Full Court Blindsides JAI on Prior Use
In Damorgold Pty Ltd v JAI Products Pty Ltd the Federal Court of Australia Full Court confirmed that not all prior uses of an invention are invalidating.
Damorgold is the Australian exclusive licensee of a spring assisted mechanism for use in roller blinds. JAI sought revocation of the patent on prior use grounds. JAI led evidence at trial from its staff that it had imported some RolaShades mechanisms into Australia and assembled them within blinds and displayed the blinds for sale in their showroom before the priority date. While JAI were unable to provide documentary evidence or testimony from an independent witness, the trial Judge accepted the testimony of JAI staff. The Full Court noted that the evidence was not perfect, but held that Damorgold had not demonstrated that the trial Judge’s conclusion on that point was in error and considered that the trial Judge was entitled to reach that conclusion after weighing the evidence.
On the accepted evidence a JAI staff member had shown some customers the RolaShades product assembled into a blind and the RolaShades product itself. Relevantly, the evidence was that:
• The internal workings of the RolaShade product could not be ascertained on inspection without disassembling the product.
• JAI did not sell any RolaShades product.
• JAI did not give the RolaShades product to any potential customer.
• There was no evidence that any potential customer was free to handle and disassemble the RolaShades product or otherwise ascertain the essential elements of the claimed invention.
• There was no evidence that anyone did disassemble the RolaShades product.
Regarding what was made publically available by those prior uses the Full Court noted that a customer could have a general idea of the mechanism from observation. However, it was not possible for a customer to see and understand the essential integers of the invention without disassembly, as the internal componentry could not be ascertained without pulling the product apart. While evidence was led that a staff member probably would have disassembled the mechanism if requested by a customer, this was not sufficient for a finding of prior use, which is determined by what did happen rather than what could have happened. It was held that merely showing the assembled product in the way found, even for the purposes of soliciting sales, could not anticipate the invention claimed in the relevant claims.
Consequently, the trial Judge’s finding of anticipation was overturned. It was noted that the trial Judge’s finding would be valid if the case had been decided under the Patents Act 1952, however the Patents Act 1990, like the UK Patents Act 1977, relevantly has an enablement requirement. As a result this case was decided in line with the UK House of Lords decision Merrell Dow Pharmaceuticals Inc v HN Norton and Co Ltd  RPC 76, which held that a secret or uninformative use is not sufficient to destroy novelty.
Patent Scope Unable to be 'Re-Cooked'
In Doug Andrews Heating and Ventilation Ltd v Dil the Court of Appeal upheld the High Court finding that Doug Andrews patent for a portable hangi cooker was not infringed by Dil’s UFO cooker.
Doug Andrews patent is in relation to a portable multi-level cooker comprised of inter-engaging parts. The lower part houses the heating means below a chamber that holds liquid for steaming, or smoking essences, but is not adapted for cooking food within. The upper part houses containers in which the food is to be cooked.
Dil’s UFO cooker can either be used as a single piece, as the chamber above the heating means can be used to cook food, or be comprised of an additional food cooking part that inter-engages with and above the first part.
In construing their primary claim Doug Andrews argued that it is infringed by a two-tier structure that inter-engages to form a cooking chamber, and used this to claim that the UFO cooker infringed when comprised of the additional food cooking layer.
The Court of Appeal concurred with the High Court Judge’s rejection of that argument. When properly construed claim one was found to extend protection to hangi cookers in which only the second part comprises a cooking chamber. Consequently, the UFO cooker does not infringe, since the first part contains a cooking chamber and the second part merely extends that.
The Court of Appeal noted that the inventive contribution of Doug Andrews cooker may have been drafted so as to also cover the UFO cooker, but that by not so marking out their monopoly they cannot now seek to reclaim it.
The Court of Appeal also rejected Dil’s cross-appeal for invalidity on the basis of prior use and obviousness. The evidence of prior use was either unreliable or even contrived. Regarding obviousness, the Court of Appeal held that Dil had not discharged their onus of establishing what was used in a public manner before the priority date, what was common general knowledge and what were the attributes of the skilled addressee. The Court of Appeal also found that the Judge had correctly treated the commercial success of Doug Andrews multi-level cooker as a secondary consideration in establishing inventiveness.
Major Players Join Hague Agreement
On 13th May 2015 both Japan and the United States of America will be bound by the Hague Agreement, thereby giving the Hague Agreement 64 members. Although neither Australia nor New Zealand are members of the Hague Agreement, applicants can still make a Hague Agreement filing if they satisfy the habitual residence or industrial or commercial establishment within a member state criterion.
The Hague Agreement is a single application and application fee in a single language system, but still requires compliance with national requirements and payment of examination and issue fees to state offices. Not all member states have substantive examination, and there is no uniform standard for the preparation of drawings.
In order to comply with Hague Agreement requirements, all US designs filed on or after 18th December 2013 have a maximum term of 15-years from the issue date, rather than the 14-year term of designs applied for before that date.
3. Trade Marks
Partial Late Renewal Not Always Allowed by OHIM
In Nissan Jidosha KK v OHIM a General Court of the Court of Justice in-effect upheld (although for different reasons) a Board of Appeal of OHIM decision which disallowed Nissan’s application for partial late renewal.
Nissan’s multi-class mark initially covered classes 7, 9, 12. However, when renewal became due Nissan chose to only renew classes 7, 12. During the 6-month grace period for late renewal Nissan applied for the late renewal of class 9. The application was rejected and in an OHIM Board of Appeal decision it was held that when Nissan chose to only renew classes 7, 12 it constituted an express and unequivocal partial surrender of class 9, which took effect as soon as it was received. Not only was that surrender received, but it was also registered and the applicant notified accordingly. According to the Board of Appeal, the proprietor is bound by the declaration of surrender, which cannot be affected by the 6-month grace period.
The General Court rejected the Board of Appeal argument that partial renewal constituted partial surrender, since surrender must be declared in writing and no such statement is on the renewal form.
However, the Board of Appeal still disallowed the late renewal of class 9. It noted that the late renewal provision only applies where a request for renewal has failed to be made, which was not the case here. Further, it was noted that where a partial renewal is completed before the existing registration expires, then the renewal takes effect from the day after the date on which it expires. From that date the principle of legal certainty precludes supplementation of the request for renewal, as the renewal has taken effect.
Geographical Indications Gets Revisited
The Geographical Indications (Wine and Spirits) Registration Act 2006 was assented to on 21st November 2006, but has yet to commence by way of an Order in Council. However, the Government has now indicated that it will revisit the Act this year with a view to commencing it in 2016.
The present (uncommenced) Act itself replaced the uncommenced Geographical Indications Act 1994, which was to apply to a wider range of goods than wines and spirits. In the interim some protection for geographical indications is available via the Fair Trading Act 1986, the tort of passing off and various provisions of the Trade Marks Act 2002.
Upon commencement interested parties can apply to register the name and boundaries of a Geographical Indication (GI) as well as whether it relates to wine, spirits or both and any conditions relating to use of the GI. Foreign GIs can also be registered, but do not have a boundary specification requirement. There are provisions for the alteration of a registered geographical indication, or the conditions or boundaries relating to it, either by the Registrar or on the application of an interested person.
Apart from the conditions relating to use specified for a registered GI, there are also standard conditions. For wine, use of a New Zealand based registered GI requires that at least 85% of the wine is produced from grapes harvested in the relevant region. For spirits, there is the lesser requirement that the product originates in the relevant region.