IP Australia is providing free extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  The period for requesting such an extension has been extended until 28 February 2021.  Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended further. 

Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.

IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. 

However, these COVID-19 extension provisions are not a simple free-for-all (see our earlier article here: https://shelstonip.com/insights/briefings/ip-australias-covid-19-extensions-of-time-a-word-of-caution/).  An element of discretion does apply and, if asked, a requestor must be able to provide genuine reasons and evidence to justify the grant of the extension.  The timing of the request can be of significance too.  In addition, IP Australia warns that a false declaration could put the validity of an IP right at risk.

Many deadlines for patents, trade marks and designs are covered by the streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence).  However, there are some exceptions.  For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies.  For trade marks, these extensions are also unavailable for filing of divisional applications.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

Introduction

IP Australia is providing free extensions of time of up to 3 months if a deadline cannot be met due to the effects of COVID-19.  As reported here https://www.shelstonip.com/news/covid-19-update-ip-australia-now-extended-streamlined-relief-measures-31-january-2021-provide-certainty-holiday-period/, the period for requesting such an extension currently ends on 31 January 2021 with the prospect of the period being further extended. 

A streamlined process has been implemented for requesting COVID-19-related extensions.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic (equating to circumstances beyond control).  Although these COVID-19 extensions of time have so far been routinely allowed, they are nonetheless subject to the Commissioner’s discretion. 

New decision from IP Australia

A recent decision from IP Australia, Shell Internationale Research Maatschappij B.V. v Yara International ASA [2020] APO 55, http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/APO//2020/55.html, relates to a request for a COVID-19 extension in the context of a patent opposition.  It provides a reminder that care is required when requesting COVID-19 extensions at IP Australia, both in terms of the timing of the request and the reasoning.

Shell Internationale Research Maatschappij B.V. (the Opponent) filed a Notice of Opposition and, at the same time, requested a COVID-19 extension of 3 months for filing the Statement of Grounds and Particulars (SGP), which was due to be filed within 3 months of the Notice of Opposition. 

In accordance with usual procedure under Australian law, Yara International ASA (the Applicant) was afforded the opportunity to comment on the Opponent’s request for an extension of time.  The Applicant opposed the Opponent’s request for an extension of time. 

The Opponent’s submissions

The Opponent filed a declaration which provided a general overview of the COVID situation in the UK and at Shell.  The declaration noted that, as a consequence of the pandemic, the responsible in-house attorney had commenced working at home in April 2020, solely with the use of a laptop, without access to printers or desktop monitors, and that he did not have access to numerous physical documents that were required for the opposition.  The declaration also reasoned that, due to COVID-19, obtaining mandates and financial approvals for the opposition at Shell had become more difficult. 

The Applicant’s submissions

The Applicant, however, noted that the Opponent had filed two rounds of third-party observations at the EPO on the corresponding European application.  The Applicant argued that, although another Shell attorney had filed those third-party observations, the Opponent had not provided any reason why that attorney could not have prepared or assisted with the preparation of the SGP or why the task could not have been delegated to the Australian representative.  The Applicant pointed out that preparation of the SGP does not need expert witnesses and that the amount of time required to prepare the SGP is significantly less than that required for the preparation of evidence.  Furthermore, the Applicant argued that an undue delay would lead to an extended period of uncertainty for the Applicant and would not be in the public interest. 

Decision to grant a shortened extension and reasoning

The Commissioner commented that it was “not the existence of the pandemic, but rather the specific impacts on the responsible person, that must be taken into consideration”. 

The Commissioner considered that the extension request was “largely prospective and based on conjecture of circumstances that might arise in the future”.  The fact that the extension request had been filed at the same time as the Notice of Opposition did not work in the Opponent’s favour.  In this regard, the Commissioner observed that “if a party can anticipate on-going delays, and even quantify those delays in requesting an extension upfront, then presumably they can also plan and take action to mitigate their impact”.  The Commissioner expressed concern that “a party obtaining an upfront extension and working to an extended deadline may not be as diligent in completing their work, or as motivated to consider and implement mitigating strategies that could enable them to meet the original deadline”.

In the concluding remarks, the Commissioner adjudged that, whilst there were circumstances that had impacted on the Opponent’s ability to complete the SGP in time, the request was made at the beginning of the period for preparing the SGP when the impacts and the extent of delay were uncertain.  Further, the Commissioner was not satisfied that the Opponent had provided a sufficiently detailed disclosure of the circumstances to justify the request for an extension at that time, including the reasons why no strategies were available to mitigate the impacts. 

On balance, the Commissioner decided to allow an extension but the length of the extension allowed was less than the 3 months requested.

The Commissioner noted that the decision to allow the extension of time of course does not preclude the Opponent seeking a further extension based on current circumstances that may prevent completion of the SGP by the extended due date.

Conclusion

Whilst a shortened extension was granted in this circumstance, this decision serves as a stark reminder that IP Australia’s COVID-19 streamlined extension provisions are not a simple free-for-all.  An element of discretion does apply. 

A requestor must be able to provide genuine reasons and evidence to justify the grant of the extension and the timing of the request can also be of significance. 

In addition, it is worth mentioning IP Australia’s warning that a false declaration could put the validity of an IP right at risk.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Michael Christie, PhD

IP Australia is providing free extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  The period for requesting such an extension has been extended until 31 January 2021 Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended further.

Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.

IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic.

Many deadlines for patents, trade marks and designs are covered by these streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence).  However, there are some exceptions.  For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies.  For trade marks, these extensions are also unavailable for filing of divisional applications.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us.

Authored by Serena White, DPhil and Gareth Dixon, PhD

Register here

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 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

Innovation by small and medium enterprises (SMEs) plays a significant role in the Australian economy.  For such companies, it is important that they adequately capture and control the commercial path for each innovation so as to maximise their return on investment in research and development.

Many SMEs recognise that the starting point for capturing value in innovation rests in the various intellectual property (IP) systems – patents for inventions, trade marks for brands and copyright for original works to name a few.

In a bid to provide increased support for SMEs in relation to the various IP systems, IP Australia (the Australian Government agency tasked with administering IP rights and related legislation) has launched a new IP portal for SMEs – IP Australia’s SME Portal.

The SME Portal includes a number of useful tools and resources in one convenient location to assist SMEs in navigating the IP process.  The available resources include information on the fundamentals of IP (webinars, toolkits, how-to guides, etc) together with details of several programs and services designed to assist SMEs in the process of taking an innovation to market.

We believe the SME Portal will be a valuable resource of general information on IP for SMEs seeking to secure IP rights in Australia.  Should you have any specific questions concerning your current IP position, please contact us and we will be happy to assist.

Authored by Connie Land and Greg Whitehead

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:

  1.   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.
  2.   Removal of the requirement to request registration of the design. Registration would now occur six months after the filing the application.
  3.   Removal of the rarely used option of only publishing a design and not registering it.
  4.   Revision of Section 19(4) of the Act to clarify the standard of the informed user consistent with the Multisteps approach.
  5.   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

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

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

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

Background

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

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

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

The Modifications Made

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

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

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

Opposing Doctrines: Implied Licence vs Patent Exhaustion

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

Two opposing doctrines have developed to address this tension.

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

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

The First Instance Decision

Material modifications?

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

The Full Court

Scope of the Implied Licence

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

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

Licence to repair?

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

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

Patent Exhaustion – would the outcome be any different?

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

Implications for Re-manufacturers 

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

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

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

Authored by Duncan Longstaff and Dr Roshan Evans

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

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

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

Here’s the Quick Search page.

quick search page

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

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

design numbers

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

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

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

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

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

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

classification codes

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

design classification codes

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

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

select images

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

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

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

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

Authored by Frazer McLennan and Charles Tansey, PhD

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

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

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

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

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

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

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