jurisdictions are the European Patent Office, the United States, Germany and China. 

The highest of those is the European Patent Office, and the majority subject matter is wearable airbag systems, so perhaps that’s where the trend has been in recent years.

Lastly, the award for the ultimate in ‘on trend’, or serendipity or opportunism, has to go to the applicant for DE102018005497

As you can see it’s a rescue system for people trapped in caves enclosed by water.  Sound familiar?  It was filed just one day after the Tham Luang cave rescue in Thailand.

This patent class, A62B33, sounds funny, and early examples do look ridiculous these days, but today the subject matter is quite serious and along very different lines, which shows just how much a broadly titled, long forgotten class can change over time.

Authored by Frazer McLennan and Charles Tansey

10 minute read

In Australia, there are different options to challenge the validity of a patent application or granted patent.  This can be of significant interest from a freedom to operate perspective when a business is planning to launch or commercialise a product or process, regardless of whether the product or process is covered by its own intellectual property.

Challenging a patent application or patent

(i)           Third party submissions

A patent application can be challenged pre-acceptance (prior to being allowed by the examiner during prosecution) by filing third party submissions.  Any party may file third party submissions up to three months following the date of advertised acceptance of a patent application in Australia.  The Notice is filed with any documents relevant to the assertion that the invention claimed is not novel and/or does not involve an inventive step. 

(ii)          Re-examination

It is also possible to request re-examination between acceptance and grant which is at the Commissioner’s discretion. 

On the other hand, if a third party requests re-examination following grant, re-examination must be conducted and either an adverse or non-adverse report must be issued.

During re-examination, an examination report will issue which outlines the examiner’s findings.  In the case of an adverse report, the patentee will be given the opportunity to respond with its own written submissions and/or amendments.  If the patentee cannot resolve outstanding issues encountered during re-examination, the Commissioner will typically set the matter for a hearing prior to revoking the patent either wholly or in so far as it relates to a particular claim if the patentee is unsuccessful.  

Hearings are typically rare during re-examination as most outstanding issues can be resolved by a patentee by filing written submissions or amendments in reply to a re-examination report.  The most common grounds which are difficult to resolve as they are subjective are issues relating to inventive step (obviousness) and patentable subject matter (such as manner of manufacture for software patents).

(iii)         Opposition proceedings

The validity of a patent application can also be challenged by commencing (pre-grant) opposition proceedings.  This involves filing a notice of opposition, which must be filed within three months of the date on which acceptance of the (opposed) application is advertised.

Opposition proceedings typically involve the preparation of expert evidence.

(iv)         Revocation

If a patent application proceeds to grant, a third party has the option of challenging the validity of the patent claims by commencing revocation proceedings before an Australian court or, alternatively, seeking revocation of the claims during infringement proceedings commenced by the patentee. 

Ex-parte

Under Australian practice, third party submissions and re-examination requests are ex-parte.  That is the requestor is not a party to the process and there is no opportunity for further iterations of evidence.

Re-examination considerations and advantages

In this article, we will focus on the advantages of filing a request for re-examination as a cheaper and more time efficient route to challenge validity of patent claims. 

Compared to opposition and revocation proceedings, re-examination can be orders of magnitude cheaper and generally issues can be resolved in a matter of months rather than years.  This can provide more clarity for a party’s commercial objectives in a shorter time frame which would otherwise delay product launches and commercial activities.

Traditionally, re-examination was a less popular route because prior to the commencement of the new Patents Act (Raising the Bar) which came into effect on April 2013, re-examination was limited only to the grounds of novelty and inventive step.  Unless a party had “knock-out” prior art for novelty purposes, challenging inventive step was notoriously difficult as assessing inventive step in Australia requires expert evidence from expert witnesses as discussed above and is highly subjective. 

Accordingly, most Australian attorneys would not recommend re-examination if the main ground of challenge was inventive step.  This is highlighted by the Merck & Cie decision below.

However, as a result of the changes to our law, the grounds which could be considered during re-examination were expanded to include full description (including best method of performance), clarity and succinctness, patentable subject matter and fair basis/support.  Usefulness is also considered, but in context of whether the claimed invention achieves the promised benefit. 

Difficulty with inventive step – Merck & Cie [2020] APO 45

A recent Patent Office decision (Merck & Cie) highlights the high bar demanded of third parties to invalidate a granted patent when requesting re-examination in relation to the ground of inventive step.  The Delegate dismissed the ground of inventive step after oral hearing proceedings on the basis that the Delegate could not be practically certain that the granted patent was invalid in view of the evidence provided despite issuance of three re-examination reports maintaining lack of inventive step during re-examination proceedings.

This decision reinforces the already accepted notion of the difficulty third parties face when relying on re-examination at the Patent Office to invalidate a granted patent in respect of inventive step.

The claims of the Australian Patent 2012200512 filed in the name of Merck & Cie (the Patentee) are directed to formulations of a specific polymorph of the compound (6R)-L-erythro-tetrahydrobiopterin dihydro-chloride (referred to as Form B).  The formulations comprise one, or both, of the pharmaceutical excipients polyvinylpyrrolidone (PVP) and/or dicalcium phosphate (DCP).

On 23 October 2017, a third party (the Requestor) filed a request for re-examination.  Objections were raised by the Examiner under the ground of inventive step.  Three rounds of submissions were filed by the Patentee to address the lack of inventive step objection, however, the submissions were not considered to be persuasive.  

As a result, the Examiner assigned the matter to a hearings officer to consider revocation and that the Patentee could request a hearing to contest the decision.  A hearing was requested by the Patentee.

(i)           The Arguments

The Requestor raised the following grounds for re-examination:

a)            the claimed invention lacked novelty;

b)            the claimed invention lacked an inventive step; and

c)            the claims are not fairly based on the disclosure of the specification.

Nine prior art documents were filed with the request including expert evidence in the form of declarations by three expert witnesses. 

The only ground raised in the re-examination reports by the Examiner was inventive step and was the primary ground during hearing.  Additional documents had been cited by the Examiner to support lack of inventive step.

The Examiner asserted that the claims lacked an inventive step because the polymorph Form B was known from the cited documents, and that its outstanding properties make it “especially feasible” for pharmaceutical application. 

Similarly, the Examiner considered that the use of active pharmaceutical ingredients in combination with excipients PVP and DCP (either alone or in combination) was routine based on the teachings of the cited art.  Accordingly, a person of ordinary skill would be expected to simply substitute the active pharmaceutical ingredients described in the cited art with the improved polymorphic Form B in combination with the excipients disclosed.

The major issue in determining whether the claimed invention had an inventive step was that the Examiner asserted that the specification did not describe a problem to be solved (namely stability).  The Examiner noted that the “specification does not appear to suggest any particular problem when formulating compositions of the polymorphic Form B, nor does it indicate that there is any particular difficulty in formulating Form B” and that as a consequence “there are no proposed solutions which have a need for invention when preparing a pharmaceutical composition” and therefore the claimed invention is obvious.

Similar issues had been raised during prosecution that the selection of polymorph Form B in combination with excipients PVP and DCP were routine.  However, the Patentee had drawn analogies to the circumstances of Bristol Myers Squibb v Apotex and argued that these excipients (either alone or in combination) provided improved hygroscopicity (absorption of moisture from surrounding atmosphere) that could not have been predicted.  The application was accepted in view of this argument.  However, the Examiner considered that the supplementary material provided by the Requestor established that the use of these ingredients was obvious. 

(ii)          The Decision

Despite the arguments raised by the Requestor and the Examiner that a specific problem was not identified by the specification and particularly not by any reformulation development around Form B with any advantageous excipients, the Delegate was satisfied that the problem to be solved, as provided by the Patentee, is the provision of a formulation of (6R)-L-erythro-tetrahydrobiopterin dihydrochloride that has high storage stability.

The evidence before the Delegate indicated that while (6R)-L-erythro-tetrahydrobiopterin dihydrochloride was known to exist as a white crystalline solid, this was the only crystal form described in the prior art.  The Delegate found that polymorphism requires at least two different crystal forms and it was only once the Patentee discovered different crystal forms that the white crystal of the prior art could be considered a polymorph (form B).  Polymorph forms was therefore not common general knowledge. 

No evidence was provided regarding the storage stability of (6R)-L-erythro-tetrahydrobiopterin dihydrochloride and that tablets comprising (6R)-L-erythro-tetrahydrobiopterin dihydrochloride together with PVP and/or DCP were known or even common general knowledge.

The Delegate found that the problem in the present case is the provision of a formulation of (6R)-L-erythro-tetrahydrobiopterin dihydrochloride that has high storage stability.  The Delegate noted that the claimed combination as a whole must be considered when considering inventiveness and not the individual features.

The evidence from the experts indicated that there were a number of alternative strategies that could be employed to formulate the active ingredient, and even if seeking an excipient to improve the stability of the formulation, there were a number of alternatives that could be employed. 

As a result, the Delegate found that on balance there was insufficient evidence to determine that the claims are invalid on the ground of lack of inventive step in view the cited art and the common general knowledge. 

Implications

This decision reinforces the understanding by practitioners that re-examination should be relied on as an alternative to opposition and revocation proceedings when the matters to be considered are relatively straightforward.  That is, the substantive grounds relied upon by a third party is inter alia novelty and support.

Reliance of re-examination proceedings are typically difficult when attempting to invalidate a patent based on the ground of inventive step. 

This difficulty was also noted by the Delegate which stated that “[t]he present determination has also not been helped by the evidentiary constraints of re-examination where the requestor is not a party to the process and there is no opportunity for further iterations of evidence or, in the case of post-grant court proceedings, cross examination to further explore the issues in contention”.[1] 

For matters relating to the ground of inventive step, it is recommended that invalidity be established by opposition proceedings (pre-grant) or revocation in Court (post-grant) proceedings as these are inter partes proceedings such that a third party can have the opportunity to heard in full.

Alternative grounds

Despite the high bar encountered during re-examination in the context of inventive step, re-examination can still be a useful and cost-effective tool when relying on the alternative expanded grounds as discussed above.

This was highlighted in an earlier Patent Office decision of Huping Hu (2014) APO 17.  Unusually in this case, the Commissioner exercised their discretion in requesting re-examination after grant compared to a request filed by a third party.  During re-examination, the Commissioner raised additional grounds relating to utility, patentable subject matter (lack of manner of manufacture) and full description.

In this decision, the Delegate found that the patent lacked utility, patentable subject matter and the specification did not fully describe the invention.

The Delegate revoked the patent as the Delegate considered that the deficiencies could not be addressed by amendment.

Recommendation

As a result of the expanded grounds, re-examination can be a useful tool to challenge validity.  If a potentially infringing commercial product relies only on a specific embodiment such as using specific chemical compositions, re-examination can be used to potentially force a patentee to amend the claims which may exclude a potential commercial product by relying on the grounds of support and disclosure for example.

For instance, if a patent application or patent has unduly broad claims potentially covering the embodiment but is arguably not supported or enabled by the description and examples (often observed in the Chemical and Life Sciences space), raising the ground of support can potentially force the patentee to amend claims by narrowing which are no longer covered by the scope of the amended claims and avoid potential infringement.

Since more grounds are now available under the post-Raising the Bar Act, the prospects for successfully challenging validity through re-examination have improved but the thresholds remain high and patentees are given ample opportunity to save their claims through amendment.  This can make a potential infringer’s position better from a freedom to operate perspective but worse from a revocation perspective.

If you are interested in requesting re-examination of a patent or would like further information, please contact one of our expert attorneys.


[1] Merck & Cie [2020] APO 45, [98].

Authored by David Hvasanov, PhD and Charles Tansey, PhD

Welcome to Shelston IP’s round up of Australian and New Zealand trade mark cases for 2020.

While there were plenty of cases in 2020, we have selected a few which we think are interesting and provide an indication of the types of issues dealt with by the Courts and Trade Marks Office throughout the year.

Please click here for a quick snapshot of each case followed by a more detailed discussion of the main issues that arose in each case.

Read our full report

Authored by Sean McManis and Michael Deacon

Welcome to Shelston IP’s wrap-up of the most notable patent law decisions in Australia and New Zealand delivered during 2020 – a remarkable year indeed. The High Court delivered its first decision in a patent case since 2015, and there was an interesting spread of Full Federal Court, Federal Court, Australian Patent Office and Intellectual Property Office of New Zealand decisions relating to issues of patent validity, infringement and amendment as well as procedural issues.

Read our full report

  • The High Court of Australia has endorsed the doctrine of exhaustion in favour of the longstanding doctrine of implied licence with respect to patented products in Australia, but made clear the critical question remains whether the modifications made to a product in each case are properly characterised as permissible repair or impermissible re-making (Calidad v Seiko Epson).
  • An enlarged Full Federal Court has confirmed that a protocol for a clinical trial that is publicly available can be novelty-defeating, provided the information disclosed is sufficiently specific and complete to disclose the invention that is later claimed. The Full Court has also provided important guidance on the nature and scope of Swiss-style claims, and the circumstances under which such claims may be infringed (Mylan v Sun).
  • The Full Court of the Federal Court has found that a computer-implemented method that linked website users to online advertising was not a manner of manufacture and therefore not patentable subject matter (Commissioner of Patents v Rokt). In separate decisions, a computer-implemented method relating to “sandboxing” (Facebook) and an invention relating to the hardware and software components of an electronic gaming machine (Aristocrat v Commissioner of Patents) were held to be patent-eligible subject matter, while a modified roulette table was found not to be patent-eligible (Crown).
  • The Full Court of the Federal Court has confirmed that section 105(1A) of the Patents Act 1990 (Cth), introduced by the Raising the Bar reforms, confers on the Federal Court the power to direct amendments to patent applications during the course of an appeal hearing (Meat and Livestock Australia v Branhaven).
  • In the long-running patent dispute relating to Lundbeck’s antidepressant, Lexapro (escitalopram), the Full Court of the Federal Court overturned a decision that had found Sandoz liable for patent infringement during the extended term of a patent after it was restored, and awarded damages. Lundbeck has recently been granted special leave to appeal to the High Court of Australia, which for the third time will hear an appeal regarding an aspect of this long-running litigation (Sandoz v Lundbeck).
  • The Federal Court provided its first detailed analysis of the Raising the Bar reforms to Australian patent law concerning sufficiency and support. A subsequent judgment on final relief, delivered in November 2020, highlights the challenges facing a defendant who seeks to resist final injunctive relief on public interest grounds (Merck Sharp & Dohme v Wyeth). Those sufficiency and support requirements, as well as best method, were also considered in detail by the Australian Patent Office (University of British Columbia, Gliknik v CSL).
  • In an unprecedented decision, the Federal Court of Australia has considered and dismissed a claim by the Commonwealth Government for compensation from sponsors of innovator pharmaceutical products, pursuant to undertakings as to damages given in exchange for an interlocutory (preliminary) injunction restraining the launch of the first generic product (Commonwealth v Sanofi).
  • A party which gave undertakings not to launch an allegedly infringing biosimilar without first giving notice successfully resisted an application for preliminary discovery (Pfizer v Sandoz). Conversely preliminary discovery was granted against a former employee, but limited in scope due to the prevailing financial circumstances (Sovereign v Steynberg).
  • Extension of term applications were refused for pharmaceutical patents (Pharma Mar, Ono).
  • An opposition to an Australian patent application based solely on a challenge to entitlement was successful (Liquid Time v Smartpak).
  • The Federal Court considered the applicability of the Crown use defence to infringement, and the effect of prior disclosures by the Crown on validity (Axent v Compusign).
  • The nature and detail of disclosures in prior art and the common general knowledge proved determinative of the validity in decisions concerning a combination pharmaceutical product (Boehringer v Intervet) and a parking management system (Vehicle Monitoring Systems v SARB).
  • The construction of claims in the context of the entire specification proved determinative of issues of infringement and validity in several decisions (Caffitaly v One Collective, Nufarm v Dow, CQMS v ESCO).
  • The Intellectual Property Office of New Zealand has delivered decisions demonstrating the difficulty of opposing an application under the “old” 1953 Act (Lonza v Koppers), the high burden for computer-implemented methods (Thomson Reuters) and the more onerous support requirements under the “new” 2013 Act (Taiho Pharmaceutical).

As we continue into 2021 (and away from 2020), we hope this review provides a practical and comprehensive resource. Please do not hesitate to take the opportunity to contact our authors, all subject-matter experts in their respective fields, for advice on the issues raised by these important decisions.

Authored by Duncan Longstaff and Dr Roshan Evans

7 min read

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

2 min read

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

5 min read

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

5 min read

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