5 min read

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

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

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

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

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

ObjectTechnologyExample
Cup or potCleats for tying off




Grooves or incisions

NL1002810
AU2011101068
CN105686558


KR200404017
KR20080010469
CN208439552
TagSticky tags




Big tags


Grooves or incisions



Magnets
US4153153
US20060045935
WO2016209316


US4875574


KR101022889
CN201929560
CN210708847

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Lastly, there is this.

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

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

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

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

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

Authored by Frazer McLennan and Paul Harrison

4 min read

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

Key takeaways

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

Background

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

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

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

Arguments

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

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

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

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

Decision

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

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

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

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

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

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

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

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

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

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

Significance

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

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

Authored by Andrew Lowe and Allira Hudson-Gofers

1 min read

Following on from our article of 4 September 2020, Australian Designs – Draft Bill now released, we advise that the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was recently passed by both houses of Parliament and will soon be presented to the Governor General for Royal Assent.

On the day after Royal Assent, the amendments set out in Schedule 7, Parts 1 and 2 of the Bill will commence. These items relate to changes to clarify the legal standard used for the assessment of design infringement and registration, and the circumstances in which a design can be revoked. Their immediate commencement will realise the benefits of these changes as soon as possible.

The rest of the Bill, including the introduction of a long-awaited grace period (Schedule 1, Part 1 of the Bill), will commence 6 months after the date of Royal Assent.

Further information about the changes, including the commencement details, is available on the IP Australia website.

Authored by Allira Hudson-Gofers

4 min read

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

Need for FemTech

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

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

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

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

Current market snapshot

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

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

Australian companies

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

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

Menstrual pain

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

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

Menstruation

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

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

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

Payment solutions for the adult industry

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

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

Fertility solutions

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

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

Future of FemTech Down Under

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

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

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

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

Authored by Connie Land and Allira Hudson-Gofers

4 min read

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

Why use crowdsourcing?

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

What are some examples of crowdsourcing?

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

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

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

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

How is intellectual property relevant?

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

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

Managing intellectual property when crowdsourcing ideas

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

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

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

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

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

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

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

Conclusion

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

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

Authored by Serena White, DPhil and Duncan Longstaff

2 min read

IP Australia has been providing free, streamlined extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  However, streamlined extensions will not be available after 31 March 2021.

Streamlined extensions (until 31 March 2021)

The streamlined process has been available at IP Australia 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.  Many deadlines for patents, trade marks and designs have been covered by the streamlined extensions of time.

No declaratory evidence or fee has been required; it has been possible to simply check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. 

Requesting extensions of time at IP Australia for patents, trade marks and designs from 1 April 2021

If you are unable to meet a deadline due to the COVID-19 pandemic, it will still be possible to request an extension of time.  However, from 1 April 2021, a declaration will be required to explain why you cannot meet the deadline.

The grant of an extension of time due to the effects of the pandemic does involve an element of discretion.  For patents, such extensions fall under section 223(2)(b) of the Patents Act 1990, according to which an extension of time “may” be provided if a deadline is missed because of “circumstances beyond the control of the person concerned”. 

Requests for extensions of time due to COVID-19 made from 1 April 2021 will be considered on a case-by-case basis and the Commissioner’s/Registrar’s review will consider the impacts of the pandemic.  

We can help

For more information about extensions of time in Australia, see our earlier article here: https://shelstonip.com/insights/publications/missed-an-australian-patent-deadline-heres-what-to-do/.

If you require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

3 min read

IP Australia is providing free, streamlined extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  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.

The period for requesting a streamlined extension has been extended until 31 March 2021.  However, IP Australia now indicates that, subject to any further developments in the COVID-19 pandemic, streamlined extensions will not be available after 31 March 2021.

What are the streamlined extensions?

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, the streamlined extensions are not a simple free-for-all (see our earlier article here).  If asked, a requestor must be able to provide genuine reasons and evidence to justify the grant of the extension.  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.

What if I want to request an extension of time after 31 March 2021?

If you are unable to meet a deadline due to the COVID-19 pandemic, it will still be possible to request an extension of time after 31 March 2021.  However, such an extension will not be available via the streamlined process and a declaration will be required to explain why you cannot meet the deadline.

The grant of an extension of time due to the effects of the pandemic does involve an element of discretion.  Such extensions fall under section 223(2)(b) of the Patents Act 1990, according to which an extension of time “may” be provided if a deadline is missed because of “circumstances beyond the control of the person concerned”. 

Requests for extensions of time due to COVID-19 made after 31 March 2021 will be considered on a case-by-case basis and the Commissioner’s/Registrar’s review will consider the impacts of the pandemic.  

We can help

For more information about extensions of time in Australia, see our earlier article here.

If you require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

2 min read

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

5 min read

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

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Authored by Greg Whitehead and Allira Hudson-Gofers