New Zealand to join Madrid Protocol

The New Zealand government and IPONZ have announced that New Zealand will be a member of the Madrid Protocol, effective 10 December 2012. The instrument of accession was deposited on 12 September 2012.

The Madrid Agreement and Protocol is  a series of international agreements that allow an applicant from a member country to file a single application, designating many different territories, and if successful obtain protection in all of them, without requiring local action in those countries. Among the 88 members are  Australia, the US, European Union (and member states), Russia, China, Japan and South Korea. A full list of members is available here:
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.

This means  that New Zealand can be designated in new or existing Madrid Protocol trade mark filings after that date. This may in many cases simplify and reduce the cost of the process of obtaining protection in New Zealand for Australian brand owners.


by Peter Franke

Atomo wins Engineering Excellence Award

We are delighted to congratulate our client Atomo Diagnostics Pty Ltd, and its development partner, design firm IDE, as winners of the Sydney Engineering Excellence Awards for 2012 for their MicroRapid Integrated Rapid Blood Test Device, the world’s first hand held integrated rapid diagnostic device.


MicroRapid won the Small Business Award, received a highly commended in the Innovations & Inventions category, and was also presented with the prestigious Bradfield Award. The Bradfield Award is the highest award across all categories and "recognises an accomplishment of exceptional engineering merit which makes a major contribution to the community".

Atomo aims to bring the detection of a range of diseases out of the laboratory and into homes and outreach clinics across the globe. A test for the rapid detection of HIV is the first clinical application being commercialised using the device and is due to be launched later this year.

The integrated design runs the complete test in a single device. This makes it ideal for clinicians to use away from the laboratory as well as enabling individuals to conduct their own blood tests at home. Current blood tests using similar formats require the use of a kit containing five or six items making them quite complex to use and resulting in high error rates.

"Our device makes rapid blood testing easier, more reliable and much more user friendly. This allows testing to be performed by anyone in any setting" said John Kelly, Chief Executive Officer of Atomo Diagnostics.

MicroRapid can be used for a variety of clinical testing including the detection of cardiac and cancer markers, a wide range of infectious diseases as well as consumer focused self screening for common conditions such as Celiac, Allergy, Thyroid imbalances and Anaemia.

The Engineering Excellence Awards Sydney (EEAS) recognise the expertise of both individuals and engineering organisations in the community. Their aim is to create wider recognition for the valuable input of engineers in our lives. Atomo’s MicroRapid device will now go on display in the Powerhouse Museum for twelve months. This display is expected to be seen by over a half a million Museum visitors throughout the year.


Franke Hyland are proud to represent Atomo and assist them in the strategic development of their IP portfolio internationally.

What Is A Design Worth?

Most people are aware, at least in a 'big picture' sense, what patents and trade marks are all about. Trade marks are there to tell you whether the product or service you are buying is 'genuine'. Patents allow an invention to be 'owned' by the person or people who invented it, so others can't copy the idea.

But what of design registrations? They protect the 2D or 3D appearance of many objects, but their scope is quite narrow. Design protection does not travel far beyond the exact shape or pattern that is registered. This means it often seems that the protection of the whole 'concept' that a patent provides is a far more useful way to spend one's IP protection dollars.

Alternatively, the ability to protect against the use of an image or shape that may not be identical, but may simply be confusingly similar, to one's distinctive product, makes trade mark protection seem the better option for IP protection of patterns and shapes.

However, a recent decision of a U.S. jury in the Apple v Samsung battle (U.S. District Court, Northern District of California; Apple Inc v. Samsung Electronics Co Ltd et al, No. 11-1846) reminds us of the value that a well-chosen design registration can have. In this case, the jury awarded Apple total damages of USD 1.05 Billion, based on the infringement of a number of Apple patent and designs, and on 'trade dress' infringement, by 28 different Samsung products.

Although the jury didn't spell out precise reasons for each of the damages amounts, it is interesting to look at which products attracted the biggest payouts. For example, the Galaxy Tab 10.1 WiFi PC, which infringed some patents but not any designs, attracted damages of USD 833,076 from 1.2 million units sold. By contrast, the Fascinate smartphone, which infringed a number of designs as well, attracted damages of USD 143,539,179 from 1.4 million units sold.

That seems to indicate that Samsung's design infringement was viewed as somewhat more serious than their patent infringement for these products. Perhaps this is not surprising for products whose sales are driven by design and 'coolness'.

Perhaps designs can hold their own in an IP strategy after all?

by Adam Hyland

Grants for Low Carbon Solutions

We are always conscious that some of our clients are looking for funding and venture partners, and on the lookout for ways to help.

GE have a new Ecomagination Challenge, which will see five winners awarded $100,000 cash, and a potential capital pledge of up to $10 million. This is specifically directed at technology which has the potential to delivery reduced energy and carbon footprints. For more information, see:

http://www.startupsmart.com.au/funding/$100000-grants-up-for-grabs-for-carbon-cutting-innovation/201208277373.html?utm_source=StartupSmart&utm_ca


by Peter Franke

Bye Bye Fair Basis?

As previously reported, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was enacted on 15 April 2012.

One aspect of the changes is the apparent demise of the test for 'fair basis'. Prior to the amendment, the claims of a patent must be (among other things) 'fairly based' on the matter described in the specification. The changes now say that the claims must be 'supported' by matter disclosed in the specification. This 'supported' concept is in line with the majority of overseas jurisdictions and was intended to be so.

The concept of 'fair basis' has often been a difficult concept to properly define. As a component of Australian patent law it was supposed to be a mechanism for balancing the scope of a patent claim granted to a patentee against what the patentee has revealed, in a practical sense, of how to implement the invention. In other words, the test for fair basis was to ensure that a patentee was not given a scope of patent monopoly beyond what is fair in consideration of what the patentee provides to the public. This is in line with the public policy considerations of the patent system, whereby a patent monopoly, of finite term, is given in exchange for a full public disclosure of how to implement the invention, which disclosed teaching is effectively public domain at the end of the patent's life.

What, then, is to provide the checks and balances against undue(albeit 'supported') breadth of patent claims?

There are two further changes effected by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which may go towards filling in the gap left by fair basis in this regard.

Firstly, there has been a raising in the standard of disclosure in a patent specification. Whereas, a patent specification, prior to the amendment, was required to described an invention fully; it must now disclose the invention in a manner clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. This raised standard of disclosure now also applies to Australian provisional patent applications. Consequently, provisional applications having overly conceptual disclosure (which was permitted) rather than real nuts and bolts practical disclosure will now be a thing of the past.

The second significant change relates to the issue of utility. A claimed invention has been required to be 'useful' to be patentable. The changes have introduced a threshold definition of when a claimed invention is to be taken as not useful: "... an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification". Furthermore, "the disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art".

This change not only raises the disclosure requirements for Australian patent specifications, but also requires a disclosure of utility which supports the entire breadth of the invention claimed. In other words, conceivably a claim which covers something more than the level of disclosure provides sufficient utility may be found to be lacking in utility. An example of where this may prove relevant are claims which provide excessive ranges of parameters but where the specification provides practical working examples of only specific parameters, i.e. not the entire claimed range. This is not an uncommon feature of chemical and pharmaceutical patents.

This change in the utility threshold does have an aspect of providing some of the balance against undue claim scope which 'fair basis' once presided. One can predict that this area of patent law may become fertile ground for judicial review and development in the years to come.

The above changes will come into effect for all Australian patents and patent applications in which a request for examination is filed on or after 15 April 2013. Consequently, these changes can have a retrospective effect on existing pending Australian applications, unless a request for examination is filed by 14 April 2013.

by Simon Ellis

Thoughts from IFT12

I recently had the opportunity to attend the U.S. Institute of Food Technology (IFT) 2012 annual convention (IFT12) in Las Vegas. It was even bigger than IFT11: over 18,000 attendees, over 1,000 exhibiting companies.

So while the U.S. food manufacturing industry appears to be in rude health, food technologists are worried. They fear the erosion of trust by the public of the food industry as a whole. The misunderstanding (wilful or otherwise) of what ‘processed food’ actually is continues to be a very real threat to the industry, and also the food technology profession’s ability to attract students and members.

A number of presentations addressed this issue at the convention. The fundamental fact is that humans have been processing food for thousands of years. ‘Processing’ has always been performed to make food last longer, less susceptible to spoilage, better tasting, more convenient to store and consume, etc.

However, when consumers are surveyed as to what they think about processed foods, the most common reactions include words such as: ‘added chemicals’, ’unnatural’, ’preservatives’, and ’unhealthy’. Even the term ‘food technology’ had become problematic, as consumers don’t enjoy the idea that ‘technology’ has somehow been involved in the production of their food, in contrast to the way that they DON’T have an issue with ‘medical technology’ or ‘communications technology’.

Now with the proliferation of social media and the ‘food bloggers’, some of whom have an ‘anti-processing’ agenda, the ability of misinformation about food processing to spread and become part of public consciousness has changed the game for food manufacturers. The message I heard at IFT12 is that while patient explanation of the scientific reality of modern processed foods is still necessary, it will never be enough on its own to win the debate.

Some of the collective wisdom of the presenters is:

• Communicate the real need for food science and technology, e.g. that the world will need to feed 33% more mouths in the next few years, but that right now 30% of the worlds food production is spoiled by pests or micro-organisms long before it reaches the consumer.
• Play up the culinary aspect of food manufacturing, because this is something consumers can more readily engage with.
• Get on the front foot against misinformation – don’t run from or hide the fact that food technology is a key part of a safe and reliable food chain.
• Never overestimate the credentials and knowledge of those seeking to spread sensational misinformation – challenge their ‘facts’; don’t accept their premise.
• Recognise that in a politically polarised media landscape, the noisiest minority views will tend to rule.
• Be transparent: throw open the factory door; don’t appear secretive as this will equate to a perception of underhandedness.
• Partner, at ‘arm’s length’, with independent online opinion leaders. This means maintaining an open, factual dialogue with them, not necessarily trying to ‘recruit’ them as a mouthpiece.

The IFT itself has responded to what they see as a crisis, via activities such as a workshop entitled ‘Changing the Conversation About Food Science’, reported here.

I particularly like the following observation:

Author Michael Pollan, an outspoken critic of processed foods, says that “food is what your great-grandparents ate,” said Fergus Clydesdale of the University of Massachusetts, adding that he hopes that is not the case because what our grandparents ate wasn’t always optimal. Consider Ireland in the mid-19th century, for example; when the potato blight struck, millions died or were forced to emigrate.

“I really think the media should look at just how good were the good old days,” said Clydesdale. “We have to approach it on an historical level with real data.” He pointed out that many people today are losing touch with some of the benefits of food science because they’ve rarely encountered a spoiled food and “therefore they don’t understand how a food stays stable and safe and why they should be concerned about it.”

The IFT has also produced a number of emotive videos aimed at reminding consumers of the positive role food science plays in a modern society, which are published here.

The challenge is real, and the message is important, because the misinformation that pushes consumers away from ‘processed foods’ may well be pushing them toward unsafe foods.


by Adam Hyland

Raising The Bar On Inventive Step

As previously reported, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was enacted on 15 April 2012. One of the most significant and publicised changes concerned the inventive step test.

The inventive step test revolves around a hypothetical person skilled in the relevant art to an invention under scrutiny. If this person would have considered the claimed invention to have been obvious as at the claim's priority date then the claim in question fails the inventive step test.

The question of obviousness is effectively based upon two sources of information, that being common general knowledge and prior art information (or a combination of common general knowledge and prior art information).

Common General Knowledge

Prior to the recent changes, the common general knowledge was restricted to that as it existed in the patent area (which effectively meant Australia). The changes have now removed this jurisdictional limitation. Hence, the test now allows consideration of a conceptually global common general knowledge.

Prior Art Information

Prior art information includes documents made publicly available (anywhere in the world) and information made publicly available through an act (anywhere in the world). In assessing inventive step, the skilled person is allowed to consider a single piece of prior art information or a combination of pieces of prior art information (if the skilled person could have been reasonably expected to make the combination).

Prior to the recent changes, there were restrictions upon the applicability of each piece of prior art information. In effect, each piece of prior art information needed to satisfy the requirement that the skilled person could reasonably have been expected to have ascertained, understood and regarded as relevant the prior art information as at the priority date. The changes have now removed these restrictions. In effect, if something is prior art, it is applicable.

Ramifications

While the changes to inventive step have, in essence, raised the threshold bar; the changes have also, in fact, simplified the inventive step question in a more practical sense. The benefits of this simplification will probably become more apparent in cases where the validity of a claim is challenged in oppositions and judicial proceedings. Wrangles over what prior art information can or cannot be considered may become a thing of the past. Furthermore, the admissibility or relevance of evidence from overseas experts will become uncontroversial.

The changes have moved the inventive step question closer in line with other major patent jurisdictions. Whether this means a claim passing inventive step scrutiny by IP Australia will give better weight when the claim is assessed in other jurisdictions will remain to be seen. However, it's nice to be optimistic.

Coming Into Effect

The relevant changes will come into effect on 15 April 2013. However, the manner in which the changes take effect requires careful consideration.

The new inventive step test will be applicable to all Australian patents and patent applications in which a request for examination is filed on or after 15 April 2013.

As a consequence, the new inventive step test can have a retrospective effect on existing pending Australian patent applications, unless a request for examination is filed by 14 April 2013. On the flip side, future Australian patent applications which are filed on or before 14 April 2013 AND have examination requested by 14 April 2013 will retain the application of the lower threshold inventive step test.

While, under Australian practice, examination must be requested within certain deadlines (i.e. within 5 years of filing or 6 months from being directed to do so), examination can be requested voluntarily at any time. Hence, if the change in inventive step test raises any cause for concern, it may be worth considering voluntarily requesting examination before 14 April 2013.

On a similar note, anybody considering filing an Australian patent application in the future (whether as an application claiming priority from an overseas application or a national phase from a PCT application) may want to think seriously about doing so earlier than planned and also requesting examination.

by Simon Ellis