30 January 2012

Swear words can’t be registered as trade marks can they? That would be “Nuckin’ Futs”


Then again, maybe they can, as the mark NUCKIN FUTS has indeed been recently accepted for registration as an Australian trade mark in respect of certain snacks foods such as nuts and potato crisps.

The case is relatively unremarkable, aside from the relative ease with which the mark overcame objections raised by the trade mark Examiner.  But it does add up with a number of other cases over recent times concerning so-called ‘scandalous marks’ which exposes just how far one can push the boat in terms of taste before a mark will fall foul of the ‘scandalous mark’ exceptions to trade mark registration in Australia.

The relevant ground under the Trade Marks Act 1995 is Section 42(a), which provides that the Registrar of Trade Marks must reject a mark if satisfied that the mark ‘contains or consists of scandalous matter’.

In the case of NUCKIN FUTS, the Examiner did raise an objection on the Section 42(a) ground noting that the mark was an obvious ‘spoonerism’ and evokes an offensive word.

The applicant argued that the swear word evoked by the mark is now part of everyday language in Australia and should not be considered offensive. Furthermore it was pointed out that the product was intended to be marketed to an adult market in adult venues, this was emphasised by the addition of a disclaimer to the mark stating that the mark will not be marketed to children.

Something in the response worked, as the mark was subsequently accepted.

There is now a line of cases that suggest that misspelled swear words, whilst being obvious and evoking the swear word, are passing the Section 42(a) threshold. The most famous mark possibly being FCUK (owned by French Connection). Other marks include CNUT and ABSOFCUKINGLUTELY (albeit this mark followed the unsuccessful attempt at seeking registration of ABSOFUCKINGLUTELY).

Culturally, the crude spoonerism is nothing new. In this regard, I’m reminded of ‘The Pheasant Plucking Song’. Apparently, I’m not the only one as there is a registered trade mark for PHEASANT PLUCKER!
There also appears to be a trend that accepts that Australians will find certain marks (while of potentially bad taste) playful rather than offensive, such as POMMIEBASHER and
LOOK GOOD + FEEL GOOD = ROOT GOOD.

Nevertheless, despite all attempts at arguing the misspelling line and even going so far as to question the pronunciation, the marks KUNT and KŰNT failed to achieve registration.

If there is some undying desire to evoke crude swear words in a trade mark, it would appear to be the case that IP Australia will not stand in the way and will not take the position of being the judge of what may be in bad taste. However, more direct usage of a swear word will indeed face a strong challenge on the basis of Section 42(a).



by Simon Ellis

17 January 2012

So what exactly IS a 21st Century Patent Attorney firm?

In some of our marketing materials we referred to Franke Hyland as a 21st Century Patent & Trade Mark Attorney firm. At the outset, that label represented our aspiration for what we wanted Franke Hyland to represent to our clients, colleagues and partners.

Now that we have completed our second year of operation (time flies when you are having fun) we think it is a good time to reflect and expand on what it means to be a modern firm in 2012.

We see the environment in which we operate as having changed significantly from how it was for most of the latter part of the 20th century. Some of these changes have made life harder for the patent attorney in private practice, and some of them have made it easier.

Some of the downsides for the entrenched ways of operation are:
  • Increasing alignment of the patent/trade mark/design laws and systems in each country mean local expertise is perceived as less necessary (especially for larger organisations); and local attorney 'value add' is harder to demonstrate.
  • Large corporations are investing in more sophisticated in-house IP departments to handle a lot of the procedural work that used to be done by external providers.
  • Consequently, much of the remaining procedural patent prosecution work is increasingly the subject of price/volume competition.
  • Medium size clients are much savvier about demanding value for money from service providers, so the scope of work, and fees for the attorney, are being focussed on what can be justified as providing value to the client.
  • The Madrid Protocol has seen international businesses file and maintain their trade mark portfolio with minimal need for local agents.


However, there are a lot of upsides to being a patent attorney in the 21st century.
  • The flip side of greater harmonisation in IP laws is that when acting for a local client, we can be much more in control and maintain a much better detailed oversight of implementation of the IP strategy. It has also significantly reduced the cost of filing internationally (also helped by the strong Australian dollar).
  • Electronic communications with clients and government IP offices such as IP Australia mean our work can be done faster and more efficiently, with the location of client and attorney being less critical.
  • Electronic communications also mean we don't need to rely on paper files, mail, storage etc. Nor do we need as many support staff to manage client files.
  • The ability to outsource non-critical activities allows us to concentrate on the real value areas for our clients, including higher-level advice, IP strategy development, better patent drafting and IP education.


We think the 'upsides' outweigh the 'downsides' for us as attorneys ... IF we are prepared to embrace a different mindset. To us, being a 21st century firm means:
  • Concentrating on local (for us Australian-based and New Zealand-based) clients, who may be foreign owned or controlled, but who have significant local IP development activities.
  • Always understanding that the client's IP strategy must be accountable to their business strategy, and so investing the time and effort to properly understand that business strategy so that our work will deliver them value far in excess of their investment in IP strategy.
  • Being entrepreneurial and flexible in the way we will work with clients and in setting up fee structures that work for us and our clients (this is much easier to do when you have a very efficient and streamlined operation)
  • Recognising that our clients are usually not IP or legal experts, and that it is OUR job to communicate in a way that makes it easy for them to incorporate IP advice into their business planning. 
  • Being prepared to invest time and effort in raising a client's level of awareness or competence in dealing with IP – because we have learned that the more the client understands, the easier it is for us to deliver value to them.


We are happy to say that two years in to our journey that our '21st Century' vision is paying off for our clients and for us!


by Adam Hyland

11 January 2012

Medical Treatment Claims for Medical Devices

One of the most contentious areas in patent protection internationally are claims to methods of medical treatment. Such claims are only possible in two countries - Australia and the US.

The aspects most often discussed in the debate relate to direct surgical or medical treatment, pharmaceutical dosage regimes, and diagnostic techniques practised directly on the human body.

In practice, to obtain effective protection for some medical devices, it is important to obtain some protection for the device as used, or where appropriate, for aspects of how the device interacts with the user. For instance, where the device is used to facilitate a service, the major economic benefit may not reside in the cost of the device itself, but in the improvement it provides to the service. One example is an improved reagent delivery cartridge, to speed up a process and improve safety. Another is where an active implanted medical device uses measurements within the body to calibrate or modify the stimuli which are delivered. In this case, the device may have the same cost, and the same components, but the software is modified to provide an altered operation mode.

In many other countries, claims to a method of medical treatment are expressly prohibited. For example, in India, China, Japan and Europe, such methods are included in a list of subject matter which is expressly excluded from patent protection. Given the restrictions, how can protection for these aspects be achieved?

Part of an effective response is to understand the rationale behind the prohibition. In general terms, the argument relates to a general principle that permitting the monopolisation of medical and surgical techniques would not be in the public interest. The specific instances raised include:
  • hindering medical research by restricting the free flow of knowledge;
  • exposing medical practitioners to personal liability for, e.g., performing life saving procedures; and
  • enabling patentees to control access to medical procedures, so as to take a general public service and place it in the hands of only those who can afford to pay.

The first reason is common to all patenting, applies in any case to pharmaceuticals which are routinely patented, and is not specific to methods of medical treatment. Combining the last two, the guidelines operated by major patent offices generally are centred around the work of the medical professional, so that the claim must not cover the actual delivery of therapy, or the work normally carried out by medical practitioners. Hence, claims directed straight at ‘A method of treating medical condition X wherein device Y is deployed as follows ...’ are doomed to failure.

What is required is an analysis of the technical and business processes concerned, to isolate patentable aspects. It is protection of sometimes incidental, sometimes pre-patient or internal methods, which can provide some degree of protection. There is no substitute for a careful analysis and strategy process prior to drafting claims and the patent specification, taking these factors into account. This may result in a patent that looks misdirected to the medical practitioners and product developers, because it will necessarily not focus on what is happening to the patient directly, but it is how to achieve a claim which can be negotiated through the patent office policies and statutory restrictions.

It is important to appreciate that the restriction does not prevent obtaining a patent for a medical device as such. Hence, patents to mechanical, electrical, electronic or materials aspects of devices can be obtained in any jurisdiction. It is when the issue is one of processes within the devices, or that use devices, that a problem arises. While there are no hard and fast rules, some useful approaches include:
  • A focus on processes internal to the device, with no therapy delivered. For example, the method may receive sensor data, apply an algorithm, and modify a table of data. The data is what is used to determine therapy values, but that step is not claimed.
  • Consider the steps required to take a device from a latent state to a state ready for use. These will be carried out in the clinic, and are preparatory to any actual treatment, so can be claimed.
  • Claims can be directed to hardware components ‘adapted to be used’ in a process, or in some cases even to ‘when used’, to import at least some of the constraints of the process, if that helps with patentability.
  • Consider aspects of the product design that are required to make it suitable for a particular purpose. If you can protect any use of a device which could be used in a process, even if these are less significant technically, then this may provide effect use protection.

Of course, the field is much more open in the U.S. and Australia, however, the application of these approaches in addition to more direct method of treatment claims will only improve the effective scope of the patents obtained. The situation in the U.S. is somewhat under challenge, as there is a pending appeal to the US Supreme Court in Mayo v. Prometheus, dealing partly with these issues, in which oral argument was heard in December.

As in all patent drafting, careful strategic analysis and a solid understanding of business models is critical to obtaining effective, and hence valuable, IP rights.


by Peter Franke