Australia’s “grace period” provisions allow a patent applicant to disclose or use their invention within 12 months before filing a complete patent application in Australia. In an interesting interpretation of those provisions, the Australian Patent Office has found that the grace period applies to whole of contents citations published after a patent application has been filed.
The emergence of “plausibility” as a test for inventive step, sufficiency and industrial applicability represents a significant legal development in Europe in recent years. Now the concept of plausibility has reached Australian shores, with the Australian Patent Office applying it in a test for sufficiency.
IP Australia has released a consultation paper (Paper) concerning proposed amendments to Australia’s system for filing divisional trade mark applications. The Paper proposes amendments which will affect all divisional applications filed in Australia, including allowing divisional applications to be filed for International Registrations Designating Australia (IRDAs) for the first time.
The Full Court of the Federal Court’s decision in Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 has clarified the date from which the owner of an innovation patent is entitled to compensation for infringement of the innovation patent. In the case of an innovation patent which has been filed as a divisional application, the Court’s decision significantly alters the time from which relief can be claimed, and has the potential to dramatically reduce the amount of compensation to which the patentee is entitled.
A previous decision of the Federal Court of Australia (Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019) held that the owner of a divisional innovation patent was entitled to relief from the date that the “parent” application became open for public inspection (OPI). This allowed a patentee to strategically file a divisional innovation patent with claims tailored to read on to a competitor’s conduct, and then claim relief from the parent’s OPI date (which may have been some years earlier). As Justice Burley noted in Coretell, this produced the unattractive result of a person being liable to pay compensation for acts of infringement pre-dating the existence of the innovation patent said to have been infringed.
Justice Burley (with whom Justice Nicholas and Jagot agreed) corrected this anomaly and made clear that the relevant date for relief for infringement of an innovation patent is its date of grant. This diminishes the strategic benefit of patentees filing divisional innovation patents – although divisional innovation patents can still be tailored to target the conduct of a potential infringer, the patentee will only be entitled to relief from the date the divisional innovation patent was granted, and therefore publicly accessible, and not before.
By: Alex Dunlop and Nakita Wilkinson
The new generic top-level domain (gTLD) .africa, a regional domain for users located in and out of the continent, has been officially validated by ICANN.
More than a decade after its other regional counterparts, such as .eu or .asia, the .africa gTLD has been the subject matter of a legal conundrum for years.
Indeed, a conflict between two operators had to be escalated up to U.S. courts before a final decision entrusted the management of the gTLD to a South African company, ZA Central Registry NPC.
This new gTLD will allow the African continent to seize the full potential of the internet revolution, on a continent where the mobile connectivity is now allowing bypassing the expensive copper wire infrastructure development.
The new .africa domain name extension is expected to lead the continent in its global effort to take part in the global information society and become a strategic place to invest.
Accessibility to the new domain name will be gradual: starting on 6 April 2017, a 60-day preliminary phase will allow trademark owners or companies to benefit from a priority right, as well as African countries that intend to protect certain emblematic names such as “Mount Kilimanjaro”. Then, starting on 2 June 2017, an Early Access Phase (EAP) will take place to prevent any hindrance or ransoming by ill-intentioned people.
The .africa TLD will finally be open to all on 4 July 2017, on a first-come/first-serve basis.
K&L Gates has more than 225 lawyers, including approximately 100 registered patent lawyers, agents, and technology specialists with technical or advanced science degrees – nearly 20 with Ph.D.s – who devote their practices to helping clients establish, enforce, and leverage their intellectual property rights worldwide.
We can thus highlight the pitfall to avoid, the topics on which to focus the attention and better defend and protect our clients’ intangible assets with regard to the opening of this new gTLD, on this emerging market.
By Chris Round
In a decision of the Federal Court in October 2015 concerning trademarks affixed to Chinese herbal teas, the Federal Court of Australia awarded additional damages to an applicant in circumstances where the evidence required to prove compensatory damages was not available.
In Truong Giang Corporation v Quach [2015] FCA 1097, the applicant Truong Giang Corporation (TG Corp) is a Californian company that produces a green leaf herbal tea product which it sells under the name “3 Ballerina Tea”. It has sold that product in the United States since 1991 and in Australia since 1994, in distinctive dark green packaging which, amongst other things, features a prominent device or mark. In this proceeding TG Corp claimed that the respondents Mr Quach, New Leaf and Mr Alexandrou were involved in selling relatively large quantities of a tea product packaged in a deceptively similar way to the genuine 3 Ballerina Tea. Since 2006, TG Corp through its agents sold substantial quantities of 3 Ballerina Tea throughout Australia, mainly through Asian supermarkets and health food stores.
By Greg Pieris and Simon Casinader
On 16 December 2015, another chapter (and perhaps the final chapter) closed in the long running dispute between the rights holder of the film Dallas Buyers Club (DBC) and six Australian ISPs. Justice Perram of the Federal Court of Australia dismissed DBC’s application for preliminary discovery of the identities of over 4,000 Australian BitTorrent users who allegedly shared copies of the film.
As we reported in April 2015 (see here), Justice Perram initially ruled in favour of DBC ordering six ISPs to disclose the details of 4,726 customers. However, the Court was concerned this information would be used to write to account holders making demands for payments very much excess of what might actually be recovered in any actual suit (a practice known as “speculative invoicing”). To address this concern, the Court adopted the novel approach of making the release of account holder information conditional on DBC submitting for the Court’s approval a draft of the letter of demand proposed to be sent to the relevant account holders.
By Naomi Pearce
FCA Confirms Commonwealth may Claim Relief Under “Usual Undertakings as to Damages”
The much anticipated Court of Appeal decision in Commonwealth of Australia v Sanofi ¹ was handed down on Monday. The decision is a win for the Commonwealth, and for generic/biosimilar companies in Australia, and (if upheld in any appeal) will result in Sponsors adopting a more circumspect approach to seeking interlocutory injunctions for patent infringement in Australia.
Except where a generic/biosimilar applicant has “cleared the way” (cleared any patent impediments to launch through the Courts in Australia) or all relevant patents have expired, interlocutory injunctions are routinely sought by the Sponsor, and are routinely granted.
By Nigel Lokan
In the matter of CSR Building Products Limited v. United States Gypsum Company¹ the Australian Patent Office has heard and decided the first patent opposition in which the provisions of the IP Laws Amendment Act 2012 (Raising the Bar Act) apply.
The Raising the Bar Act introduced a number of changes to the Australian patent legislation with the intent of raising the standard required to support the grant of a patent and to bring Australia’s patent laws into line with those of its major trading partners. The Raising the Bar Act applies to all patent applications for which a request for examination was filed on or after 15 April 2013.
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