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Australian Innovation Patent System Officially Commences Phase-Out Period – A final deadline of 25 August 2021 has been set for filing new innovation patent applications

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As of 26 August 2021, applicants will no longer be able to file new innovation patent applications.  This comes as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 being passed into law on 5 February 2020, and this Bill receiving Royal Assent on 26 February 2020, the latter date setting the 18-month deadline noted above.

It is important to note that after 25 August 2021, although no new innovation patent applications can be filed, existing standard applications can be converted to innovation patent applications and divisional innovation patent applications can also be filed based on existing applications.  Given the 8-year term of innovation patents, this would mean that innovation patents will cease to exist as of 26 August 2029.

The phasing out of the innovation patent came about some years ago based on the Productivity Commission’s public inquiry into Australia’s Intellectual Property system.  The Productivity Commission’s Inquiry report, sent to the government on 23 September 2016 and published on 20 December 2016, recommended that the innovation patent system be phased out.  This recommendation was due to the perceived shortcomings of the system that enable it to be used in a manner not in line with the original objectives of the system, those objectives being to provide a more cost effective option for small to medium entities to protect inventions that were considered more short term or incremental improvements, and therefore encourage innovation amongst these entities.

Based on the recommendations in the Inquiry report, the Australian government chose to commence steps to phase out the innovation patent system altogether rather than the more taxing route of reforming the system so that it would still fit within its original objective.

Takeaway advice

Any applicant seeking to utilise the innovation patent system should note the 25 August 2021 deadline and plan to have their new innovation patent application(s) filed by this date.  A fairly common path taken by applicants is to file a provisional application and then file a complete innovation patent application claiming priority to the earlier filed provisional application within twelve months.  For this common path scenario, the filing of a complete innovation patent application may need to be brought forward if the provisional application is filed later than 25 August 2020.  This consideration will also be important for the filing of standard complete applications based on provisional applications, where the applicant wishes to preserve the option of later filing a divisional innovation patent application.

If you have any questions regarding strategies for using the innovation patent system whilst it still exists and/or wish to discuss potential innovation patent options relating to your own patent portfolio, please contact us and we would be more than happy to discuss this with you.

By Nicholas Lakatos

A product style name may not be a trade mark

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Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662 (10 October 2019)

Pinnacle Runway Pty Ltd (“Pinnacle”) owns a trade mark registration for DELPHINE in relation to: “clothing; headwear; swimwear” in class 25 and sells women’s clothing under this trade mark. Pinnacle brought an action against Triangl Limited (“Triangl”) for infringement of its registration for the DELPHINE trade mark because Triangl had used DELPHINE as a “style name” for marketing and selling its swimwear. However, the Federal Court ultimately decided that Triangl’s use of DELPHINE was use of a style name, but not use of DELPHINE as a trade mark. As a result, the Court dismissed Pinnacle’s claim because Triangl’s use of the style name DELPHINE for swimwear was not infringement of Pinnacle’s DELPHINE trade mark registration.

For infringement of a trade mark registration to occur, the infringing use must be use “as a trade mark,” and this was a crucial issue in this case. Use as “a trade mark” is use of a sign to distinguish goods or services dealt with or provided in the course of trade from the goods or services of provided by other traders (Section 17 of the Trade Marks Act 1995 (Cth)). Triangl acknowledged that it had marketed and sold a bikini style in Australia in three different floral designs under the TRIANGL trade mark using the style name DELPHINE, but its defence was that it did not use DELPHINE as a trade mark. Triangl said that it used the TRIANGL trade mark to distinguish its swimwear products from those of other traders, but used DELPHINE only as a style name to assist consumers to differentiate its numerous bikini styles from each other.

The Court accepted Triangl’s evidence which showed that during the relevant period, there was a widespread practice in the women’s fashion industry in Australia of using style names in relation to women’s fashion garments, including swimwear, and that women’s names are commonly used as the style names to distinguish the different styles from each other. The Court was therefore satisfied that during the relevant period consumers were used to the practice of style names, particularly women’s names as style names, and consumers would therefore be unlikely to perceive DELPHINE as distinguishing Triangl’s goods from the goods of other traders. Justice Murphy dismissed Pinnacle’s claim and said, “Pinnacle failed to establish on the balance of probabilities that Triangl used, or intended to use DELPHINE to distinguish its goods dealt with or provided in the course of trade from goods or services so dealt with or provided by another trader. It did not establish that Triangl’s admitted use of DELPHINE was use as a trade mark and it therefore did not make out its case of trade mark infringement.”

When Triangl put on evidence to demonstrate that there exists a widespread practice in the women’s fashion industry in Australia of using style names, particularly women’s names, it sought to rely on screenshots from websites of a range of swimwear and fashion brands taken from online searches undertaken on the Internet archive the Wayback Machine. The screenshots taken from the archived pages of the relevant websites available on the Wayback Machine over the period 2012 until June 2016 were presented by Triangl to show that on various dates over the relevant period the swimwear and fashion brands had used women’s names as style names.

Prior to this case, the Australian Courts have found evidence taken from the Internet Archive the Wayback Machine to be inadmissible on the grounds of hearsay. However, it is interesting to note that in this decision Justice Murphy accepted the evidence, and found that the contents of the screenshots presented which were taken from the Wayback Machine that set out the product name, description and price of each business, were a “business record” which fall within the business records exception to the hearsay rule (section 69 of the Evidence Act 1995 (Cth)). Triangl also submitted that the screenshots were in fact from the date on the screenshot, and each screenshot was a digital copy of the webpage that existed on the relevant website of the fashion brand on the date specified. Justice Murphy when considering this noted, “the Wayback Machine copied the relevant webpage into its archive and recorded the date on which it did so, and that the page retrieved from its archive is the same page which existed on that date – is only hearsay under s 59 [of the Evidence Act 1995] if the archiving and retrieval process involved human input. That is, that a person or persons was involved in copying and uploading the page to the Internet Archive database or later retrieving it for production.” In addition, Triangl put forward evidence from the office manager at the Wayback Machine to establish that the archiving and retrieval of webpages by the Wayback Machine does not involve human input, as its data is compiled using software programs known as “crawlers” that surf the Internet, and the software automatically stores copies of the website pages, preserving them as they exist at the point in time they are captured. As a result of this evidence, Justice Murphy found that the Wayback evidence did not constitute hearsay because the archiving and retrieval process did not involve human input, which allowed Triangl to rely on the screenshots to prove that each relevant webpage existed on the particular date recorded by the Wayback Machine.

This decision highlights that a style name or product name will not always be a trade mark, and determining whether trade mark infringement has occurred will require careful consideration of the specific facts of each case.

Please contact us if you require any assistance with your trade marks.

By Erin Cassidy

New official fee increases for New Zealand patents – How to avoid paying the increased fees

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On 13 February 2020, the Intellectual Property Office of New Zealand (IPONZ) will increase its fees in relation to patents, with a full list of the changes found here.  Further, IPONZ will introduce some altogether new fees.  The reasoning for these changes to fees is said to be “to reduce IPONZ’s memorandum account, rebalance patent and trade mark revenues, and improve the efficiency of the patent and trade mark regimes.”

An overview of the changes and possible strategies to avoid paying the higher fees are set forth below.

The patent fee changes

An overview of the more pertinent fee increases/additions are as follows:

    • Request for examination fee is to increase from NZ$500 to NZ$750.
    • A new ‘excess claims’ fee is introduced, payable after an application is accepted (allowed).  This fee will be NZ$120 for each 5th claim over 25 claims.  In other words, for every five claims over 25 there will be an additional NZ$120 payable (e.g. 30 to 34 claims the fee will be NZ$120, 35 to 39 claims the fee will be NZ$240, 40 to 44 claims the fee will be NZ$360, 45 to 49 claims the fee will be NZ$480, and so on).  Importantly, this fee is based on the maximum claim count during examination.  An example scenario is set out as follows:
      o    Examination was requested with 29 claims;
      o    Prior to receiving an Examination Report, a further 5 claims were added and the 34 claims are all examined;
      o    In response to an Examination Report, 5 claims were then cancelled, and the application is accepted with 29 claims;
      o    The acceptance fee payable is calculated based on the maximum number of claims at any point during examination, that being         34, so an excess claim fee of NZ$120 would be payable after acceptance.
    • The fee to accompany voluntary amendments before acceptance is to increase from NZ$60 to NZ$150.
    • The fee to accompany voluntary amendments after acceptance is to increase from NZ$150 to NZ$500.
    • Renewal fees are to increase (based not on the due date but on the commencement of the payment period which is three months prior to the due date being on or after 13 February 2020) as follows:
      o    Renewal fees due on 4th to 9th anniversary are to increase from NZ$100 to NZ$200.
      o          Renewal fees due on 10th to 14th anniversary are to increase from NZ$200 to NZ$450.
      o    Renewal fees due on 15th to 19th anniversary are to increase from NZ$350 to NZ$1,000.
      o    Late renewal fee payments (payable up to six months after the due date) will increase from NZ$50 to NZ$100 per month.

How to avoid paying the increased fees

As noted above, these fees come into effect on 13 February 2020.  Therefore, if actions are taken on a patent application prior to this deadline, the present lower fees will be payable.  In the case of the excess claim fee due at acceptance, this will only be applicable where examination is requested on or after 13 February 2020.

As such, New Zealand patent applicants with applications that are likely to yield significant excess claim fees may wish to consider requesting examination prior to 13 February 2020 to avoid those fees.

Given the increase of the examination fee, more cost-conscious applicants may wish to request examination earlier.

Further, applicants with pending PCT applications and/or have a desire to seek patent protection in New Zealand may be interested in entering national phase/filing their application and requesting examination early, before 13 February 2020.

Getting on the front foot and filing early could also be beneficial in maximising the prosecution time in order to make an informed decision on whether to file New Zealand divisional applications, noting that such divisional application must be filed and have examination requested within 5 years of the filing date of the original parent application (which in many cases is the PCT filing date).

If you have any questions regarding strategies for saving costs and/or wish to discuss how the above actions could be applicable to your own patent portfolio, please contact us and we would be more than happy to discuss this with you.

By Nicholas Lakatos

Unregistered trade mark leads to peanut butter packaging problems

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Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8) [2019] FCA 593

Kraft recently ran into difficulties over the trade dress (the appearance of its product packaging) for its peanut butter because it was not a registered trade mark.

In 2017, Bega purchased Kraft’s peanut butter business together with the associated assets and goodwill from Mondelez Australia (Foods) Ltd. (a company within the Kraft Foods Group). “Kraft” in this article refers collectively to the first and second applicants in this case, namely, Kraft Foods Group Brands LLC and H.J. Heinz Company Australia Limited.

The “Peanut Butter Trade Dress” (the Trade Dress) in issue in this case is “a jar with a yellow lid and a yellow label with a blue or red peanut device, with the jar having a brown appearance when filled”. Kraft and Bega agreed that the Trade Dress operates as a trade mark.

The Trade Dress was originally used by Kraft for its peanut butter. Examples of the Trade Dress used by Kraft from 2015 until late 2016 are depicted below:

image-1

Examples of the Trade Dress used by Kraft from June 2017 are depicted below:

After Bega purchased the peanut butter business from Kraft in 2017, it began to use the following Trade Dress (in late 2017) for its peanut butter products branded “BEGA”:

image-3

Upon entering the peanut butter market using the Trade Dress, Bega obtained almost the whole of Kraft’s peanut butter market share, which is worth more than $60 million in annual sales. Kraft temporarily exited the Australian peanut butter market after the sale of the business in 2017, but re-entered the market in 2018 and wanted to use Trade Dress again for its peanut butter.

Examples of the Trade Dress used by Kraft when it re-entered the market in 2018 are below:

image-4

Kraft sued Bega because it claimed that Bega’s use of the Trade Dress constituted misleading or deceptive conduct under the Australian Consumer Law, passing off and breach of contract (among other claims). Kraft said that Bega did not acquire the Peanut Butter Trade Dress when it purchased the peanut butter business from Mondelez, because it did not belong to Mondelez to sell, as at that time both the Trade Dress and the registered trade mark KRAFT, were licensed from Kraft Foods Global Brands LLC (as the result of a company restructure but we will not go into the details of the relevant licences here). Bega countersued Kraft for misleading and deceptive conduct, passing off and breach of copyright.

Bega contended that when it purchased the peanut butter business from Kraft, it purchased the Trade Dress as part of the goodwill of the business because the Trade Dress was an unregistered trade mark. Bega said that because it owned the Trade Dress, its use of the Trade Dress did not constitute misleading or deceptive conduct, or passing off. Bega pointed out that the Trade Dress could not have formed part of any trade marks that were licensed to Kraft because it was an unregistered trade mark.

The Federal Court held that it is established law in Australia that the assignment or licensing of unregistered trade marks is not possible without the goodwill of the business in respect of which it is used. Justice O’Callaghan said, “the rationale for the common law position is that an unregistered trade mark cannot be assigned except with the goodwill of the business in respect of which it is used because to do otherwise would engender confusion or deception.” Therefore, it was not possible for Kraft to have licensed the Trade Dress from Kraft Foods Global Brands Ltd at the time that the peanut butter business was sold to Bega because the Trade Dress was an unregistered trade mark. The Court agreed with Bega that at the time of the sale of the peanut butter business, the Trade Dress formed part of the goodwill of the business that Bega acquired, and the specified “Transferred IP Rights,” in the Sale and Purchase Agreement between the parties. The Court held that Bega acquired all rights to the Trade Dress pursuant to the terms of the Sale and Purchase Agreement, and was therefore entitled to use the Trade Dress for its peanut butter. As a result, Bega’s cross claims against Kraft for misleading and deceptive conduct, and passing off in relation to its use of the Trade Dress (made subsequent to the sale of the peanut butter business to Bega) were successful.

It is important to note that the dispute between Kraft and Bega in relation to the Peanut Butter Trade Dress is likely to have been avoided if the Trade Dress was registered as a trade mark. If Kraft had registered the Trade Dress as a trade mark, the parties would not have needed to dispute the ownership of the Trade Dress in court.

Please contact us if you have any questions, or if you would like to discuss the registration of your trade mark.

By Erin Cassidy

 

 

 

 

 

 

 

 

Maintaining a registered mark: the degree of control required by its owner

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Once a trade mark has been registered in Australia, it must be used by its registered owner to prevent it from becoming vulnerable to removal for non-use.  Authorised use of the mark by another entity will be taken to be use of the mark by the owner if it is carried out under the control of the owner.  If a registered mark is used by anyone other than the registered owner, an exertion of control by the registered owner over the use of the mark is required to ensure the ongoing validity of the mark, generally requiring a licence agreement between the parties and actual control exercised by the trade mark owner.

A 2018 Federal Court decision of Justice Gleeson in Trident Seafoods Corporation v Trident Foods Pty Limited indicated that this amount of control by the registered owner of a mark is required even within corporate groups where one member of the group may have registered the mark and another member of the same group may be using the mark.  In this case, the marks of interest had been registered by Trident Foods Pty Ltd, a wholly owned subsidiary of Manassen Foods Australia Pty Ltd but all sales of foods under the marks since about 2000 had been by the parent company, Manassen.  A third party, Trident Seafoods Corporation, sought the removal of Trident Foods’ registered marks for non-use, on the basis that they had not been duly used by the registered owner.  There had been no formal licence between these related parties during the period in question and Justice Gleeson found that the use of the mark by Manassen had not been under the control of Trident Foods (even though the companies had common directors and the same principal place of business and Trident Foods was identified as the trade mark owner on products supplied by Manassen).  Therefore, Justice Gleeson held that the use that Manassen had made of the mark could not be considered to have been use by the registered owner, Trident Foods.

However, the Full Federal Court has overturned this finding on appeal in Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100.  On appeal, the court held that:

  • The question was not whether one company controlled the other but whether Trident Foods, even though a wholly owned subsidiary of Manassen, had control over Manassen’s use of the marks.
  • The fact that the two companies had the same directors at all relevant times was significant as it meant that the companies operated with a “unity of purpose” (i.e., the directors of both companies had a common purpose to maximise sales and to enhance the value of the brand).
  • Evidence provided by one of the directors of the two companies to the effect that she had not needed to give directions to Manassen was found to support this “unity of purpose”.  It was held to be unsurprising, given the corporate relationship, the commonality of directors and the shared processes between the owner and the user of the marks, that there was no evidence of actual control by Trident Foods of Manassen in respect of the marks.
  • The fact that every packet sold by Manassen had stated that Trident was a registered trade mark of Trident Foods supported the inference of control by Trident Foods of the use of the marks which it owns.
  • Given the corporate relationship between the parties, it was clear that Manassen had used the marks with the knowledge, consent and authority of Trident Foods and that Trident Foods’ active consent and authority constituted an unwritten licence for use of the marks.

Taking all of the evidence into consideration, the court held that Manassen’s uses of the marks had been under the control of Trident Foods, and that there had therefore been authorised use of the marks in Australia during the relevant period.

This decision should provide some welcome relief to corporate groups where the registered owner is not always the entity using the mark, in that it confirms that within a corporate group, adequate supervision as opposed to actual control over the use of a mark may be sufficient to maintain validity of a registered mark, if there is “unity of purpose” between the registered owner and the user of the mark with regard to sales and enhancing the value of the brand.

That said, each case will turn upon its own facts and owners of registered trade marks should take steps to ensure that they will always be in a position to demonstrate a reasonable degree of control or supervision over the use of their marks by related companies within their corporate group.

Where a user is not within the same corporate group as the trade mark owner, actual control is still required and trade mark owners are strongly advised to have formal trade mark licences and control mechanisms in place in such situations.

Please contact us if you have any questions.

By Nicky Shanks

Cannabis and marijuana trade marks in Australia

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Trade marks are currently being accepted for registration in Australia by the Trade Marks Office in relation to both medical and recreational cannabis and marijuana, and related services.

Australian trade mark law prohibits the registration of a trade mark if its use would be contrary to law. Previously, the promotion and sale of cannabis or marijuana for any purpose was illegal in Australia, and trade mark applications claiming cannabis and marijuana were rejected because these products were illegal and therefore contrary to law. However, the Narcotic Drugs Amendment Act 2016 (Cth) has made changes to the law in Australia so that the production of cannabis or cannabis resin (or the cultivation of cannabis plants for that purpose) is allowed for medicinal or related scientific purposes (through a national licensing scheme).

Although the recreational use of cannabis and marijuana remains illegal in Australia, it appears that the recent practice of the Trade Marks Office has been to allow the registration of trade marks for cannabis and marijuana that do not specify whether the goods or related services are for medical purposes. We have also observed trade mark registrations where the goods have been described as “recreational cannabis products”, or the goods have been edibles containing cannabis/marijuana or their extracts/derivatives. However, despite the existence of these trade mark registrations, there remains the possibility that an objection may be raised against an application if the Trade Marks Office considers that the registration of the mark in relation to cannabis or marijuana for recreational use would be for the promotion of illegal activity, and therefore contrary to law.

If you require any further information about trade mark rights in relation to cannabis and marijuana in Australia, please contact us.

By Erin Cassidy

A “meaty” advantage of trade mark registration confirmed in recent case

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Registration of a trade mark gives you exclusive rights to that mark, which makes it easier for you to take legal action to enforce your trade mark rights. The elements that need to be established under the Trade Marks Act 1995 (Cth) (the Act) in order to succeed in an action for infringement of your trade mark registration are significantly less than those required for the actions of passing off, and for misleading or deceptive conduct under the Australian Consumer Law. When enforcing your rights in a registered trade mark pursuant to sections 120(1) and (2) of the Act, it is not necessary to establish a reputation in the relevant trade mark, which is unlike an action for passing off. In light of this, a trade mark registration is an advantage when you wish to protect a trade mark that is valuable to your business, but you have not yet have built up a reputation in the trade mark.

Interestingly, in the recent case of JBS Australia Pty Ltd v Australian Meat Group Pty Ltd [2017] FCA 1421 which involved two competing meat businesses, the role of reputation in a trade mark was taken into consideration by the primary judge when the deceptive similarity of respective trade marks was determined in an action for registered trade mark infringement.

JBS Australia Pty Ltd (JBS) took action against Australian Meat Group Pty Ltd (AMG) in the Federal Court for infringement of its two trade marks for AMH and an AMH Logo registered in relation to meat and meat products (among other things) under section 120(1) of the Act. JBS claimed that the five trade marks used by AMG, each of which contained the letters “AMG,” were substantially identical with, or deceptively similar to its two registered trade marks, and the “AMG” marks were used in relation to the same goods for which JBS’s trade marks were registered.

The primary judge found in favour of JBS, and concluded that each of the AMG marks was deceptively similar to each of the AMH marks. In coming to this conclusion, it was clear that his Honour was significantly influenced by the reputation he found to exist in each of the AMH marks, when determining whether confusion could arise in the mind of a consumer between the respective marks when purchasing meat products in the market in which both parties operated.

However, AMG appealed this decision, and it was overturned by the Full Federal Court in Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207 (27 November 2018). The Full Court noted that the primary judge took into account the strong brand reputation in the AMH trade mark owned by JBS when assessing the deceptive similarity of the respective marks, and held that this approach was incorrect when determining trade mark infringement under the Act. It was ultimately determined by the Full Court that each of the trade marks were not deceptively similar to each other by examining the characteristics of the trade marks themselves, and the context of the transactions within which the marks would be used. JBS applied for special leave to appeal to the High Court, but it was refused by the High Court in May 2019.

This decision of the Full Federal Court confirms that reputation in a trade mark is not relevant when determining the deceptive similarity of trade marks for the purposes of trade mark infringement, when the respective marks at issue are used for the same goods or services (pursuant to section 120(1) of the Act).

Please contact us if you have any questions.

By Erin Cassidy

Brief summary of the Australian patent system

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The patent system was historically established to encourage the development of inventions by granting inventors protection against unauthorised copies or use of the invention for a finite period of time. The patent system offers the invention owner (patentee) the right to exclusively exploit a patented invention for a period of up to 20 years. In return, society benefits from free use of the invention thereafter. The system is based on the concept of promoting technological development by rewarding research and development.

The following is a brief overview of some important considerations when developing new inventions, and some of the pitfalls to be avoided.

Can you disclose or use an invention before a patent application has been filed?

In the early stages of research and development, before any patent applications have been filed, it is imperative for the invention to be kept confidential. If the invention is used, demonstrated or discussed publicly, or if information describing the invention is published in a document before a patent application is filed, then the publication or use may jeopardise the validity of any subsequently granted patent. In some countries, including Australia, there is a limited “novelty grace period”, which means that a disclosure by or on behalf of the patent applicant occurring in the 12 month period before a standard patent application is filed is unlikely to invalidate the patent. However, for various reasons which extend beyond the scope of this article, the novelty grace period should be regarded as a last resort, and it is always preferable to file a patent application before making any public disclosure.

In some scenarios, it is not possible to file a patent application before disclosing the invention to a third party. For example, an external designer or engineer may be required to provide design input before the inventive concept can reach functional maturity.

If such a confidential disclosure is necessary, the right to protect the invention with a patent application can be maintained by having anyone who is shown the invention sign a Confidentiality Agreement before any information about the invention is disclosed. However, it should be noted that a Confidentiality Agreement does have several limitations. One such limitation being that the owner of the information does not have any recourse against a third party who receives the information from the initial party to the agreement. Furthermore, a Confidentiality Agreement is usually no longer binding after the owner of the information makes the information public.

In simple terms, it is recommended that a patent application should be filed as soon as practically possible. Any dealings in the invention before filing a patent application should ideally be discussed with a patent attorney to ensure the approach being adopted will not ultimately jeopardise the applicant’s rights.

What type of patent application should I file?

There are several different types of patent application available in Australia. There is a provisional patent application, providing an initial term of 12 months, and two types of complete patents, being an innovation patent having a full term of 8 years and a standard patent having a full term of 20 years.

The best approach for the initial filing depends case by case. However, a provisional patent application is normally the recommended starting point, as this route generally provides the most flexibility long term.

During the term of a provisional patent application, the applicant can commercially disclose, use and sell the invention. In practice, the 12 month provisional patent term provides a means to “test the market” to determine the commercial viability of an invention, and assess whether ongoing patent protection (for example a standard patent application) may be desirable in Australia or overseas.

Australia and the majority of foreign countries are members of the Paris Convention on intellectual property. One important aspect of that Convention is that it provides that an applicant from one contracting state shall be able to use its first patent filing date as the effective filing date in another contracting state, provided that the applicant files a subsequent application within 12 months from the first filing. In simple terms, this means that within 12 months of filing a provisional patent application in Australia, the applicant can optionally choose to file a patent application in another country, and claim the effective filing date of the provisional application. A similar provision applies to standard Australian patent applications filed within 12 months of a provisional patent application.

After filing a provisional patent application, the applicant is able to disclose the invention to other parties without losing their right to patent the invention. Importantly, provisional patent applications are not published, so if the applicant subsequently decides not to pursue patent protection, the information regarding the invention in the provisional patent application never becomes public. For this reason, it may be advisable to only disclose the invention under a confidentiality agreement during the twelve month provisional patent term, if the invention is not yet in the public domain.

It is also advisable, during the 12 month provisional patent term, that the applicant explore the potential commercial markets for the invention so that a calculated commercial decision can be made regarding whether to protect the invention in Australia only or in other countries as well.

During the provisional term, it is common for the invention to change unexpectedly, for example, on account of further research and development and prototyping. If this occurs, it is permissible to file one or more further provisional patent applications. Any subsequently filed applications in Australia or overseas may claim priority to more than one provisional patent application.

What prior art searching options are there?

Before proceeding with the expense of patent protection in multiple countries, it is advisable to obtain an indication of the patentability of the invention. This can be done by way of patent database searching which can be conducted before filing a patent application or alternatively after filing a provisional patent application. Searching aims to locate the closest “prior art” being earlier dated published documents, normally in the form of patent applications.

After filing a provisional patent application, there is an option to request an International-Type Search which is conducted by the Australian Patent Office. This approach can be advantageous over other pre-fling search options. One advantage being that the International-Type Search is conducted to the same standard and using the same databases as the search conducted for an International PCT patent application (discussed below) and gives a strong indication of whether or not a patent is likely to be granted for the invention.

Another advantage of the International-Type Search is that it does not delay the provisional filing, so the applicant can secure the earliest possible provisional filing date.

Regardless of whether the patent applicant ultimately decides to pursue any provisional patent searching, it is recommended that as a minimum they should conduct their own informal searches, to assess what other related inventions may exist in a given field. This kind of searching can be done online through Google and other patent specific databases. Whilst such searching is unlikely to be as thorough as a professional patent search, it nevertheless can be invaluable as a starting point, and can assist in briefing your patent attorney on the state of the prior art. This enables the patent attorney to draft a provisional patent application which is most relevant, and focused on what aspects of the invention are likely to be new and inventive.

What happens after the provisional patent year?

Toward the end of the 12 month provisional patent term, the applicant will need to decide whether ongoing protection is desired, and if so, in what countries applications should be pursued. The choice of countries is case specific and depends on factors such as the likely target market for the product, jurisdictions that key competitors operate in, where the product will be manufactured, and the markets in which the applicant’s business is present. The patent filing strategy is case specific and requires careful consideration.

There are effectively two primary choices at this stage in the patenting process. In particular, the applicant may file:
separate national applications in a select number of jurisdictions; or
an international “PCT” patent application.

National applications are filed at the local patent office of any country where patent protection is sought. In simple terms, such applications are searched and examined by the local patent office and the applicant has the opportunity to address any objections, with the objective of overcoming any objections, and having patents granted.

The PCT (Patent Cooperation Treaty) is an international treaty that enables a patent application to be filed which reserves the applicant the right to file national applications for at least a further 18 months. During that 18 month period, also known as the “international phase”, the application is searched and examined, and there are several opportunities to make changes to the specification to highlight any important differences over any prior art identified in the international search report.

The PCT system provides advantages in so far as the decision concerning which national applications to pursue is delayed by a further 18 months, which provides more time to determine which markets are likely to be important. In addition, the centralised examination process enables the applicant to address any objections or “prior art” centrally, in the international phase, and this can provide cost savings as any national applications which are ultimately filed are less likely to encounter objections by the national patent offices.

Ultimately the best approach will depend on the specifics of a given invention and the applicant’s commercialisation objectives. A patent attorney can provide guidance at each stage in this process and recommendations on how to achieve the commercial objectives in the most cost effective manner.

The patent process is complicated and for those who are new to it, it can be challenging to grasp some of the issues and the ramifications of decisions made throughout the process.

This article is intended to provide an outline of some of the important issues to consider. However, we recommend that inventors should seek customised advice from a patent attorney from the outset.

ENCOURAGING NEWS FOR SOFTWARE PATENTS IN AUSTRALIA

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In the recent decision of Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988, the Federal Court found that a claim to a computer-implemented invention was allowable, thus overturning the decision of the Commissioner of Patents to refuse the application.

The decision noted that the Commissioner’s approach of focusing on individual elements in isolation is incorrect and that the combination of integers is to be considered when assessing whether a claimed invention constitutes patent eligible subject matter.

Encouragingly, the decision found that an identified business problem of attracting the attention of a user and having the user interact with the advertiser had been translated into the technical problem of how to utilise the computer technology to address the business problem.  The computer was found to be integral to the invention, with the patent application introducing a method which was foreign to the use of computers.

The Rokt decision confirms that computer-implemented inventions are patentable subject matter in Australia and provides much needed guidance on the correct approach to be adopted when assessing the patentability of this type of invention.

Please contact us for more information.

USPTO director provides hope for clarity on patentable subject matter

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At the recent annual meeting of the Intellectual Property Owners Association, the Hon. Andrei Iancu, Director of the United States Patent and Trademark Office, gave the plenary address.  In his speech, Director Iancu stated that the USPTO was working on revised examination guidelines to provide consistency and clarity when assessing patentable subject matter by adopting a pragmatic approach that still operates within the framework established by the US Supreme Court.  Notably, he focussed on keeping the grounds of patentable subject matter, novelty, inventive step, and support in their separate “lanes”.  A transcript of the full address is accessible on the USPTO website.

https://www.uspto.gov/about-us/news-updates/remarks-director-iancu-intellectual-property-owners-46th-annual-meeting