Authored by Greg Whitehead and Allira Hudson-Gofers
Following on from our article of 14 May 2020, Australian Designs – Changes on the Way, we advise that the Australian Designs Exposure Draft Bill, Regulations, 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.
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
For a number of years, Shelston IP has partnered with Girls Invent an organisation dedicated to inspiring and motivating girls to become successful innovators. At Shelston IP, innovation is our passion, and we are excited to support Girls Invent through our pro bono advice program in its mission to encourage innovation.
Tune in here to listen to what they had say.
Authored by Allira Hudson-Gofers and Tam Huynh
To celebrate International Women in Engineering day (23 June 2020), Shelston IP would like to highlight our outstanding female patent attorneys and patent engineers qualified in this field.
With 30 years of experience in the patent profession, Caroline Bommer is the female engineer that we aspire to be. She provides a wonderful example of the possibilities for our young female attorneys and is appreciated by all of her clients, particularly in her effective communication and her ability to understand their business strategies. Caroline’s mechanical engineering expertise is also extensive, including practical knowledge acquired prior to joining the patent profession in the industries of building, transport, aerospace, and defence. She has a keen interest in green technologies, with many years of personal involvement in solar car racing. Ask her to take you for a spin!
Tam Huynh works in the fields of electrical engineering and information technology patents. Growing up, Tam would find any excuse to integrate electronics into her arts and crafts projects. This included raiding her Dad’s electronics kit to make LED greeting cards for her family. She went on to study Computer Engineering at University and undertook a project exploring the use of solar power technologies and their application with mobile devices. Tam now assists with the ongoing management of patent portfolios in a range of fields, including electrical power systems, information and software systems, mining and automation, and medical devices. Tam also holds a Bachelor of Commerce degree and her accounting background adds additional depth to her handling of financial-system related inventions.
With childhood memories of jumping off a red billy cart and yelling “Newton’s third law”, Allira Hudson-Gofers brings her enjoyment of physics and engineering into her role as the head of Shelston IP’s Engineering and ICT Patents Group. Allira studied both mechatronics and biomedical engineering at University, going on to develop particular expertise in research, product development, regulatory affairs, and intellectual property in the medical technology space. She now applies this expertise, together with her recent MBA studies, to help her clients protect and commercialise their innovations.
Connie Land had her interest in the human body and medical devices sparked in high school, which lead her to pursue a degree in Biomedical Engineering. Connie started her career with hands-on experience maintaining, repairing, and programming medical devices. Last year, after discovering that the role of a patent attorney was a career option for engineering graduates, she hung up her tools and joined Shelston IP as a Patent Engineer. Connie now works with medical devices in a different capacity and uses her passion and knowledge of medical devices and technology to help her clients navigate the path to obtaining patent and design protection. She is currently studying a Masters in Intellectual Property and is looking forward to becoming a registered patent attorney in Australia and New Zealand.
Authored by Allira Hudson-Gofers, Caroline Bommer, Tam Huynh and Connie Land
IP Australia has now released its proposals for implementing the recommendations of the Advisory Council on Intellectual Property’s (ACIP) to improve the Australian designs system.
For background, in 2012 ACIP was asked to investigate and improve the effectiveness of the designs system in stimulating innovation by Australian users and the impact the designs system has on economic growth. This review led to the release by ACIP of an Options Paper for public consultation on 3rd December 2014 and a Final Report in 2015.
After considering stakeholder submissions on the recommendations laid out in the Final Report, IP Australia is now proceeding with a number of proposals, the most notable being:
- An automatic grace period of 12 months from the priority date with a prior use defence based on Section 119 of the Patents Act 1990.
- Removal of the requirement to request registration of the design. Registration would now occur six months after the filing the application.
- Removal of the rarely used option of only publishing a design and not registering it.
- Revision of Section 19(4) of the Act to clarify the standard of the informed user consistent with the Multisteps approach.
- Liability for infringement to be removed before Registration (consistent with other IP rights).
Left on the table at this present time are any changes to the protection of partial and virtual designs (e.g. GUI’s), and a formal publication/registration delay process.
IP Australia says that it will release an exposure draft of the proposed Bill and supporting regulations in the second half of 2020. After participating in the stakeholder submissions, Shelston IP welcome these improvements and look forward to them being passed into law.
A full copy of IP Australia’s response can be found here.
Authored by Rodney Dabboussy and Allira Hudson-Gofers
Congratulations to Allira Hudson-Gofers, Duncan Longstaff and Michael Deacon, Shelston IP’s newly appointed Principals. Congratulations also goes to Nathan Sinclair, Serena White, and Danielle Spath for their promotions. This is well deserved recognition for their hard work and dedication shown towards their IP practice and clients each day.
Principal BE(Mechatronic) (Hons 1), MBiomedEng, MIP, BA(Technology)Allira specialises in the provision of commercially relevant advice regarding patents and registered designs. Her expertise includes medical devices and diagnostic technologies; robotics; building and construction; sustainable technologies; and manufacturing processes.
Principal LLM(IP) LLB(Hons1st) BSc(Biol)With over a decade of experience and higher degree training specialising in IP topics, Duncan’s IP litigation practice focuses on patent disputes involving pharmaceuticals, biotechnology, medical devices, mining and information technology.
Principal BA LLB (Hons) GradCert TMLPMichael is a Lawyer and Registered Trade Mark Attorney with a focus on IP commercialisation. He has broad experience providing legal advice and drafting agreements across various commercial transaction types and assisting with brand protection, enforcement and strategy.
Senior Associate BSc (Hons) (Chem) MIP (UTS)Nathan manages all aspects of Australian and overseas trade mark filings and prosecutions, filing strategies and trade mark portfolio management.
Serena White, DPhil
Senior Associate MChem (Hons) (Oxon), DPhil (Oxon)Serena is a European qualified patent attorney, a UK and trans-Tasman patent attorney. She has
a strong technical background in organic chemistry.
Associate GradCert TMLPDanielle maintains client trade mark portfolios and deals with the registration and protection of trade marks in Australia and overseas.
Allira Hudson-Gofers is a Senior Associate at Shelston IP and Team Leader of the Engineering and ICT team. She is also an elite athlete who has represented Australia in the sports of handball and beach handball, competing in the Handball World Championships in 2007, 2009 and 2011, and in the Beach Handball World Championships in 2012, 2014 and 2016. Allira is currently training for the 2019 Beach World Games to be held in San Diego, California, USA from 9-14 October 2019. Allira has also contributed to the sport by coordinating New South Wales beach handball activities, managing the administration of the emerging Australian junior beach handball program, and assisting with junior training camps.
As an Australian representative in handball and beach handball, you would know all about this year’s World IP Day theme Reaching for Gold. As a Patent Attorney how do you think innovation has played a part in sport over the years?
There are many examples of innovation in sport, beach handball being a perfect one. This sport was developed to be a “spectacular” version of team handball. With a number of changes, including the playing surface, court size, number of players, and the ball, the most innovative aspect to beach handball is the introduction of two spectacular shots, the spin and the alley. Subsequently, alley shots have become regular features of the original team handball game.
Living in Australia, we are somewhat sport obsessed and, as a result, we see a number of sporting innovations come to life in Australia. Over the years, a wide range of sporting innovations have developed in Australia, including dash-mounted cameras in motor racing, stump mounted cameras in cricket, Ben Lexcen’s winged keel design for yacht racing, Speedo® swimwear, and the game of Australian football.
You have been involved and supported Girl’s Invent through Shelston IP’s pro bono program. Can you tell us a bit about how you have been involved, and in particular with the filing of an Australian and US patent application for a group of students at Camberwell Girls Grammar School for their Score Buddy invention?
Girl’s Invent currently offer programs in 150 Australian schools. Through these programs, CEO Mark Glazebrook, runs specifically designed workshops to guide girls through the process of developing new products. These workshops range in topic from idea generation through to commercialisation and market entry.
Shelston IP support Girl’s Invent through our pro bono program and I have been able to speak with several the school groups about intellectual property and commercialisation, often specifically relating to a product that they are developing.
The Score Buddy was developed by three year 8 students at Camberwell Girls Grammar School: Alice Wilson, Susannah Lutze and Mikayla Lee. This device straps to the throat of a tennis racquet and has the potential to solve a problem on the social tennis court: keeping track of the score!
Shelston IP looked after the preparation and lodgement of a provisional application for the young inventors over 12 months ago. We have now progressed to having pending patent protection in both Australia and the United States.
It is very rewarding to assist the Score Boddy team and all of the girls in the Girl’s Invent program as they explore the innovation process. I can’t wait to see what fantastic products are developed in the next program!
Not only are you an Australian handball player, you have three Masters degrees including Master of Biomedical Engineering, Master of Industrial Property and an MBA. Can you attribute your role as an elite athlete to your success in business?
There is research which supports the parallels between elite level sporting competition and success in the business realm.
Some of the more obvious parallels are the discipline of time management, performing under pressure, working with team mates, and the setting and pursuit of goals.
In particular, I have found that developing my ability to work under pressure and time management through elite sport has been instrumental in allowing me to complete the above degrees, while working and competing. Importantly, I think that in developing these skills I have become more adept at managing pressure and am able to comfortably take on a greater scope and variety of tasks.
What is, maybe less obvious, is that elite sport provides an environment where failure is commonplace. Games are lost, and perfection of skills can lie many hours away or even out of reach. Success is often defined by the ability to bounce back and try again, and to receive feedback (on both positive and negative performances) and develop from it. I have found that training and competing at elite level provides many opportunities to practice such skills. Transferring these to the business environment allows the confidence to try something new without fear of failure, then going on to seek feedback and assess performance, and try again. Personally, I have found the greatest enjoyment in putting my hand up for a broad variety of projects in the workplace, giving the opportunity to develop new skills and knowledge and to work with many different people.
Do you believe playing sport can help women develop motivational skills and team building skills — does it equip women with the competitive spirit that’s essential for success both on the playing field and in the workplace?
Yes, I think sport can help women, and men, to develop motivation and team-building skills. In addition, I believe that sport and sporting achievement at whatever level, supports the development of confidence which is transferable to other areas.
In a team sport environment, the blend of communication and coordination is key. Success on the field requires athletes to understand the team goals and how to navigate their individual place. With experience, athletes develop the ability to understand their team member’s roles, and to assess their own and others’ strengths and weaknesses.
On the sporting field, time is often limited, and communication needs to be succinct and to the point. The recipient also needs to process instructions quickly and effectively and, if they disagree, resolve the point before the game has moved on. The workplace may not have the time pressure dictated by a game clock nor have the distraction of trying to communicate in the midst of a fast-moving game, however it does have other performance pressures. The sporting field is a low risk arena for practicing team work and communication skills that can then be used in the workplace.
Finally, what was the greatest lesson you learned from sports that has helped you succeed in your professional career?
I think the greatest lesson I have learned from sports relates to continuous development.
For me, this includes placing an appropriate perspective on performance, the willingness and ability to assess performance, and to put in the time and effort to improve and develop new skills. Over my career, this has seen me take on new areas of study, such as the Masters of Business Administration, and get involved in a variety of projects ranging from process improvements to the fit-out of our new office space.
I believe that my proactive approach to personal and professional development and my willingness to get involved in new and different projects encourages further interesting opportunities to be made available to me and is a major contribution to my professional success.
Authored by Allira Hudson-Gofers
A strong IP strategy is a vital part of any business, especially in the resources sector where innovation has historically provided key competitive advantages.
Shelston IP provide insights into the strategic role of IP for entities operating in the resources sector.
To read the full article, which appeared in the June 2018 edition of ‘AusImm’ please click here.
Authored by Allira Hudson-Gofers
There are only seven business days remaining to submit your application to the Innovation Vouchers Program (IVP).
This WA State Government initiative allows for funding of up to $20,000 per voucher to be awarded to eligible SMEs. Recipients will need to provide a net cash co-investment of matched funds at a rate no less than 20:80 of applicant to State Government funding.
State Government funding provided under the IVP is intended to support SMEs to access professional skills, services or knowledge that will enable these entities to advance an innovation or commercialisation activity in Western Australia. Funding applications must fall under one of the IVP eligible expenditure categories:
- Research and Development
- Product Development
- Technology Transfer and Intellectual Property
- Commercialisation Support Services
Eligible expenditure must be incurred on or after the date the financial assistance agreement is executed. Please get in touch with your attorney if Shelston IP can assist with your IVP application by tailoring the timing of intellectual property advice and services, or the associated invoice.
Applications close 11:00am 28 March 2018.
For program details, visit: http://www.newindustries.wa.gov.au/opportunity/innovation-vouchers
Application is online via the IVP grant platform https://innovationvouchers.grantplatform.com/
For further information please contact AlliraHudson-Gofers@ShelstonIP.com
Authored by Allira Hudson-Gofers