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

4 min read

Females make up half of the population of the world, but many of the issues they have to deal with, from menstruation to menopause, have often been considered taboo subjects. In fact, until very recently, medical technology and devices for women have been considered niche.

For many years, medical technology and products have historically been developed by men, tested on men and for men, with women expected to adapt. As a result, many diagnoses in women are still undetermined, and it takes several years longer to establish comparable diagnoses in women than in men.

The rise of trailblazing innovators and entrepreneurs creating, designing and developing products and apps for women has started a women’s health revolution by lifting health taboos around the world and giving rise to a global “Femtech” industry worth many billions.

What is Femtech

Femtech, also called female technology, is a newly recognised health sector that relates to technology such as mobile apps, wearables, diagnostic tools and software that is specifically geared towards the needs of women.

Opportunities in Femtech sectors

Today, Femtech accounts for more than 200 start-ups worldwide, many of which have been founded and led by women. 

Numerous spaces and new opportunities in areas such as sex and reproduction, menstruation, fertility, and pregnancy have emerged as age-old issues are being addressed by the unification of modern technology and a focus on women’s health.

While the Femtech industry is still relatively young and underfunded, it is predicted that the industry will grow exponentially in the coming years. Revolutionary steps are continually being taken to balance out gender disparities in the healthcare industry, propelling the agenda of Femtech into the modern world.

In fact, the topic of Femtech has been searched more than ever previously recorded and is on an upwards trajectory.


(Graph obtained from Google trends. Numbers represent search interest relative to the highest point on the chart for the given region and time. A value of 100 is the peak popularity for the term. A value of 50 means that the term is half as popular.)

The shift towards women’s health has also coincided with the next wave of wearable tech products prompting an explosion of wearable technology focused on women’s health, for example, wearable smartwatches to track mensuration and pregnancy and temperatures trackers to identify fertility phases.

On the other hand, the menopause market is an area of enormous opportunity as technology is lacking and largely unexplored. While all women will experience menopause at some point, the availability of products to assist wth tracking symptons is poor, including analogue charts, and very little technology exists for treating symptoms. For that reason, we expect to see this area thrive in the future.

Ongoing challenges in Femtech

While the medical technology and device industry is shifting a considerable amount of time and effort towards women’s health, the industry still faces many challenges.

Breaking down barriers, taboos and getting health data into the hands of those who can utilise it has been a real hurdle within the industry. A particular challenge within Femtech is securing funding. In essence, this requires overcoming the hurdle of pitching female specific products to mostly male investors which solve a problem they don’t understand and can’t relate to.

Other challenges include:

  • Receiving public support about subjects people are less likely to talk about.
  • Fewer researchers in women health fields mean fewer people to apply for grants.
  • Concerns about trust, security and privacy and fear of repercussions if sensitive data was released.

Future of Femtech

The future of Femtech is bright as the awareness of female-oriented health and technology continues to gain momentum, while the taboo around women’s health dissipates.

So far we have only seen the tip of the iceberg in female-focused technology. Notably, the developments in AI and the Internet of Things have largely contributed to the rise of Femtech and will continue to do so. Only recently have tech juggernauts, Fitbit and Apple, developed technology aimed at women’s health. In April 2018, Fitbit unveiled a woman focused smartwatch which allows women to track their menstrual cycle, followed by Apple in June 2019, who added a reproductive health tracking feature to their operating platform.

According to a report by research consultancy Frost & Sullivan, the value of the industry is increasing rapidly. It was estimated that the Femtech industry was worth US$200 million in 2018 and will skyrocket to a potential worth of US$50 billion by 2025.

Conclusion

As Femtech continues to pave the future, we will continue to explore other aspects of Femtech in Australia and Femtech in relation to Intellectual property through a series of focused articles.

Authored by Connie Land and Allira Hudson-Gofers

2 min read

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