frequently asked questions

General

KeepCup v Gloria Jeans: An Australian registered design test case in the making?

The Australian Broadcasting Commission reported on Friday that KeepCup – manufacturer of reusable coffee cups – is suing Gloria Jeans over alleged infringement of KeepCup’s registered design rights.  In the report, Professor Andrew Christie from the University of Melbourne Law School contends that the lawsuit may have the potential to provide a pivotal test case for registered designs in Australia.  Below, we explore the reasoning behind this opinion, and what registered design infringement actually means.

A search of the Australian Designs Data Searching (ADDS) database reveals that KeepCup are the current owners of five registered Australian designs – 363697, 349256, 349255, 334106, and 324241.  Importantly, the question of whether a design right is infringed is independent of the appearance of the registered design owner’s own commercial product.  In this case, therefore, it is irrelevant what KeepCup’s actual commercial cups look like.

Rather, the question of infringement is posed in relation to the registered design/s as it/they exist/s on the designs Register – and asks whether the allegedly infringing product embodies a design which is “identical to, or substantially similar in overall impression to, the registered design” (s 71 Designs Act 2003).

Whilst “identical to” is rather self-explanatory, the test of “substantially similar in overall impression” replaces the previous test recited in the Designs Act 1906 of ‘fraudulent or obvious imitation’.  This was primarily due to dissatisfaction with the old infringement test –  as courts would typically only find in favour of a registered designs owner in the event of almost exact replication.  Indeed, of the 17 cases relating to infringement of registered designs which were before the courts in the seven years prior to 1993, infringement was only found in only two cases, one of which was overturned on appeal. 

The new test of “substantially similar in overall impression” states that the courts must have regard for giving more weight to similarities, the prior art base, any ‘statement of newness and distinctiveness’ or in its absence the whole design, the qualities of any component part which is ‘substantially similar’, and the scope for potential innovation.  Additionally, in applying each of these factors the courts must use the ‘standard of the informed user’.

Accordingly, should KeepCup v Gloria Jeans proceed to court, it will be interesting to what extent each of these factors plays in weighing any infringement decision.

And ultimately, this will be an interesting case for other registered design owners to follow – in order to make an appropriate assessment of the commercial value of registered designs, and to ensure their applications are as robust as possible.

Where are the female patent attorneys?

Part 1: The business case for gender balance

Gender imbalance in the patent attorney profession is an underreported issue.  And yet, women comprise less than a third of registered patent attorneys,[i] and occupy less than 17% of senior positions in the largest private practices in Australia.[ii]  This is the first of a multi-part series exploring the topic of female representation in the patent attorney profession in Australia.

In this post, we motivate the issue by demonstrating the unequivocal business case for gender equality.  Correlation between gender balance and better business outcomes has been established both economically and financially, both in terms of female representation at board level, in senior executive roles, and in organisation populations in general.

Board representation

Studies conducted on ASX listed companies, and in particular the ASX500, found that companies with women on their board “deliver significantly higher Return on Equity (ROE) than those without”.[iii]  In real terms, a five-year ROE for companies with women directors produced approximately double that of the ASX500 average, and almost twenty times that of companies with no women directors; a particularly pertinent result given the number of recently-listed patent attorney practices.

Executive committees and senior positions

A McKinsey study released in 2010 examined over 200 companies across numerous industries in Europe, Brazil, Russia, India and China, and found that in terms of performance measures companies with the most women in their executive committees outperformed those with no women by between 41 and 56 percent.  These results were also replicated in a further McKinsey study, with research also correlating higher firm valuation and mandated female board representation.

Directors and boards aside, correlation is also statistically significant among organisations with larger populations of female senior executives.  In the aptly named, “Profit, thy name is… Woman?”, Adler describes a longitudinal study conducted by himself and colleagues at Pepperdine University on Fortune 500 companies.  To summarise the “astonishing” results, companies who were the most aggressive at promoting women to senior levels outperformed industry medians on every profit metric for every year of the six years for which the study was performed.  A sentiment which is echoed in many other studies.

Indeed, organisations with women in particular risk and audit roles also perform better, and are shown to be less likely to become insolvent. In terms of leadership styles, women are more likely to convey a “transformational” leadership style, as opposed to merely transactional. Furthermore, workgroups with fewer females have been shown to exhibit higher staff turnover, and lower staff mobility, than those with more balanced gender composition.  Studies have also shown that collective intelligence of a workgroup is influenced by the number of females in the group; more women correlates with higher collective intelligence.

Correlation and causality

Whilst some may argue that these studies fail to demonstrate causality, merely correlation, one of the most compelling pieces of gender research pertains to a randomised trial in India. Mandated political reservations for women were introduced in randomly selected Village Council elections in the 1990s, such that thirty percent of seats could be occupied solely by females.  Comparison of the investment decisions and public good outcomes established a causal link between the mandated presence of women and better investments and outcomes.

Where are the female attorneys?

Ultimately, significant evidence is available to suggest that gender diversity is associated with better business outcomes.  Consider also, the common-sense argument that greater diversity in business brings with it greater life experiences, more varied assumptions, and thus a greater propensity for constructive debate and hence smarter decisions.

Therefore – why aren’t there more female patent attorneys?  Indeed, why aren’t there more senior female patent attorneys in private practice?  Where are the female patent attorneys?  (And – would the share prices of ASX-listed IP holding companies be in the same state they are in now, if they had more women in their ranks?)

 

Stay tuned for the follow-up parts in this series:

Myths

Debunk commonly purported myths

Causes

Detail the more insidious causes for the imbalance (backed by evidence!)

Opportunities

And, on a brighter note – detail evidence-based opportunities to redress the imbalance.

Selected references*

[i] Statistics were extracted from Registers of Patent and Trade Mark Attorneys on the website of the Professional Standards Board for Patent and Trade Mark Attorneys, December 2016, www.psb.gov.org [accessed: 30 December 2016], and associated web searches.

[ii] Ibid, and associated web pages including websites of DCC, Freehills, Sprusons, FAKC, Pizzeys, Cullens, Griffith Hack, Shelston, Watermark, FB Rice, Allens, POF, Madderns, Wrays [accessed January – March 2017].

[iii] ‘ASX500 – Women Leaders: Research Note’, Reibey Institute, June 2011.

* For a more comprehensive list of reference, please contact us.

Where are the female patent attorneys?

Part 2: Debunking the myths

This post is a continuation of our series entitled “Where are the female patent attorneys?” – an exploration of gender imbalance in the industry in Australia.  (If you missed part 1 – catch up here).

In this post, we analyse three common myths regarding gender imbalance in the industry; namely: that women in the industry currently lack experience to be in leadership positions (Myth 1); that the lack of female patent attorneys is merely a reflection of the lack of women with appropriate STEM qualifications (Myth 2); and, a denial of the issue (Myth 3).

By examining over 10 years of historical data – such myths are proven to be unsupported.

Myth 1: We just need time

Myth 2: There aren't enough qualified women

Myth 3: What's the problem?

Myth 1: We just need time

A pervasive myth regarding gender imbalance in the industry is that inequality of numbers is merely a reflection of historic inequality, which, given time will self-correct.  This is a variant on the notion that females in the industry are largely a recent phenomenon, and therefore over time, will accrue sufficient skills to occupy more senior positions in greater proportions.  An analysis of publicly available records, and records obtained under the Freedom of Information Act, relating to historical Registers of Patent Attorneys dating back to 2001 provides some interesting insights into these particular myths.

Figure 1 provides an overview of gender representation among registrants on the Register of Patent Attorneys for the years 2001-2013, 2015 and 2016.  Whilst an upward trend in proportional representation is present, and commendable, it should be observed with caution.  For, as shown in Figure 2, in absolute terms, without intervention linear trending of male and female populations will lead to an equilibrium just shy of 37% females.  That is to say, parity is unachievable if the current linear trends of male and female populations remain static.

Thus, far from simply needing time for female populations to “trickle-up”, gender parity may simply be unachievable.

Interestingly, this is also confirmed by examining the composition of new registrations on the Register (Figure 3 and Figure 4), as well as the compositions of registrants in their final year of registration (Figure 5).  In all but 2016, men outnumbered women in terms of new registrants, and with females consistently outpacing men in terms of professional attrition it is clear that time alone will not be sufficient to bridge the gender gap.  Therefore, whilst parity in terms of new registrations may be an enviable goal, what we want to avoid is a revolving door where disenfranchised women leave the profession before reaching seniority.

Whilst representation among in-house and at publicly funded institutions (as shown in Figure 6), such as universities or public research organisations, is also closer to parity, the situation in private practice is less optimistic.

Private practice 25.2%
Sole operator or no affiliation 19.0%
Patent office 20.0%
In-house 47.5%
Publicly funded 50.0%

Figure 6: Australian Register of Patent Attorneys in 2016 by practice area.

Consider the intra-organisational gender representation in the largest Australian private practice firms and companies, and in particular equality among junior and senior levels.  In respect of senior leadership positions in private practice, the gender disparity is more pronounced.  For example, data in relation to gender balance in senior patent positions in 14 of the largest private practices in Australia  shows that females account for on average just over 16%.  Moreover, examining gender representation at senior patent levels of some of Australia’s individual IP firms (Figure 7 and Figure 8), and we see Fisher Adams Kelly Callinans accounts for 0% senior female practitioners, Davies Collison Cave 3%, and ASX-listed holding companies IPH and Qantm IP only 15% and 5%, respectively.

(Data extracted from Registers of Patent and Trade Mark Attorneys on the website of the Professional Standards Board for Patent and Trade Mark Attorneys, December 2016, www.psb.gov.org [accessed: 30 December 2016], associated web searches, and including websites of DCC, Freehills, Sprusons, FAKC, Pizzeys, Cullens, Griffith Hack, Shelston, Watermark, FB Rice, Allens, POF, Madderns, Wrays [accessed January – March 2017]).

Compare this with female representation in more junior positions, as shown in  Figure 9 and Figure 10.  On average in these organisations, women occupied 16.83% (n=196) of senior positions, compared with an average 44.77% (n=158) in more junior roles.  Clearly a disparity exists between representation at junior and senior levels.

Indeed, in examining these statistics, stark relationships become apparent.  For example, statistically speaking there are twice as many senior patent positions occupied in Davies Collison Cave by men named William, than all of the senior women in patent positions in that organisation.

Whilst it is arguable that this disparity merely reflects the timeline of the promotion pipeline, this is also not consistent with the historical statistics, unless it is contended that promotion to partnership or principal takes more than 15 years following registration (female representation among all registrants in 2001 was 16.6% – largely equivalent to the private practice senior leadership average described above).

In any event, whilst these results may be suggestive of a form of “glass ceiling”, research in relation to the legal services industry also shows that low number of females in senior positions has a causal impact on retention of junior operators.[i]  Other potential causes for the lack of gender balance across the industry and in senior leadership are discussed in future posts, including explicit and implicit biases, and cultural influences.

Nevertheless, the myth that proportional representation is just a matter of time, either in terms of the overall industry and/or in senior positions, is not supported by the facts.

Myth 2: There aren't enough qualified women

A further myth relates to the dogma that patent attorney gender imbalance is a direct result of gender imbalance in graduates obtaining the necessary Science, Technology, Engineering, Mathematics (STEM) qualification for registration.

However, a completion count by year by gender by field of education for STEM subjects “Natural and Physical Sciences”, “Information Technology”, and “Engineering and Related Technologies” shows that gender splits have been largely static from 2001 to 2015, see  Figure 11.

Considering the upwards trend of women in the profession in general, as demonstrated in Figures 1 and 2 – counter that with the largely static completion rates and it is apparent not only is there no causal relationship between STEM graduates and gender representation among patent attorney registrations – there is no apparent correlation.

Nevertheless, there is certainly an argument to be had that without intervention at the University level (and perhaps below) – it may be difficult for the patent attorney profession to realise gender balance in the future.  However, it is important to point out that the dearth of females – particularly in senior patent positions in private practice where levels are below 17% – cannot be attributed solely to a lack of STEM qualified women.

(Data obtained from Department of Education and Training, Australian Government, Higher Education Statistics – uCube, http://highereducationstatistics.education.gov.au/ (accessed 21 January 2017).  Completion count by year by gender by field of education for fields Natural and Physical Sciences, Information Technology, and Engineering and Related Technologies.)

Myth 3: What's the problem?

Within the context of the patent attorney industry, despite the obvious disparity between male and female registrations, it is not uncommon to encounter the viewpoint that denies imbalance.  Such defence of the status quo – however imbalanced – is in itself a matter of extensive research, as outlined herein.

Sociological research supports the fact that people are destined to defend the status quo as fair and legitimate.  Indeed, the term “injunctification” is defined as a confirmatory bias which emphasises the status quo as the ideal.  For example, researchers from the University of Waterloo in Canada describe this motivation “to see the way things are as the way they should be” as a driver for inequality and discrimination.[ii]   In particular, they describe that when norms are placed under threat, there exists a tendency to increase justification for the status quo.

In one study, these researchers looked at the Canadian workplace and gendered representation in business.  Participants were exposed to one or two “status-quos” relating to gendered representation of CEOs in the Canadian workplace; 95:5 male/female; and 55:45 male/female.  A number were then provided with a “system threat” – which in this case was ostensibly a foreign-authored news article critiquing a social/economic downturn in Canada.  The study found that participants exposed to the low-female CEO status-quo and the system threat were much less likely to agree that there should be greater female representation in business, and moreover, were more likely to rate the female experimenter as less likeable and less competent.

Thus, whilst generally speaking gender representation in the patent attorney industry is underreported, this is likely the consequence of injunctification, and the tendency to hyper-defend any perceived challenge or “threat”.  Indeed, under threat, such myths as those described above are commonly posited in defence – in an apparent justification of the imbalance clearly present in the industry.

Summary

Thus, with three commonly purported myths regarding gender balance among patent attorneys in Australia debunked – and the business case for change made – where do we go from here?

Acknowledging the business opportunities and recognising that an issue exists which cannot simply be passively addressed through the passage of time is the first step.  The next question is what are the possible causes of the apparent glass ceiling and revolving door, and how can they be pro-actively addressed.

Stay tuned for the remaining parts in this series...

… or catch up on parts you have missed.

Causes

Details the more insidious causes for the imbalance (backed by evidence!)

Opportunities

On a brighter note – details evidence-based opportunities to redress the imbalance.

Business case

Click here to catch up on Part 1 and the business case for gender balance!

Selected references*

[i] Bohnet, I. “What Works: Gender Equality by Design”, The Belknap Press of Harvard University Press, Cambridge Massachusetts (2016), p211, citing research from McGinn and Milkman.

[ii] Kay, AC, et al. “Inequality, Discrimination, and the Power of the Status Quo: Direct Evidence for a Motivation to See the Way Things Are as The Way Things Should Be” American Psychological Association (2009) 97 (3) 421-434.

* For a more comprehensive list of reference, please contact us.

Published: 18 July 2017

The European Unitary Patent Is Coming…

And why you should take notice

At innofy we live and breathe innovation. And we like to do things differently. That is why we really can’t wait for the imminent introduction of the European Unitary Patent.

As fully explained in the Agreement on a Unified Patent Court (UPCA), the Unitary Patent is the innovative initiative from the European Patent Office (EPO) that will supplement and improve the existing centralised European patent granting system. This is great news for clients looking to commercialise their inventions internationally, offering patent owners a cost-effective option for patent protection and dispute settlement across Europe. We are excited by this change.

It is a common misunderstanding that successfully navigating European examination is rewarded by a European Patent. This regularly leaves patent owners surprised and disappointed to learn that their celebrated patent grant by the EPO precedes the onerous and costly European patent validation process. On top of this, once the patent has progressed through the EPO, annual renewal/maintenance fees become due for each European country that is selected for validation.

The Unitary Patent will provide an attractive alternative to the partially streamlined conventional European system. Excitingly, it will make the patent procedure in Europe much simpler and more cost effective.

The Current System for Obtaining Patents in Europe

Although the EPO facilitates a streamlined process for filing and examination of patent applications across EPC Member States, after patent grant patents must be validated and maintained individually in each country where they take are effect. This is a complex and potentially very costly process as each individual country has independent validation requirements – including an assortment of translation costs, validation fees, and overseas agent fees. The costs often become substantial and are dependent on the number of countries chosen in which to validate the European patent.

How will the Unitary Patent work?

The European regional phase entry system, examination and acceptance procedures are expected to operate exactly as they currently do. That is, there will be no change to any of the pre-grant processes (which are already centralised by the EPO). After patent grant, however, patent owners will be given a choice to:

  • request unitary effect – thereby getting a Unitary Patent which provides uniform patent protection in up to 26 European Member States; or
  • request national validation in each European Member State, consistent with the current approach.

What Countries Are Included in the Unitary Patent?

There are currently 28 countries in the European Union. However, Spain, Poland, and Croatia have refused to take part. The 25 Member States who have signed the Unitary Patent Court Agreement (UPCA) are:

AustriaBelgiumBulgariaCyprusCzech Republic
DenmarkEstoniaFinlandFranceGermany
GreeceHungaryIrelandItalyLatvia
LithuaniaLuxembourgMaltaNetherlandsPortugal
RomaniaSlovakiaSloveniaSwedenUnited Kingdom

Despite the Brexit vote, the U.K. have been vocal in their support of the Unitary Patent, and have stated they do not wish their imminent exit from the European Union to detract from getting the system up and running.

When Will The Unitary Patent Become Available?

It’s been a long road, but it looks like the finish line is near. The Unitary Patent system will be brought into force when at least 13 Member States (that must include Germany, France and the U.K.) have ratified the Agreement. As of July 2017, 11 Member States have ratified (including France). Therefore – the world is waiting on only the U.K. and Germany to ratify the Agreement.

The U.K. recently presented Parliament with a draft of the remaining piece of secondary legislation required for ratification. Things are not quite as straightforward in Germany, however, with ratification of the UPCA currently on hold (despite already being passed in Parliament) because of a legal challenge to the constitutionality of the legislation enabling ratification.

Italy, Slovenia and Lithuania are reportedly on the verge of ratifying the UPCA – suggesting that, on launch the Unitary Patent will likely encompass between 15-20 countries (as the U.K. and Germany are non-negotiable).

It’s expected that all the required ratification will be completed in 2017, meaning the Unitary Patent may become available early next year.

The Unitary Patent: Improving simplicity and lowering costs

Why are we so excited by the Unitary Patent?

  • The EPO will be a “one-stop-shop” for European patent rights;
  • No additional fees will be due for the filing and examination of the request for unitary effect or for registration of a Unitary Patent;
  • Post-grant translations will no longer be required (after a six-year transitional period);
  • An end to the fragmented renewal fee system, as renewal fees are combined into a single procedure, currency and deadline;
  • EPO has announced “very competitive” renewal rates (especially for the first ten years);
  • All processes handled centrally by EPO – not individual Member State patent offices;
  • A uniform level of protection will be effected in each European Member State – substantive law governing patent infringement is harmonised in the Agreement of a Unified Patent Court.

The advantages of the Unitary Patent are clear. However, every situation should be considered on an individual basis and a Unitary Patent may not necessarily always be the best solution to obtaining your European patent rights. For example, one potential negative of the new system is that it presents a single point for revocation of your rights in Europe, as opposed to each European national patent being independent from one another. Please contact us to discuss the best route to obtaining patent protection in Europe for your technology.

The Unitary Patent system is currently expected to start in the first quarter of 2018. Naturally, we will keep you updated as soon as any further news is released.

Where are the female patent attorneys?

Part 3: What does the evidence say about causes?

This is the third part in our series exploring gender imbalance in the patent attorney profession here in Australia.  (Click here if you missed out on Part 1, or Part 2).

In these modern times, it may be difficult to imagine the causes behind the apparent glass ceiling, and revolving door, particularly within the private practice.  However, the latest organisational and anthropological research provides a number of insights, including unconscious bias, a perceived lack of fit within senior positions, and cultural and explicit biases.

Unconscious Bias

One of the most famous experiments in relation to unconscious bias involved Howard and Heidi Roizen: both highly successful venture capitalists, entrepreneurs, and highly proficient in networking.[1]   Harvard Business School students participating in the experiment were randomly assigned to each persona, rating Heidi or Howard in terms of likeability, competence, and effectiveness.  The results were stark.  Whilst Heidi and Howard were generally both considered competent, Heidi was rated less likeable and fewer students were prepared to work with her.  Combined with many other studies, is it apparent that women in business face a trade-off between perceived likeability and competence; that is, women may be seen to have one, but never both, traits.[2]

Translating to the patent attorney context, this pervasive form of unconscious bias can go some way to explaining the dearth of women in the industry.  It presents a Catch-22 situation, particularly in organisations with opaque promotion processes which evaluate “competence” and “cultural fit” (read “likeability”): female attorneys perceived as competent are less likeable, whereas females who are likeable fail to “exhibit” the requisite competence. However, unconscious bias and the notion of the ideal patent attorney (i.e. stereotypical patent attorney) as male is not limited to the likeability-competence paradox.

In fact, relevant to the role of a patent attorney is the unconscious bias that scientific ability is related to gender.  A study by Reuben et al in which participants were required to hire a candidate to perform an arithmetic task were twice as likely to hire a male when only presented with information related to the candidate’s appearance (which made gender obvious), and that this discrimination was pervasive even in the face of self-reported results on previous arithmetic tasks.[3]  As a patent attorney is required to possess and indeed exhibit, a high level of scientific ability, there can be no doubt that the perception that such an ability is a predominantly male characteristic negatively impacts female practitioner outcomes.  Consequently, it is posited to effect the promotion of females in the industry, as well as client attraction and retention rates – which in turn also influence female career mobility.

Other experiments relating to unconscious bias show that women are more strongly penalised for making mistakes when they are in counter-stereotypical roles,[4] women suffer when they exhibit a display of emotion in the workplace whilst men benefit from similar behaviours,[5]  among many others.

Accordingly, when viewed through the patent industry lens, a traditionally male-dominated and conservative industry, it is clear that unconscious bias alone places females on a tilted playing-field.  Indeed, such unconscious bias is also pervasive in terms of a perceived lack of fit of females within senior positions in the industry.

Perceived lack of fit within senior positions

Perceptions of fit within senior positions can be both held by the individual, and held by the organisation, or promotional group/committee, and both appear to influence imbalance in the patent industry in Australia.

In terms of the former, an individual can self-select out of a career trajectory based upon the prevalence (or lack thereof) of similar role models with senior ranks.  In the case of females within the patent attorney industry, those occupying senior positions provide counter-stereotypical role models, that is, role models which run counter to the normal stereotypical male attorney.  A dearth of counter-stereotypical role models, for example as shown in the statistics in Part 2, is proven to contribute to this form of self-motivated attrition.[6]   Indeed, in less diverse workforces, minorities are more likely to leave.[7]

Self-selection can also be influenced by phenomena such as tokenism and “gender hierarchy threat”.[8]  For example, tokenism, that is the existence of fewer than a “critical mass” of females within a workgroup, can be more damaging than a heterogenous male group.[9]   One explanation for this can be found in research conducted by Hoyt and Simon, whose findings showed that women exposed to high-achieving females exhibited lower self-perceptions and leadership aspirations.[10]

Moreover, there is an entrenched notion that there simply aren’t enough women with the “strengths” or who have attained sufficient “merit” to warrant promotion.  This is where the lack of fit for female attorneys within senior ranks can be perceived negatively during promotion.  Such a notion, however, needs to be examined with care, as the term “merit” is often defined as including some opaque form of “fit”; or as once eloquently put by an industry professional: a “no d*#^-heads policy”.  As Dr Jennifer Whelan (Melbourne Business School) states “[d]iscrimination is actually integral to a meritocratic system. A merit-based system discriminates on the basis of how much “merit” a person has – assuming the pre-condition that everyone has equal opportunity to acquire it – and favours those who have more of it. Or more precisely, are perceived to have more of it. This is where the trouble starts. How are perceptions of merit shaped and influenced?”.[11]

Consider also, the attitude that women do not fit in the upper positions of private practice because “… women just don’t bill”.  Researchers of the Wharton School investigated such an issue in relation to two of the largest stockbroking firms in the United States.[12]  Women earned significantly less than men in commission based sales which prima facie “established” that women simply didn’t sell as much.  However, an in-depth analysis of personnel histories, trading and asset records, tested against a multitude of hypothesis revealed that in fact – that there was no difference in productivity.  The sole reason was “women were given worse-performing accounts … when women were given more valuable accounts, the gender gap in performance disappeared”.[13]

Indeed, recent research supports such a “meritocracy paradox”; that is, organisations at pains to emphasise meritocratic promotion and incentive schemes are actually more implicitly biased.  A study by Castilla and Benard showed “managers in that organization [with an organisational culture that promotes merit over one which does not] may ironically show greater bias in favour of men over equally performing women in translating employee performance evaluations into rewards and other key career outcomes”.[14]

Accordingly, a subtle but harmful bias that women do not “fit” within senior patent positions is also posited to contribute to the continuing imbalance experienced in Australia.

Cultural and explicit bias

Whilst unconscious biases and perceptions play a large part in gender imbalance, one cannot ignore the prevalence of cultural and explicit bias within the industry.

As mentioned above, the concept of “merit” assumes a level-playing field where everyone has access to the requisite opportunities necessary to succeed.  One such opportunity is the access to informal networks required within the industry to attract and retain clients, access employment opportunities and promotion.  However, (rightly or wrongly) given that women are ultimately still responsible for the majority of caring in Australian society (children and the elderly),[15] it is simply not reasonable to expect that they will have the same access to informal networks and networking opportunities conducted after hours.  Moreover, as informal networks are established primarily upon the premise of “likeability”, women tend to be excluded in view of the likeability-competence paradox discussed above.  Furthermore, the World Economic Forum describes the innate preference of an individual to gravitate towards “people like them”, another reason women find it difficult to access informal networks within the industry.[16]

Certainly an underreported and unspoken issue in the industry is “everyday sexism”[17].  In her lecture to the London School of Economics, Laura Bates describes “everyday sexism” as the trivialisation and normalisation of sexism in terms as banter, jokes, and culture.[18]  As this type of culture is not typically reported, it is difficult to quantify in terms of the patent attorney industry in Australia.  However, suffice to say Bates has accumulated an overwhelming body of evidence which cuts through industries, workplaces and jurisdictions in her “Everyday Sexism Project”.  Therefore, one can only be naïve to assume that a male-dominated industry such as the patent industry, would be immune.  Indeed, such a culture has the effect of alienating counter-stereotypical role models, where present, and contributing to female attrition rates.

In any event, the combination of unconscious bias, perceived lack of fit, and cultural and explicit bias, present significant barriers to the female patent attorneys wishing to reach seniority in Australia.  Accordingly, it is undeniable that the profession does not exhibit a level playing field.  Nevertheless, interventions at the organisational level present an opportunity to realise tangible change – something we discuss in our next and final part in this series.  

Stay tuned for the remaining parts in this series...

… or catch up on parts you have missed.

Opportunities

On a brighter note – details evidence-based opportunities to redress the imbalance.

Business case

Click here to catch up on Part 1 and the business case for gender balance!

Myths

Click here for Part 2 which debunks some of the most commonly purported myths.

Selected References

[1] McGinn, K and Tempest N, “Heidi Roizen” (Harvard Business School Case Collection, January 2000, Revised April 2010) http://www.hbs.edu/faculty/Pages/item.aspx?num=26880.

[2] Iris Bohnet, What Works: Gender Equality by Design, (The Belknap Press of Harvard University Press, 2016) 24.

[3] Reuben et al. “How stereotypes impair women’s careers in science” (2014) Proceedings of the National Academy of Science of the United States of America 111(12), 4403-4408.

[4] Brescoll, Victoria L., Erica Dawson, and Eric Luis Uhlmann. “Hard Won and Easily Lost The Fragile Status of Leaders in Gender-Stereotype-Incongruent Occupations.” Psychological Science 21.11 (2010): 1640-1642.

[5] Brescoll, Victoria L. and Eric Luis Uhlmann. “Can an angry woman get ahead? Status conferral, gender, and expression of emotion in the workplace.” Psychological science 19.3 (2008): 268-275.

[6] Bohnet, n 2.

[7] McGinn, Kathleen L., and Katherine L. Milkman. “Looking Up and Looking Out: Career Mobility Effects of Demographic Similarity among Professionals.” Organization Science 24, no. 4 (July–August 2013): 1041–1060.

[8] Bohnet, n 2, 29.

[9] Bohnet, n 2, 231.

[10] Hoyt, Crystal L., and Stefanie Simon. “Female Leaders Injurious or Inspiring Role Models for Women?.” Psychology of Women Quarterly 35.1 (2011): 143-157.

[11] 30% Club Australia “Barriers to Progression” quoting Dr Jennifer Whelan, Senior Consultant at Serendis Leadership at Melbourne Business School. https://30percentclub.org/assets/uploads/barriers_to_progression.pdf.

[12]  Janice Fanning Maddern. “Performance-Support Bias and The Gender Gap Among Stockbrokers” Gender & Society 26 (2012) 488-518.

[13] Bohnet, n 2, 109.

[14] Castilla and Benard, “The Paradox of Meritocracy in Organisations” (2010) Administrative Society Quarterly 55(4), 543-676.

[15] Australian Bureau of Statistics. Disability, Aging and Carers Australia: Summary of Findings, 2003. Canberra Australia: Australian Bureau of Statistics; 2004 September 15. Cat. No. 4430.0. Available from: http://www.abs.gov.au/AUSSTATS/abs@.nsf/DetailsPage/4430.02003?OpenDocument.

[16] World Economic Forum, Ibarra, H. “Why strategic networking is harder for women”. https://www.weforum.org/agenda/2016/04/why-strategic-networking-is-harder-for-women/

[17] Bates, L. “Everyday Sexism”, Simon & Schuster UK (2015).

[18] Bates, L “Everyday Sexism”, London School of Economics Podcast, 12 October 2016.

Published: 27 July 2017

Where are the female patent attorneys?

Part 4: Opportunities for change

This is the fourth and final part in our series exploring gender imbalance in the patent attorney profession here in Australia.  (Click here if you missed out on Part 1, Part 2, or Part 3).

Accepting that the current playing field for female patent practitioners is not level, on the basis of the overwhelming evidence outlined in Parts 2 and Part 3, one may question whether there is anything which can serve to redress the imbalance.  In this regard, research abounds in relation to affecting change on an organisational level using evidence-based behavioural interventions, rather than traditional set-and-forget training schemes and ineffectual diversity committees.

Unconscious Bias Training and Generic Diversity Committees Don't Work

Research has shown that providing unconscious bias awareness and other diversity training has negligible, and in some instances, negative effects.[1]  Moreover, even when senior executives acknowledge the importance of diversity, unfortunately this rarely translates into action;[2] namely, the intention-action gap.  Rather, evidence-based organisational design initiatives that attempt to circumvent unconscious bias and level the playing field are exhibiting promising outcomes.

A motivating example is found in the blind audition experiment published in 2000.  Symphony orchestras in the US had until the 1970s suffered from lack of female players.  In the 1970s and 1980s, many adopted “blind audition” processes where candidates’ identities (and hence genders) were masked behind a screen.  Analysis of the collated data attributed a 25 percent increase in females in symphony orchestras in the US simply to the fact that gender could not be discerned from behind the screen.[3]

In terms of the modern workplace, behavioural design initiatives for levelling the playing field, akin to the “blind audition”, can be adopted in relation to hiring and promotion, capacity building, goal setting and accountability, encouraging sponsorship networks, and the like, many of which include techniques which are “low-hanging fruit”.

Hiring and Promotion

In terms of hiring and promotion, the latest research suggests that the joint evaluation of potential candidates can overcome inherent biases.  In one study, candidates were required to hire hypothetical male or female candidates for a traditionally male task relating to STEM, and a traditionally female task relating to word processing.[4]  When candidates were assessed individually, males were more likely hired for the male task and females for the female task, irrespective of performance (or indeed underperformance).  However, when joint evaluation was adopted “not only did the gender gap vanish completely, but basically all evaluations now chose the top performer”[5].  Another suggestion for hiring and promotion includes instituting structured interviews to evaluate candidates, obviating the propensity to assess more subjective criteria such as “cultural fit”, which are strongly linked with bias.[6]

Capacity Building

Capacity building focusses on targeting women with sustained leadership training, goal setting and follow up, rather than simply providing generic leadership programs.  Indeed, in her book “What Works: Gender Diversity by Design” Professor Iris Bohnet states that “[a]ll available evidence points to the importance of training programs that go beyond educating people to building their capacity as well – [l]earning to do something is different, and less desirable, that being supported in how you are achieving something”.  This sentiment is echoed in other corporate research which states that capacity building among female talent is one of the top three predictors of greater gender balance in an organisation.[7]

Goal Setting and Accountability

Goal setting and accountability is one of the most underutilised, and yet most effective, tools for realising change in gender inequality.  When setting goals, research supports ensuring that longer term goals are supplemented by smaller, interim, achievable goals or targets.[8]  Moreover, public accountability for achieving tangible goals is particularly important in attenuating unconscious bias.[9] Such goal setting and accountability helps bridge the intention-action gap.[10]  For example, a McKinsey study found one of the most important measures in predicting organisations with higher proportion of senior women executives was visible, public monitoring from a CEO-level.[11]

Quotas - It's Not a Dirty Word

Another evidence-based recommendation is the institution of quotas for senior positions, a powerful form of goal setting.  One of the most overused arguments against quotas is that they are not “fair” as they obviate “merit”.  As discussed above, the notion of “merit” is not a level playing field.  Moreover, quotas create more counterstereotypical role models; a phenomenon which itself is instrumental in the attraction and retention of more minorities.  Simply stated, research shows that “seeing is believing”,[12] and quotas provide a very powerful tool to ensure senior female role models are “seen”.

Sponsorship and Mentorship

Sponsorship and mentorship between junior and senior practitioners in other corporate environments has also proved powerful in predicting the mobility of women in organisations.[13]  In the patent practice context, intra-organisational mentoring programs could be adopted, together with an inter-organisational mentoring network, for example, by an industry body such as IPTA.  Studies have shown that the more active the relationship, in terms of championship rather than a more ad-hoc arrangement, the more impact mentoring can have in terms of redressing imbalance.

Comparative Rankings

Other recommendations which are borrowed from the realm of behavioural economics include publishing gender rankings among organisations within the industry.  Research in this area has shown that comparative rankings can be highly influential in motivating changes in behaviour.[14]  The collation and publishing of such statistics could be adopted by the professional standards body, the Trans-Tasman IP Attorneys Board, or indeed IPTA.

Combating Explicit Bias

Combating the influence of everyday sexism is a more difficult proposition.  Particularly where the individual is vulnerable to backlash and victimisation, as a more junior member of the profession.  Nevertheless, however “trivial”, Bates describes the need to speak out against every incidence in order to stop the normalisation of such a “culture”: “Inequality is a continuum, with the minor and major incidents irrevocably related to one another as the attitudes and ideas that underlie one allow the other to flourish”[15].

Furthermore, senior members of the profession should look to set an example.  Evidence explicitly shows that imposing a norm of political correctness enhances creativity in mixed-sex groups, including “increas[ing] the exchange of ideas by clarifying the rules of engagement and providing assurance to those, predominantly women, for whom speaking up was associated with counterstereotypical behaviour”.[16]

A Call to Arms

Ultimately, these recommendations are not just implementable in private practice.  Influential societies such as IPTA have an exciting opportunity to lead real diversity initiatives.  Additionally, these suggestions should not be viewed as a silver bullet, either individually or collectively.  It is important to emphasise that interventions should be implemented, performance evaluated, and constantly improved.

Summary and conclusions

Given the statistics presented, it is undeniable that gender imbalance within the patent attorney profession exists, and is particularly pronounced at the senior levels in private practice.  Moreover, if males continue to outpace females as new entrants to the profession, and females continue to outpace males in terms of attrition, gender balance will remain unachievable.  Furthermore, none of these statistics appear to correlate with historical completion rates for women in STEM; a common misconception.  Rather, evidence from many other research studies suggests that the dearth of women in the industry is a more ubiquitous combination of unconscious bias, perceived lack of fit within senior positions, and cultural and explicit biases.

In order to truly address the imbalance, and realise the substantial financial benefits gender balance promises, one must firstly overcome the institutionalised thinking and injunctification that the status quo is the “way things should be” (particularly in view of the “threat” this research may exhibit).  In fact, many of the interventions presented here are relatively low-hanging fruit, including tweaking hiring and promotion processes, adopting mentoring and capacity building programs, instituting politically correct norms, and the like.

In summary, the patent attorney industry in Australia is poised at a crossroad.  One fork leads inevitably to the perpetuation of gender imbalance – unfortunately, the passage of time will not heal all ills.  The other fork, however, presents an exciting opportunity – to exhibit transformational leadership and innovation in terms of redressing the significant gender imbalance in the ranks, and the consequent realisation of substantial business gains.

This is the final part in this series...

… but feel free to catch up on parts you may have missed.

Business case

Click here to catch up on Part 1 and the business case for gender balance!

Myths

Click here for Part 2 which debunks some of the most commonly purported myths.

Causes

Details the more insidious causes for the imbalance (backed by evidence!)

Selected references

[1] See, eg, Kalev, A. Dobbin, F, Kelly, E. “Best Practices or Best Guesses?  Assessing the Efficacy of Corporate Affirmative Action and Diversity Policies” American Sociological Review 71 (2006): 589-617; Dobbin, F. Kalev, A. Kelly, E. “Diversity Management in Corporate America”, Contexts 6 (2007): 21-27.

[2] ‘Women Matter: Women at the top of corporations: Making it happen’, McKinsey & Company, 2010.

[3] Goldin, Claudia and Cecilia Rouse. “Orchestrating Impartiality: The Impact of” Blind” Auditions on Female Musicians.” The American Economic Review 90.4 (2000): 715-741.

[4] Bohnet, I, van Geen, A, Bazerman, M. “When Performance Trumps Gender Bias: Joint vs Separate Evaluation” Management Science. September 29, 2015, http:dx.doi.org/10.1287/mnsc.2015.2186.

[5] Iris Bohnet, What Works: Gender Equality by Design, (The Belknap Press of Harvard University Press, 2016), 127.

[6] Bohnet, n 5, 146-164.

[7] McKinsey & Company, n 2.

[8] Bohnet, n 5, 280

[9] Bohnet, n 5, 281.

[10] Kalev et al “Best Practices or Best Guesses? Assessing the Efficacy of Corporate Affirmative Action and Diversity Policies” American Sociological Review 71 (2006) 589-617.

[11] McKinsey & Company, n 2.

[12] Bohnet, n 5,201-219.

[13] McKinsey & Company, n 2.

[14] Allcott and Rogers “The Short-Run and Long-Run Effects of Behavioural Interventions: Experimental Evidence from Energy Conservation” American Economic Review 104 (2014) 3003-3037.

[15] The Independent “Book Review: Everyday Sexism by Laura Bates” Sturges, F (2014) http://www.independent.co.uk/arts-entertainment/books/reviews/book-review-everyday-sexism-by-laura-bates-9264664.html, quoting Laura Bates.

[16] Sturges, n 15 citing research from Goncalo et al “Creativity from Constraint? How the Political Correctness Norm Influences Creativity in Mixed-Sex Work Groups” Administrative Science Quarterly 60 (2015): 1-30.

Published: 3 August 2017

Diagnostics Inventions in the US: The Situation Worsens…

On 4 August 2017, the United States District Court handed down another decision to dishearten the biomedical sector. The U.S. judiciary are sending a constant message that diagnostic methods based on a natural law or principle are not to be considered as patent eligible subject matter.

Introducing the parties and their arguments

The Plaintiffs (the patent owners) in this case are Athena Diagnostics, Inc, Isis Innovation Limited (rebranded as Oxford University Innovation), and Max-Plank-Gesellschaft zur Forderung de Wissenschaften e.V., and are collectively referred to herein as “Athena”.  The Defendants (the alleged infringers) are Mayo Collaborative Services, LLC (doing business as “Mayo Medical Laboratories“), and Mayo Clinic – which for the purposes of this article, are collectively referred to as “Mayo”.

Specifically, Athena were alleging that Mayo had developed two diagnostic tests that infringe on the Athena patent – U.S. Patent No. 7,267,820 (“the ‘820 patent”). Mayo’s defence: the ‘820 patent is invalid under the famous 35 U.S.C. section 101, because the claimed method merely applies routine and conventional techniques to a law of nature. Accordingly, the present case specifically considered a Motion to Dismiss the pending infringement case on the basis that the patent is not valid.

The '820 patent

The patent-in-suit is directed to the diagnosis of Myasthenia Gravis, a chronic autoimmune disorder. Symptoms include waning muscle strength throughout the day, eye weakness (e.g., drooping eyelids), leg weakness, dysphagia, and slurred or nasal speech.

The inventors of the ‘820 patent found that 20% of Myasthenia Gravis patients lack acetyle choline receptor (AChR) autoantibodies, and instead have IgG antibodies that bind to the N-terminal domains of muscle specific tyrosine kinase (MuSK), a receptor that is located on the surface of neuromuscular junctions. Advantageously, the methods disclosed in the patent specification provide a more accurate and speedy diagnosis of these 20% of Myasthenia Gravis patients.

The ‘820 patent is therefore directed to a method for diagnosing Myasthenia Gravis using a radioactive label attached to MuSK (or a fragment of MuSK) – which is then introduced into a sample of bodily fluid. In particular,125I-MuSK is introduced into the bodily fluid, the MuSK autoantibodies, if present, attach to the labeled fragment. Once precipitating the bodily fluid, the presence of radioactive label on any antibody indicates that the person is suffering from Myasthenia Gravis.

Mayo's Motion to Dismiss

Although Athena put forward the case that Mayo was infringing their patent – this isn’t the subject of this article (or really, this decision) and accordingly is not discussed here. More interestingly – Mayo opines that the infringement complaint should be dismissed “on the ground that the patent seeks to patent a law of nature, and it uses techniques standard in the art.

As one might expect, Athena disagrees with the assertions of Mayo – responding that the patent requires the production and use of a fluorescently labelled protein, 125I-MuSK (which, of course, is not naturally occurring). In addition, Athena comments that various procedures are applied to the non-naturally occurring protein which are sufficient to “transform the claim” and thus make it patent eligible.

The Test For Patent Eligibility

In the U.S., it is well established that a threshold standard for patent protection is that the subject matter of a patent must be patentable under Section 101. Otherwise, the patent is invalid. The highly discussed Alice Corp v CLS Bank, and Assoc. Mol. Pathology v Myriad Genetics Supreme Court decisions have determined that Section 101 contains implicit exceptions to:

  • Laws of nature;
  • Natural phenomena; and
  • Abstract ideas;

which are all patent ineligible.

The U.S. Patent and Trademark Office are currently applying a two-step method for assessing patent eligibility, as set out in the controversial Mayo v Prometheus decision.

Step 1: Are Claims Directed to a Patent Ineligible Concept?

Although the ‘820 patent describes the formation of of a complex between a man-made chemically-modified version of MuSK, with the patient’s own autoantibodies – resulting in the creation of a specific complex that does not occur in nature, the Court have determined this to be insufficient to render the subject matter eligible.

In arriving at this finding, the Court highlights that the ‘820 patent claims only define a method for diagnosing a disease – and not the man-made chemical entity per se. Allegedly, the focus of the claims of the invention is the interaction between the 125I-MuSK and the antibodies within the bodily fluid, and this interaction is naturally occurring. Because the claims focus on the natural occurrence, it is directed to a patent-ineligible concept.

Step 2: Does the inventiveness of the claim make it patent eligible?

Should a patent fail part one of the Section 101 analysis – it proceeds to step two. That is, the patent can be upheld if the method contains an “inventive concept“.

In this case, Mayo argued that the ‘820 patent should also fail step two, because merely identifying the presence of autoantibodies to MuSK is not an inventive concept, as the techniques for doing so are well established in the art. The Federal Circuit have previously advised that “more is required than well-understood, routine, conventional activity already engaged in by the scientific community(see, CellzDirect, 827 F.3d at 1047).

Mayo draws support from the ‘820 patent itself, which teaches that: “iondination and immunoprecipitation are standard techniques in the art, the details of which can be found in references (4 and 6)“. References 4 and 6 were published in are dated 1976 and 1985, respectively.

Athena disputed Mayo’s allegations on the basis the the step of detecting autoantibodies was neither well understood nor routine. Additionally, the step of contacting MuSK or a MuSK epitope with a suitable label was highlighted as being novel. Athena further opined that in light of the complexity of protein molecules, getting known iodination methods to work specifically with proteins, is not routine.

Unfortunately for Athena, the Court did not accept their arguments – because the specification appeared wholly silent on any of the complexity of the steps that Athena alleged were neither well-known nor standard. It is well established that a patent specification must contain a written description of the invention, and the manner and process of making and using it, “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains” could make or use it. Therefore, in the absence of the features that allegedly make the invention – the specification clearly fails to meet this requirement.

Mayo, Ariosa and now Athena: the trend continues...

The Supreme Court started the wrecking ball on diagnostic inventions back in 2012 in the Mayo v Prometheus decision. As discussed in intricate detail elsewhere, the Prometheus patent was directed to a diagnostic test which measured how well a person metabolized thiopurine drugs. Despite the test involving a patient being administered with the drug 6-thioguanine before measuring the level of the drug in the patient’s blood stream – the Court held that claimed method was no more than the observation of a law of nature!

Simply put, the Court asserted that the necessitation of human action (i.e., the administration of a thiopurine drug) to trigger the reaction – the reaction itself was not a human action – and accordingly not patent eligible. The methods merely measured how effectively a person metabolizes the drug – an “entirely natural process“.

The Decision of the US Court of Appears for the Federal Circuit in Ariosa v Sequenom added fuel to the fire. There was no doubt that the innovative technology solved a huge market need – the patent was directed to a method of using fetal DNA to diagnose certain conditions. Quite amazingly, the inventors found that cell-free fetal DNA was present in maternal plasma and serum – a portion of the maternal blood sample that other researchers had previously discarded as medical waste – and from the tiny fraction of paternal cell-free fetal DNA the inventors could determine certain inherited characteristics. The claimed method encompassed methods of isolating and amplifying the DNA to provide a greater efficiency in diagnosis of genetic defects.

However, it was the view of the Court that “the only subject matter new and useful as of the date of the application was the discovery of the presence of cffDNA in maternal plasma or serum“. This statement appears flawed – at least in part because the patent claims were not directed to the cffDNA per se – but to a new and incredibly inventive diagnostic method that only became possible after the discovery of the cffDNA. It’s difficult to agree with the decision that such methods, requiring significant human intervention, are based on a natural law or phenomenon – and it sets a terrifying trend as to how far this concept could be extrapolated? If you dig deep enough, could an argument be made that every possible method in the world relates, at some level, to a natural law?

Is there a glimpse of relief?

Moving forward, there appear to be fewer and fewer pegs to hang your hat on with respect to diagnostic method patents. The most prevalent glimmer of hope is vested in the recent Rapid Litigation Management v CellzDirect. The patent considered in this case claimed a method for preserving primary liver cells by re-freezing. This technology was hugely valuable – because hepatocytes naturally have a very short life span (thus could only be frozen once using previous technologies), and can only be harvested from a limited number of donors.

Although in the first instance the District Court believed the claims to be directed to ineligible subject matter, on Appeal the Federal Appeals Court more sensibly found that the claims were not directed to the natural law, but instead to a new and useful method for preserving hepatocytes. Specifically, the Appeals Court found that the invention was not the mere observation or detection of the ability of hepatocytes to survive multiple freeze-thaw cycles, but instead directed to a new and useful method of preserving the cells. Thus – the outcome was a method to produce something useful, and the claims were considered to define patent-eligible subject matter.

This result appears to distinguish over the conclusion arrived at in respect of the ‘820 patent – because the “desired outcome” of the ‘820 patent is the mere detection of MuSK autoantibodies. Allegedly, it does not “produce something useful beyond that diagnosis“. Of course, the counter argument is that the diagnosis itself is hugely useful – as it allows for a more effective treatment regimen to be prescribed to a patient in need. However, it appears that a stance has been set in the  U.S. that they are looking for a biomedical method to result in a material and tangible product (which is certainly a new, and in our view misplaced, consideration with respect to traditional patent law).

Although the future is far from certain, it looks like owners of technology involving diagnostic methods are in for a rough few years with respect to obtaining their U.S. patents. Exceptional care and creativity must be taken when drafting claims directed to diagnostic method technology. For example, one option likely to be positively viewed appears to be to formulate a product that is integral to the working of the diagnostic method.

If you have a diagnostic technology and are looking to explore strategies that can be used to protect your innovation in the U.S. and other jurisdictions, it has never been more important to contact the biomedical technology experts at Innofy now, for an obligation free discussion!

Published: 13 August 2017

Patent Attorneys in Brisbane

Providing Patent Attorney services in Brisbane

Innofy have award-winning Patent Attorneys headquartered in Brisbane.  We provide Patent Attorney services for innovators, by innovators, to clients across the city, greater Brisbane, nationally and internationally.  What differentiates innofy from other Patent Attorneys in Brisbane is the quality of our people and our ability to maximise client value.  We do this by operating in an agile environment, constantly innovating and evolving our practice, collaborating, and providing an upfront flat fee for everything we do!  If you need Patent Attorney services in Brisbane, and you want them done right – talk to us!  What to know more about how we work, then click here.

Our Brisbane Patent Attorneys are here to help

Need a Patent Attorney in Brisbane?  We have specialists in engineering, medical devices, software, start-ups, biotechnology, agriculture, immunology, pharmaceuticals, and much more!  Browse the profiles of our Brisbane Patent Attorneys below.

What people say about Brisbane’s most innovative Patent Attorneys

We believe we offer exceptional Patent Attorney services in Brisbane, Australia, New Zealand and internationally.  However, don’t just take our word for it – see these kind words from others.

Get in touch, we’re here to help

email: info@innofy.com.au
call: +61 (0) 481 355 001
mail: P.O. Box 17, Paddington Q 4064

Innovation Series: What do Cambridge and Innofy have in common? Innovation…

According to the University of Cambridge, Cambridge is Europe’s largest technology cluster. Within the aptly-name “Cambridge Cluster” or “Silicon Fen” are more than 4,700 knowledge intensive firms with a combined revenue of over AU$21 billion per annum .  With nearly sixteen unicorns (companies attaining a valuation over a billion USD), and a publication rate of close to 350 patent applications per 100,000 residents – the Cambridge Cluster has truly earned its reputation as the most innovative hub in Europe.

Determined to work not only with but also as part of some of the world’s best innovators, we will have an innofyer-in-residence at the University of Cambridge for the next year – Dr Katherine Rock.  At innofy – we want to be part of the future world that is being built and integrate with the most innovative start-ups and companies. As well as collaborating with the front-runners in the legal-tech space, Katherine has also been welcomed to take part in further study at the University of Cambridge – to build even stronger foundations for Innofy and thereby finding innovative ways to move the intellectual property industry forward.  Unlike many traditional IP firms, we do not see time spent on further education as conflicting with organisational interests and billable hour targets.    Capacity building and innovation is at the heart of what we do – to ensure that all of our clients receive the best IP advice at the best value!

Over the next twelve months, we will relay innovative insights straight from Silicon Fen – related to Intellectual Property, entrepreneurship, and commercialisation – via our Innovation Series on this blog.

In this initial post, we look at a case study involving an exciting cyber security start-up out of Cambridge… including strategic lessons we can learn from their patent portfolio.

Innovation Insights

Throughout Katherine’s secondment, we will relay on our News Feed innovative insights straight from Silicon Fen. This “Innovation Series” will provide regular posts reporting on the cutting-edge of Intellectual Property, entrepreneurship, and commercialisation. Not to be missed by anyone seriously looking to innovate on a national or global scale!

In this first post, we take a look at a case study involving an exciting cyber security start-up out of Cambridge.  What strategic lessons can be learnt from how they used their patent portfolio to further their commercial goals?

y) which define the legal scope of protection is unlikely to be ascertained for some time.  This may be beneficial for Darktrace as, whilst patent rights cannot be enforced until granted, uncertainty around the potential scope of protection could reduce the risk of competitors being able to successfully develop work-arounds.

Case Study: Darktrace Limited and Patent Filings

Darktrace: a potential unicorn-in-waiting. Innovation commentators believe Darktrace is poised to become not only the next Cambridge company to achieve a billion-dollar valuation. In doing so Darktrace will likely become fastest Cambridge company to attain unicorn status.  Founded in Cambridge in 2013, Darktrace provides “the world’s first operational Enterprise Immune System… [providing] the ability to detect emerging cyber-threats, [and]… to proactively defend against in-progress cyber-attacks.”

A search for published US patent applications (applicant: Darktrace) reveals only three pending US applications at this stage::

  • 20170230392 ANOMALY ALERT SYSTEM FOR CYBER THREAT DETECTION
  • 20170230391 CYBER SECURITY
  • 20170220801 CYBER SECURITY

(No Australian published applications were found.)

The first two US applications are convention applications claiming priority from provisional applications filed in Britain in early 2016.  The latter is a national phase entry from an international PCT application (publication WO2016020660) claiming priority to a British application filed in early 2014.

What does this tell us about Darktrace’s patent strategy?

The answer is… not much (yet!).  There could be a number of reasons for the low number filings.  For example, given the youth of the company, and the relatively recent filing dates of the published applications, it is possible that more published applications will surface in the coming years – bearing in mind that applications are typically published 18 months from the priority date.

Moreover, in a field such as cyber security, there may be advantages in maintaining some IP as trade secrets – particularly if it is not easy to reverse engineer. In situations were maintaining confidentiality is a plausible option, this is often a more effective strategy than patent filings (as well as avoiding significant costs!).  Advantageously, maintaining a trade secret can provide an enduring monopoly (think recipe for Coca-cola) rather than the 20-year monopoly provided by patent protection (not to mention the compulsory public disclosure in the form of publication).

On a final note, it is worth mentioning that the above published applications are unlikely to undergo examination in the US for a number of years.  Therefore, the scope of the granted claims (if any) which define the legal scope of protection is unlikely to be ascertained for some time.  This may be beneficial for Darktrace as, whilst patent rights cannot be enforced until granted, the uncertainty around the potential scope of protection could limit the ability of competitors being able to successfully develop work-arounds.

Watch this space…

For more insights hot of the press from The Cambridge Cluster- stay tuned for the next edition of the Cambridge Innovation Series.

Published: 2 September 2017

Innofy Invited to Present at Ci2017 Asia Pacific

Innofy is proud to be invited to the world-leading Creative Innovation 2017 Asia Pacific Conference taking place in Melbourne, Australia (13-15 November 2017).  We will take the opportunity at the innovation conference to showcase our innovative strategies and technology advances within the intellectual property arena.

Pleasingly, this invitation reinforces Innofy‘s position as Australia’s leader in developing innovative intellectual property strategies and technologies. It is much appreciated recognition that we have succeeded in putting the development of refreshing new business strategies at the heart of our company.

Australia’s Most Innovative Patent and Trade Mark Attorney.

Innofy was founded by some of Australia’s most talented patent and trade mark attorneys, who saw an opportunity to provide a refreshing new approach to the IP services industry in Australia. Not only have Innofy completely updated the way we work through taking advantage of the technology available in the 21st century, but by doing so we know we are able to provide significantly more value our target innovators – start-ups, SMEs and research institutions.

One initiative that sets Innofy apart from traditional IP firms is that all our staff are actively encouraged to get involved in real development programs. This provides our innovators with the freedom to strategise and develop agile solutions to a problems they see or face in the IP industry – or to work on a program within Innofy‘s core development areas.

Creating A Future In Which Artificial Intelligence Will Shine.

The overarching theme of this year’s Creative Innovation conference is “Human Intelligence 2.0 –  Thriving in the Age of Acceleration.” To this end, the event is being dubbed “the premiere conference for anyone who cares about creativity, innovation, leadership, change and transformation.”  The synergies with Innofy are clear.

Andrew Clarke of Innofy will present at the conference, and give an overview of the innovative ways in which Innofy works, as well as the A.I. development projects currently in progress. This presents as a very exciting opportunity to reach a myriad of company directors, leaders and emerging talent from many of Australia’s and the world’s major organisations, major State and Federal Government departments, Universities, and entrepreneurs across all sectors.

Ci2017 Asia Pacific: A Global Award-Winning Event.

Now in its seventh year, Creative Innovation Asia Pacific will play host to over 40 global speakers over three days. Running alongside the main conference are a diverse array of master classes, deep conversations, hot spots, and debates. The conference is set to be a true hot tub of innovation and progressive ideas. Impressively, last year the conference was awarded Corporate Event of the Year in the Global Eventex Awards, Australian Corporate Event of the Year, as well as being ranked in the prestigious Anthill SMART 100.


Will you also be attending Ci2017? Let us know!

If you will be attending Ci2017? If so – please let us know and we would be very happy to take the opportunity to catch up over a coffee, lunch, or beer.

There’s still time to register for Ci2017, and Innofy have been able negotiate a discount on registration for all our our friends and followers. Simply use the discount code password “acceleration” when registering for the event to receive 10% off!

Trade Mark Attorneys In Brisbane

Providing Trade Mark Attorney services in Brisbane

Innofy have award-winning Trade Mark Attorneys headquartered in Brisbane.  We provide Trade Mark Attorney services for innovators, by innovators, to clients across the city, greater Brisbane, Queensland, nationally and internationally.  What differentiates innofy from other Trade Mark Attorneys in Brisbane is the quality of our people and our ability to maximise client value.  We do this by operating in an agile environment, constantly innovating and evolving our practice, collaborating, and providing an upfront flat fee for everything we do!  If you need Trade Mark Attorney services in Brisbane, and you want them done right – talk to us!  Want to know more about how we work, then click here.

Our Brisbane Trade Mark Attorneys are here to help

Need a Trade Mark Attorney in Brisbane?  We have commercial specialists in engineering, medical devices, software, start-ups, biotechnology, agriculture, immunology, pharmaceuticals, and much more!  Browse the profiles of our Brisbane Trade Mark Attorneys below.

What people say about Brisbane’s most innovative Trade Mark Attorneys

We believe we offer exceptional Trade Mark Attorney services in Brisbane, Queensland, Australia, and internationally.  However, don’t just take our word for it – see these kind words from others.

Get in touch, we’re here to help

email: info@innofy.com.au
call: 1300 805 855  (international: +61 4 02 436 601)
mail: P.O. Box 17, Paddington Q 4064

The End Is Near For Innovation Patents

IP Australia has just released the highly anticipated Exposure Draft of the Intellectual Property Laws Amendment (Productivity Response Part 1 and Other Measures) Bill 2017 (“the IP Laws Amendment Bill). The IP Laws Amendment Bill proposes a number of important amendments, including the awaited abolishing of innovation patents, that span the entire suite of intellectual property Acts currently in force in Australia.

To help you understand exactly what each of the amendments mean for you and your business, Innofy are running a short series of articles highlighting the each of the major changes proposed by the IP Laws Amendment Bill. Make sure that you are up to speed with what you need to consider before and after the amendments take effect.

PART 1. The End Is Near For Innovation Patents

The most significant amendment proposed by the IP Laws Amendment Bill is the abolition of innovation patents (Australia’s “second tier” patent system). We knew this day was imminent since the Australian Government published its response to the Productivity Commission’s inquiry into Australia’s Intellectual Property arrangements. A copy of the Productivity Commission’s report on intellectual property can be read, in full, here.

What You Need To Know.

True to their word, IP Australia are implementing legislation to abolish innovation patents. Importantly, the innovation patent route will still be open to any applications with a priority date earlier than the date the IP Laws Amendment Bill takes effect. Any patent applications filed with a priority date after the implementation date of the IP Laws Amendment Bill, however, will not be eligible for conversion or filling as a divisional application.

Accordingly, should the IP Laws Amendment Bill come into effect, there does not appear to be any immediate rush to file innovation patents from your already pending applications. Pleasingly to patent Applicants, it is proposed that innovation patents will still be available for all applications that were first filed before to the IP Laws Amendment Bill.

However, should you have an invention that may not meet the inventive step requirements of a standard patent, we would encourage the filing of a provisional application as soon as possible to ensure that you achieve the required priority date. This should allow you to convert your standard patent application to an innovation patent, should you need to do so.

Why does Australia have an innovation patent system?

The innovation patent system was originally established to provide Australian small and medium sized enterprises (SMEs) with a quicker and more affordable way to protect their innovations.

What went wrong? The demise of innovation patents.

As a reminder, the Productivity Commission and the former Advisory Council on Intellectual Property (ACIP; disbanded in April 2015) recommended that the innovation patent system be abolished. A copy of the ACIP Report on the innovation patent system can be found, here. Both groups found that the innovation patent system is unlikely to provide net benefits to the Australian community or to the SMEs, who were the intended beneficiaries of the system. The Productivity Commission found that the majority of SMEs who use the innovation patent system do not obtain value from it, and that the system allegedly imposes significant costs on third parties and the broader Australian community.

Given the overall lack of net benefits the Government made the decision to abolish the innovation patent system.

How exactly will innovation patents be abolished?

Importantly, the abolishment of the innovation patent system is not intended to affect any existing rights. The innovation patent system will therefore continue to operate for all patent applications that were filed before these proposed amendments commence. In addition, existing rights to file divisional applications and convert a standard patent application to an innovation patent application will be maintained for any patent or application that was filed prior to the commencement date of the proposed amendments.

Part 4 of the IP Laws Amendment Bill sets out the proposed amendments to the Patents Act 1990 (Cth) which will orchestrate the demise of the innovation patent system. Essentially, the changes are achieved under the legislation by requiring that any innovation patent filed after the commencement date of the IP Laws Amendment Bill must have a priority date for each claim that is before the commencement date.

The first amendment is the introduction of a formal definition to the term “priority date”. Specifically, a priority date is determined in two ways, according to subsection 43(2) of the Patents Act, which provides:

43 (2)  The priority date of a claim is:

(a)  if subsection (2A) applies to the claim–the date determined under the regulations; or
(b)  otherwise–the date of the filing of the specification. 

43 (2A)  This subsection applies to a claim if:

(a)  prescribed circumstances apply in relation to the invention defined in the claim; and
(b)  a prescribed document discloses, or a prescribed set of prescribed documents considered together disclose, the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

If subsection 43(2A) applies to a claim, the priority date is the date determined under Division 2 of the Patents Regulations 1991 (Cth). If subsection 43(2A) does not apply to the claim, the priority date is the date the specification was filed.

As a mechanism to abolish the filing of new innovation patents, a new requirement is introduced into the formalities check for innovation patent applications, as follows:

(3)  It is a requirement of the formalities check that the date of the patent (if granted) would be a date before the day this subsection commences.

Specifically, for an innovation patent to be allowable under the proposed IP Act Amendment Bill the date of the patent application must be earlier than the commencement date of the IP Act Amendment Bill. If the date of the patent would be on or after the commencement of the Bill – the innovation patent cannot be granted.

An additional requirement is proposed to be inserted into section 101B of the Patents Act, which sets out the examination criteria for innovation patents. The new requirement (to be placed after s101B(2)(h)) is proposed to read as follows:

(ha)  each claim in the complete specification has a priority date that is before the day this paragraph commences; and

This will require the Commissioner of Patents to examine and report on whether each claim in the complete specification for an innovation patent has a priority date that is before the commencement date of this the introduction of the Act Amendment.

Finally, another new requirement is to be introduced into section 101E, which sets out the criteria for the certification of an innovation patent. Currently, section 101E requires the Commissioner of Patents to be satisfied of a number of matters before issuing a Certificate of Examination to the patent Applicant. The requirement proposed in the IP Laws Amendment Bill is that the priority date of each claim in the specification of the innovation patent must be earlier than the commencement date of the Bill.

So, when will innovation patents be abolished?

The good news for those hoping to use the innovation patent system with respect to their current provisional applications (or even applications currently proceeding as standard applications) is that the amendments relating to innovation patents will not commence until the day after the end of the period of 12 months from Parliamentary acceptance of the Bill. This lead time is necessary, to ensure that the exiting rights of patent Applicants are maintained. Currently, the timeframe for filing an innovation patent application that claims priority from a provisional application is 12 months, so the 12-month commencement timeframe will ensure that Applicants who filed a provisional application before the Bill takes effect will continue to have the full 12 months in which they may file an innovation patent.

Any Applicant whose provisional application is filed between the introduction of the proposed IP Laws Amendment Bill and the commencement of Schedule 1, Part 4, will have whatever time remains until the commencement to file an innovation patent, but will still be able to make full use of the full 12 months to file a standard patent.

Be aware of the available patent strategies.

If you are interested in filing a patent application for your technology, and believe that the innovation patent route may best suit your purpose, we would strongly recommend that you contact us as soon as possible to ensure that a priority date can be obtained prior the in introduction of the IP Laws Amendment Bill.

Innofy Present at Global Innovation Conference

The intellectual property team at Innofy were recently invited to present at the Global Creative Innovation Conference 2017 in Melbourne, Australia.

Dr Andrew Clarke took the opportunity to discuss how artificial intelligence will likely impact on the legal industry moving forward – as well as what we and some of the most innovative LegalTech companies in the world are doing to position ourselves to take on the future. Innofy is always looking to position itself to take advantage of the new technologies. And in a world of exponential change and rapid globalisation, this makes Innofy the smart choice to assist with obtaining robust patents, trade marks, and other intellectual property rights, that will stand up in the future.

It was great opportunity to catch-up with some of our existing colleagues and friends, as well as meet some new outstanding innovative new companies and people. We are looking forward to catching up with all of you again soon!

opportunities

We have an opportunity in our rapidly growing Brisbane team for a patent attorney

start asap

Start ASAP – it’s permanent full-time

above market

Remuneration $90,000 – $120,000 (incl. 9.5% super)

qualifications

Recently registered or nearly registered patent attorney; BSc/BEng essential and PhD preferred

Do you strive for constant improvement?

Innofy is an incorporated intellectual property consultancy firm, specialising in providing top-tier advice for high technology start-ups and research organisations. Our employee-focussed team-led culture sets Innofy apart from traditional IP firms. We strive for constant improvement.

Since Innofy’s conception – a conscious effort has been made to implement modern business processes and systems that make sense in today’s technology-centric environment. We value innovation, inclusion and knowledge – and our mission is to invent a better way of protecting today’s technology, so innovators can focus on building a better tomorrow.  We are forever striving to improve, and encourage a culture where every individual feels like they have something to contribute.

  • Agile environment.
  • Work with internationally acclaimed attorneys – IAM Patent, WTR 1000 ranked 2018.
  • Team-based approach to work completion.
  • Strongly value suggestions and curiosity.
  • Tailored career progression – we want to help you to realise your goals.
  • Emphasis on diversity and inclusion at all levels.
  • Immersed in the Australian start-up culture.
  • Flexible working conditions.
  • Unlimited holidays.

The ideal applicant

Nearly qualified/recently qualified patent attorney. Knowledge or experience of trade marks is a bonus.

Must have intellectual curiosity. All our employees across all levels are encouraged to ask questions and find the why behind what we do.

Career driven. We will help you get where you want to go.

Get involved in with business practices/operations. We aren’t looking for our next cog in the system.

Like what you see?

Email us!

A bit more about the role…

Stepping into a busy practice with regular patent drafting and prosecution.
Taking a lead role in managing local clients and overseas associates.
Encouraged to implement and improve new processes.
Marketing – particularly with respect to start-up scene.
Delivering IP education as part of River City Labs mentoring program and externally.
International and national travel to industry and technology conferences.
Involvement in oppositions.
Working in teams with lawyers and external service providers and nurturing (and forming new) relationships.

 

 

 

We have an opportunity in our rapidly growing Brisbane team for an IP Specialist

start asap

Start ASAP – it’s permanent full-time

above market

Remuneration $50,000 – $70,000 (incl. 9.5% super)

Experience

at least 2 years experience in IP administration preferred

Do you strive for constant improvement?

Innofy is an incorporated intellectual property consultancy firm, specialising in providing top-tier advice for high technology start-ups and research organisations. Our employee-focussed team-led culture sets Innofy apart from traditional IP firms. We strive for constant improvement.

Since Innofy’s conception – a conscious effort has been made to implement modern business processes and systems that make sense in today’s technology-centric environment. We value innovation, inclusion and knowledge – and our mission is to invent a better way of protecting today’s technology, so innovators can focus on building a better tomorrow.  We are forever striving to improve, and encourage a culture where every individual feels like they have something to contribute.

  • Agile environment.
  • Work with an internationally acclaimed team – IAM Patent, WTR 1000 ranked 2018.
  • Team-based approach to work completion.
  • Strongly value suggestions and curiosity.
  • Tailored career progression – we want to help you to realise your goals.
  • Emphasis on diversity and inclusion at all levels.
  • Immersed in the Australian start-up culture.
  • Flexible working conditions.
  • Unlimited holidays.

The ideal applicant

Experience in IP administration and processes is essential. You will be responsible for managing many IP portfolios and engaging with clients.

Must have intellectual curiosity. All our employees across all levels are encouraged to ask questions and find the why behind what we do.

Career driven. We will help you get where you want to go… whether that’s studying to be a trade mark attorney, or getting involved in managing operations.

Get involved in with business practices/operations. We aren’t looking for our next cog in the system.

Like what you see?

Email us!

A bit more about the role…

Day to day management of large IP portfolios
Taking a lead role in engaging in start-up clients within our ecosystem
Encouraged to suggest, implement and improve processes
Marketing - particularly generating social media content
Manage time of attorneys to ensure tasks are completed in time and on budget
WiT Gala Awards Dinner

On Friday 14th September, our very own Katherine Rock attended the Women in Technology (WiT) Awards. Joined by other members of the start-up community to cheer on River City Labs’ CEO, Peta Ellis, in the category of ICT Outstanding Achievement.

More than 600 guests gathered for the awards which was held at the Royal International Convention Centre. The Awards acknowledged young achievers at the beginning of their careers, to rising stars and industry leaders at the top of their field from all branches such as medical researchers, inventors, scientists, computer engineers, start-up innovators, employers and entrepreneurs.

 

From L to R: Rhiannon Luvis from Kapiche, Tarryn Thiele from RCL, Katherine Rock from Innofy and Lucio Piccoli from SiteSee

 

Congratulations to all of the winners and nominations. A special well done goes to Sandra Slater, winner of the ICT Outstanding Award, and to Associate Professor Allison Pettit, winner of the Life Sciences Outstanding Award, who were named Queensland’s most outstanding achievers.

We are proud to recognise and celebrate the achievements of such amazing women in technology and life sciences!

Celebrity Trade Marks: A Kardashian Case Study

Trade marks are trending with celebrities – and they are keen to pursue protection in Australia:

  • Paris Hilton tried unsuccessfully for many years to register THAT’S HOT in respect of classes 3, 4, 14 and 25 (10392101184612, 1281365);
  • Curtis Jackson (aka 50 Cent) lodged a convention application for his stylised Australian trade mark for 50 Cent in 2003 in relation to classes 9, 25 and 41 (949000); and,
  • Donald J. Trump, President of the USA, has 7 trademarks in Australia including 4 directed to the wordmark TRUMP (1137970, 1239747 (expired – renewal possible), 1433269, 1486784) in classes ranging from real estate services (36) to provision of golfing facilities (41).

Indeed, according to the Harvard Business Review, licensing brings in billions in revenue for the largest global licensors.

The Kardashians – one of the most successful TV reality families of all time – are no stranger to trade marking and licensing arrangements.  In Australia alone, Kimsaprincess Inc (Kim Kardashian’s company) is the owner of 12 registered marks including KIM KARDASHIAN, DASHING, KIMOJI relating to goods and services from fragrance (3) to wireless electronic transmission of graphics (38).  Sisters Khloe (KhloMoney) and Kourtney (2Die4Kourt) also have various marks, as do Kylie (Kylie Jenner, Inc.) and Kendall Jenner (Kendall Jenner, Inc.).

But what can be gleaned from the Kardashian Australian trade mark filings?  The following examines three takeaways framed by the Kardashian case study.

1. Consequences of joint ownership

KARDASHIAN KOLLECTION and KARDASHIAN ESSENTIALS are jointly owned marks by Kimsaprincess, KhloMoney and 2Die4Kourt. KENDALL + KYLIE is owned by Kendall Jenner and Kylie Jenner. Therefore – each of these marks is jointly owned.

Section 28 of the Trade Marks Act 1995 states that if 2 or more persons interested in a trade mark are not entitled to use, except on behalf of all of them or in relation to goods and/or services with which all of them are connected in the course of trade; then an application for joint ownership may be made under subsection 27(1). This means that an application can only be made if neither of the parties can exploit the mark alone – you are essentially a single person – and can only do so on behalf of all of them, and in relation to goods/services which they are all connected.

For the Kardashian marks – such as KARDASHIAN ESSENTIALS – to be entitled for use this must benefit all within the joint ownership and in this case be in relation to classes 9 and 25 (eyewear, hoistery or shapewear). For licensing or assignment – they all have to provide consent (this could be important for merchandising, distribution, etc)

Key takeaway – carefully consider the consequences of joint ownership of trade marks before entering into this type of arrangement – speak to a professional.

2. Registrability of a Name

Section 41 of the Trade Marks Act 1995 requires an application be rejected if it has no inherent capability to distinguish to goods or services for which the application is sought. Kimsaprincess Inc is the current owner of mark KIM KARDASHIAN – a first and surname.  Kim also has registered protection for her initials KKW.  Both marks are in relation to class 3 (including fragrances). In terms of whether a surname, name or initials have inherent capability to distinguish, IP Australia’s Examiner’s Manual offers some guidance. For surnames only – the commonness of the surname is used as an indicator for its inherent adaptation to distinguish. The addition of a first name and surname increases the likelihood it is capable of distinguishing the goods or services – unless the name as a whole is common (JOHN SMITH) and the goods and services are common

Key takeaway: to register a mark it must be inherently capable of distinguishing the goods or services.  It is possible to register a name – but less likely the more common the name is.

3. Conflicting Marks

Section 44 of the Trade Marks Act 1995 states that an application must be rejected if the applicant’s mark is substantially identical or deceptively similar to a mark registered by another person in respect of similar goods or closely related services. Kylie Jenner attempted to register the marks KYLIE and KYLIE COSMETICS via Convention applications lodged in September 2015 and February 2016 respectively.

KYLIE stipulated classes 35 and 41 (advertising services and entertainment), and KYLIE COSMETICS was applied for in respect of goods and services in classes 3 and 35 (cosmetics and retail stores featuring cosmetics and beauty products). According to IP Australia, these applications were eventually withdrawn after the issuance of adverse examination reports. While details of the adverse reports issued have not been obtained, a search of the register does reveal the trade mark KYLIE is registered in respect of classes 3, 4, 9, 14, 16, 25, 28, 41 by Kylie Minogue (KDB Pty Ltd). Whether these existing KYLIE marks blocked the registration of Kylie Jenner’s marks or not is up for speculation. But – this does highlight the importance of conducting clearance searches prior to incurring the cost of filing a trade mark application – only to find an existing mark on the Register is blocking your registration.

Key takeaway: Conduct clearance searches of the same and similar mark in the same and closely related classes – as well as using Google, etc.  Seek professional advice.

Innofy Invited to Pitch for $1million

Today in Brisbane, @StartCon hosted regional heats for the Asia Pacific’s Largest Startup Pitch Competition, “Pitch for $1 Million”. Innofy’s Katherine Rock and Andrew Clarke were thrilled to be invited to attend to cheer on our clients. River City Labs were well represented among pitchers, with Yasmin Grigaliunas from World’s Biggest Garage Sale, Wendy Oxenham from Divvito, Royce Crown from Monarc Global, and MacKenzie from Compago. Other notable pitches were from Aleks Svetski from Amber Labs, Daniel Allen from TradeMutt, and Simone Joyce from Paypa Plane.

The finalists and regional winner is to be announced later today – watch this space!

Yasmin from World’s Biggest Garage Sale

Wendy from Divvito

Trade Mark Update: August 2018

It’s time again for our brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.

This month, we look at:

Trade marks: Out of time evidence admitted at hearing

Satnam Imports Pty Ltd v Simon Walter Sharpe [2018] ATMO 130 (17 August 2018)

Simon Walter Sharpe (“Sharpe”) applied to register trade mark No. 763149 (detailed below) on 6 April 2016. The following services were specified under Class 35: retailing of goods; wholesaling of goods; discount services; distribution of goods; the bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase the goods; advertising and marketing.

Trade Mark Application No. 1763149
Trade Mark: DISCOUNT PARTY WAREHOUSE (Logo)
Owner: Simon Walter Sharpe

Satnam Imports Pty Ltd (“Satnam”) opposed the filing on the grounds that it would be contrary to law (s 52- ss. 42(b)), the applicant is not the owner of the mark (s 58) and a similar mark has acquired a reputation in Australia (s 60) of the Trade Marks Act 1995. The trade mark in question is:

 

Satnam requested an extension of time to file Evidence in Support on 7 April 2017. The delegate, however, was not satisfied that it was appropriate to grant the entire month’s extension and instead allowed the Opponent 14 days.  The Opponent did not respond to this request, instead filing the Evidence in Support out of time on 10 May 2017.  The material filed was subsequently noted to be out of time.

Regardless, the Opponent filed submissions to allow the evidence supplied on 10 May 2017 to be allowed into evidence at the hearing under Regulation 21.15(4).  In this regard, the Registrar may be informed on any matter before them which they reasonably believe to be appropriate, allowing the Registrar not to be bound by the rules of evidence.

The Trade Marks Office Manual of Practice and Procedure (Part 51, para. 2.6) was referred to in examining if the case circumstances would fall under Reg. 21.15(4). Under this, evidence filed late, although generally not considered by the Delegate may be heard based on the decision made in court. Having late evidence heard is not a matter of routine but if a compelling case is put forward the inclusion of late submissions may be allowed as evidence.  Ultimately, the Opponent’s evidence was included and allowed into evidence.  This decision was based on a variety of factors, specifically being the absence and illness of Satnam’s sole director and the evidence being of probative value with the potential to affect the case outcome.

In relation to the claims, failure to establish opposition meant that the applicant was permitted to register the mark.

Key takeaway: While the trade mark office is taking a hard line of extensions of time for filing evidence, there are circumstances where out of time evidence may be allowed at a hearing. Seek professional advice.

Trade marks: To be taken in their whole entity

Monster Energy Company v ODD Games Pty Ltd [2018] ATMO 131 (17 August 2018)

ODD Games PTY Ltd (“ODD”) filed an application for trademark No. 1770632  for “Monster Truck Destruction” in Classes 16, 25, 28 and 41 of the International Classification of Goods and Services on 13 May 2016.

Trade Mark Application No. 1770632
Trade Mark: MONSTER TRUCK DESTRUCTION
Owner: ODD Games Pty Ltd

Monster Energy Company (“Monster Energy”) opposed the mark on the grounds its use would be contrary to law (s 42(b)), deceptive similarity (s 44) and due to the reputation of another mark (s 60) of the Trade Marks Act 1995.

Under Section 60, a trade mark can be opposed based on the grounds that another mark had, before the priority date, acquired a reputation in Australia in respect of the applicant’s goods or services, and registration of the applicant’s mark would be likely to deceive or cause confusion due to the reputation of the other mark.

In particular, Monster Energy were relying on the reputation in its trade marks MONSTER ENERGY, and:

 

 

The hearing officer noted that, unlike section 44, section 60 DOES NOT require that the goods and services be similar or closely related to those of interest to the applicant.
The reputation of Monster Energy in its marks was undisputed. At issue was whether registration of “MONSTER TRUCK DESTRUCTION” was likely to deceive or cause confusion, given the (undisputed) reputation of Monster Energy’s marks.

In order to assess the likelihood of confusion, the hearing officer referred to French J in Registrar of Trade Marks v Woolworths (‘Woolworths’). In Woolworths, French J referred to ascertaining whether people would wonder if closely related goods or services originated from the same source, considering all of the circumstances – including the deceptive similarity in respect of all of the goods and services in the applicant’s specification.

When assessing whether MONSTER TRUCK DESTRUCTION was deceptively similar to the MONSTER marks, it was highlighted that the comparison must include the trademarks in their entirety. While the hearing officer acknowledged the common element between the marks was the word “MONSTER”, he asserted that there are significant differences between the marks which outweigh the common word – namely, the distinctive meaning and idea of MONSTER TRUCK. According, it was found that the ground of opposition under s60 could not be established.

Indeed, similar conclusions were drawn in respect of the s44 and s42(b) opposition grounds which relate to deceptive similarity to a registered mark, and contrary to law (that is, likely to mislead or deceive according to the Australian Consumer Law), respectively.

In view of the above, the opposition was not successful.

Key takeaway: The assessment of deceptive similarity is directed toward marks as a whole, and not necessarily toward merely the sharing of a common element or word.

Trade Mark Update: September 2018

It’s time again for our brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.

This month, we look at:

Trade marks: Reputation, Deception and Confusion – not simply Connection

Ferrero S.p.A v Nuts-about-tella Pty Ltd [2018] ATMO 147 (18 September 2018)

Nuts-about-tella Pty Ltd filed an application for trade mark No. 1747769 for “nuts-about-tella” in relation to Class 43 (providing food and drink) on 28 January 2016.

Trade Mark Application No. 1747769
Trade Mark: nuts-about-tella
Owner: Nuts-about-tella Pty Ltd

Ferrero S.p.A (“Ferrero”) opposed the mark on the grounds it use would be contrary to law (s42), deceptive similarity (s44),  a similar trade mark has a reputation of Australia (s60) and the application was made in bad faith (s62A) of the Trade Marks Act 1995.

In relation to deceptive similarity, perhaps somewhat unsurprisingly Ferrero failed to establish these grounds of opposition in respect to their marks in relation to the “NUTELLA” wordmark and various devices (i.e. 210675, 282424, 394170, 394172, and 1422008).

Instead, much of the decision related to section 60 which relates to a trade mark similar to another trade mark that has acquired a reputation in Australia in respect of particular goods and services may be opposed if the other mark is likely to deceive or cause confusion.  While the reputation of the mark NUTELLA was established by Ferrero, the hearing officer noted that it was necessary to satisfy that because of that reputation the public are likely to be deceived or confused by the use of the mark.

In this regard, it was acknowledged that consumer would likely see “nuts-about-tella” as a “reference to the Nutella product”, with the hearing officer inferring that a large percentage of consumers familiar with the Nutella mark would read the trade mark as “very enthusiastic for Nutella”.  However, he cautioned that this is not the relevant question under s60.  Rather “the question that must be asked is whether, considering all surrounding circumstances, a number of persons will be caused to wonder whether or not it might be the case that the Applicant’s Services are provided by the Opponent”.  According to this test, the hearing officer felt it unlikely that consumers would be confused into thinking that Ferrero itself has opened a business providing food and drink in Australia under the mark ‘nuts-about-tella’.

Other grounds were similarly not made out and the opposition was not successful.

Key Takeaway: Similarity to another trade mark which has acquired a reputation is only one step of the test under s60.  An opponent must also establish that because of the reputation, the public is likely to be deceived or confused by use of the mark.  This is not simply a matter of consumers realising a potential connection, but a tangible danger of consumers being caused to wonder whether the applicant’s goods/services were provided by the opponent.

Trade marks: The Use of Phone Words

Finsure Domain Names Pty Ltd v RESN Holdings Pty Ltd [2018] ATMO 139 (10 September 2018)

RESN Holdings Pty Ltd (“RESN”) applied for removal of trade mark No. 1469962 for “MYloan” in Class 36 on 4 January 2017. Finsure Domain Names Pty Ltd (“Finsure”), the Opponent, filed Notice of Intention to Oppose on 24 January 2017.

Trade Mark Application No. 1378036
Trade Mark: MYloan
Class: 36
Owner:
Finsure Domain Names Pty Ltd

Under section 100, the burden of proof lies with the opponent to rebut that there has been no use of trade mark at any point in the relevant period. Thus, Finsure were required to show use of trade mark within the relevant three year period ending on 4 December 2016 (that is, a month prior to the non-use application being filed).

In this regard, Finsure attempted to rely up its use of a phone word “1300MYLOAN”, and submitted two bills from Telstra for use of the phone number associated with the phone word within the relevant period.  Accordingly, the hearing officer stated that the issue at hand was whether use of the phone word constituted use of a trade mark.

The hearing officer noted that the mere presence of 13/1300/1800 in a trade mark did not act to substantially alter the identity of the trade mark in question.  In view of this, the hearing officer found that the Opponent had established use of the trade mark in the relevant period, through its use of the phone mark.

In view of this, opposition was successfully established.

Key Takeaway: Phone words are not likely to be considered to substantially affect trade mark identity. Therefore, in terms of establishing trade mark use – the use of the mark within a phone number could be sufficient.

 

 

Innofy helps out World’s Biggest Garage Sale!

The World’s Biggest Garage Sale next event is this weekend in Coopers Plains, Brisbane.  In the spirit of helping out a fellow start-up, and supporting the circular economy and charity, Innofy is helping out!

Our very own Leah Southwell and Briony Pearson have been working hard today, unpacking, organising, folding and arranging donated dormant goods.  If you are looking to grab a bargain tomorrow – and keen to support sustainability – get down to the WBGS warehouse and take a look!

Patents

New high energy density battery technology announced

In February 2017, a team of University of Texas engineers announced the development of the first all-solid-state battery cells – the team including Dr John Goodenough, co-inventor of the lithium ion battery.  The engineers have shown that the energy density of the new battery cell is at least three times that of today’s lithium ion cells, and exhibits faster rates of charge and discharge – meaning the breakthrough could hold the key to ensuring reliability of supply for renewable energy and greater electric car range, among many other applications.

The invention is described in the Energy & Environmental Science, and if you are interested US granted patents and patent applications invented (or co-invented) by John Goodenough, click here.

Opportunity – FDA encouraging manufacture and distribution of new generic drugs

The U.S. Food and Drug Administration (FDA) are desperately seeking to increase competition for prescription drugs. The reasons for this are of no surprise. Although we are, of course, in great support of deservedly obtaining robust patents for newly discovered pharmaceutical inventions, we are regularly reminded by some pharmacist friends of ours how the cost of patented pharmaceuticals deeply hurt the bottom line of many pharmacies, as well as often being unaffordable for those patients that need these drugs the most.

It appears that the FDA has announced its view is that there are significant benefits to having increased competition by generics, after the advantages of a obtaining patent protection for a pharmaceutical invention have expired.

Very recently, the FDA Commissioner, Scott Gottlieb, published a blog post announcing two immediate plans to initiate bringing an increase in competition into action:

  • Release a list of branded drugs that are not currently protected by a  patent application, but have no approved generic equivalents available;

 

  • Implement a policy to expedite the review of Abbreviated New Drug Applications (ANDAs) for any drugs until there are three approved generics available.

Why is the FDA concerned about the monopoly of pharmaceutical inventions?

As explained by Gottlieb, the FDA have embarked on a Drug Competition Action Plan in an effort to remove “some of the scientific and regulatory obstacles to generic competition across the full range of FDA-approved drugs”.

It appears to be a deep and real concern that significant numbers of patients are being priced out of obtaining the medicine they essentially need. This problem has increased over the last decade to the extent that now the FDA feel obliged to step in to facilitate faster approval for lower cost generic medicines.

Advertising Branded Pharmaceuticals That Are Off-Patent

The first document released by the FDA provides a lengthy list of patent-free drugs. The document is split into two parts: art I (pages 2-6) identifies drug products for which the FDA could immediately accept an ANDA without prior discussion. Part II (pages 7-9) identifies some drugs that involve potential legal, regulatory, or scientific issues which should be addressed with the agency prior to submission of an ANDA.

Prioritization of Review of Approval for Generics

The second document published by the FDA was an updated v “Prioritization of the Review of Original ANDAs, Amendments, and Supplements” (as found in the Manual of Policies and Procedures of the Office of Generic Drugs). This document outlined the newly agreed policy that priority status will be granted for generic products for which there are fewer than three ANDAs approved for the reference listed drug.

The priority status is contingent on the being no blocking patents in force at the time of application.

How Are Pharmaceutical Companies Gaming the System?

The FDA has become increasingly aware that pharmaceutical companies are “gaming” the regulatory legislation to prevent new approvals of generic drugs within the time-frames intended by such regulations. One example outlined by Gottlieb is the unavailability of certain branded products for comparative testing. Developing a generic alternative to a branded drug typically requires around 1,500 to 3,000 doses of the originator drug for side-by-side comparison studies. Despite the willingness of generic sponsors to purchase these products at fair market value, branded companies have adopted strategies to deliberately block a generic company from obtaining testing samples.

Branded companies often use restrictions in commercial contracts and distributor agreements to prohibit intermediaries in the drug supply chain selling the drugs to generic drug developers. Alternatively, access to testing samples can theoretically be restricted by placing distribution limitations on the branded products.

Entering a New Era for the FDA

Historically, the FDA has been reluctant to get involved in matters relating to drug pricing and active competition. We can assume, therefore, that there is strong enough concern that the time to act is now. Over the last decade, competition from safe and effective generic drugs has saved the U.S. health care system about US$1.76 trillion. Although Gottlieb’s blog post concedes that “innovation in pharmaceutical development is essential because it creates new and sometimes life-saving therapies,” these changes are preempted by the idea that access to lower-cost alternatives, once exclusivity periods lapse, are also critical to preserving the nation’s health.

Therefore, the push to obtain approval for an increasing number of generic drugs is clearly of utmost importance for the FDA. Gottlieb ‘s blog post has sent a clear message that the FDA have cottoned on the the issues, and indicates that further policies, procedures and legislative changes are coming to ensure vigorous competition, stating: “our goal is to broaden access to safe and effective generic drugs that can improve access to medicines and help consumers lover their health care costs.” It will be interesting to watch the effect of these forthcoming actions and whether they succeed in increasing competition between drugs (at least those with recently expired patent protection).

A public meeting will occur on 18 July 2017, to solicit input on places where the FDA’s rules are being used in ways that may create obstacles to generic access. Stay tuned for our take on the outcome of this meeting.

Where are the female patent attorneys?

Part 1: The business case for gender balance

Gender imbalance in the patent attorney profession is an underreported issue.  And yet, women comprise less than a third of registered patent attorneys,[i] and occupy less than 17% of senior positions in the largest private practices in Australia.[ii]  This is the first of a multi-part series exploring the topic of female representation in the patent attorney profession in Australia.

In this post, we motivate the issue by demonstrating the unequivocal business case for gender equality.  Correlation between gender balance and better business outcomes has been established both economically and financially, both in terms of female representation at board level, in senior executive roles, and in organisation populations in general.

Board representation

Studies conducted on ASX listed companies, and in particular the ASX500, found that companies with women on their board “deliver significantly higher Return on Equity (ROE) than those without”.[iii]  In real terms, a five-year ROE for companies with women directors produced approximately double that of the ASX500 average, and almost twenty times that of companies with no women directors; a particularly pertinent result given the number of recently-listed patent attorney practices.

Executive committees and senior positions

A McKinsey study released in 2010 examined over 200 companies across numerous industries in Europe, Brazil, Russia, India and China, and found that in terms of performance measures companies with the most women in their executive committees outperformed those with no women by between 41 and 56 percent.  These results were also replicated in a further McKinsey study, with research also correlating higher firm valuation and mandated female board representation.

Directors and boards aside, correlation is also statistically significant among organisations with larger populations of female senior executives.  In the aptly named, “Profit, thy name is… Woman?”, Adler describes a longitudinal study conducted by himself and colleagues at Pepperdine University on Fortune 500 companies.  To summarise the “astonishing” results, companies who were the most aggressive at promoting women to senior levels outperformed industry medians on every profit metric for every year of the six years for which the study was performed.  A sentiment which is echoed in many other studies.

Indeed, organisations with women in particular risk and audit roles also perform better, and are shown to be less likely to become insolvent. In terms of leadership styles, women are more likely to convey a “transformational” leadership style, as opposed to merely transactional. Furthermore, workgroups with fewer females have been shown to exhibit higher staff turnover, and lower staff mobility, than those with more balanced gender composition.  Studies have also shown that collective intelligence of a workgroup is influenced by the number of females in the group; more women correlates with higher collective intelligence.

Correlation and causality

Whilst some may argue that these studies fail to demonstrate causality, merely correlation, one of the most compelling pieces of gender research pertains to a randomised trial in India. Mandated political reservations for women were introduced in randomly selected Village Council elections in the 1990s, such that thirty percent of seats could be occupied solely by females.  Comparison of the investment decisions and public good outcomes established a causal link between the mandated presence of women and better investments and outcomes.

Where are the female attorneys?

Ultimately, significant evidence is available to suggest that gender diversity is associated with better business outcomes.  Consider also, the common-sense argument that greater diversity in business brings with it greater life experiences, more varied assumptions, and thus a greater propensity for constructive debate and hence smarter decisions.

Therefore – why aren’t there more female patent attorneys?  Indeed, why aren’t there more senior female patent attorneys in private practice?  Where are the female patent attorneys?  (And – would the share prices of ASX-listed IP holding companies be in the same state they are in now, if they had more women in their ranks?)

 

Stay tuned for the follow-up parts in this series:

Myths

Debunk commonly purported myths

Causes

Detail the more insidious causes for the imbalance (backed by evidence!)

Opportunities

And, on a brighter note – detail evidence-based opportunities to redress the imbalance.

Selected references*

[i] Statistics were extracted from Registers of Patent and Trade Mark Attorneys on the website of the Professional Standards Board for Patent and Trade Mark Attorneys, December 2016, www.psb.gov.org [accessed: 30 December 2016], and associated web searches.

[ii] Ibid, and associated web pages including websites of DCC, Freehills, Sprusons, FAKC, Pizzeys, Cullens, Griffith Hack, Shelston, Watermark, FB Rice, Allens, POF, Madderns, Wrays [accessed January – March 2017].

[iii] ‘ASX500 – Women Leaders: Research Note’, Reibey Institute, June 2011.

* For a more comprehensive list of reference, please contact us.

Five lessons regarding patents vs trade secrets from Game of Thrones “Wildfire”

For those of you that have somehow not been caught up in the Game of Thrones Season 7 mania currently sweeping the world, you may not heard of the majestic liquid – wildfire. Wildfire is an incredibly flammable liquid that is created and controlled by the Alchemists’ Guild, an ancient society of learned men using arcane knowledge. The liquid is highly volatile, and when ignited can explode with tremendous force. It is clear to see the significant value in this magical liquid, and accordingly, it would be wise for its creator to think about how best to protect their intellectual property.  Protecting your technology with a patent is, however, not always the most effective strategy. Sometimes, protecting your innovation as a trade secret can be more valuable option.

We have put together five points as to why protecting wildfire with a patent may not be the best idea.

1. Invention lifecycle

The wildfire liquid becomes more potent as it ages. The most notable supply of wildfire, placed under Kings Landing by Aerys II, was over 20 years old when used to burn down the city. As a standard patent provides 20 years of protection, by the time the first batch of wildfire liquid reaches its potential, any patent would have expired (and competitors are fee to sell their product that was made as soon as the invention become public).

Lesson 1: Before applying for a patent, consider the lifecycle of your invention bearing in mind that standard patents provide a 20 year monopoly from filing, and innovation patents provide an 8 year monopoly.

2. Potential market size

Wildfire, being so incredibly flammable, is unlikely to have a large market (aside from Kings looking to burn down enemy cities). As commented by Bronn in Season 2, the volatility of wildfire is too unstable to be used in military operations with inexperienced troops. Accidentally dropping a single jar would have devastating consequences. Therefore, the product may be unlikely to generate significant sales – which in turn means that patent costs may not provide a good return on investment.

Lesson 2: Weigh potential market size, and potential revenue against patent application, examination and maintenance costs.

3. Market potential vs patent costs per jurisdiction

Further to being a small market, in order to expand your sales it is likely that you will need to reach out to other Kingdoms, who would use the wildfire against one another, and potentially against you! One would think that the Kings of each Kingdom may be keen to acquire an  large supply of the potent liquid, however, is this enough to justify the expense of a patent?

Lesson 3: Patenting in different jurisdictions is subject to each jurisdiction’s Patent Laws and Regulations – and typically incurs both foreign agent and foreign official fees. Therefore, navigating the requirements of each jurisdiction should be weighed against potential market size, before expending significant funds on multi-jurisdictional patent protection.

4. Do you want to disclose how to make it? Or can you keep it a secret?

The alchemists refuse to reveal how wildfire is made, only claiming that it is prepared using magical spells. There would be significant consequences in disclosing the secret recipe, as your enemies would be able to create wildfire of their own (and would be free to do so if your patent didn’t extend into your enemy’s Kingdom).

Lesson 4: Decide whether there is a realistic possibility of maintaining confidentiality in respect the invention, as it may be more lucrative to keep an invention under wraps.

5. Secret use

We know that Hallyne agrees to provide wildfire for Tyrion’s purposes. We therefore suspect that this deal (the details of which are confidential) is sufficient to act as a secret commercial use of wildfire.

Secret commercial use of your invention prohibits patentability. This is so that a patent owner does not receive longer than 20 years of protection (combined between the “secret years” and the “patent years”).

Lesson 5: Prior to applying for a patent you need to be mindful of any secret commercial use which may be been incurred prior to filing, and the impact this has on the validity of any application and/or granted patent.

Summary

In summary, “wildfire” would appear to be a far better candidate for protection as a trade secret than as a patent, such that no one else can use their technology against them.

Whilst this is a rather tongue-in-cheek example from Game of Thrones, the take-away lessons are valid – namely, that although patents regularly provide and effective and robust protection of intellectual property, there may be instances where patents are not appropriate.  When deciding whether or not to patent vs maintain a trade secret – consider the invention lifecycle, potential consumers and markets, market size vs patent costs per jurisdiction, whether you can realistically keep the details of the invention secret, and whether there has been any secret commercial use prior to filing.

If you have an innovation that you would like to discuss to determine the best avenue for its protection, please contact us.

Where are the female patent attorneys?

Part 2: Debunking the myths

This post is a continuation of our series entitled “Where are the female patent attorneys?” – an exploration of gender imbalance in the industry in Australia.  (If you missed part 1 – catch up here).

In this post, we analyse three common myths regarding gender imbalance in the industry; namely: that women in the industry currently lack experience to be in leadership positions (Myth 1); that the lack of female patent attorneys is merely a reflection of the lack of women with appropriate STEM qualifications (Myth 2); and, a denial of the issue (Myth 3).

By examining over 10 years of historical data – such myths are proven to be unsupported.

Myth 1: We just need time

Myth 2: There aren't enough qualified women

Myth 3: What's the problem?

Myth 1: We just need time

A pervasive myth regarding gender imbalance in the industry is that inequality of numbers is merely a reflection of historic inequality, which, given time will self-correct.  This is a variant on the notion that females in the industry are largely a recent phenomenon, and therefore over time, will accrue sufficient skills to occupy more senior positions in greater proportions.  An analysis of publicly available records, and records obtained under the Freedom of Information Act, relating to historical Registers of Patent Attorneys dating back to 2001 provides some interesting insights into these particular myths.

Figure 1 provides an overview of gender representation among registrants on the Register of Patent Attorneys for the years 2001-2013, 2015 and 2016.  Whilst an upward trend in proportional representation is present, and commendable, it should be observed with caution.  For, as shown in Figure 2, in absolute terms, without intervention linear trending of male and female populations will lead to an equilibrium just shy of 37% females.  That is to say, parity is unachievable if the current linear trends of male and female populations remain static.

Thus, far from simply needing time for female populations to “trickle-up”, gender parity may simply be unachievable.

Interestingly, this is also confirmed by examining the composition of new registrations on the Register (Figure 3 and Figure 4), as well as the compositions of registrants in their final year of registration (Figure 5).  In all but 2016, men outnumbered women in terms of new registrants, and with females consistently outpacing men in terms of professional attrition it is clear that time alone will not be sufficient to bridge the gender gap.  Therefore, whilst parity in terms of new registrations may be an enviable goal, what we want to avoid is a revolving door where disenfranchised women leave the profession before reaching seniority.

Whilst representation among in-house and at publicly funded institutions (as shown in Figure 6), such as universities or public research organisations, is also closer to parity, the situation in private practice is less optimistic.

Private practice 25.2%
Sole operator or no affiliation 19.0%
Patent office 20.0%
In-house 47.5%
Publicly funded 50.0%

Figure 6: Australian Register of Patent Attorneys in 2016 by practice area.

Consider the intra-organisational gender representation in the largest Australian private practice firms and companies, and in particular equality among junior and senior levels.  In respect of senior leadership positions in private practice, the gender disparity is more pronounced.  For example, data in relation to gender balance in senior patent positions in 14 of the largest private practices in Australia  shows that females account for on average just over 16%.  Moreover, examining gender representation at senior patent levels of some of Australia’s individual IP firms (Figure 7 and Figure 8), and we see Fisher Adams Kelly Callinans accounts for 0% senior female practitioners, Davies Collison Cave 3%, and ASX-listed holding companies IPH and Qantm IP only 15% and 5%, respectively.

(Data extracted from Registers of Patent and Trade Mark Attorneys on the website of the Professional Standards Board for Patent and Trade Mark Attorneys, December 2016, www.psb.gov.org [accessed: 30 December 2016], associated web searches, and including websites of DCC, Freehills, Sprusons, FAKC, Pizzeys, Cullens, Griffith Hack, Shelston, Watermark, FB Rice, Allens, POF, Madderns, Wrays [accessed January – March 2017]).

Compare this with female representation in more junior positions, as shown in  Figure 9 and Figure 10.  On average in these organisations, women occupied 16.83% (n=196) of senior positions, compared with an average 44.77% (n=158) in more junior roles.  Clearly a disparity exists between representation at junior and senior levels.

Indeed, in examining these statistics, stark relationships become apparent.  For example, statistically speaking there are twice as many senior patent positions occupied in Davies Collison Cave by men named William, than all of the senior women in patent positions in that organisation.

Whilst it is arguable that this disparity merely reflects the timeline of the promotion pipeline, this is also not consistent with the historical statistics, unless it is contended that promotion to partnership or principal takes more than 15 years following registration (female representation among all registrants in 2001 was 16.6% – largely equivalent to the private practice senior leadership average described above).

In any event, whilst these results may be suggestive of a form of “glass ceiling”, research in relation to the legal services industry also shows that low number of females in senior positions has a causal impact on retention of junior operators.[i]  Other potential causes for the lack of gender balance across the industry and in senior leadership are discussed in future posts, including explicit and implicit biases, and cultural influences.

Nevertheless, the myth that proportional representation is just a matter of time, either in terms of the overall industry and/or in senior positions, is not supported by the facts.

Myth 2: There aren't enough qualified women

A further myth relates to the dogma that patent attorney gender imbalance is a direct result of gender imbalance in graduates obtaining the necessary Science, Technology, Engineering, Mathematics (STEM) qualification for registration.

However, a completion count by year by gender by field of education for STEM subjects “Natural and Physical Sciences”, “Information Technology”, and “Engineering and Related Technologies” shows that gender splits have been largely static from 2001 to 2015, see  Figure 11.

Considering the upwards trend of women in the profession in general, as demonstrated in Figures 1 and 2 – counter that with the largely static completion rates and it is apparent not only is there no causal relationship between STEM graduates and gender representation among patent attorney registrations – there is no apparent correlation.

Nevertheless, there is certainly an argument to be had that without intervention at the University level (and perhaps below) – it may be difficult for the patent attorney profession to realise gender balance in the future.  However, it is important to point out that the dearth of females – particularly in senior patent positions in private practice where levels are below 17% – cannot be attributed solely to a lack of STEM qualified women.

(Data obtained from Department of Education and Training, Australian Government, Higher Education Statistics – uCube, http://highereducationstatistics.education.gov.au/ (accessed 21 January 2017).  Completion count by year by gender by field of education for fields Natural and Physical Sciences, Information Technology, and Engineering and Related Technologies.)

Myth 3: What's the problem?

Within the context of the patent attorney industry, despite the obvious disparity between male and female registrations, it is not uncommon to encounter the viewpoint that denies imbalance.  Such defence of the status quo – however imbalanced – is in itself a matter of extensive research, as outlined herein.

Sociological research supports the fact that people are destined to defend the status quo as fair and legitimate.  Indeed, the term “injunctification” is defined as a confirmatory bias which emphasises the status quo as the ideal.  For example, researchers from the University of Waterloo in Canada describe this motivation “to see the way things are as the way they should be” as a driver for inequality and discrimination.[ii]   In particular, they describe that when norms are placed under threat, there exists a tendency to increase justification for the status quo.

In one study, these researchers looked at the Canadian workplace and gendered representation in business.  Participants were exposed to one or two “status-quos” relating to gendered representation of CEOs in the Canadian workplace; 95:5 male/female; and 55:45 male/female.  A number were then provided with a “system threat” – which in this case was ostensibly a foreign-authored news article critiquing a social/economic downturn in Canada.  The study found that participants exposed to the low-female CEO status-quo and the system threat were much less likely to agree that there should be greater female representation in business, and moreover, were more likely to rate the female experimenter as less likeable and less competent.

Thus, whilst generally speaking gender representation in the patent attorney industry is underreported, this is likely the consequence of injunctification, and the tendency to hyper-defend any perceived challenge or “threat”.  Indeed, under threat, such myths as those described above are commonly posited in defence – in an apparent justification of the imbalance clearly present in the industry.

Summary

Thus, with three commonly purported myths regarding gender balance among patent attorneys in Australia debunked – and the business case for change made – where do we go from here?

Acknowledging the business opportunities and recognising that an issue exists which cannot simply be passively addressed through the passage of time is the first step.  The next question is what are the possible causes of the apparent glass ceiling and revolving door, and how can they be pro-actively addressed.

Stay tuned for the remaining parts in this series...

… or catch up on parts you have missed.

Causes

Details the more insidious causes for the imbalance (backed by evidence!)

Opportunities

On a brighter note – details evidence-based opportunities to redress the imbalance.

Business case

Click here to catch up on Part 1 and the business case for gender balance!

Selected references*

[i] Bohnet, I. “What Works: Gender Equality by Design”, The Belknap Press of Harvard University Press, Cambridge Massachusetts (2016), p211, citing research from McGinn and Milkman.

[ii] Kay, AC, et al. “Inequality, Discrimination, and the Power of the Status Quo: Direct Evidence for a Motivation to See the Way Things Are as The Way Things Should Be” American Psychological Association (2009) 97 (3) 421-434.

* For a more comprehensive list of reference, please contact us.

Published: 18 July 2017

The European Unitary Patent Is Coming…

And why you should take notice

At innofy we live and breathe innovation. And we like to do things differently. That is why we really can’t wait for the imminent introduction of the European Unitary Patent.

As fully explained in the Agreement on a Unified Patent Court (UPCA), the Unitary Patent is the innovative initiative from the European Patent Office (EPO) that will supplement and improve the existing centralised European patent granting system. This is great news for clients looking to commercialise their inventions internationally, offering patent owners a cost-effective option for patent protection and dispute settlement across Europe. We are excited by this change.

It is a common misunderstanding that successfully navigating European examination is rewarded by a European Patent. This regularly leaves patent owners surprised and disappointed to learn that their celebrated patent grant by the EPO precedes the onerous and costly European patent validation process. On top of this, once the patent has progressed through the EPO, annual renewal/maintenance fees become due for each European country that is selected for validation.

The Unitary Patent will provide an attractive alternative to the partially streamlined conventional European system. Excitingly, it will make the patent procedure in Europe much simpler and more cost effective.

The Current System for Obtaining Patents in Europe

Although the EPO facilitates a streamlined process for filing and examination of patent applications across EPC Member States, after patent grant patents must be validated and maintained individually in each country where they take are effect. This is a complex and potentially very costly process as each individual country has independent validation requirements – including an assortment of translation costs, validation fees, and overseas agent fees. The costs often become substantial and are dependent on the number of countries chosen in which to validate the European patent.

How will the Unitary Patent work?

The European regional phase entry system, examination and acceptance procedures are expected to operate exactly as they currently do. That is, there will be no change to any of the pre-grant processes (which are already centralised by the EPO). After patent grant, however, patent owners will be given a choice to:

  • request unitary effect – thereby getting a Unitary Patent which provides uniform patent protection in up to 26 European Member States; or
  • request national validation in each European Member State, consistent with the current approach.

What Countries Are Included in the Unitary Patent?

There are currently 28 countries in the European Union. However, Spain, Poland, and Croatia have refused to take part. The 25 Member States who have signed the Unitary Patent Court Agreement (UPCA) are:

AustriaBelgiumBulgariaCyprusCzech Republic
DenmarkEstoniaFinlandFranceGermany
GreeceHungaryIrelandItalyLatvia
LithuaniaLuxembourgMaltaNetherlandsPortugal
RomaniaSlovakiaSloveniaSwedenUnited Kingdom

Despite the Brexit vote, the U.K. have been vocal in their support of the Unitary Patent, and have stated they do not wish their imminent exit from the European Union to detract from getting the system up and running.

When Will The Unitary Patent Become Available?

It’s been a long road, but it looks like the finish line is near. The Unitary Patent system will be brought into force when at least 13 Member States (that must include Germany, France and the U.K.) have ratified the Agreement. As of July 2017, 11 Member States have ratified (including France). Therefore – the world is waiting on only the U.K. and Germany to ratify the Agreement.

The U.K. recently presented Parliament with a draft of the remaining piece of secondary legislation required for ratification. Things are not quite as straightforward in Germany, however, with ratification of the UPCA currently on hold (despite already being passed in Parliament) because of a legal challenge to the constitutionality of the legislation enabling ratification.

Italy, Slovenia and Lithuania are reportedly on the verge of ratifying the UPCA – suggesting that, on launch the Unitary Patent will likely encompass between 15-20 countries (as the U.K. and Germany are non-negotiable).

It’s expected that all the required ratification will be completed in 2017, meaning the Unitary Patent may become available early next year.

The Unitary Patent: Improving simplicity and lowering costs

Why are we so excited by the Unitary Patent?

  • The EPO will be a “one-stop-shop” for European patent rights;
  • No additional fees will be due for the filing and examination of the request for unitary effect or for registration of a Unitary Patent;
  • Post-grant translations will no longer be required (after a six-year transitional period);
  • An end to the fragmented renewal fee system, as renewal fees are combined into a single procedure, currency and deadline;
  • EPO has announced “very competitive” renewal rates (especially for the first ten years);
  • All processes handled centrally by EPO – not individual Member State patent offices;
  • A uniform level of protection will be effected in each European Member State – substantive law governing patent infringement is harmonised in the Agreement of a Unified Patent Court.

The advantages of the Unitary Patent are clear. However, every situation should be considered on an individual basis and a Unitary Patent may not necessarily always be the best solution to obtaining your European patent rights. For example, one potential negative of the new system is that it presents a single point for revocation of your rights in Europe, as opposed to each European national patent being independent from one another. Please contact us to discuss the best route to obtaining patent protection in Europe for your technology.

The Unitary Patent system is currently expected to start in the first quarter of 2018. Naturally, we will keep you updated as soon as any further news is released.

Where are the female patent attorneys?

Part 3: What does the evidence say about causes?

This is the third part in our series exploring gender imbalance in the patent attorney profession here in Australia.  (Click here if you missed out on Part 1, or Part 2).

In these modern times, it may be difficult to imagine the causes behind the apparent glass ceiling, and revolving door, particularly within the private practice.  However, the latest organisational and anthropological research provides a number of insights, including unconscious bias, a perceived lack of fit within senior positions, and cultural and explicit biases.

Unconscious Bias

One of the most famous experiments in relation to unconscious bias involved Howard and Heidi Roizen: both highly successful venture capitalists, entrepreneurs, and highly proficient in networking.[1]   Harvard Business School students participating in the experiment were randomly assigned to each persona, rating Heidi or Howard in terms of likeability, competence, and effectiveness.  The results were stark.  Whilst Heidi and Howard were generally both considered competent, Heidi was rated less likeable and fewer students were prepared to work with her.  Combined with many other studies, is it apparent that women in business face a trade-off between perceived likeability and competence; that is, women may be seen to have one, but never both, traits.[2]

Translating to the patent attorney context, this pervasive form of unconscious bias can go some way to explaining the dearth of women in the industry.  It presents a Catch-22 situation, particularly in organisations with opaque promotion processes which evaluate “competence” and “cultural fit” (read “likeability”): female attorneys perceived as competent are less likeable, whereas females who are likeable fail to “exhibit” the requisite competence. However, unconscious bias and the notion of the ideal patent attorney (i.e. stereotypical patent attorney) as male is not limited to the likeability-competence paradox.

In fact, relevant to the role of a patent attorney is the unconscious bias that scientific ability is related to gender.  A study by Reuben et al in which participants were required to hire a candidate to perform an arithmetic task were twice as likely to hire a male when only presented with information related to the candidate’s appearance (which made gender obvious), and that this discrimination was pervasive even in the face of self-reported results on previous arithmetic tasks.[3]  As a patent attorney is required to possess and indeed exhibit, a high level of scientific ability, there can be no doubt that the perception that such an ability is a predominantly male characteristic negatively impacts female practitioner outcomes.  Consequently, it is posited to effect the promotion of females in the industry, as well as client attraction and retention rates – which in turn also influence female career mobility.

Other experiments relating to unconscious bias show that women are more strongly penalised for making mistakes when they are in counter-stereotypical roles,[4] women suffer when they exhibit a display of emotion in the workplace whilst men benefit from similar behaviours,[5]  among many others.

Accordingly, when viewed through the patent industry lens, a traditionally male-dominated and conservative industry, it is clear that unconscious bias alone places females on a tilted playing-field.  Indeed, such unconscious bias is also pervasive in terms of a perceived lack of fit of females within senior positions in the industry.

Perceived lack of fit within senior positions

Perceptions of fit within senior positions can be both held by the individual, and held by the organisation, or promotional group/committee, and both appear to influence imbalance in the patent industry in Australia.

In terms of the former, an individual can self-select out of a career trajectory based upon the prevalence (or lack thereof) of similar role models with senior ranks.  In the case of females within the patent attorney industry, those occupying senior positions provide counter-stereotypical role models, that is, role models which run counter to the normal stereotypical male attorney.  A dearth of counter-stereotypical role models, for example as shown in the statistics in Part 2, is proven to contribute to this form of self-motivated attrition.[6]   Indeed, in less diverse workforces, minorities are more likely to leave.[7]

Self-selection can also be influenced by phenomena such as tokenism and “gender hierarchy threat”.[8]  For example, tokenism, that is the existence of fewer than a “critical mass” of females within a workgroup, can be more damaging than a heterogenous male group.[9]   One explanation for this can be found in research conducted by Hoyt and Simon, whose findings showed that women exposed to high-achieving females exhibited lower self-perceptions and leadership aspirations.[10]

Moreover, there is an entrenched notion that there simply aren’t enough women with the “strengths” or who have attained sufficient “merit” to warrant promotion.  This is where the lack of fit for female attorneys within senior ranks can be perceived negatively during promotion.  Such a notion, however, needs to be examined with care, as the term “merit” is often defined as including some opaque form of “fit”; or as once eloquently put by an industry professional: a “no d*#^-heads policy”.  As Dr Jennifer Whelan (Melbourne Business School) states “[d]iscrimination is actually integral to a meritocratic system. A merit-based system discriminates on the basis of how much “merit” a person has – assuming the pre-condition that everyone has equal opportunity to acquire it – and favours those who have more of it. Or more precisely, are perceived to have more of it. This is where the trouble starts. How are perceptions of merit shaped and influenced?”.[11]

Consider also, the attitude that women do not fit in the upper positions of private practice because “… women just don’t bill”.  Researchers of the Wharton School investigated such an issue in relation to two of the largest stockbroking firms in the United States.[12]  Women earned significantly less than men in commission based sales which prima facie “established” that women simply didn’t sell as much.  However, an in-depth analysis of personnel histories, trading and asset records, tested against a multitude of hypothesis revealed that in fact – that there was no difference in productivity.  The sole reason was “women were given worse-performing accounts … when women were given more valuable accounts, the gender gap in performance disappeared”.[13]

Indeed, recent research supports such a “meritocracy paradox”; that is, organisations at pains to emphasise meritocratic promotion and incentive schemes are actually more implicitly biased.  A study by Castilla and Benard showed “managers in that organization [with an organisational culture that promotes merit over one which does not] may ironically show greater bias in favour of men over equally performing women in translating employee performance evaluations into rewards and other key career outcomes”.[14]

Accordingly, a subtle but harmful bias that women do not “fit” within senior patent positions is also posited to contribute to the continuing imbalance experienced in Australia.

Cultural and explicit bias

Whilst unconscious biases and perceptions play a large part in gender imbalance, one cannot ignore the prevalence of cultural and explicit bias within the industry.

As mentioned above, the concept of “merit” assumes a level-playing field where everyone has access to the requisite opportunities necessary to succeed.  One such opportunity is the access to informal networks required within the industry to attract and retain clients, access employment opportunities and promotion.  However, (rightly or wrongly) given that women are ultimately still responsible for the majority of caring in Australian society (children and the elderly),[15] it is simply not reasonable to expect that they will have the same access to informal networks and networking opportunities conducted after hours.  Moreover, as informal networks are established primarily upon the premise of “likeability”, women tend to be excluded in view of the likeability-competence paradox discussed above.  Furthermore, the World Economic Forum describes the innate preference of an individual to gravitate towards “people like them”, another reason women find it difficult to access informal networks within the industry.[16]

Certainly an underreported and unspoken issue in the industry is “everyday sexism”[17].  In her lecture to the London School of Economics, Laura Bates describes “everyday sexism” as the trivialisation and normalisation of sexism in terms as banter, jokes, and culture.[18]  As this type of culture is not typically reported, it is difficult to quantify in terms of the patent attorney industry in Australia.  However, suffice to say Bates has accumulated an overwhelming body of evidence which cuts through industries, workplaces and jurisdictions in her “Everyday Sexism Project”.  Therefore, one can only be naïve to assume that a male-dominated industry such as the patent industry, would be immune.  Indeed, such a culture has the effect of alienating counter-stereotypical role models, where present, and contributing to female attrition rates.

In any event, the combination of unconscious bias, perceived lack of fit, and cultural and explicit bias, present significant barriers to the female patent attorneys wishing to reach seniority in Australia.  Accordingly, it is undeniable that the profession does not exhibit a level playing field.  Nevertheless, interventions at the organisational level present an opportunity to realise tangible change – something we discuss in our next and final part in this series.  

Stay tuned for the remaining parts in this series...

… or catch up on parts you have missed.

Opportunities

On a brighter note – details evidence-based opportunities to redress the imbalance.

Business case

Click here to catch up on Part 1 and the business case for gender balance!

Myths

Click here for Part 2 which debunks some of the most commonly purported myths.

Selected References

[1] McGinn, K and Tempest N, “Heidi Roizen” (Harvard Business School Case Collection, January 2000, Revised April 2010) http://www.hbs.edu/faculty/Pages/item.aspx?num=26880.

[2] Iris Bohnet, What Works: Gender Equality by Design, (The Belknap Press of Harvard University Press, 2016) 24.

[3] Reuben et al. “How stereotypes impair women’s careers in science” (2014) Proceedings of the National Academy of Science of the United States of America 111(12), 4403-4408.

[4] Brescoll, Victoria L., Erica Dawson, and Eric Luis Uhlmann. “Hard Won and Easily Lost The Fragile Status of Leaders in Gender-Stereotype-Incongruent Occupations.” Psychological Science 21.11 (2010): 1640-1642.

[5] Brescoll, Victoria L. and Eric Luis Uhlmann. “Can an angry woman get ahead? Status conferral, gender, and expression of emotion in the workplace.” Psychological science 19.3 (2008): 268-275.

[6] Bohnet, n 2.

[7] McGinn, Kathleen L., and Katherine L. Milkman. “Looking Up and Looking Out: Career Mobility Effects of Demographic Similarity among Professionals.” Organization Science 24, no. 4 (July–August 2013): 1041–1060.

[8] Bohnet, n 2, 29.

[9] Bohnet, n 2, 231.

[10] Hoyt, Crystal L., and Stefanie Simon. “Female Leaders Injurious or Inspiring Role Models for Women?.” Psychology of Women Quarterly 35.1 (2011): 143-157.

[11] 30% Club Australia “Barriers to Progression” quoting Dr Jennifer Whelan, Senior Consultant at Serendis Leadership at Melbourne Business School. https://30percentclub.org/assets/uploads/barriers_to_progression.pdf.

[12]  Janice Fanning Maddern. “Performance-Support Bias and The Gender Gap Among Stockbrokers” Gender & Society 26 (2012) 488-518.

[13] Bohnet, n 2, 109.

[14] Castilla and Benard, “The Paradox of Meritocracy in Organisations” (2010) Administrative Society Quarterly 55(4), 543-676.

[15] Australian Bureau of Statistics. Disability, Aging and Carers Australia: Summary of Findings, 2003. Canberra Australia: Australian Bureau of Statistics; 2004 September 15. Cat. No. 4430.0. Available from: http://www.abs.gov.au/AUSSTATS/abs@.nsf/DetailsPage/4430.02003?OpenDocument.

[16] World Economic Forum, Ibarra, H. “Why strategic networking is harder for women”. https://www.weforum.org/agenda/2016/04/why-strategic-networking-is-harder-for-women/

[17] Bates, L. “Everyday Sexism”, Simon & Schuster UK (2015).

[18] Bates, L “Everyday Sexism”, London School of Economics Podcast, 12 October 2016.

Published: 27 July 2017

Patenting Software in Australia: Australian Patent Office Says No in July 2017

In this post, we look at the July 2017 Australian Patent Office decisions.  Of the seven decisions published to date (issued to 24 July 2017), four (4) relate to computer software and manner of manufacture, and on all four the Delegate has found the subject matter unpatentable:

  • Todd Martin [2017] APO 33 (7 July 2017)
  • Rokt Pte Ltd [2017] APO 34 (11 July 2017)
  • Discovery Life Limited [2017] APO 36 (18 July 2017)
  • Bio-Rad Laboratories, Inc. [2017] APO 38 (24 July 2017)

Todd Martin (7 July 2017)

Is a system and method for tracking usage of athletic equipment of an athlete in a computer web-based training log server patent eligible?

This case involves an innovation patent which was undergoing examination, with four examination reports having been issued – with the outstanding issue being that the claims were not directed to a “manner of manufacture” (that is, were not patent eligible subject matter).

Independent claim 1 was directed toward a system respectively, including a computer web-based training log server, a processor and a GPS-enabled mobile device, where training distance and time were recorded and a warning issued in relation to maximum usage.  Independent method claim 5 was directed toward largely similar subject matter.

The Delegate looked to NRDC, Myriad and RPL Central to justify a case-by-case analysis as to whether an invention satisfies the requirements for a “manner of manufacture”, including having regard for the technicality of an invention.  Indeed, the Delegate cited the four step test outlined in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application[2006] EWCA Civ 1371 (‘Aerotel‘), as cited in Research Affiliates LLC v Commissioner of Patents[2014] FCAFC 150, for determining whether the invention has a “technical effect”, namely at [40]:

“(1) properly construe the claim; (2) identify the actual contribution;  (3) ask whether it falls solely within the excluded subject matter; (4) check whether the actual or alleged contribution is actually technical in nature.”

Whilst the Delegate acknowledged that the claims were to a GPS-enabled device and server, the Delegate stated these elements were simply used in their normal, standard way.  Any “technical effect” arising from the combination of acquiring and tracking training data and issuing a warning was, according to the decision, confined to the “nature of the data that is acquired and tracked, and the nature and timing of the information that is output or issued at the appropriate point” (at [44]) .

Thus the claims were held to lack a technical contribution in respect of the devices – and were consequently not a manner of manufacture; “it cannot be fairly said that the overall claimed arrangement solves a technical problem within or outside the computer, or results in an improvement in the functioning of a computer or computer system” (at [48]).

Australian Patent Offices Says: No

Rokt Pte Ltd (11 July 2017)

Is a digital advertising system and method patent eligible?

This decision relates to application AU2013201494 and a previous hearing, Rokt Pte Ltd [2016] APO 66.  In particular, the Delegate had found that the claims of the application were not directed toward a manner of manufacture – and invited amendments.  This decision relates to those amendments.

The amended independent claims, 1 and 15, were directed toward a method and system, respectively, for linking a computer user to an advertising message by way of an intermediate engagement offer.

The amendments sought to clarify that the linkage of the user to an advertisement was made via an intermediary engagement offer which was determined by evaluating engagement data to determine if an engagement trigger has occurred – and if multiple offers are available determining which one to present – as well as collecting user data for use in future engagement offer decision selections.

On the basis of the amendments, the Delegate considered the new substance of the invention to additionally include selecting between engagement offers, and collecting data for future engagement offer selections.

Again, the Delegate distances the alleged substance of the invention from “the way the computer is utilised”, stating at [31]:

I do not consider the features identified above add anything more than further specifics to the advertising methodology. Ranking based on non-technical metrics, and collecting further data to use in the future to select subsequent advertisements, are contributions that are simply strategic innovations in the field of advertising for improving customer engagement with ads that amount to a mere scheme.

Accordingly, the Delegate found that improvements to an evaluation scheme and not the computer systems themselves, were not patentable.

Australian Patent Offices Says: No

Bio-Rad Laboratories, Inc. (24 July 2017)

Is a system and method for producing statistically valid assay means and ranges for quality control materials patent eligible?

This case involves divisional application AU2016200387, which was filed in respect of a national phase entry application (AU2012236746) of a corresponding PCT application – which failed to gain acceptance within 12 months due to an outstanding manner of manufacture objection.

The present divisional also had outstanding manner of manufacture objections.  Three independent claims 1, 13 and 15, related to a method, system and assay mean and range assignment system – for establishing a statistically valid assay mean and range.

The Delegate distanced the matters for consideration in this case from RPL and Research Affiliates, in his view due the the latter being directed to schemes.

Rather, the decision focused on Grant’s interpretation of NRDC – and whether a physical effect was present.  In particular, when examining the specification, the Delegate did note at [35] that the breadth of the claims in terms of the variability being estimated from historical results in full or in part – does not necessarily produce the stated physical effect in all instances, and moreover may raise support issues.

Nevertheless, the Delegate has made provision for the applicant to submit amendments in order to attempt to overcome the objections – therefore, watch this space!

Australian Patent Offices Says: No

Discovery Life Limited (18 July 2017)

Is a method of managing a life insurance policy with a related medical scheme patent eligible?

The application at the centre of this decision, AU2016203283, is a fourth order divisional of an application (it’s great great grandparent) with an earliest priority date of 16 April 2004.  The outstanding objections included that the subject matter of the claims was not a manner of manufacture (and inventive step – see the decision for more information on this!).

The application includes one independent claim, relating to managing a life insurance policy based upon linking – using an information processing system – an individual’s life insurance policy to a medical policy and allocating a portion of life insurance premiums to a payback fund based upon criteria associated with the individual – payable after a predetermined amount of time.

The Delegate in this case dismissed the applicant’s submissions that integration of two computer systems relating to life insurance and medical insurance policies resulted in more than a generic computer.  Rather, the decision states that when read as a whole, the specification failed to provide any more than a generic description of the computer integration – and thus the claims are directed to “plainly a business method, a mere scheme” [27] and patent ineligible.

Australian Patent Offices Says: No

What does this mean?

On the face of it, the decision issued in July by the Australian Patent Office may be discouraging as the apparent rejections relate to a broad range of fields of innovation – from collection and analysis of data, targeting advertising, statistical optimisation for assay analysis, and insurance policy management.

However, it does appear that the Patent Office is operating on a case by case basis, and in addition looking to authorities which ostensibly require a demonstrable technical effect (see, eg, Aerotel), a concrete, physical effect (see, eg, Grant), and/or distinctions from a generic computer system(s).  Therefore, we would advise that when seeking to apply for patent protection in Australia, you consider these authorities and seek a professional opinion – so feel free to contact us with any questions.

Notwithstanding the above, given the contention around the issue of patent eligibility of software, and the fact that the interpretation of the Patents Act may be subject to change as more cases are brought before the courts, we could well see a relaxing (or tightening) of these requirements in years to come.

First published: 3 August 2017

Where are the female patent attorneys?

Part 4: Opportunities for change

This is the fourth and final part in our series exploring gender imbalance in the patent attorney profession here in Australia.  (Click here if you missed out on Part 1, Part 2, or Part 3).

Accepting that the current playing field for female patent practitioners is not level, on the basis of the overwhelming evidence outlined in Parts 2 and Part 3, one may question whether there is anything which can serve to redress the imbalance.  In this regard, research abounds in relation to affecting change on an organisational level using evidence-based behavioural interventions, rather than traditional set-and-forget training schemes and ineffectual diversity committees.

Unconscious Bias Training and Generic Diversity Committees Don't Work

Research has shown that providing unconscious bias awareness and other diversity training has negligible, and in some instances, negative effects.[1]  Moreover, even when senior executives acknowledge the importance of diversity, unfortunately this rarely translates into action;[2] namely, the intention-action gap.  Rather, evidence-based organisational design initiatives that attempt to circumvent unconscious bias and level the playing field are exhibiting promising outcomes.

A motivating example is found in the blind audition experiment published in 2000.  Symphony orchestras in the US had until the 1970s suffered from lack of female players.  In the 1970s and 1980s, many adopted “blind audition” processes where candidates’ identities (and hence genders) were masked behind a screen.  Analysis of the collated data attributed a 25 percent increase in females in symphony orchestras in the US simply to the fact that gender could not be discerned from behind the screen.[3]

In terms of the modern workplace, behavioural design initiatives for levelling the playing field, akin to the “blind audition”, can be adopted in relation to hiring and promotion, capacity building, goal setting and accountability, encouraging sponsorship networks, and the like, many of which include techniques which are “low-hanging fruit”.

Hiring and Promotion

In terms of hiring and promotion, the latest research suggests that the joint evaluation of potential candidates can overcome inherent biases.  In one study, candidates were required to hire hypothetical male or female candidates for a traditionally male task relating to STEM, and a traditionally female task relating to word processing.[4]  When candidates were assessed individually, males were more likely hired for the male task and females for the female task, irrespective of performance (or indeed underperformance).  However, when joint evaluation was adopted “not only did the gender gap vanish completely, but basically all evaluations now chose the top performer”[5].  Another suggestion for hiring and promotion includes instituting structured interviews to evaluate candidates, obviating the propensity to assess more subjective criteria such as “cultural fit”, which are strongly linked with bias.[6]

Capacity Building

Capacity building focusses on targeting women with sustained leadership training, goal setting and follow up, rather than simply providing generic leadership programs.  Indeed, in her book “What Works: Gender Diversity by Design” Professor Iris Bohnet states that “[a]ll available evidence points to the importance of training programs that go beyond educating people to building their capacity as well – [l]earning to do something is different, and less desirable, that being supported in how you are achieving something”.  This sentiment is echoed in other corporate research which states that capacity building among female talent is one of the top three predictors of greater gender balance in an organisation.[7]

Goal Setting and Accountability

Goal setting and accountability is one of the most underutilised, and yet most effective, tools for realising change in gender inequality.  When setting goals, research supports ensuring that longer term goals are supplemented by smaller, interim, achievable goals or targets.[8]  Moreover, public accountability for achieving tangible goals is particularly important in attenuating unconscious bias.[9] Such goal setting and accountability helps bridge the intention-action gap.[10]  For example, a McKinsey study found one of the most important measures in predicting organisations with higher proportion of senior women executives was visible, public monitoring from a CEO-level.[11]

Quotas - It's Not a Dirty Word

Another evidence-based recommendation is the institution of quotas for senior positions, a powerful form of goal setting.  One of the most overused arguments against quotas is that they are not “fair” as they obviate “merit”.  As discussed above, the notion of “merit” is not a level playing field.  Moreover, quotas create more counterstereotypical role models; a phenomenon which itself is instrumental in the attraction and retention of more minorities.  Simply stated, research shows that “seeing is believing”,[12] and quotas provide a very powerful tool to ensure senior female role models are “seen”.

Sponsorship and Mentorship

Sponsorship and mentorship between junior and senior practitioners in other corporate environments has also proved powerful in predicting the mobility of women in organisations.[13]  In the patent practice context, intra-organisational mentoring programs could be adopted, together with an inter-organisational mentoring network, for example, by an industry body such as IPTA.  Studies have shown that the more active the relationship, in terms of championship rather than a more ad-hoc arrangement, the more impact mentoring can have in terms of redressing imbalance.

Comparative Rankings

Other recommendations which are borrowed from the realm of behavioural economics include publishing gender rankings among organisations within the industry.  Research in this area has shown that comparative rankings can be highly influential in motivating changes in behaviour.[14]  The collation and publishing of such statistics could be adopted by the professional standards body, the Trans-Tasman IP Attorneys Board, or indeed IPTA.

Combating Explicit Bias

Combating the influence of everyday sexism is a more difficult proposition.  Particularly where the individual is vulnerable to backlash and victimisation, as a more junior member of the profession.  Nevertheless, however “trivial”, Bates describes the need to speak out against every incidence in order to stop the normalisation of such a “culture”: “Inequality is a continuum, with the minor and major incidents irrevocably related to one another as the attitudes and ideas that underlie one allow the other to flourish”[15].

Furthermore, senior members of the profession should look to set an example.  Evidence explicitly shows that imposing a norm of political correctness enhances creativity in mixed-sex groups, including “increas[ing] the exchange of ideas by clarifying the rules of engagement and providing assurance to those, predominantly women, for whom speaking up was associated with counterstereotypical behaviour”.[16]

A Call to Arms

Ultimately, these recommendations are not just implementable in private practice.  Influential societies such as IPTA have an exciting opportunity to lead real diversity initiatives.  Additionally, these suggestions should not be viewed as a silver bullet, either individually or collectively.  It is important to emphasise that interventions should be implemented, performance evaluated, and constantly improved.

Summary and conclusions

Given the statistics presented, it is undeniable that gender imbalance within the patent attorney profession exists, and is particularly pronounced at the senior levels in private practice.  Moreover, if males continue to outpace females as new entrants to the profession, and females continue to outpace males in terms of attrition, gender balance will remain unachievable.  Furthermore, none of these statistics appear to correlate with historical completion rates for women in STEM; a common misconception.  Rather, evidence from many other research studies suggests that the dearth of women in the industry is a more ubiquitous combination of unconscious bias, perceived lack of fit within senior positions, and cultural and explicit biases.

In order to truly address the imbalance, and realise the substantial financial benefits gender balance promises, one must firstly overcome the institutionalised thinking and injunctification that the status quo is the “way things should be” (particularly in view of the “threat” this research may exhibit).  In fact, many of the interventions presented here are relatively low-hanging fruit, including tweaking hiring and promotion processes, adopting mentoring and capacity building programs, instituting politically correct norms, and the like.

In summary, the patent attorney industry in Australia is poised at a crossroad.  One fork leads inevitably to the perpetuation of gender imbalance – unfortunately, the passage of time will not heal all ills.  The other fork, however, presents an exciting opportunity – to exhibit transformational leadership and innovation in terms of redressing the significant gender imbalance in the ranks, and the consequent realisation of substantial business gains.

This is the final part in this series...

… but feel free to catch up on parts you may have missed.

Business case

Click here to catch up on Part 1 and the business case for gender balance!

Myths

Click here for Part 2 which debunks some of the most commonly purported myths.

Causes

Details the more insidious causes for the imbalance (backed by evidence!)

Selected references

[1] See, eg, Kalev, A. Dobbin, F, Kelly, E. “Best Practices or Best Guesses?  Assessing the Efficacy of Corporate Affirmative Action and Diversity Policies” American Sociological Review 71 (2006): 589-617; Dobbin, F. Kalev, A. Kelly, E. “Diversity Management in Corporate America”, Contexts 6 (2007): 21-27.

[2] ‘Women Matter: Women at the top of corporations: Making it happen’, McKinsey & Company, 2010.

[3] Goldin, Claudia and Cecilia Rouse. “Orchestrating Impartiality: The Impact of” Blind” Auditions on Female Musicians.” The American Economic Review 90.4 (2000): 715-741.

[4] Bohnet, I, van Geen, A, Bazerman, M. “When Performance Trumps Gender Bias: Joint vs Separate Evaluation” Management Science. September 29, 2015, http:dx.doi.org/10.1287/mnsc.2015.2186.

[5] Iris Bohnet, What Works: Gender Equality by Design, (The Belknap Press of Harvard University Press, 2016), 127.

[6] Bohnet, n 5, 146-164.

[7] McKinsey & Company, n 2.

[8] Bohnet, n 5, 280

[9] Bohnet, n 5, 281.

[10] Kalev et al “Best Practices or Best Guesses? Assessing the Efficacy of Corporate Affirmative Action and Diversity Policies” American Sociological Review 71 (2006) 589-617.

[11] McKinsey & Company, n 2.

[12] Bohnet, n 5,201-219.

[13] McKinsey & Company, n 2.

[14] Allcott and Rogers “The Short-Run and Long-Run Effects of Behavioural Interventions: Experimental Evidence from Energy Conservation” American Economic Review 104 (2014) 3003-3037.

[15] The Independent “Book Review: Everyday Sexism by Laura Bates” Sturges, F (2014) http://www.independent.co.uk/arts-entertainment/books/reviews/book-review-everyday-sexism-by-laura-bates-9264664.html, quoting Laura Bates.

[16] Sturges, n 15 citing research from Goncalo et al “Creativity from Constraint? How the Political Correctness Norm Influences Creativity in Mixed-Sex Work Groups” Administrative Science Quarterly 60 (2015): 1-30.

Published: 3 August 2017

Diagnostics Inventions in the US: The Situation Worsens…

On 4 August 2017, the United States District Court handed down another decision to dishearten the biomedical sector. The U.S. judiciary are sending a constant message that diagnostic methods based on a natural law or principle are not to be considered as patent eligible subject matter.

Introducing the parties and their arguments

The Plaintiffs (the patent owners) in this case are Athena Diagnostics, Inc, Isis Innovation Limited (rebranded as Oxford University Innovation), and Max-Plank-Gesellschaft zur Forderung de Wissenschaften e.V., and are collectively referred to herein as “Athena”.  The Defendants (the alleged infringers) are Mayo Collaborative Services, LLC (doing business as “Mayo Medical Laboratories“), and Mayo Clinic – which for the purposes of this article, are collectively referred to as “Mayo”.

Specifically, Athena were alleging that Mayo had developed two diagnostic tests that infringe on the Athena patent – U.S. Patent No. 7,267,820 (“the ‘820 patent”). Mayo’s defence: the ‘820 patent is invalid under the famous 35 U.S.C. section 101, because the claimed method merely applies routine and conventional techniques to a law of nature. Accordingly, the present case specifically considered a Motion to Dismiss the pending infringement case on the basis that the patent is not valid.

The '820 patent

The patent-in-suit is directed to the diagnosis of Myasthenia Gravis, a chronic autoimmune disorder. Symptoms include waning muscle strength throughout the day, eye weakness (e.g., drooping eyelids), leg weakness, dysphagia, and slurred or nasal speech.

The inventors of the ‘820 patent found that 20% of Myasthenia Gravis patients lack acetyle choline receptor (AChR) autoantibodies, and instead have IgG antibodies that bind to the N-terminal domains of muscle specific tyrosine kinase (MuSK), a receptor that is located on the surface of neuromuscular junctions. Advantageously, the methods disclosed in the patent specification provide a more accurate and speedy diagnosis of these 20% of Myasthenia Gravis patients.

The ‘820 patent is therefore directed to a method for diagnosing Myasthenia Gravis using a radioactive label attached to MuSK (or a fragment of MuSK) – which is then introduced into a sample of bodily fluid. In particular,125I-MuSK is introduced into the bodily fluid, the MuSK autoantibodies, if present, attach to the labeled fragment. Once precipitating the bodily fluid, the presence of radioactive label on any antibody indicates that the person is suffering from Myasthenia Gravis.

Mayo's Motion to Dismiss

Although Athena put forward the case that Mayo was infringing their patent – this isn’t the subject of this article (or really, this decision) and accordingly is not discussed here. More interestingly – Mayo opines that the infringement complaint should be dismissed “on the ground that the patent seeks to patent a law of nature, and it uses techniques standard in the art.

As one might expect, Athena disagrees with the assertions of Mayo – responding that the patent requires the production and use of a fluorescently labelled protein, 125I-MuSK (which, of course, is not naturally occurring). In addition, Athena comments that various procedures are applied to the non-naturally occurring protein which are sufficient to “transform the claim” and thus make it patent eligible.

The Test For Patent Eligibility

In the U.S., it is well established that a threshold standard for patent protection is that the subject matter of a patent must be patentable under Section 101. Otherwise, the patent is invalid. The highly discussed Alice Corp v CLS Bank, and Assoc. Mol. Pathology v Myriad Genetics Supreme Court decisions have determined that Section 101 contains implicit exceptions to:

  • Laws of nature;
  • Natural phenomena; and
  • Abstract ideas;

which are all patent ineligible.

The U.S. Patent and Trademark Office are currently applying a two-step method for assessing patent eligibility, as set out in the controversial Mayo v Prometheus decision.

Step 1: Are Claims Directed to a Patent Ineligible Concept?

Although the ‘820 patent describes the formation of of a complex between a man-made chemically-modified version of MuSK, with the patient’s own autoantibodies – resulting in the creation of a specific complex that does not occur in nature, the Court have determined this to be insufficient to render the subject matter eligible.

In arriving at this finding, the Court highlights that the ‘820 patent claims only define a method for diagnosing a disease – and not the man-made chemical entity per se. Allegedly, the focus of the claims of the invention is the interaction between the 125I-MuSK and the antibodies within the bodily fluid, and this interaction is naturally occurring. Because the claims focus on the natural occurrence, it is directed to a patent-ineligible concept.

Step 2: Does the inventiveness of the claim make it patent eligible?

Should a patent fail part one of the Section 101 analysis – it proceeds to step two. That is, the patent can be upheld if the method contains an “inventive concept“.

In this case, Mayo argued that the ‘820 patent should also fail step two, because merely identifying the presence of autoantibodies to MuSK is not an inventive concept, as the techniques for doing so are well established in the art. The Federal Circuit have previously advised that “more is required than well-understood, routine, conventional activity already engaged in by the scientific community(see, CellzDirect, 827 F.3d at 1047).

Mayo draws support from the ‘820 patent itself, which teaches that: “iondination and immunoprecipitation are standard techniques in the art, the details of which can be found in references (4 and 6)“. References 4 and 6 were published in are dated 1976 and 1985, respectively.

Athena disputed Mayo’s allegations on the basis the the step of detecting autoantibodies was neither well understood nor routine. Additionally, the step of contacting MuSK or a MuSK epitope with a suitable label was highlighted as being novel. Athena further opined that in light of the complexity of protein molecules, getting known iodination methods to work specifically with proteins, is not routine.

Unfortunately for Athena, the Court did not accept their arguments – because the specification appeared wholly silent on any of the complexity of the steps that Athena alleged were neither well-known nor standard. It is well established that a patent specification must contain a written description of the invention, and the manner and process of making and using it, “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains” could make or use it. Therefore, in the absence of the features that allegedly make the invention – the specification clearly fails to meet this requirement.

Mayo, Ariosa and now Athena: the trend continues...

The Supreme Court started the wrecking ball on diagnostic inventions back in 2012 in the Mayo v Prometheus decision. As discussed in intricate detail elsewhere, the Prometheus patent was directed to a diagnostic test which measured how well a person metabolized thiopurine drugs. Despite the test involving a patient being administered with the drug 6-thioguanine before measuring the level of the drug in the patient’s blood stream – the Court held that claimed method was no more than the observation of a law of nature!

Simply put, the Court asserted that the necessitation of human action (i.e., the administration of a thiopurine drug) to trigger the reaction – the reaction itself was not a human action – and accordingly not patent eligible. The methods merely measured how effectively a person metabolizes the drug – an “entirely natural process“.

The Decision of the US Court of Appears for the Federal Circuit in Ariosa v Sequenom added fuel to the fire. There was no doubt that the innovative technology solved a huge market need – the patent was directed to a method of using fetal DNA to diagnose certain conditions. Quite amazingly, the inventors found that cell-free fetal DNA was present in maternal plasma and serum – a portion of the maternal blood sample that other researchers had previously discarded as medical waste – and from the tiny fraction of paternal cell-free fetal DNA the inventors could determine certain inherited characteristics. The claimed method encompassed methods of isolating and amplifying the DNA to provide a greater efficiency in diagnosis of genetic defects.

However, it was the view of the Court that “the only subject matter new and useful as of the date of the application was the discovery of the presence of cffDNA in maternal plasma or serum“. This statement appears flawed – at least in part because the patent claims were not directed to the cffDNA per se – but to a new and incredibly inventive diagnostic method that only became possible after the discovery of the cffDNA. It’s difficult to agree with the decision that such methods, requiring significant human intervention, are based on a natural law or phenomenon – and it sets a terrifying trend as to how far this concept could be extrapolated? If you dig deep enough, could an argument be made that every possible method in the world relates, at some level, to a natural law?

Is there a glimpse of relief?

Moving forward, there appear to be fewer and fewer pegs to hang your hat on with respect to diagnostic method patents. The most prevalent glimmer of hope is vested in the recent Rapid Litigation Management v CellzDirect. The patent considered in this case claimed a method for preserving primary liver cells by re-freezing. This technology was hugely valuable – because hepatocytes naturally have a very short life span (thus could only be frozen once using previous technologies), and can only be harvested from a limited number of donors.

Although in the first instance the District Court believed the claims to be directed to ineligible subject matter, on Appeal the Federal Appeals Court more sensibly found that the claims were not directed to the natural law, but instead to a new and useful method for preserving hepatocytes. Specifically, the Appeals Court found that the invention was not the mere observation or detection of the ability of hepatocytes to survive multiple freeze-thaw cycles, but instead directed to a new and useful method of preserving the cells. Thus – the outcome was a method to produce something useful, and the claims were considered to define patent-eligible subject matter.

This result appears to distinguish over the conclusion arrived at in respect of the ‘820 patent – because the “desired outcome” of the ‘820 patent is the mere detection of MuSK autoantibodies. Allegedly, it does not “produce something useful beyond that diagnosis“. Of course, the counter argument is that the diagnosis itself is hugely useful – as it allows for a more effective treatment regimen to be prescribed to a patient in need. However, it appears that a stance has been set in the  U.S. that they are looking for a biomedical method to result in a material and tangible product (which is certainly a new, and in our view misplaced, consideration with respect to traditional patent law).

Although the future is far from certain, it looks like owners of technology involving diagnostic methods are in for a rough few years with respect to obtaining their U.S. patents. Exceptional care and creativity must be taken when drafting claims directed to diagnostic method technology. For example, one option likely to be positively viewed appears to be to formulate a product that is integral to the working of the diagnostic method.

If you have a diagnostic technology and are looking to explore strategies that can be used to protect your innovation in the U.S. and other jurisdictions, it has never been more important to contact the biomedical technology experts at Innofy now, for an obligation free discussion!

Published: 13 August 2017

Australian Full Federal Court Denies Pharmaceutical Patent Term Extension

On 18 August 2017, the Australian Full Federal Court (Besanko, Yates, and Beach JJ) handed down an interesting decision, at least for the biotechnology community. The Commissioner of Patents appealed an earlier decision of the Administrative Appeals Tribunal (the decision from which can be found here) , in order to take another look at whether the patent term extension provisions of Australian patent law extend to “Swiss type” claims. In other words, what is the proper construction of section 70(2)(b) of the Patents Act 1990 (Cth), which identifies one of the bases on which the Commissioner of Patents can extend the term of a standard patent directed to pharmaceutical substances?

The Respondent (the Patentee) in this case is AbbVie Biotechnology Ltd, a U.S. pharmaceutical company spun out of Abbot Laboratories in 2013. The commercial focus of AbbVie is to discover, develop, and market both biopharmaceuticals and small molecule drugs. Relevant to this case is AbbVie’s flagship drug – the antibody treatment adalimumab, which is currently sold under the trade name HUMIRA®.

The case concerns three of AbbVie’s patents: AU2012261708 (the ‘708 patent), AU2013203420 (the ‘420 patent), and AU2013257402 (the ‘402 patent); collectively referred to as “the AbbVie patents.” The patents are sequential divisional applications of one another (i.e., having a grandparent – parent – child relationship), with an earliest priority date of 10 February 1996 (through U.S. provisional application no. 08599226). Thus, the 20-year patent term of the AbbVie patents started to expire naturally from 10 February 2017.

… Or did it?! Could the patents stay alive for longer in Australia under the provisions for patent term extension for pharmaceutical products?

Extension of Patent Term for Pharmaceutical Substances

It takes many years of basic research, clinical trials, and regulatory approvals to take a new drug candidate from the research laboratory bench to the clinic. In many cases, the lion’s share of a patent term has already expired by the time a new drug navigates the red tape and makes it to market. In order to compensate the patent owner – Australian law includes provisions for extending the term of patents disclosing pharmaceutical inventions (for a maximum of five years).

Section 70(2) of the Australian Patents Act states the circumstances under which a pharmaceutical invention may be eligible for such an extension of patent term:

Specifically, either or both of the following conditions must be satisfied:

(a)    one or more pharmaceutical substances per se must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of the claim or claims of that specification;

(b)   one or more pharmaceutical substances when produced by a process that involves the use of recombinant DNA technology, must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of the claim or claims of that specification. (emphasis added)

When it comes to the Extension of  Patent Term, Boehringer Ingelheim International v Commissioner of Patents [2000] FCA 1918 is one of the go-to cases. It was suggested that a pharmaceutical substance could be the subject of three types of claims: (1) a new and inventive product alone; (2) a known product prepared by a new and inventive process; and (3) a known product used in a new and inventive method of treatment. In this decision, it was stated that “only the first type of claim to a pharmaceutical product is to be subject to extension rights.” This mirrors the objective in introducing this legislation – to foster primary research and development of inventive substances, and not the way they are made or used. However, there is one exception set out in section 70(2)(b) – “it is only when the new process answers the particular description in s 70(2)(b) (recombinant DNA process) that it can be the subject of an extension. […] This being an area particularly worthy of assistance for research and development.

In other words, it is well established that the extension of patent term available for pharmaceutical inventions is reserved for product claims, and not new processes or methods. That is, unless the pharmaceutical product is produced by a process that involves recombinant DNA technology.

Notably, although the present case solely considers the ambit of section 70(2), there are other criteria set out in the Patents Act which must be met for an extension to be allowable, which can briefly be summerised as:

Section 70(3)At least one claimed substance:
- must be included in the Australian Register of Therapeutic Goods;
AND
- have a first regulatory approval date at least five years from the date of the patent.
Section 70(4)The term of the patent must not have been extended previously.
Section 71(1)The Extension of Term application must be in the approved form;
AND
accompanied by the required documents and information.
Section 71(2)The Extension of Term application must be made during the term of the patent and within six months after:
- date of patent grant; or
- date of first inclusion in Australian Register of Therapeutic Goods
(whichever is later).

The Pharmaceutical Substance Must Itself Be Claimed.

As discussed, the matter claimed must be the pharmaceutical substance or substances so produced, and not any other method or process involving those substances. This appears to be the only sensible way to construe the Australian statute; section 70(2)(a) and (b) would otherwise be in direct contradiction with one another.

The Court drew reference to the emphasis in the Parliamentary Explanatory Memorandum published with the Intellectual Property Laws Amendment Bill 1997 (which introduced these provisions). The Memorandum explained that the extension of term provision is relevant only for patents directed to new and inventive substances – not those claiming the method or process by which they are produced (other than those involving recombinant DNA technology). In fact, it explicitly states that new methods of treatment are not intended to be part of the extension of term regime.

The Commissioner presented in oral submissions that it is unnecessary for section 70(2)(b) to refer to “one or more pharmaceutical substances per se” (emphasis added) – because the substances described therein are already characterised by the fact that they must be produced by the process of recombinant DNA technology. The Court affirmed that “each provision’s [section 70(2)(a) and 70(2)(b)] concern is with pharmaceutical substances, not additional or other matter concerning or involving the use of pharmaceutical substances.

The Swiss Type Claim

Swiss type claims are those directed to the manufacture of a composition for use in treating a particular disease or condition. The traditional function of such claims is to encompass the manufacture of a defined pharmaceutical product in those jurisdictions (including Europe, China, and New Zealand) that prohibit claims to methods of medical treatment.

These claims are typically drafted in the following format:

Use of COMPOUND X
in the manufacture of a medicament
for the treatment of DISEASE Y.
In Australia, Swiss type claims are considered to be directly infringed by the unauthorised third party manufacturer of the defined medicament.

Are Swiss Type Claims Eligible for Patent Term Extensions?

The AbbVie patents considered by the Full Federal Court contain Swiss type claims directed to the use of adalimumab (HUMIRA®) for the treatment of ulcerative colitis (the ‘708 patent), Crohn’s disease (the ‘420 patent), and rheumatoid spondylitis (the ‘402 patent).

The Court emphasised that Swiss type claims are not claims directed to pharmaceutical substances. Rather, they are method or process claims that require two features to be satisfied in order to infringe. First, the defined substance (“Compound X”) must be used to create a medicament. Second, there is a particular purpose or indication (“Disease Y”) for which the medicament is to be used. The Full Federal Court were clear in their determination that the scope of Swiss type claims is fundamentally different to the scope of claims addressed by section 70(2) of the Patents Act.

Being a pharmaceutical substance produced by a process that involves recombinant DNA technology, AbbVie would have certainly hoped that adalimumab is eligible for an extension of patent term under section 70(2)(b). The Federal Court, however, dismissed such construction. It was instead found that the claims of the AbbVie patents are not directed to adalimumab produced by recombinant DNA technology. Rather, the inventions described within the AbbVie patents are directed to new uses of adalimumab. Specifically, that adalimumab can be formulated in a medicament to treat ulcerative colitis, Crohn’s disease, and rheumatoid spondylitis.

Accordingly, to successfully operate of the extension of term provisions, it is clearly insufficient to merely show that the pharmaceutical substance is produced by a process involving recombinant DNA technology. Despite the lack of the expression “per se” in the wording of section 70(2)(b), there is still an implicit requirement that the pharmaceutical composition must, in substance, fall within the scope of the specification claims.

Thus, the claims of the AbbVie patents are not eligible for any extension of patent term under Australian patent law, as the claims defined “an entirely different scope” to the pharmaceutical compositions themselves.

Commercial Implications of Patent Extension Ineligibility.

Although this decision may appear to drill down on a minor or irrelevant area of Australian law, it would be ill-informed to consider it void of commercial relevance. With sales of HUMIRA® making up around 65% of AbbVie‘s total revenue, we can be sure that there was plenty riding on the Decision (if not specifically in the circumstances of this situation – the precedent set for the future). Between 2012 and 2016 HUMIRA® topped the world’s list of best-selling pharmaceutical products; last year global sales of the immunotherapy reached over $16 billion (and over $14 billion in 2015).

For the last couple of years, Indian pharmaceutical companies have already emerged with biosimilar versions of the blockbuster drug – with a significantly cheaper price-tag attached. For example, Cadila Healthcare Ltd has launched Exemptia, at $200 per treatment (as opposed to the $4370 price tag attached to HUMIRA®), and Torrent Pharmaceuticals Limited has launched Adfrar.

Obtaining patent term extension in Australia would have allowed AbbVie to continue exploiting its incredibly lucrative monopoly, and shut out the biosimilars for a while longer. Unfortunately, however, this decision by the Full Federal Court will open the gates to biosimilars, including the Indian equivalents described above. We can expect that AbbVie will significantly lower the price of HUMIRA® to remain competitive in future (to the detriment of their bottom line).

What Patent Strategy Tips To Take Away?

The key take-home message from this decision is to ensure that the product itself is claimed when filing a patent application directed to a new method of producing a known pharmaceutical substance (specifically, involving DNA recombination technology). At the very least, this may be done as a “product by process” claim. Even better, is if a physical aspect to the known substance changes when produced by recombinantly. The altered molecule could certainly form the basis of patent with a much stronger ability to extend its term (providing the other extension criteria are met).

To discuss your situation and how the Australian legislation governing patent term extension applies (or even to discuss the Australian provisions generally), contact the biotechnology team at Innofy.

Patent Attorneys in Brisbane

Providing Patent Attorney services in Brisbane

Innofy have award-winning Patent Attorneys headquartered in Brisbane.  We provide Patent Attorney services for innovators, by innovators, to clients across the city, greater Brisbane, nationally and internationally.  What differentiates innofy from other Patent Attorneys in Brisbane is the quality of our people and our ability to maximise client value.  We do this by operating in an agile environment, constantly innovating and evolving our practice, collaborating, and providing an upfront flat fee for everything we do!  If you need Patent Attorney services in Brisbane, and you want them done right – talk to us!  What to know more about how we work, then click here.

Our Brisbane Patent Attorneys are here to help

Need a Patent Attorney in Brisbane?  We have specialists in engineering, medical devices, software, start-ups, biotechnology, agriculture, immunology, pharmaceuticals, and much more!  Browse the profiles of our Brisbane Patent Attorneys below.

What people say about Brisbane’s most innovative Patent Attorneys

We believe we offer exceptional Patent Attorney services in Brisbane, Australia, New Zealand and internationally.  However, don’t just take our word for it – see these kind words from others.

Get in touch, we’re here to help

email: info@innofy.com.au
call: +61 (0) 481 355 001
mail: P.O. Box 17, Paddington Q 4064

Five Strategies for Obtaining Diagnostic Method Patents in the United States

We recently reported on the United States Patent and Trademark Office’s current interpretation of section 101 with respect to diagnostic method patents (catch up here). As clearly stated in that article, the current situation is bleak. Never has it been more important to be smart and creative with your patent prosecution strategy from the outset. When drafting your patent specifications (or even if you engage the services of a patent attorney to draft your patent applications) it is imperative to stay familiar with, and strategise around, the current interpretation of key statute in your key commercial jurisdictions. Carefully considering your approach will give you the best chances of securing robust patent protection for your valuable diagnostic method technology.

With more and more diagnostic method technologies being developed in Australia – it is important to ensure that the opportunity is not lost by failing to navigate the perilous 35 USC §101 (the Section of the U.S. patent statute governing patent eligible subject matter). Here, we present five creative strategies to help get your United States diagnostic method patents over the line.

1. Define a “minimum combination” of components required to perform the method.

Typically, a diagnostic method measures the level of one or more molecules and equates that level to a particular status (for example, diseased or not diseased). Although there is a huge availability of methods for characterising the abundance of particular types of markers, think about whether a particular technique (or similar techniques) fit your method better than the rest? If so – try putting together a list of the essential components required to perform your particular method – and claim this novel and inventive combination. If your diagnostic method is the only reason as to why you would put together that specific combination, then this combination could serve as the basis of a patentable invention.

One such example could be a couple of specific probes directed to the best markers of your diagnostic, plus a cassette or chip that is necessary for performing the assay.

2. Recast the diagnostic into something else.

Diagnostic methods may not currently be considered patentable – but methods of treatment are! Why not reformat your diagnostic method into another type of method claim – where the patentability will not be under such heavy scrutiny. For example, if the diagnostic method is for diagnosing a specific disease, why not claim a method of treatment that includes a step of performing the diagnostic method before administering a drug. This reformatted method becomes patent eligible for a number of reasons including – the physical administration of a therapeutic to the patient; and causing a tangible change in the health of the patient.

The downside, is that we risk stepping into the realm of “split infringement” for such claims, as different steps may be performed by different parties. This makes enforcing your patent more complex – a trade off for navigating section 101.

3. Create a new tool with which to perform the method.

The current interpretation of section 101 prohibits claiming diagnostic methods that use nothing but techniques that are routine in the art. However, should the detection of a marker require a new tool (for example, a new fluorescent probe), then the use of that tool in the method may be sufficient to render the diagnostic method patentable. It is currently unclear just “how inventive” the new tool needs to be to make an impact – but the current Guidance issued from the USPTO appears to indicate, for example, that the use of a porcine antibody for the detection of human proteins is not used routinely – and as such – this would appear sufficient to confer patentability.

4. Wait it out.

It’s hard to think that the interpretation of section 101 can get any more onerous. Provisional applications filed today are unlikely to be examined in the United States for well over five years. Hopefully by the time your new application reaches examination – the interpretation will be more favourable for exciting new technologies in the diagnostic method space.

In light of the backlash that the current interpretation is having on the medical biotechnology community as a whole … it is whispered that a change (and hopefully, a relaxation) of the law is likely in the medium term.

5. Ensure your patent specification is drafted with as much detail as possible.

One message that the USPTO has always been clear on when discussing section 101, is that high level “diagnosis,” “detection,” and “identifying” steps are more likely to be considered patent ineligible than detailed claims that enunciate each individual step. Therefore, it will likely be advantageous, to have a laundry list of features that could be used to bring the method as far away as possible from being a mere natural phenomenon. Of course, as a patent Applicant you have a right to feel like you are entitled to the broadest claims that the prior art allows – and introducing additional limitations should not be performed without careful consideration. Having a clear commercial vision as to the most important embodiments of the technology will likely assist with the inclusion of potential features into claims whilst retaining robust protection for your primary commercial embodiments. This, along with filing one or more divisional applications to pursue claims from a slightly different perspective, is likely to be an effective strategy for ensuring eventual broad patent protection of your technology.

 

Of course, the particular strategy that is best suited to protect your technology will vary in accordance with your specific circumstances. Therefore – it is essential that you discuss the strategy for combatting 35 USC section 101 with your patent attorney before proceeding with filing your medical diagnostic method patent.

Contact the award-winning patent attorneys at Innofy now for a confidential obligation-free discussion as to the options that are available to you.

The End Is Near For Innovation Patents

IP Australia has just released the highly anticipated Exposure Draft of the Intellectual Property Laws Amendment (Productivity Response Part 1 and Other Measures) Bill 2017 (“the IP Laws Amendment Bill). The IP Laws Amendment Bill proposes a number of important amendments, including the awaited abolishing of innovation patents, that span the entire suite of intellectual property Acts currently in force in Australia.

To help you understand exactly what each of the amendments mean for you and your business, Innofy are running a short series of articles highlighting the each of the major changes proposed by the IP Laws Amendment Bill. Make sure that you are up to speed with what you need to consider before and after the amendments take effect.

PART 1. The End Is Near For Innovation Patents

The most significant amendment proposed by the IP Laws Amendment Bill is the abolition of innovation patents (Australia’s “second tier” patent system). We knew this day was imminent since the Australian Government published its response to the Productivity Commission’s inquiry into Australia’s Intellectual Property arrangements. A copy of the Productivity Commission’s report on intellectual property can be read, in full, here.

What You Need To Know.

True to their word, IP Australia are implementing legislation to abolish innovation patents. Importantly, the innovation patent route will still be open to any applications with a priority date earlier than the date the IP Laws Amendment Bill takes effect. Any patent applications filed with a priority date after the implementation date of the IP Laws Amendment Bill, however, will not be eligible for conversion or filling as a divisional application.

Accordingly, should the IP Laws Amendment Bill come into effect, there does not appear to be any immediate rush to file innovation patents from your already pending applications. Pleasingly to patent Applicants, it is proposed that innovation patents will still be available for all applications that were first filed before to the IP Laws Amendment Bill.

However, should you have an invention that may not meet the inventive step requirements of a standard patent, we would encourage the filing of a provisional application as soon as possible to ensure that you achieve the required priority date. This should allow you to convert your standard patent application to an innovation patent, should you need to do so.

Why does Australia have an innovation patent system?

The innovation patent system was originally established to provide Australian small and medium sized enterprises (SMEs) with a quicker and more affordable way to protect their innovations.

What went wrong? The demise of innovation patents.

As a reminder, the Productivity Commission and the former Advisory Council on Intellectual Property (ACIP; disbanded in April 2015) recommended that the innovation patent system be abolished. A copy of the ACIP Report on the innovation patent system can be found, here. Both groups found that the innovation patent system is unlikely to provide net benefits to the Australian community or to the SMEs, who were the intended beneficiaries of the system. The Productivity Commission found that the majority of SMEs who use the innovation patent system do not obtain value from it, and that the system allegedly imposes significant costs on third parties and the broader Australian community.

Given the overall lack of net benefits the Government made the decision to abolish the innovation patent system.

How exactly will innovation patents be abolished?

Importantly, the abolishment of the innovation patent system is not intended to affect any existing rights. The innovation patent system will therefore continue to operate for all patent applications that were filed before these proposed amendments commence. In addition, existing rights to file divisional applications and convert a standard patent application to an innovation patent application will be maintained for any patent or application that was filed prior to the commencement date of the proposed amendments.

Part 4 of the IP Laws Amendment Bill sets out the proposed amendments to the Patents Act 1990 (Cth) which will orchestrate the demise of the innovation patent system. Essentially, the changes are achieved under the legislation by requiring that any innovation patent filed after the commencement date of the IP Laws Amendment Bill must have a priority date for each claim that is before the commencement date.

The first amendment is the introduction of a formal definition to the term “priority date”. Specifically, a priority date is determined in two ways, according to subsection 43(2) of the Patents Act, which provides:

43 (2)  The priority date of a claim is:

(a)  if subsection (2A) applies to the claim–the date determined under the regulations; or
(b)  otherwise–the date of the filing of the specification. 

43 (2A)  This subsection applies to a claim if:

(a)  prescribed circumstances apply in relation to the invention defined in the claim; and
(b)  a prescribed document discloses, or a prescribed set of prescribed documents considered together disclose, the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

If subsection 43(2A) applies to a claim, the priority date is the date determined under Division 2 of the Patents Regulations 1991 (Cth). If subsection 43(2A) does not apply to the claim, the priority date is the date the specification was filed.

As a mechanism to abolish the filing of new innovation patents, a new requirement is introduced into the formalities check for innovation patent applications, as follows:

(3)  It is a requirement of the formalities check that the date of the patent (if granted) would be a date before the day this subsection commences.

Specifically, for an innovation patent to be allowable under the proposed IP Act Amendment Bill the date of the patent application must be earlier than the commencement date of the IP Act Amendment Bill. If the date of the patent would be on or after the commencement of the Bill – the innovation patent cannot be granted.

An additional requirement is proposed to be inserted into section 101B of the Patents Act, which sets out the examination criteria for innovation patents. The new requirement (to be placed after s101B(2)(h)) is proposed to read as follows:

(ha)  each claim in the complete specification has a priority date that is before the day this paragraph commences; and

This will require the Commissioner of Patents to examine and report on whether each claim in the complete specification for an innovation patent has a priority date that is before the commencement date of this the introduction of the Act Amendment.

Finally, another new requirement is to be introduced into section 101E, which sets out the criteria for the certification of an innovation patent. Currently, section 101E requires the Commissioner of Patents to be satisfied of a number of matters before issuing a Certificate of Examination to the patent Applicant. The requirement proposed in the IP Laws Amendment Bill is that the priority date of each claim in the specification of the innovation patent must be earlier than the commencement date of the Bill.

So, when will innovation patents be abolished?

The good news for those hoping to use the innovation patent system with respect to their current provisional applications (or even applications currently proceeding as standard applications) is that the amendments relating to innovation patents will not commence until the day after the end of the period of 12 months from Parliamentary acceptance of the Bill. This lead time is necessary, to ensure that the exiting rights of patent Applicants are maintained. Currently, the timeframe for filing an innovation patent application that claims priority from a provisional application is 12 months, so the 12-month commencement timeframe will ensure that Applicants who filed a provisional application before the Bill takes effect will continue to have the full 12 months in which they may file an innovation patent.

Any Applicant whose provisional application is filed between the introduction of the proposed IP Laws Amendment Bill and the commencement of Schedule 1, Part 4, will have whatever time remains until the commencement to file an innovation patent, but will still be able to make full use of the full 12 months to file a standard patent.

Be aware of the available patent strategies.

If you are interested in filing a patent application for your technology, and believe that the innovation patent route may best suit your purpose, we would strongly recommend that you contact us as soon as possible to ensure that a priority date can be obtained prior the in introduction of the IP Laws Amendment Bill.

Is the U.S. Supreme Court Deciding The Future Of Patent Invalidation Proceedings?

The Supreme Court of the United States (SCOTUS) is currently deliberating whether the United States Patent and Trade Mark Office (USPTO) Patent Trial and Appeals Board (PTAB) have the legal authority to assess and revoke the validity of issued U.S. patents, during a third party challenge proceedings.

Current strategies for invalidating U.S. granted patents

Currently in the United States there are several options available for third parties looking to challenge the validity of a granted patent. In brief, these options include:

  • Post Grant Review – that must be requested within 9 months of patent issuance;
  • Ex Partes Review – in which the requestor is not involved after initial written submissions; and
  • Inter Partes Review – in which the requestor becomes an active party to the proceeding.

Each of these options take place before the USPTO PTAB.

Inter partes review (IPR) is a relatively recent addition to the suite of validity challenge options, only being introduced in 2012 as part of the America Invents Act. The mechanism was a response to a growing consensus within the intellectual property industry that the USPTO was accepting far too many “bad” patents.  Prior to the conception of IPR, the only option available to third parties for challenging the validity of a granted patent (and be an active party in the proceedings) was though very expensive and time-consuming District Court litigation.

To date, IPRs have been considered by many as being very useful and effective. Allegedly, in over 80% of IPRs heard before the PTAB, at least some of the claims of the disputed patents are revoked. Of course, this has not made the IPR process particularly  popular with patent owners, who believe that the process is biased against them.

What’s happening at the SCOTUS?

The SCOTUS is currently examining the constitutionality of IPR. The platform for their investigations is the case currently before them: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC

Oil States Energy Services (Oil States) is an oil-field services company, that manufactures products for deepwater production facilities and certain drilling equipment (fracking equipment), as well as being a provider of completion services and land drilling services to the oil and gas industry. Relevant to this case, Oil States is the owner of U.S. Patent No. 6,179,052, directed to apparatus and methods for protecting wellhead equipment and abrasion involved in the hydraulic fracturing of oil wells.

Back in 2012, Oil States filed an infringement suit against Greene’s Energy Group (Greene’s), in respect of the ‘052 patent. As is often the case, Greene’s response was to petition the PTAB to institute IPR on the allegedly infringed claims. To the dismay of Oil States, the PTAB instituted review and eventually found those claims to be anticipated by a prior patent application, Canadian Patent Application No. 2,195,118 (to Dallas).

Naturally, Oil States was not impressed. The SCOTUS accepted a certiorari filed by Oil States to assess the following issue: whether inter partes review violates the U.S. Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Why are IPRs allegedly unconstitutional?

The arguments put forward by Oil States relate to Article III of the U.S. Constitution, which speaks to the separation of powers. Article III sets forth that for matters dealing with property and private rights you need a judiciary that is independent and accountable to no-one except the Rule of Law. This is important to avoid a concentration of power to any particular facet of Congress. The PTAB (being a creation of Congress) is very much part of The Executive Branch of government. PTAB judges are selected by the Director of the USPTO; a political appointee. Furthermore, the composition of judges at the PTAB can be adjusted to promote the political agenda of Congress (and this, in fact, has happened).

During the Hearing of Oral Arguments, the advocate for Oil States, Allyson Ho, argued:

  • The creation of IPRs improperly intrude on separation of powers by giving Article III to adjudicate patent validity to an administrative agency; and
  • IPR is a “litigation-like adversarial proceedings” between private parties and is, therefore, unconstitutional under Article III.

In making their arguments, Oil States rely upon the proposition that patents are private property, for centuries being adjudicated by the Courts, where juries decide questions of fact. On this basis, they asset that IPRs violate the Seventh Amendment right to a trial by jury.

The arguments in favour of IPR.

In its merits brief, Greene’s pointed out that the U.S. Constitution gives Congress the power to provide for patents.

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;
U.S. Constitution; Article I, § 8, cl. 8

Thus, because Congress has the constitutional authority to govern patent rights, a patent should be considered to be a public right, that isintegrally related to particular Federal Government action”. On this basis, because patents are public rights, IPR proceedings do not violate Article III.

Even should the SCOTUS find that patents are private rights, Greene’s also made the point that IPRs are, in fact, subject to review by an Article III tribunal (as patent owners have the right to appeal adverse decisions to the Federal Circuit). Furthermore, it is alleged that IPRs are not judicial in nature because, inter alia, they only consider patentability based on a narrow subset of issues; namely, anticipation and obviousness (the U.S. patent law equivalents to novelty and inventive step). IPRs simply allow the USPTO to reexamine those issues and make its own initial patentability determination. It’s basically a mechanism for the USPTO to correct its mistakes (which it has performed for decades by other avenues such as reissues, interference proceedings, and ex parte and inter partes reexaminations). Greene’s argued that IPRs are merely another means for the USPTO to have a “second look” at a patent and determine for itself whether its issuance in the first instance was a mistake.

So… What’s next?

It’s difficult to ascertain from the questions asked by the SCOTUS which way the decision will fall. Basically, the case will come down to what can only be done in Federal Court and what can an administrative agency do? If we were to have a stab at predicting the outcome, we would suggest that the arguments presented by Christopher Kise, Counsel for Greene’s, to be considered as being a more compelling case. Congress has afforded the power to grant patents to the USPTO (courtesy of Art. 1, § 8, cl 8 of the U.S. Constitution) and therefore, there would appear to be nothing untoward about having a security mechanism in place that allows for the USPTO to realise any mistakes and revoke patents should they discover that the patent was granted in error.

Furthermore, there are numerous distinctions between a litigious trial and an PTAB IPR. Not least, an IPR does not really involve one party being against the other, in a case where one party takes something from the other. One side does not itself stand to gain or lose anything. Perhaps they can just be viewed as a vehicle of presenting the most compelling case regarding the invalidity of the parent in suit – such that the PTAB are armed with all the facts before deciding for itself whether the patent had been validly granted.

One thing is clear: the case has caught the attention of the wider patent community. 21 amici curiae were filed supporting Oil States (IPR are not constitutional), 25 supporting Respondent Greene’s (in favour of IPR) and 12 were said to be in support of neither party (although some clearly leant one way or the other. A list of the amici cuiae is presented, below.

Amici CuriaeSupporting
Tomás Gómez-Arostegui
and Sean Bottomley (academics)
Neither party (historical perspective - appear in Oil States favour)
Alliacense Limited LLCOil States
US Inventor, IncOil States
Security People, IncOil States
Eagle Forum Education & Legal Defense FundOil States
Unisone Strategic IP, IncOil States
Thirty-Nine Affected Patent OwnersOil States
The Civil Jury Project at New York University School of LawNeither party
J. Kenneth Blackwell; Paul Caprio; James Edwards; Colin Hanna; Matthew Kandrach; Kevin L. Kearns; George Landrith; Curt Levey; Edward R. Martin, Jr.; James L. Martin; Jenny Beth Martin; C. Preston Noell IIIOil States
American Intellectual Property Law AssociationNeither party (but in favour of IPR)
LiquidPower Specialty Products Inc.Oil States
Boston Patent Law AssociationNeither party (in support of IPR)
AbbVie, Inc.; Allergan, Inc.; & Celgene Corp.Oil States
Pharmaceutical Research and Manufacturers of AmericaOil State
Evolutionary Intelligence LLCOil States
The Patent Trial and Appeal Board Bar AssociationNeither party (in favour of IPR)
The Association of Amicus CounselNeither party (against IPR)
InterDigital, Inc; Power Integrations, Inc; Xperi Corporation; Fallbrook Technologies, Inc; and Cummins-Allison Corp.Oil States
University of New MexicoOil States
CATO Institute and American Conservative Union FoundationOil States
Biotechnology Innovation Organization and Association of University Technology ManagersOil States
Professor James W Ely, Jr. & Mountain States Legal FoundationOil States
IEEE-USAOil States
Shire Pharmaceuticals LLCNeither party (against IPR)
Gary Lauder; Paul Morinville; Robert Schmidt; National Small Business Association; Small Business Technology Council; United Inventors Association; MCM Portfolio LLP; SumVentures Group, Ltd.; Accessis LLC; Flocel Inc.; Great Lakes NeuroTechnologies; Monashee Marketing; NeuroWave Systems; & PowerTool InnovationOil States
Intellectual Property Owners AssociationNeither party (asserting that patents are not public rights)
Professor Dmitry KarshtedtOil States
3M Company; Bristol-Myers Squibb Co.; Cargill Incorporated; Johnson & Johnson; Monsanto Company; The Procter & Gamble Company; Raytheon Company; &
Shell International
Neither party (assert that patents are private rights; IPR can be "fixed")
27 Law ProfessorsOil States
Pacific Legal Foundation; Southeastern Legal Foundation; & National Association of Reversionary Property OwnersOil State
Intellectual Property Law Association of ChicagoNeither party (identifying a difference between patents issued prior to AIA and those issued after)
Houston Intellectual Property Law AssociationNeither party
SAP America, Inc; Gilead Sciences, Inc; Nautilus, Inc; Electronic Transactions Association; Financial Services Roundtable; & Xilinx, Inc.Greene's
Public Knowledge; The Electronic Frontier Foundation; Engine Advocacy; & The R Street InstituteGreene's
Knowledge Ecology InternationalGreene's
U.S. Golf Manufacturers CouncilGreene's
Professor Lee A HollaarGreene's
Accessible MedicinesGreene's
Dell, Inc.; Facebook, Inc; Agilent Technologies, Inc.; Arista Networks, Inc.; CloudFare, Inc.; Edwards LifeSciences Corp.; Hewlett Packard Enterprise Co.; HTC Corporation; JCPenney Corporation, Inc.; LimeLight Networks, Inc.; Red Hat, Inc.; Smith & Nephew, Inc.; Twitter, Inc.; & Varian Medical Systems, Inc.Greene's
Apple, IncGreene's
Intel; Applied Materials; CISCO; Google; LG Electronics; On Semiconductor; Samsung; & XeroxGreene's
Askeladden LLCGreene's
General Electric CompanyGreene's
Alliance of Automobile ManufacturersGreene's
America's Health Insurance PlansGreene's
Internet Association, Software & Information Industry Association; National Association of Realtors, Association of Global Automakers, Inc.; Computer & Communications Industry Association; & SAS Institute Inc.Greene's
Retail Litigation Center, Inc.; & National Retail FederationGreene's
Arris Group, Inc.; Arm, Inc.; Charter Communications, Inc.; Cox Communications, Inc.; HP Inc.; & NetApp, IncGreene's
AARP; & AARP FoundationGreene's
Volkswagen Group of America, IncGreene's
Professors of Administrative Law, Federal Courts, and Intellectual Property LawGreene's
Unified Patents IncGreene's
The Initiative for Medicines, Access & Knowledge (I-MAK)Greene's
BSA | The Software AllianceGreene's
Taiwan Semi-Conductor Manufacturing Co., LtdGreene's
Act | The App AssociationGreene's
Mylan Pharmaceuticals Inc.Greene's
72 Professors of Intellectual Property LawGreene's

As can be noted from the above parties, the biotechnology community are particularly vocal in their disapproval of the IPR. This can be attributed, at least in part, to the long lead-time and significant expense associated with bringing a biotech product to market. Both these aspects are typically far greater in the biotechnology arena than other industries . Therefore, the impact of having an integral patent revoked is arguably of significantly greater concern for a biotechnology proprietor, especially with the commonplace notion that the significant expense required to bring a new pharmaceutical product to market is only worthwhile if the 20 year monopoly can be achieved to make profit on their investment.

Another  concern practitioners have raised is what will happen to all of the claims that have been invalidated in previously decided IPR proceedings if the Court should decide that IPRs are unconstitutional. The only practical solution to this would appear to be that all existing IPR decisions must remain standing. Otherwise the mountain of re-litigation that would follow suit would be unsurmountable. Interestingly, Oil States agreed with this recommendation; could this perhaps suggest that they concede that there is nothing improper in the way that IPRs have been functioning?

As described above, the SCOTUS decision is expected to turn on its determination that a patent is either a public or private right. If it is a private right, Oil States will likely prevail and IPRs should be considered unconstitutional. If a patent conveys a public right, the status quo is expected to be maintained.

The decision is expected to be handed down by June 2018. We would recommend delaying the filing of any further IPRs until clarity is obtained regarding their future. Of course, if you would like any specific advice regarding patent challenges in the United States, Australia, or any other jurisdiction, please contact us.

 

The official transcript of the Oil States Energy Services, LLC v. Greene’s Energy Group, LLC SCOTUS Hearing can be found here. Or if you prefer, a recording of the Hearing is also available here.

opportunities

We have an opportunity in our rapidly growing Brisbane team for a patent attorney

start asap

Start ASAP – it’s permanent full-time

above market

Remuneration $90,000 – $120,000 (incl. 9.5% super)

qualifications

Recently registered or nearly registered patent attorney; BSc/BEng essential and PhD preferred

Do you strive for constant improvement?

Innofy is an incorporated intellectual property consultancy firm, specialising in providing top-tier advice for high technology start-ups and research organisations. Our employee-focussed team-led culture sets Innofy apart from traditional IP firms. We strive for constant improvement.

Since Innofy’s conception – a conscious effort has been made to implement modern business processes and systems that make sense in today’s technology-centric environment. We value innovation, inclusion and knowledge – and our mission is to invent a better way of protecting today’s technology, so innovators can focus on building a better tomorrow.  We are forever striving to improve, and encourage a culture where every individual feels like they have something to contribute.

  • Agile environment.
  • Work with internationally acclaimed attorneys – IAM Patent, WTR 1000 ranked 2018.
  • Team-based approach to work completion.
  • Strongly value suggestions and curiosity.
  • Tailored career progression – we want to help you to realise your goals.
  • Emphasis on diversity and inclusion at all levels.
  • Immersed in the Australian start-up culture.
  • Flexible working conditions.
  • Unlimited holidays.

The ideal applicant

Nearly qualified/recently qualified patent attorney. Knowledge or experience of trade marks is a bonus.

Must have intellectual curiosity. All our employees across all levels are encouraged to ask questions and find the why behind what we do.

Career driven. We will help you get where you want to go.

Get involved in with business practices/operations. We aren’t looking for our next cog in the system.

Like what you see?

Email us!

A bit more about the role…

Stepping into a busy practice with regular patent drafting and prosecution.
Taking a lead role in managing local clients and overseas associates.
Encouraged to implement and improve new processes.
Marketing – particularly with respect to start-up scene.
Delivering IP education as part of River City Labs mentoring program and externally.
International and national travel to industry and technology conferences.
Involvement in oppositions.
Working in teams with lawyers and external service providers and nurturing (and forming new) relationships.

 

 

 

We have an opportunity in our rapidly growing Brisbane team for an IP Specialist

start asap

Start ASAP – it’s permanent full-time

above market

Remuneration $50,000 – $70,000 (incl. 9.5% super)

Experience

at least 2 years experience in IP administration preferred

Do you strive for constant improvement?

Innofy is an incorporated intellectual property consultancy firm, specialising in providing top-tier advice for high technology start-ups and research organisations. Our employee-focussed team-led culture sets Innofy apart from traditional IP firms. We strive for constant improvement.

Since Innofy’s conception – a conscious effort has been made to implement modern business processes and systems that make sense in today’s technology-centric environment. We value innovation, inclusion and knowledge – and our mission is to invent a better way of protecting today’s technology, so innovators can focus on building a better tomorrow.  We are forever striving to improve, and encourage a culture where every individual feels like they have something to contribute.

  • Agile environment.
  • Work with an internationally acclaimed team – IAM Patent, WTR 1000 ranked 2018.
  • Team-based approach to work completion.
  • Strongly value suggestions and curiosity.
  • Tailored career progression – we want to help you to realise your goals.
  • Emphasis on diversity and inclusion at all levels.
  • Immersed in the Australian start-up culture.
  • Flexible working conditions.
  • Unlimited holidays.

The ideal applicant

Experience in IP administration and processes is essential. You will be responsible for managing many IP portfolios and engaging with clients.

Must have intellectual curiosity. All our employees across all levels are encouraged to ask questions and find the why behind what we do.

Career driven. We will help you get where you want to go… whether that’s studying to be a trade mark attorney, or getting involved in managing operations.

Get involved in with business practices/operations. We aren’t looking for our next cog in the system.

Like what you see?

Email us!

A bit more about the role…

Day to day management of large IP portfolios
Taking a lead role in engaging in start-up clients within our ecosystem
Encouraged to suggest, implement and improve processes
Marketing - particularly generating social media content
Manage time of attorneys to ensure tasks are completed in time and on budget

Trade Marks

TM Update – May 2017

Every month, we will provide a brief synopsis of some of the new and most interesting trade marks cases decided by the Australian Trade Mark Office (TMO). We won’t describe every aspect of each case, rather, the parts we find most noteworthy.


1: Sticking your trident to the opposition….

(more…)

5 Surprising “Game of Thrones” Related Trade Marks in Australia

Game of Thrones, Season 7, premieres tonight in Australia.  To celebrate, innofy takes a look at the top 5 most surprising classes of goods or service HBO has registered (or has applied to register) Game of Thrones related marks in.  (As followers of our site will recall, when registering a trade mark in Australia, applicants need to specify the goods and/or services for which that mark is used, or is intended to be used.)

1. KHALEESI for cleaning products

Yup, that’s right – trade mark 1695101, “KHALEESI” is registered in two classes (21 and 25) and specifies “articles for cleaning purposes” in class 21.

2. KHALEESI for laundry bleach

“KHALEESI” makes another top 5 appearance in the form of trade mark 1514894 which is registered in class 3 – including “bleaching preparations and other substances for laundry use”.

3. GAME OF THRONES for wine

“GAME OF THRONES” in trade mark application 1855237 simply recites class 33 and “wines”.  Given the extensive reference in Game of Thrones to wine, this is perhaps not all that surprising – perhaps the next applications will be to “Arryn” for Riesling, “Westerlands” for Cabernet…

4. WINTER IS COMING for kitchen utensils

Trade mark “WINTER IS COMING”, 1697237, is registered in respect of two classes (21 and 25) including class 21 specifying “household or kitchen utensils and containers”.

5. GAME OF THRONES for guitars

Trade mark application 1852035, “GAME OF THRONES” refers to class 15 and musical instruments including “guitars”.

Other Game of Thrones related marks

If you are interested – more “Game of Thrones” related Australian trade marks and trade mark applications owned by HBO are provided in the table below.

NumberMarkStatusClasses
1340198GAME OF THRONESRegistered9, 16, 18, 20, 21, 25, 28, 41
1464693GAME OF THRONESRegistered8, 9
1514894KHALEESIRegistered3
1552052GAME OF THRONESRegistered32
1583256GAME OF THRONESRegistered14
1695101KHALEESIRegistered21, 25
1697237WINTER IS COMINGRegistered21, 25
1697239THE NIGHT'S WATCHRegistered21, 25
1697960MOTHER OF DRAGONSRegistered21, 25
1697966SWORD IN THE DARKNESSRegistered21, 25
1756307GAME OF THRONES CONQUESTRegistered9
1852035GAME OF THRONESPending15
1855237GAME OF THRONESPending33

Published: 17 July 2017

Someone Has Applied to Remove My Trade Mark For Non-Use in Australia: What Do I Do?

What is an Application for Removal of a Trade Mark for Non-Use?

An application for the removal of a trade mark from the register for non-use (a “non-use application”) can be made on the basis that:

  • the application for registration was not made in good faith with the intention to use the trade mark, and that the trade mark has not been “used”, or used in good faith; or
  • the trade mark has not be “used” in a three year period ending the month prior to the non-use application being filed (provided at least five years has passed following registration).

In addition, the non-use application will specify the whether full or partial removal of the mark is being requested – partial referring to the removal of only some of the goods and/or services for which the trade mark is registered.

Importantly, once a non-use application is made – the onus of proof of genuine use shifts to the registered owner.

Why have I Received a Non-Use Application?

There could be many reasons why an Applicant has applied to have your trade mark removed. These may include:

  • they have applied for the same or a similar mark to be registered in the same or similar classes of goods and/or services as your registered mark.  In this case, an Examiner may have cited your mark as a barrier to the registration of their application.  The Applicant may therefore want to remove your mark so that theirs can be registered.
  • you have identified the Applicant as a potentially infringing your registered mark.  In this instance, the non-use application may be an attempt to have your mark removed in order to stop enforcement of those registered rights.

The term “use” in this context particularly requires you, as the trade mark owner, to demonstrate that the use in the relevant period was:

  • in good faith;
  • as a trade mark;
  • in the course of trade;
  • in Australia;
  • upon or in relation to the goods and/or services of the registration; and,
  • by the trade mark owner, predecessor in title or an authorised user.

It is important to be able to provide evidence of the requisite use. Suitable evidence may include a combination of sales and marketing figures, advertising expenses, examples of orders, invoices, packaging, marketing and promotional materials (dated), websites (dated), and the like.

What Do I Do After Receiving a Notice of a Non-Use Application?

When you have received a Notice that someone has applied to remove your trade mark, the date on which the non-use application is advertised in the Official Journal starts the clock – you have two months from this date to file a Notice of Intention to Oppose the removal and pay the Official Fee of $250, as shown below.

In the following timeline, each subsequent action starts the clock for the next action. For example, the Statement of Grounds and Particulars must be filed within one month of filing the Notice of Intention to Oppose, the Notice of Intention to Defend must be received within one month of the Applicant receiving the Statement of Grounds and Particulars, and so forth.

Of course, there may be instances in which other courses of action may be more appropriate to your circumstances.  For example, you may reach a commercial arrangement with the other party, decide to partially amend the registration, and/or decide you no longer wish to maintain the registration.

You (Opponent): Notice of Intention to Oppose - Official Fee $250 2 months
You: Statement of Grounds and Particulars 1 month
Applicant: Notice of Intention to Defend 1 month
You: Evidence in Support 3 months
Applicant: Evidence in Answer 3 months
You: Evidence in Reply 2 months

Either you or the Applicant may request an oral hearing to be heard by the Registrar of Trade Marks. The Official Fee for requesting an oral hearing is $600.

Once a decision is made, it will typically be issued in writing to both parties.  It is possible for either party to appeal a decision to the Federal Court or Circuit Court.

IP Australia have published more information on the Trade Mark Opposition process, and this can be found here.

If you have received a Notice that a Non-Use Application has been filed in respect of one of your registered trade marks, we would highly recommend you seek professional advice.  If you want more information – contact us today.

Published: 25 July 2017

Trade Mark Update – July 2017

Every month, we provide a brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We will report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.
(more…)

Trade Mark Update: August 2017

Every month, we provide a brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We will report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.

This month, we look at:

 

When does a descriptive word have capacity to distinguish?

The Coca-Cola Company v Vitasoy International Holdings Limited [2017] ATMO 77

Hong-Kong based company, Vitasoy International Holdings Limited (Vitasoy) filed trade mark application no. 1534588 on 8 January 2013 for a stylised word “Icy” in respect of goods in class 30 (tea drinks; not being frozen/slush drinks) and class 32 (carbonated and non-carbonated non-alcoholic beverages; juices; soft drinks; soy bean-based extracts and beverages; non of which being frozen/slush drinks). The trade mark in question is:

After the issuance of a couple of adverse examination reports, the mark was subsequently advertised as being in order for acceptance by the primary examiner. However,  The Coca-Cola Company (Coca-Cola) opposed the acceptance of the trade mark on grounds under section 41 and section 62 of the Trade Marks Act 1995. Only those grounds under section 41 were pursued at the Hearing.

Section 41: Trade mark not capable of distinguishing the Applicant’s goods from the goods of other parties

Coca-Cola argued that in the context of drinks the word ‘Icy‘ is directly descriptive and has no ability to distinguish the goods of Vitasoy from the goods of anyone else. Dictionary definitions of the word from some of the world’s most commonly used dictionaries were submitted:

Icy: (iii) Resembling ice; extremely cold, frosty; slippery
Oxford English Dictionary.

Icy: (ii) Resembling ice.  (iii) Cold.
Macquarie Dictionary.

Although the trade mark is stylised through “modest rendering,” Coca-Cola contend that the word is not sufficiently stylised to confer any ability to distinguish the goods of Vitasoy. It is alleged that the mark is so plain that it is effectively directed simply to the word ‘icy‘. In addition, Coca-Cola contended that it was common in Australia, at the time the Vitasoy trade mark was filed, to describe cold drinks as being ‘icy‘.

One avenue for Vitasoy to rebut these assertions would have been to demonstrate that through their prior use of the trade mark on its products, it had in fact become distinctive of its goods.

However, Coca-Cola submitted that such evidence of was absent.

Is ‘icy’ descriptive of cold drinks? 

The criterion for assessing the ability of a mark to distinguish goods was described by Lord Parker of Waddington in Registrar of Trade Marks v W. & G. Du Cros (1913): 

“The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire to use” (emphasis added).

Naturally, Coca-Cola drew upon Lord Waddington’s reasoning in arguing that other traders would wish to use the word “icy” to describe their beverages.

Vitasoy, however, turned to the High Court decision of Cantarella Bros v Modena Trading that found that: “the test [for the ability to distinguish] does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical”. To this end, Vitasoy tried to argue that the word icy when used in respect of drinks (remembering that the specification specifically excluded frozen/ slushy drinks from the listed goods) was clearly a metaphorical use – as there was no ice present in such drinks. However, in light of the dictionary definitions presented above, it was apparent that the word ‘Icy is a synonym for the word ‘cold‘. Therefore, a drink need not actually contain ice to be described as an ‘icy‘ drink.

Moreover – the evidence before the delegate of the registrar of trade marks demonstrated that the word icy is regularly used by a number of traders to describe their drinks. It seems clear, therefore, that the word ‘icy‘ is descriptive in respect of cold drinks.

Registering descriptive words by using creative get-up.

It’s well established that the use of distinctive get-up can allow for in the use of descriptive words in a trade mark registration. However, if a descriptive word is to be registered only because of it’s get-up – that get-up must be sufficiently different to fonts in which the plain typed word might normally be rendered. As previously described in Clark Equipment, the ability of a trade mark to have a capacity to distinguish will come down to “whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it“.

In practice, the get-up should not conflict with the plain typed word (i.e., nearly resemble the plain typed word) such that the trade mark would be used by another trader for the sake of its ordinary meaning. The question before the delegate was therefore : would the use of the Vitasoy trade mark be considered to be a use of the plain typed word Icy or vice versa? If the answer to either question is yes, then there is a potent argument that the get-up within the trade mark is insufficient to render the mark as inherently adapted to distinguish.

This stylised Icy is little more than the plain word.

Unsurprisingly, the delegate considered that the notional trade mark ‘Icy‘ (in plain script) is substantially identical to the Vitasoy trade mark. The use of the Vitasoy mark would therefore be be considered as use of the typed word ‘Icy‘. If the Vitasoy trade mark was to proceed to acceptance, it stands to reason that any traders wishing to use the the plain printed word ‘Icy‘ for its ordinary meaning would find that they couldn’t do so without infringing on the trade mark rightes vested to Vitasoy.

Thus, the delegate found that the trade mark, when considered as a whole and taking into account the get-up of the mark, possesses little if any inherent adaptation to distinguish the goods identified in the specification. The trade mark application was refused.

Take Home Message

This ATMO decision highlights that when get-up is to be used to confer a capacity to distinguish – attention must be given to ensure that the get-up is substantial. It’s not sufficient to simply use a slightly rendered font and argue that because of the stylisation a distinctive mark has been created. If the clear impression of the mark is no more than the descriptive word itself then the mark will rightfully be considered to be little more than the word in question. In these instances, you should be able to draw upon specific features of your trade mark that are distinctive over the plainly typed word.

 

Trade marks: Use it or lose it!

Leconfield Wines Pty Ltd v G. Patrirri & Co Pty Ltd [2017] ATMO 81

This decision is on an an application by the winemaker G Patritti & Co to remove the following trade mark from the trade mark register:

Trade Mark No. 1063359
Trade Mark: MARION VINEYARD
Owner: Leconfield Wines Pty Ltd
Specification of Goods: class 33 (Wines)

Under Australian law, an application to remove a trade mark on the basis of non-use can be made it if can be shown that the mark has remained registered for a continuous period of three years ending one month before the day on which the non-use application is filed.

Should they chose to defend their mark, the opponent to a non-use removal application (i.e., the trade mark owner) bears the onus of showing the the trade mark has been used within the relevant period. In this case, the relevant period is 3 June 2012 to 3 June 2015.

The origin of the MARION VINEYARD trade mark.

The trade mark appears to had been used by Leconfield Wines from 1994, and is inspired by a particular vineyard located with the South Australian suburb of Marion.

Leconfield Wines’ evidence of use

The most pertinent evidence presented by Leconfield Wines appears to be a copy of their “Museum Releases” price list. Although this evidence is not dated in any of the evidentiary applications, it is stated that this price list was “made available during the relevant non-use period“. Specifically, the wine list was allegedly presented to those visiting Leconfield Wines’ Cellar Door. The price list shows the following three wines as being available:

  • ’01 Richard Hamilton Marion Vineyard Grenache – $75
  • ’02 Richard Hamilton Marion Vineyard Grenache – $75
  • ’03 Richard Hamilton Marion Vineyard Grenache – $70

Naturally, Pattriti draws attention to the evidence by suggesting that there is not sufficient information to conclude that the price list was sufficiently available to the public – and highlighted the careful wording in the declarations filed by Leconfield Wines. Specifically, the declarations indicate that the price list sat upon a counter and was “viewable and available to members of the purchasing public whom entered the Leconfield Wines cellar door“. It is Pattriti’s contention that this does not satisfy the requirement of use in the course of trade.

Showing Use Without Sales.

It is well established that in instances where there is no conclusive proof of sales within the relevant period, evidence demonstrating an offer to sell the trade mark owner’s product under the trade mark must be convincing and amount to use in good faith.

In this case, the delegate appears unimpressed that the exact dates that the Museum Releases price lists were available is not provided in the evidence, instead simply stating instead that they were somewhat ambiguously made available within the relevant period.

Additionally, it was considered that although the use of the phrase MARION VINEYARD on the bottle label itself amounts to use of the trade mark (shown below), the delegate commented on the fact that  the price list refers to “Richard Hamilton Marion Vineyard Grenache”. This addition of the name “Richard Hamilton” is asserted to be one that substantially affects the identity of the trade mark as registered.

This emphasises the importance of ensuring your trade marks are continually being used as trade marks. The difference between the bottle and the price list, is that the words “MARION VINEYARD” appear on a single line on the bottle, in a colour that stands our from the other text. It’s this part of the label that jumps out at the consumer. This isn’t so on the price list, where the reference to MARION VINEYARD is disguised in the middle of the listing.

Because of this, the use of the trade mark by itself would only ever be evident to a prospective consumer if the bottle label as well as the price list were concurrently viewable to the purchasing public. As the only evidence suggesting such was an undated photograph (which was believed to be little more than a mere example of the view that may (or may not) have actually been seen by consumers during the relevant period), it was found that sufficient trade mark use had not been established during the relevant period.

Lessons in preparing evidence for oppositions.

This decision certainly serves as a reminder to ensure that your trade marks are continually not only being used – but used by themselves as a trade mark in the course of trade. Simply stating the words in combination with other words, phrases and logos may not be sufficient to establish use. Should Leconfield Wines have presented additional evidence of the MARION VINEYARD trade mark being used, not in conjunction with the winemaker (Richard Hamilton), then it may well have been far easier to have demonstrated trade mark use. Perhaps having the MARION VINEYARD text coloured red in the price list, or even in a bold font, would have been sufficient to establish use of the trade mark.

This decision also shows the importance of documenting your trade mark use – especially when the use is not online, or in an otherwise readily available format. For example, if your trade mark is only viewable to people once entering your shopfront, the more information that is recorded regarding exactly how and where the trade mark is used (in addition to the number of units that are sold) can  serve as valuable evidence during opposition proceedings.

 

The importance of classifications.

Paypal, Inc v Braintree Communications Pty Ltd [2017] ATMO 90

This decision concerns a trade mark filed by the very well known US-based company, Paypal, Inc. Specifically, the following trade mark is at the centre of this dispute:

Trade mark application no. 1579864
Filing Date: 18 July 2013
Trade Mark: BRAINTREE
Goods/Services: Class 36 (Credit card payment processing services; credit card transaction processing services; payment processing services, namely, providing electronic processing of electronic funds transfer, ACH (automated clearing house), credit card, debit card, electronic check and electronic payments).

Importantly for this case, all of the goods and services listed on the application relate to payment processing services.

Queensland-based company Braintree Communications Pty Ltd filed an opposition to the registration of the Paypal trade mark, citing grounds under section 44 of the Trade Marks Act 1995. Specifically, Braintree asserted that the trade mark is substantially identical or deceptively similar to their own earlier-filed trade mark. The particulars of Braintree’s trade mark are as follows:

Registration No: 860587
Filing Date:
 22 December 2000
Trade Mark:

Goods/Services: Class 9 (Transmission, receiving and storage equipment, apparatus and systems; including but not limited to computer software, computer hardware, macros, CD-ROMs, disks and modems; all associated parts, accessories and fittings); Class 38 (Telecommunication services; telecommunication services namely short duration transaction systems used in relation to, but not limited to, payment server systems, alarm systems, security systems, surveillance systems, defence systems, lottery systems, gambling systems, telemetry systems, electronic funds transfer systems, point of sale systems, packet handling systems and transaction gateway systems); and class 42 (Computer programming services; computer design services; services for maintenance and modification of computer software; computer program design consultancy services; providing access to and leasing access time to computer databases; on-line computer services).

The evidence filed by Braintree described their business endeavours as including Axon – G4020, which enables temporary EFTPOS and ATM locations for events or places where landline connections are too costly or slow. Allegedly, with the Axon – G4020, “you can take the till to the product, not the product to the till“. Alongside the managements of other financial applications of Axon – G4020, Braintree specialises in developing solutions to allow legacy transaction equipment to connect to modern IP platforms using intelligent protocol conversion.

Deceptively similar – only in respect of similar goods or closely related services.

It is well established that a deceptively similar mark can only act as a barrier to trade mark registration if the earlier mark is registered against the same or similar goods or services as the new application. Thus, before one even looks at the trade mark in question, it should be determined whether the goods and/or services are so similar or closely related.

It appears that Braintree entered the Hearing stating the similarities between the services offered by them and those offered by Paypal. That is, both parties provide the ability for merchants to receive payments that are initially checked by a payment gateway provider and then sent to the financial institution for processing.

However, the delegate reasoned that the arguments of Braintree are based on the preposition that their earlier mark is registered in respect of “credit card transaction processing services” or some such similar services to Paypal. Unfortunately, however, the Braintree has no such registration their own trade mark does not refer to such services. The result of this is significant – as the Delegate must restrict his analysis of the Paypal mark to only those services that fall within the scope of Braintree’s own trade mark specification.

Braintree’s services enable communication of data, of which one aspect is as part of an electronic payment (EFTPOS) system. It has equal functionality in ‘alarm systems, security systems, surveillance systems, defence systems, lottery systems, gambling systems etc.” Despite the most common application of Braintree’s services being as part of EFTPOS systems – this does not automatically place them into the same description as the goods and/or services listed on the Paypal specification.

The Plumber Analogy

To illustrate this point, the delegate provides an elegant analogy: a plumber who installs taps, pipes, drains, and pumps is not in the business of water supply or effluent treatment. Another example is lottery systems; if Braintree’s systems were commonly used by lottery providers – this would not result in those services being the same as the “lottery systems” listed in Braintree’s specification. Braintree is not in the business of providing lottery services, but rather in providing systems to enable such lottery systems.

How similar are similar goods, and how close are closely related services?

After finding that the Paypal and Braintree trade marks are not for the same services, Braintree took the next step of arguing that the goods and services between the two applications are closely related. The delegate highlighted the goods of class 9 as being contentious in this regard. Specifically, the goods in question are:

Transmission, receiving and storage equipment, apparatus and systems; including but not limited to computer software, computer hardware macros, CD-ROMs, disks and modems; all associated parts, accessories and fittings”.

Braintree argue that this encompasses data transmission, receiving and storage equipment, and computer apparatus and systems – which are closely related to the services listed on Paypal’s trade mark.

In the delegate’s opinion, the generalisation “transmission, receiving and storage equipment, apparatus and systems” is so vague as to the nature of the goods that it is, in essence, meaningless. It’s broad enough to refer to the transmission, receiving and storage of virtually anything that is capable of being transmitted (including data and radio waves). In this regard, and as stated by the Assistant Registrar of Trade Marks in Re Barnes Miling Ltd’s Trade Mark “As a trade mark owner’s trade mark rights derive from the goods and/or services in respect of which registration is sought, specification of goods should be clear and unambiguous“.

The delegate determined that accepting Braintree’s contentions (that the services listed on the Paypal trade mark are closely related to goods listed on their earlier application) would be based on the information that they might receive, convey or store. To do so would have worrying implications. For example, the same goods – being capable of transmitting, receiving and storing music or video – would, by extension – become closely related to entertainment services. This is clearly incorrect.

Therefore, the delegate considered that the goods listed within the Braintree application are not closely related to the services stated on Paypal’s application. Accordingly, the grounds of deceptive similarity could not be established – and Paypal’s trade mark was directed to proceed to registration.

The next chapter…

Braintree’s earlier trade mark (Registration No: 860587) is currently facing an application for removal for non-use. Guess who filed the application? Paypal! It will be interesting to see how this case develops, and we’ll keep you updated once we have some more details.

Trade Mark Attorneys In Brisbane

Providing Trade Mark Attorney services in Brisbane

Innofy have award-winning Trade Mark Attorneys headquartered in Brisbane.  We provide Trade Mark Attorney services for innovators, by innovators, to clients across the city, greater Brisbane, Queensland, nationally and internationally.  What differentiates innofy from other Trade Mark Attorneys in Brisbane is the quality of our people and our ability to maximise client value.  We do this by operating in an agile environment, constantly innovating and evolving our practice, collaborating, and providing an upfront flat fee for everything we do!  If you need Trade Mark Attorney services in Brisbane, and you want them done right – talk to us!  Want to know more about how we work, then click here.

Our Brisbane Trade Mark Attorneys are here to help

Need a Trade Mark Attorney in Brisbane?  We have commercial specialists in engineering, medical devices, software, start-ups, biotechnology, agriculture, immunology, pharmaceuticals, and much more!  Browse the profiles of our Brisbane Trade Mark Attorneys below.

What people say about Brisbane’s most innovative Trade Mark Attorneys

We believe we offer exceptional Trade Mark Attorney services in Brisbane, Queensland, Australia, and internationally.  However, don’t just take our word for it – see these kind words from others.

Get in touch, we’re here to help

email: info@innofy.com.au
call: 1300 805 855  (international: +61 4 02 436 601)
mail: P.O. Box 17, Paddington Q 4064

Trade Mark Update: April 2018

It’s that time again when we provide a brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.

This month, we look at:

Trade marks: Foreign language and grammatical inconsistencies deemed not inherently adapted to distinguish

Conga Foods Pty Ltd [2018] ATMO 56 (19 April 2018)

Conga Foods initially applied to register their trade mark (detailed below) in the goods classes 29, and 30, specifying predominantly edible products such as meat, fish, milk, tea, coffee, and the like.

Trade Mark Application No. 1808100 (29,30)
Trade Mark: ASSORTI
Owner: Conga Foods Pty Ltd

The Examiner issued an adverse report on the grounds that the mark could not distinguish the applicant’s goods.  The Examiner’s reasoning was that “ASSORTI” is a French word which translates to “assorted” or “matching” in English.  A number of URLs showing the use of the term ASSORTED in relation to the above mentioned goods were cited.  Accordingly, the Examiner concluded that other traders should be able to use the word in connection with their own goods.  Conga Foods was unable to overcome subsequent adverse reports, and a hearing was convened.

Two-step test for determining ability to distinguish

In maintaining the Examiner’s objection to the application, the hearing officer referred to the two step test laid out by the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 (3 December 2014).   The first step is to consider the ordinary signification of the sign in Australia to people likely to purchase/consume the goods.  The second step is to consider whether other traders may need to use the sign without improper motive.

Step 1: Ordinary signification in Australia

In determining the ordinary signification, representatives of Conga Foods submitted that the word “ASSORTI” was originally derived as an abbreviation for the Italian word “ASSORTITO”, meaning ‘assorted’.  And, they continued, while the word “ASSORTI” is a French word, its grammatical use in French differs significantly from the English use as trade mark.  For example, in French, assorted cheeses is translated as “FORMAGES ASSORTIS” (note also the plurality) whereas the mark would precede the noun, “ASSORTI cheese”.  Further, in the singular, the French word “ASSORTI” is interpreted as “matched” or “matching” rather than assorted.

Step 2: Would another trader need to use the mark?

The hearing officer accepted the Applicant’s arguments in this regard, however failed to be persuaded that ASSORTI would not be needed by other traders.  Conga Foods submit that without additional context, a trader is unlikely to want to use simply the French adjective “matched” or “matching” in a manner likely to infringe.  Their main point being that if the word were used as an adjective, it would not infringe ASSORTI if registered, as this would not be use as a trade mark, due to the inaccurate grammar between its use as a foreign descriptor and its use in a trade mark context.

The hearing officer disagreed, referring to hypothetical situations in which a trader may wish to display wines and cheeses with retail packaging stating “MATCHED”:

“[A hypothetical trader] may wish to have signs above their displays which read VIN ROUGE, VIN BLANC, FROMAGE BLEU, FROMAGE FRAIS, ASSORTI. The retail packaging in the ASSORTI section could bear the claimed ASSORTI trade mark. Given the ordinary signification of ASSORTI to French speakers, as meaning ‘matched’ or ‘matching’, the context means that the word is going to be seen as descriptive of the goods in connection with which it is used.” [16]

Thus, despite the grammatical inconsistencies highlighted by the application, the hearing officer maintained grounds for rejected under s41 of the Trade Mark Act.

Key takeaway – foreign language and grammatical differences not sufficient for distinctiveness

When applying for a trade mark, remember that the use of a foreign language translation is itself not sufficient to provide inherent adaptability to distinguish.  Further, this decision implies that grammatical inconsistencies between the usage of the mark in it’s native language, and usage in English as a trade mark, may not be sufficient to demonstrate ability to distinguish.

Trade Mark Use: Authorised use requires evidence of owner exerting “control” over user

Darley Stud Management Company Limited v Kevin Francis Darley [2018] ATMO 55 (18 April 2018)

This decision regards an opposition to an application for removal of the below trade mark, on the grounds of non-use.  The removal application was filed by Kevin Francis Darley, and this was opposed by the trade mark owner, Darley Stud Management Company Limited.

Trade Mark Application No. 952147 (44)
Trade Mark: DARLEY
Owner: Darley Stud Management Company Limited

Under Australian law, an application to remove a trade mark on the basis of non-use can be made it if can be shown that the mark has remained registered for a continuous period of three years ending one month before the day on which the non-use application is filed.

Should they chose to defend their mark, the opponent to a non-use removal application (i.e., the trade mark owner) bears the onus of showing the the trade mark has been used within the relevant period.

No use by the Trade Mark owner

The Opponent acknowledged that there had been no use of the trade mark by the owner, Darley Stud Management, directly in Australia during the relevant period.  Rather, the Opponent relies upon the use of the mark by an affiliated company, Godolphin, which they assert is part of the same corporate group, the Darley Group, and therefore an “authorised” user.

Was the use “authorised”?

While the hearing officer acknowledges that the stated use of the mark by Godolphin appears to be significant, in order to be relevant for the purposes of the opposition, the use needs to be consider “authorised use”.  The mere relationship between companies in a corporate group is not sufficient.

Section 8(1) of the Trade Mark Act states that:

“(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.”

Subsections 8(3) and (4) clarify that control includes quality or financial control.

The Full Federal Court discussed in Lodestar Anstalt v Campari America LLC [2016] FCAFC 92 (28 June 2016) the nature of what is considered to be control over financial or quality, including license agreement clauses detailing quality standard, or exercising financial control over trading activities.

The Opponent acknowledges that the agreement between Darley Stud Management and Godolphin was unwritten, and provides no evidence of terms of the unwritten license.  Accordingly, the hearing officer finds that there is insufficient evidence to establish that Godolphin was an authorised user, stating:

“A bare licence to use a trade mark, particularly a perpetual licence, would not be sufficient. Without more, it would amount to a divestment of control. ” [185]

Despite the above, the hearing officer is persuaded to exercise their discretion to maintain the mark on the register in the public interest, as removal would risk considerable consumer confusion.

Key Takeaway: If the owner of the trade mark is not the USER of the trade mark, clarify the (quality, financial) control the owner exerts in writing

Whilst this case may have been a lucky escape for the Opponent, in relying on the Registrar’s discretion, it highlights the importance of clarifying the relationship between a trade mark owner and its authorised user.  Authorised use requires financial or quality control.  Therefore, ensure written agreements are drafted to meet these requirements, as unwritten agreements, corporate affiliations, or bare licenses are unlikely to suffice.

Trade Marks: Mark within a mark

Energy Beverages LLC v M.D Visage Pty Ltd [2018] ATMO 53 (16 April 2018)

This decision concerns an opposition by Energy Beverages LLC, a subsidiary of the Monster Energy Company, to the registration of the following trade mark:

Trade mark application no. 1660034
Filing Date: 21 November 2014
Trade Mark: ProBurn
Goods/Services: Classes 5, 18, 21, 25, 29, 30, 32

In particular, the Energy Beverages nominated two grounds of opposition, namely s44 that deceptively similar marks existed on the register, and s59 that the applicant was not intending to use the trade mark in relation to the goods/services specified.

Deceptive similarity

Energy Beverages cited the following registered marks (of which, it is the registered owner), in support of their first ground of opposition:

Trade Mark No: 843738 (32)
Trade Mark: BURN

Trade Mark No: 1526464(32)
Trade Mark: BURN

Trade Mark No: 1563602(32)
Trade Mark:

Trade Mark No: 1547231(32)
Trade Mark:

2018_5301.jpg

 

 

 

 

In order to establish deceptive similarity, the hearing officer acknowledged, among other things, the similarity of the goods and services of the respective registered marks, and some of the Applicant’s application.

Turning to whether the mark, ProBurn, is deceptively similar to the abovementioned marks, the hearing officer looked to s10 of the Trade Mark Act which defines deceptively similar as:

” For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.”

Such a comparison involves, not a side-by-side comparison, but one of an impression based upon recollection.   Where the registered marks above include the word “Burn” alone, the hearing officer states that this is “plain that it is the impression that a person of ordinary intelligence would have” of these marks.  Continuing, it was found that the addition of “Pro” did not dilute the prominence of the word “Burn” in the Applicant’s mark.  Accordingly:

“… the common element in all of the trade marks, namely the word ‘burn’, may induce traders and the public into believing the Trade Mark and the Opponent’s Trade Marks emanate from the same trade source. As such, I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Trade Marks.” [41]

While the case for s44 objection was made in respect of some of the goods and services in respect of the application, the hearing officer provided the Applicant the opportunity to narrow the specification in order to remove the rejected classes from the specification.  As no response was timely received, the trade mark was rejected.

Key takeaway: Is a mark within a mark registerable?  Answer: It depends.

In this case, the applicant’s mark was considered deceptively similar due to the presence of a registered mark “Burn” within the applied for mark “ProBurn”, but this is not always the case.  Key to the decision was the likelihood of deception, including a consideration for all surrounding circumstances, including:

  • prominence of the registered mark within the mark;
  • the dilutive effect (if any) of additions to the registered mark;
  • goods to which they are applied;;
  • nature and kind of customer likely to buy the goods
  • what is likely to happen if both the marks are used in the normal way;
  • etc…

Got questions or need advice?

Simply get in contact or give us a call if you have any question regarding trade marks.

opportunities

We have an opportunity in our rapidly growing Brisbane team for a patent attorney

start asap

Start ASAP – it’s permanent full-time

above market

Remuneration $90,000 – $120,000 (incl. 9.5% super)

qualifications

Recently registered or nearly registered patent attorney; BSc/BEng essential and PhD preferred

Do you strive for constant improvement?

Innofy is an incorporated intellectual property consultancy firm, specialising in providing top-tier advice for high technology start-ups and research organisations. Our employee-focussed team-led culture sets Innofy apart from traditional IP firms. We strive for constant improvement.

Since Innofy’s conception – a conscious effort has been made to implement modern business processes and systems that make sense in today’s technology-centric environment. We value innovation, inclusion and knowledge – and our mission is to invent a better way of protecting today’s technology, so innovators can focus on building a better tomorrow.  We are forever striving to improve, and encourage a culture where every individual feels like they have something to contribute.

  • Agile environment.
  • Work with internationally acclaimed attorneys – IAM Patent, WTR 1000 ranked 2018.
  • Team-based approach to work completion.
  • Strongly value suggestions and curiosity.
  • Tailored career progression – we want to help you to realise your goals.
  • Emphasis on diversity and inclusion at all levels.
  • Immersed in the Australian start-up culture.
  • Flexible working conditions.
  • Unlimited holidays.

The ideal applicant

Nearly qualified/recently qualified patent attorney. Knowledge or experience of trade marks is a bonus.

Must have intellectual curiosity. All our employees across all levels are encouraged to ask questions and find the why behind what we do.

Career driven. We will help you get where you want to go.

Get involved in with business practices/operations. We aren’t looking for our next cog in the system.

Like what you see?

Email us!

A bit more about the role…

Stepping into a busy practice with regular patent drafting and prosecution.
Taking a lead role in managing local clients and overseas associates.
Encouraged to implement and improve new processes.
Marketing – particularly with respect to start-up scene.
Delivering IP education as part of River City Labs mentoring program and externally.
International and national travel to industry and technology conferences.
Involvement in oppositions.
Working in teams with lawyers and external service providers and nurturing (and forming new) relationships.

 

 

 

We have an opportunity in our rapidly growing Brisbane team for an IP Specialist

start asap

Start ASAP – it’s permanent full-time

above market

Remuneration $50,000 – $70,000 (incl. 9.5% super)

Experience

at least 2 years experience in IP administration preferred

Do you strive for constant improvement?

Innofy is an incorporated intellectual property consultancy firm, specialising in providing top-tier advice for high technology start-ups and research organisations. Our employee-focussed team-led culture sets Innofy apart from traditional IP firms. We strive for constant improvement.

Since Innofy’s conception – a conscious effort has been made to implement modern business processes and systems that make sense in today’s technology-centric environment. We value innovation, inclusion and knowledge – and our mission is to invent a better way of protecting today’s technology, so innovators can focus on building a better tomorrow.  We are forever striving to improve, and encourage a culture where every individual feels like they have something to contribute.

  • Agile environment.
  • Work with an internationally acclaimed team – IAM Patent, WTR 1000 ranked 2018.
  • Team-based approach to work completion.
  • Strongly value suggestions and curiosity.
  • Tailored career progression – we want to help you to realise your goals.
  • Emphasis on diversity and inclusion at all levels.
  • Immersed in the Australian start-up culture.
  • Flexible working conditions.
  • Unlimited holidays.

The ideal applicant

Experience in IP administration and processes is essential. You will be responsible for managing many IP portfolios and engaging with clients.

Must have intellectual curiosity. All our employees across all levels are encouraged to ask questions and find the why behind what we do.

Career driven. We will help you get where you want to go… whether that’s studying to be a trade mark attorney, or getting involved in managing operations.

Get involved in with business practices/operations. We aren’t looking for our next cog in the system.

Like what you see?

Email us!

A bit more about the role…

Day to day management of large IP portfolios
Taking a lead role in engaging in start-up clients within our ecosystem
Encouraged to suggest, implement and improve processes
Marketing - particularly generating social media content
Manage time of attorneys to ensure tasks are completed in time and on budget
Celebrity Trade Marks: A Kardashian Case Study

Trade marks are trending with celebrities – and they are keen to pursue protection in Australia:

  • Paris Hilton tried unsuccessfully for many years to register THAT’S HOT in respect of classes 3, 4, 14 and 25 (10392101184612, 1281365);
  • Curtis Jackson (aka 50 Cent) lodged a convention application for his stylised Australian trade mark for 50 Cent in 2003 in relation to classes 9, 25 and 41 (949000); and,
  • Donald J. Trump, President of the USA, has 7 trademarks in Australia including 4 directed to the wordmark TRUMP (1137970, 1239747 (expired – renewal possible), 1433269, 1486784) in classes ranging from real estate services (36) to provision of golfing facilities (41).

Indeed, according to the Harvard Business Review, licensing brings in billions in revenue for the largest global licensors.

The Kardashians – one of the most successful TV reality families of all time – are no stranger to trade marking and licensing arrangements.  In Australia alone, Kimsaprincess Inc (Kim Kardashian’s company) is the owner of 12 registered marks including KIM KARDASHIAN, DASHING, KIMOJI relating to goods and services from fragrance (3) to wireless electronic transmission of graphics (38).  Sisters Khloe (KhloMoney) and Kourtney (2Die4Kourt) also have various marks, as do Kylie (Kylie Jenner, Inc.) and Kendall Jenner (Kendall Jenner, Inc.).

But what can be gleaned from the Kardashian Australian trade mark filings?  The following examines three takeaways framed by the Kardashian case study.

1. Consequences of joint ownership

KARDASHIAN KOLLECTION and KARDASHIAN ESSENTIALS are jointly owned marks by Kimsaprincess, KhloMoney and 2Die4Kourt. KENDALL + KYLIE is owned by Kendall Jenner and Kylie Jenner. Therefore – each of these marks is jointly owned.

Section 28 of the Trade Marks Act 1995 states that if 2 or more persons interested in a trade mark are not entitled to use, except on behalf of all of them or in relation to goods and/or services with which all of them are connected in the course of trade; then an application for joint ownership may be made under subsection 27(1). This means that an application can only be made if neither of the parties can exploit the mark alone – you are essentially a single person – and can only do so on behalf of all of them, and in relation to goods/services which they are all connected.

For the Kardashian marks – such as KARDASHIAN ESSENTIALS – to be entitled for use this must benefit all within the joint ownership and in this case be in relation to classes 9 and 25 (eyewear, hoistery or shapewear). For licensing or assignment – they all have to provide consent (this could be important for merchandising, distribution, etc)

Key takeaway – carefully consider the consequences of joint ownership of trade marks before entering into this type of arrangement – speak to a professional.

2. Registrability of a Name

Section 41 of the Trade Marks Act 1995 requires an application be rejected if it has no inherent capability to distinguish to goods or services for which the application is sought. Kimsaprincess Inc is the current owner of mark KIM KARDASHIAN – a first and surname.  Kim also has registered protection for her initials KKW.  Both marks are in relation to class 3 (including fragrances). In terms of whether a surname, name or initials have inherent capability to distinguish, IP Australia’s Examiner’s Manual offers some guidance. For surnames only – the commonness of the surname is used as an indicator for its inherent adaptation to distinguish. The addition of a first name and surname increases the likelihood it is capable of distinguishing the goods or services – unless the name as a whole is common (JOHN SMITH) and the goods and services are common

Key takeaway: to register a mark it must be inherently capable of distinguishing the goods or services.  It is possible to register a name – but less likely the more common the name is.

3. Conflicting Marks

Section 44 of the Trade Marks Act 1995 states that an application must be rejected if the applicant’s mark is substantially identical or deceptively similar to a mark registered by another person in respect of similar goods or closely related services. Kylie Jenner attempted to register the marks KYLIE and KYLIE COSMETICS via Convention applications lodged in September 2015 and February 2016 respectively.

KYLIE stipulated classes 35 and 41 (advertising services and entertainment), and KYLIE COSMETICS was applied for in respect of goods and services in classes 3 and 35 (cosmetics and retail stores featuring cosmetics and beauty products). According to IP Australia, these applications were eventually withdrawn after the issuance of adverse examination reports. While details of the adverse reports issued have not been obtained, a search of the register does reveal the trade mark KYLIE is registered in respect of classes 3, 4, 9, 14, 16, 25, 28, 41 by Kylie Minogue (KDB Pty Ltd). Whether these existing KYLIE marks blocked the registration of Kylie Jenner’s marks or not is up for speculation. But – this does highlight the importance of conducting clearance searches prior to incurring the cost of filing a trade mark application – only to find an existing mark on the Register is blocking your registration.

Key takeaway: Conduct clearance searches of the same and similar mark in the same and closely related classes – as well as using Google, etc.  Seek professional advice.

Trade Mark Update: August 2018

It’s time again for our brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.

This month, we look at:

Trade marks: Out of time evidence admitted at hearing

Satnam Imports Pty Ltd v Simon Walter Sharpe [2018] ATMO 130 (17 August 2018)

Simon Walter Sharpe (“Sharpe”) applied to register trade mark No. 763149 (detailed below) on 6 April 2016. The following services were specified under Class 35: retailing of goods; wholesaling of goods; discount services; distribution of goods; the bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase the goods; advertising and marketing.

Trade Mark Application No. 1763149
Trade Mark: DISCOUNT PARTY WAREHOUSE (Logo)
Owner: Simon Walter Sharpe

Satnam Imports Pty Ltd (“Satnam”) opposed the filing on the grounds that it would be contrary to law (s 52- ss. 42(b)), the applicant is not the owner of the mark (s 58) and a similar mark has acquired a reputation in Australia (s 60) of the Trade Marks Act 1995. The trade mark in question is:

 

Satnam requested an extension of time to file Evidence in Support on 7 April 2017. The delegate, however, was not satisfied that it was appropriate to grant the entire month’s extension and instead allowed the Opponent 14 days.  The Opponent did not respond to this request, instead filing the Evidence in Support out of time on 10 May 2017.  The material filed was subsequently noted to be out of time.

Regardless, the Opponent filed submissions to allow the evidence supplied on 10 May 2017 to be allowed into evidence at the hearing under Regulation 21.15(4).  In this regard, the Registrar may be informed on any matter before them which they reasonably believe to be appropriate, allowing the Registrar not to be bound by the rules of evidence.

The Trade Marks Office Manual of Practice and Procedure (Part 51, para. 2.6) was referred to in examining if the case circumstances would fall under Reg. 21.15(4). Under this, evidence filed late, although generally not considered by the Delegate may be heard based on the decision made in court. Having late evidence heard is not a matter of routine but if a compelling case is put forward the inclusion of late submissions may be allowed as evidence.  Ultimately, the Opponent’s evidence was included and allowed into evidence.  This decision was based on a variety of factors, specifically being the absence and illness of Satnam’s sole director and the evidence being of probative value with the potential to affect the case outcome.

In relation to the claims, failure to establish opposition meant that the applicant was permitted to register the mark.

Key takeaway: While the trade mark office is taking a hard line of extensions of time for filing evidence, there are circumstances where out of time evidence may be allowed at a hearing. Seek professional advice.

Trade marks: To be taken in their whole entity

Monster Energy Company v ODD Games Pty Ltd [2018] ATMO 131 (17 August 2018)

ODD Games PTY Ltd (“ODD”) filed an application for trademark No. 1770632  for “Monster Truck Destruction” in Classes 16, 25, 28 and 41 of the International Classification of Goods and Services on 13 May 2016.

Trade Mark Application No. 1770632
Trade Mark: MONSTER TRUCK DESTRUCTION
Owner: ODD Games Pty Ltd

Monster Energy Company (“Monster Energy”) opposed the mark on the grounds its use would be contrary to law (s 42(b)), deceptive similarity (s 44) and due to the reputation of another mark (s 60) of the Trade Marks Act 1995.

Under Section 60, a trade mark can be opposed based on the grounds that another mark had, before the priority date, acquired a reputation in Australia in respect of the applicant’s goods or services, and registration of the applicant’s mark would be likely to deceive or cause confusion due to the reputation of the other mark.

In particular, Monster Energy were relying on the reputation in its trade marks MONSTER ENERGY, and:

 

 

The hearing officer noted that, unlike section 44, section 60 DOES NOT require that the goods and services be similar or closely related to those of interest to the applicant.
The reputation of Monster Energy in its marks was undisputed. At issue was whether registration of “MONSTER TRUCK DESTRUCTION” was likely to deceive or cause confusion, given the (undisputed) reputation of Monster Energy’s marks.

In order to assess the likelihood of confusion, the hearing officer referred to French J in Registrar of Trade Marks v Woolworths (‘Woolworths’). In Woolworths, French J referred to ascertaining whether people would wonder if closely related goods or services originated from the same source, considering all of the circumstances – including the deceptive similarity in respect of all of the goods and services in the applicant’s specification.

When assessing whether MONSTER TRUCK DESTRUCTION was deceptively similar to the MONSTER marks, it was highlighted that the comparison must include the trademarks in their entirety. While the hearing officer acknowledged the common element between the marks was the word “MONSTER”, he asserted that there are significant differences between the marks which outweigh the common word – namely, the distinctive meaning and idea of MONSTER TRUCK. According, it was found that the ground of opposition under s60 could not be established.

Indeed, similar conclusions were drawn in respect of the s44 and s42(b) opposition grounds which relate to deceptive similarity to a registered mark, and contrary to law (that is, likely to mislead or deceive according to the Australian Consumer Law), respectively.

In view of the above, the opposition was not successful.

Key takeaway: The assessment of deceptive similarity is directed toward marks as a whole, and not necessarily toward merely the sharing of a common element or word.

Trade Mark Update: September 2018

It’s time again for our brief synopsis of some of the new and most interesting trade mark decisions handed down by the Australian Trade Mark Office (TMO). We report on the aspects of the case that we find most noteworthy, and not necessarily every aspect of the decision.

This month, we look at:

Trade marks: Reputation, Deception and Confusion – not simply Connection

Ferrero S.p.A v Nuts-about-tella Pty Ltd [2018] ATMO 147 (18 September 2018)

Nuts-about-tella Pty Ltd filed an application for trade mark No. 1747769 for “nuts-about-tella” in relation to Class 43 (providing food and drink) on 28 January 2016.

Trade Mark Application No. 1747769
Trade Mark: nuts-about-tella
Owner: Nuts-about-tella Pty Ltd

Ferrero S.p.A (“Ferrero”) opposed the mark on the grounds it use would be contrary to law (s42), deceptive similarity (s44),  a similar trade mark has a reputation of Australia (s60) and the application was made in bad faith (s62A) of the Trade Marks Act 1995.

In relation to deceptive similarity, perhaps somewhat unsurprisingly Ferrero failed to establish these grounds of opposition in respect to their marks in relation to the “NUTELLA” wordmark and various devices (i.e. 210675, 282424, 394170, 394172, and 1422008).

Instead, much of the decision related to section 60 which relates to a trade mark similar to another trade mark that has acquired a reputation in Australia in respect of particular goods and services may be opposed if the other mark is likely to deceive or cause confusion.  While the reputation of the mark NUTELLA was established by Ferrero, the hearing officer noted that it was necessary to satisfy that because of that reputation the public are likely to be deceived or confused by the use of the mark.

In this regard, it was acknowledged that consumer would likely see “nuts-about-tella” as a “reference to the Nutella product”, with the hearing officer inferring that a large percentage of consumers familiar with the Nutella mark would read the trade mark as “very enthusiastic for Nutella”.  However, he cautioned that this is not the relevant question under s60.  Rather “the question that must be asked is whether, considering all surrounding circumstances, a number of persons will be caused to wonder whether or not it might be the case that the Applicant’s Services are provided by the Opponent”.  According to this test, the hearing officer felt it unlikely that consumers would be confused into thinking that Ferrero itself has opened a business providing food and drink in Australia under the mark ‘nuts-about-tella’.

Other grounds were similarly not made out and the opposition was not successful.

Key Takeaway: Similarity to another trade mark which has acquired a reputation is only one step of the test under s60.  An opponent must also establish that because of the reputation, the public is likely to be deceived or confused by use of the mark.  This is not simply a matter of consumers realising a potential connection, but a tangible danger of consumers being caused to wonder whether the applicant’s goods/services were provided by the opponent.

Trade marks: The Use of Phone Words

Finsure Domain Names Pty Ltd v RESN Holdings Pty Ltd [2018] ATMO 139 (10 September 2018)

RESN Holdings Pty Ltd (“RESN”) applied for removal of trade mark No. 1469962 for “MYloan” in Class 36 on 4 January 2017. Finsure Domain Names Pty Ltd (“Finsure”), the Opponent, filed Notice of Intention to Oppose on 24 January 2017.

Trade Mark Application No. 1378036
Trade Mark: MYloan
Class: 36
Owner:
Finsure Domain Names Pty Ltd

Under section 100, the burden of proof lies with the opponent to rebut that there has been no use of trade mark at any point in the relevant period. Thus, Finsure were required to show use of trade mark within the relevant three year period ending on 4 December 2016 (that is, a month prior to the non-use application being filed).

In this regard, Finsure attempted to rely up its use of a phone word “1300MYLOAN”, and submitted two bills from Telstra for use of the phone number associated with the phone word within the relevant period.  Accordingly, the hearing officer stated that the issue at hand was whether use of the phone word constituted use of a trade mark.

The hearing officer noted that the mere presence of 13/1300/1800 in a trade mark did not act to substantially alter the identity of the trade mark in question.  In view of this, the hearing officer found that the Opponent had established use of the trade mark in the relevant period, through its use of the phone mark.

In view of this, opposition was successfully established.

Key Takeaway: Phone words are not likely to be considered to substantially affect trade mark identity. Therefore, in terms of establishing trade mark use – the use of the mark within a phone number could be sufficient.

 

 

Designs

KeepCup v Gloria Jeans: An Australian registered design test case in the making?

The Australian Broadcasting Commission reported on Friday that KeepCup – manufacturer of reusable coffee cups – is suing Gloria Jeans over alleged infringement of KeepCup’s registered design rights.  In the report, Professor Andrew Christie from the University of Melbourne Law School contends that the lawsuit may have the potential to provide a pivotal test case for registered designs in Australia.  Below, we explore the reasoning behind this opinion, and what registered design infringement actually means.

A search of the Australian Designs Data Searching (ADDS) database reveals that KeepCup are the current owners of five registered Australian designs – 363697, 349256, 349255, 334106, and 324241.  Importantly, the question of whether a design right is infringed is independent of the appearance of the registered design owner’s own commercial product.  In this case, therefore, it is irrelevant what KeepCup’s actual commercial cups look like.

Rather, the question of infringement is posed in relation to the registered design/s as it/they exist/s on the designs Register – and asks whether the allegedly infringing product embodies a design which is “identical to, or substantially similar in overall impression to, the registered design” (s 71 Designs Act 2003).

Whilst “identical to” is rather self-explanatory, the test of “substantially similar in overall impression” replaces the previous test recited in the Designs Act 1906 of ‘fraudulent or obvious imitation’.  This was primarily due to dissatisfaction with the old infringement test –  as courts would typically only find in favour of a registered designs owner in the event of almost exact replication.  Indeed, of the 17 cases relating to infringement of registered designs which were before the courts in the seven years prior to 1993, infringement was only found in only two cases, one of which was overturned on appeal. 

The new test of “substantially similar in overall impression” states that the courts must have regard for giving more weight to similarities, the prior art base, any ‘statement of newness and distinctiveness’ or in its absence the whole design, the qualities of any component part which is ‘substantially similar’, and the scope for potential innovation.  Additionally, in applying each of these factors the courts must use the ‘standard of the informed user’.

Accordingly, should KeepCup v Gloria Jeans proceed to court, it will be interesting to what extent each of these factors plays in weighing any infringement decision.

And ultimately, this will be an interesting case for other registered design owners to follow – in order to make an appropriate assessment of the commercial value of registered designs, and to ensure their applications are as robust as possible.