Unconditional Promise of the Invention to be Judged Against Every Claim
In Ronneby Road Pty Ltd v Esco Corporation a Federal Court Judge held that unconditional statements in the specification about the inventions utility must be satisfied by every claim.
Esco’s accepted patent application is in the field of heavy excavation equipment and concerned a wear assembly for securing a wear member to excavating equipment. In the summary of the invention it was stated that:
“The present invention pertains to an improved wear assembly for securing wear members to excavating equipment for enhanced stability, strength, durability, penetration, safety, and ease of replacement.”
The accepted application had 26 claims relating to 14 aspects of the invention. Expert evidence established that no single claim contained all six of the utility features mentioned in the summary of invention. Esco submitted that either the promise of the invention should be understood in light of the specification as a whole or that the stated six utility features should be understood as being appropriately distributed across the relevant claims.
However, the Judge effectively held that the utility statement should be judged against each claim independently, and so held that the application is invalid for inutility since no claim satisfied all of the claimed utility features.
It is notable that this decision was made under pre-Raising the Bar legislation and that the rationale applied will also apply under the Raising the Bar legislation (which commenced in April 2013). With respect to utility the new legislation added the requirement for a ‘specific, substantial and credible use’ to be disclosed in the complete specification in sufficient detail to be appreciated by a person skilled in the art.
Establishing Entitlement to Daisy Chain Divisionals
In Multigate Medical Devices Pty Ltd v B Braun Melsungen AG the Full Court of the Federal Court clarified the requirements for establishing entitlement to claim priority when there is a chain of divisional applications.
Braun alleged that Multigate infringed two of their patents for a safety needle protecting device for an intravenous catheter. The patents in question are divisionals several generations removed from the original ancestor application and were granted under the pre-Raising the Bar legislation. Consequently entitlement to claim priority was evaluated in respect of fair basis rather than the supported by requirement introduced by the Raising the Bar legislation.
A point of contention was whether the patents in question incorporated by reference earlier ancestor applications and ultimately whether they could claim priority from the original ancestor application. It was common ground between the parties that aspects of the original ancestor application are present in the patents. The trial Judge held that those aspects taken together with expert evidence on how a skilled person in the art would read the specifications would amount to incorporation by reference of the original ancestor application and hence provide external fair basis.
However, on appeal, the Full Court overturned parts of the trial Judge’s decision. The Full Court held that the original ancestor application and the subsequent applications were not incorporated by reference and that expert evidence is not allowed to be used to establish incorporation by reference. Rather, incorporation by reference must be apparent from the text of the patent. Nonetheless, the Full Court found that fair basis was satisfied. This finding was made on account of the subtle legislative differences between internal fair basis and external fair basis.
For internal fair basis (s 40(3)), what is required is that “the claim ... must be ... fairly based on the matter described in the specification”. Contrastingly, for external fair basis, reg 3.12(1)(c) uses the language “the claim is fairly based on matter disclosed in the specification”.
The Full Court held that the aspects of the original ancestor application that are present in the patents are sufficient to satisfy the ‘disclosed in’ requirement of external fair basis. It noted that:
In the context of external fair basis, the test of real and reasonably clear disclosure requires attention not on whether a subsequent claim had previously been made, but whether in the earlier specification there had been a real and reasonably clear disclosure of the invention that is claimed. Further, a real and reasonably clear disclosure in the prior specification need not be made only in the verbal description, but can appear from the accompanying drawings.
Second Consultation on TTPA
IP Australia has opened a second round of public consultation on the trans-Tasman Patent Attorney Regime. The consultation is focussed on the proposed regulations for implementing the relevant changes introduced by Schedule 4 of the Intellectual Property Laws Amendment Act 2015. Written submissions should be sent to firstname.lastname@example.org by the non-extendable deadline of 24th June 2016.
The principle changes will be to the Patents Regulations, but changes will also be made to disciplinary proceedings for (AU) trade mark attorneys as well as allowing New Zealand to be an address for service under the Trade Marks Regulations, Designs Regulations and Plant Breeder’s Regulations. The changes to the Patents Regulations would allow for a single application and registration process for applicants seeking to register as a patent attorney; establish the Trans-Tasman IP Attorneys Disciplinary Tribunal and provide measures for its operation and procedures; and allow an address for service to be in either Australia or New Zealand.
WIPO's Digital Access Service Available via IPONZ Website
Priority documents relating to patent applications can now be deposited into or retrieved from WIPO’s Digital Access Service (DAS) via the IPONZ case management system.
For provisional applications and standard complete applications (excluding divisionals) first filed in New Zealand a WIPO DAS access code is generated if the “Submit Specification to WIPO” box is checked. That access code can then be used with participating WIPO DAS patent offices to inspect and download the document.
Similarly, where a convention priority document for a convention application in New Zealand is required, then if that convention document is on WIPO DAS, then the relevant attorney can make the document available to IPONZ by entering the associated WIPO DAS access code in the priority section. This can be done either at the time of filing or later via the patent amendment facility upon the examiner’s request.
Amendments to Canada’s Industrial Design Act soon to take effect
Amendments to Canada’s Industrial Design Act, mainly to implement Canada’s accession to the Hague Agreement, have received royal assent, although associated regulations have yet to issue. However, it is expected that the amendments will take effect before the end of 2016. Notable changes include:
- The maximum term of registration will change from the current maximum of 10-years from the date of registration to 15-years from the date of application or 10-years from the date of registration, whichever expires later.
- The grace period for filing a design will change from 1-year from the date of the disclosure to 1-year from the priority date.
- Visual representations in colour will be allowed.
- A single application will be able to contain multiple designs.
- Currently designs become open to public inspection after registration. The amendments provide for publication prior to registration – the exact time will be specified in the regulations. However, the amendments also introduce deferment of publication up to a maximum of 30-months from the priority date. There are also provisions for CIPO to specify the deferment period that it allows.
- Currently registration is denied to applications that are identical to or closely resemble designs already registered in Canada or published anywhere more than a year before the filing date. This will change to public disclosure anywhere before the priority date (except if grace period applies) or disclosed in a Canadian design application having an earlier priority date.
3. Trade Marks
Chinese Supreme Court's Decision both Helps and Hinders Foreign Trade Mark Rights Holders
In late 2015 the Chinese Supreme People’s Court (SPC) issued a decision which functions as a double edged sword for foreign trade mark owners who seek to have their products manufactured in China.
Trade mark rights in China are based on prior registration rather than prior use. This has created problems for foreign rights holders who want to have their goods manufactured in China by an original equipment manufacturer (OEM). If an identical or substantially similar mark is registered in China for the same or similar goods by a third party (either before or after manufacturing in China), then this has been sufficient to stop or at least hinder the export of goods manufactured in China with the consent of the foreign right holder.
However, the Supreme People’s Court recently held that where an OEM applies a trade mark to goods that are solely for export to markets outside of China, then that will not infringe any Chinese trade mark registration on the basis that it does not constitute trade mark use under Chinese trade mark law as amended in 2013. Notably, the 2013 amendment added the words “to distinguish the origin of the commodities” to the relevant provisions on trade mark use. The Supreme Court inferred from this that trade mark infringement should take into account whether the source identifying function of the trade mark is fulfilled or undermined. It then overturned the lower court’s finding of infringement as being solely based on a comparison of the marks and goods without taking into account the actual use.
However, this result can also work against foreign right’s holders who have their goods manufactured by OEM’s in China. In particular, they would not be able to stop third parties from also manufacturing goods in China for export, whether or not the foreign right holder has also obtained registration of their trade mark in China.
WIPO Providing Option for Expedited Certified Copies
From 6th June 2016 it will be possible to request expedited establishment of an attestation or of a certified copy from the International Register. Where expedited establishment is requested the requested document will be made available within 5 working days of receipt of the request. The fee for such expedited establishment is 100 Swiss francs per document, which is in addition to the relevant standard fee for an attestation or certified copy. Such requests should be made to email@example.com.