Trans-Tasman Regulation of Patent Attorneys Nearly in Effect
IP Australia has now published the bi-lateral arrangement relating to the trans-Tasman regulation of patent attorneys, which was recently concluded between Australia and New Zealand. The stated objectives of the arrangement are to:
1. strengthen the relationship between Australia and New Zealand;
2. provide a joint registration regime for patent attorneys to register and practise in Australia or New Zealand and between Australia and New Zealand;
3. allow economies of scale to be achieved in institutional arrangements for regulating patent attorney services;
4. minimise the regulatory and business compliance costs for patent attorneys to practise in Australia or New Zealand and between Australia and New Zealand;
5. increase business confidence in the quality and standard of service provided by patent attorneys, especially when patent attorneys provide services on a trans-Tasman basis; and
6. facilitate competition in the market for patent attorney services.
Subject to the transitional provisions recognising New Zealand patent attorneys and partially qualified applicants, the bi-lateral arrangement seeks to apply the existing Australian regulatory regime to New Zealand. While this will require implementing legislation, the Australian code of conduct will automatically apply to New Zealand registered patent attorneys until the trans-Tasman code of conduct is developed and approved.
Unlike New Zealand, the trade mark attorney profession is regulated in Australia. The bi-lateral arrangement provides that a New Zealand registered patent attorney can be entered on the Australian register of trade mark attorneys if they apply within 12-months and provide evidence of sufficient competency.
Patentability of a Chemical Reaction Sequence Considered
In 2013 APO 18 Merial Ltd v Evultis the Australian Patent Office made its first ruling on the patentability of a chemical reaction sequence. The application claimed an improved method of synthesizing a known compound, which resulted in an improved yield and involved a more environmentally-friendly process.
There were two prior art documents in consideration. One of them disclosed a method of synthesis involving 5 steps, but the application method combined two of the steps into a single reaction. It also used a different oxidizing reagent in the final step of the process. The other prior art document disclosed use of the same oxidizing reagent, but in a different field of use. Inventive step was considered in light of the two prior art documents when considered either separately or combined.
The two-step reaction of the first prior art document involved isolating an intermediate before completing the reaction. However, although not disclosed in the prior art document, expert evidence showed that it was a matter of routine for such reactions to be done as a one-step process without isolating the intermediate. Hence, this difference from the cited prior art did not establish inventive step.
The opponent argued that the different oxidizing reagent used in the final step of the process could be substituted as a matter of routine. However, while the different oxidizing reagent was commonly known as an oxidizing compound, the Hearings Officer favoured one of the experts’ evidence showing that it was not commonly known as an oxidative cyclisation reagent. In particular, the second prior art document was found to involve a different type of reaction sequence and branch of chemistry, such that it would not be part of the common general knowledge. Consequently, it would not be considered relevant by a worker in the field, and would not have been combined with the first prior art document at the priority date. Hence, the improved chemical reaction sequence was held to involve an inventive step and be patentable.
It is worth noting that the outcome of this decision does not depend upon the soon to be removed requirement that a document would have been ascertained, understood and regarded as relevant by the skilled person in the art in Australia at the priority date. Under the forthcoming changes prior art can be combined for inventive step if it can be reasonably expected to have been so combined. Here, the Hearings Officer held that there was no such reasonable expectation.
Prior Published Promising Trial Results Sufficient for Obviousness Finding
In Glenmark Generics (Europe) Ltd v Wellcome Foundation Ltd a patent was revoked on the basis of promising results obtained from previous trials. The patent claimed both a combination of known drugs in a 5:2 ratio as well as a pharmaceutical composition comprising such a combination.
The use of the combination of drugs in trials for the treatment of malaria was disclosed at a conference before the priority date. The only difference between this prior art and the patent was the 5:2 ratio. However, the claimants accepted that there is no technical significance in the 5:2 ratio and so the ratio did not confer any inventive step over the prior art. The question for consideration was whether the provisional results of a small sample size of trials were sufficient basis to decide whether it was obvious to proceed further with that approach.
While there were a number of technical issues with what might be inferred from the limited trial data, the Judge found that the skilled team would nonetheless be able to form a view on the obviousness of the approach on the data available. The data showed an extremely high success rate and a plausible reason for the single failure.
The Judge also held that commercial factors, which pointed away from the development of anti-malarial drugs, were irrelevant to the technical considerations that the skilled team would be concerned with.
As noted in Pipers Bulletin February 2013 the UK Patents Act will be amended to allow parties to run clinical and field trials of drugs without infringing other parties’ patents. The change will take effect from 1st October 2013.
2. Trade Marks
High Court Holds that Google is an Innocent Party in Adwords Disputes
In Google v the Australian Competition and Consumer Commission the High Court upheld Google’s appeal to the finding that it had engaged in misleading and deceptive conduct through use of its adwords facility. Previously the Full Court of the Federal Court had held Google’s publishing of advertisements within search results pages could leave users with the false impression that there was an association or affiliation between different commercial entities, and so had engaged in misleading and deceptive conduct.
The High Court did not disrupt the findings that the adverts generated by the adwords gave a misleading or deceptive impression. However, the High Court held that Google was not sufficiently active in the creation of the adverts to be found to have engaged in deceptive or misleading conduct.
In particular, it was held that Google merely published or displayed the adverts it did not create them. Google’s adwords facility is a conduit for the placement of adverts, but that did not mean that Google has authorised the advert or is complicit in any misleading or deceptive effect created by its placement. The High Court held that internet users would consider misrepresentations in advertisements provided in search results to be misrepresentations made by advertisers, not by Google. In this way the High Court has taken a technology neutral approach and considered Google to be like newspaper publishers or radio broadcasters that publish other parties adverts.
Trade Marks Amendment Regulations 2013
Late last year the Trade Marks Amendment Regulations 2012 issued, making amendments to the trade marks regulations necessary for the commencement in New Zealand of the Madrid Protocol and to comply and accede to the Singapore Treaty and Nice Agreement. At that time other changes to the regulations were envisaged, but were put on hold to ensure the timely commencement of the above provisions. Those remaining changes now form the Trade Marks Amendment Regulations 2013, which come into force on 29th April 2013.
These amendment regulations primarily update the Hearings procedures to improve the administration of proceedings before the Commissioner. Changes include:
• Allowing the Commissioner to grant an extension of time up to 3 months if the request is considered reasonable in the circumstances.
• Introducing procedures relating to undertakings regarding confidential evidence.
• Allowing the Commissioner to consolidate proceedings.
• Amending regulation 75 allowing the Commissioner to grant an extension of time after the deadline has passed (request must still be filed prior to the deadline).
• Introducing procedures if a party repeatedly fails to:
(a) follow the directions of the Commissioner from a case management conference
(b) provide documentation as directed by the Commissioner
(c) agree to a Hearing date or attend a Hearing
In addition there are some miscellaneous amendments to improve the operation of the regulations, including:
• Allowing an agent to remove themselves as agent from a trade mark.
• Mandating that a class number must be provided when filing a Search and Preliminary Advice application.
• Clarifying when a request for an extension of time in certain circumstances applies (continued processing).
Domain Names v Personal Names
Nominet, Britain's website registry, has ruled that Wendy Croxford, who created a website in the name of her former husband and his new wife after a bitter divorce, can continue to use the web address. It concluded that the names of websites did not necessarily have to reflect the names of the people who run them and ruled that ordinary people do not have similar rights to their names that a business or celebrity might have because their names are integral to their brand.