The recent Court of Appeals for the Seventh Circuit (CA7C) decision Life Spine Inc v Aegis Spine Inc 21-1649 held that Life Spine’s patent for spinal implant technology did not undermine a District Court’s preliminary injunction that included a finding of trade secret misappropriation in relation to the spinal implant technology.
Stemming mainly from its obligations under the Canada-United States-Mexico Agreement (CUSMA) the Canadian federal government has notified amendments to the Patent Rules that it seeks to implement.
In Ganymed Pharmaceuticals GmbH (and Anor) 2021 NZIPOPAT 6 the Assistant Commissioner has clarified that Regulation 82(b) does not prevent an applicant from avoiding a double patenting objection on a divisional application by surrendering the patent granted from the parent.
In William Grant & Sons Irish Brands Limited v Lidl Stiftung & Co KG 2021 CSIH 38 the Scottish Court of Session for the Inner House (CSIH) upheld the Outer House interim interdict finding that Lidl’s rebranded gin bottle takes unfair advantage of the reputation William Grant has in its HENDRICK’S gin bottle.
In an interview David E. Martin, the Chairman of the world’s largest underwriter of intangible assets gave his sceptical take on patents concerning SARS-CoV. These were further elaborated in a subsequent interview.
In 1-800 Contacts Inc v FTC 18-3848 the Court of Appeals for the Second Circuit (CA2C) has reversed the controversial majority decision of the Federal Trade Commission (FTC), which held that agreements that prevent competitors from bidding for their competition’s trademarked terms as search engine ad generating keywords are anti-competitive.
As part of the current review of the Plant Varieties Act 1987 (see summary) IPONZ has released a wide-ranging consultation paper on the amount and structure of fees that should apply.
In the USA it is possible to obtain a patent using fictional data as the basis for the patent’s claims.
In Flujo Sanguineo Holdings Pty Ltd v Merisant Australia Pty Ltd [2021] NZIPOTM 11 the Assistant Commissioner clarified when disclaimers are appropriate and also made a rare finding that the scope of the application’s specification was too broad on account of likely use.
In Yu v Apple Inc 20-1760 the majority decision of divided Court of Appeals for the Federal Circuit (CAFC) decisions has arguably further extended the scope of patent ineligible subject-matter under the Supreme Court’s two-step Mayo/Alice inquiry.
In Ariosa Diagnostics Inc v Sequenom Inc 2021 FCAFC 101 the Full Court of the Federal Court (FCAFC) rejected Ariosa’s appeal against the trial Judge’s finding that Sequenom’s non-invasive prenatal diagnosis patent is valid, but held that the trial Judge erred in finding some of the patent claims infringed.
With the impending decommissioning of IP Australia’s eServices Platform feedback is being sought on any issues users of IP Australia’s New Online Services Platform have had.
The European Commission has opened a public consultation on whether to create EU-wide harmonised protection for indications of geographical origin in relation to non-agricultural products.
Following on from the September 2018 Issues Paper, the July 2019 Options Paper and the August 2020 Outstanding Issues Paper, the Government has now introduced the Plant Variety Rights Bill 2021 to Parliament with the expectation of replacing the Plant Variety Rights Act 1987.
In Guangzhou Baiyunshan Pharmaceutical Holdings Co Ltd v Multi Access Limited 2021 NZIPOTM 8 the Assistant Commissioner confirmed that where goods in a specialist market are found to be dissimilar there is no residual onus on the applicant to establish that deception or confusion is not likely under section 25(1)(b).
In Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd 2021 FCAFC 65 the Full Court of the Federal Court (FCAFC) has allowed Fuchs’ appeal finding that Quaker’s standard and innovation patents were invalid on account of prior public disclosure.
From 1st June 2021 it will be possible to apply for a Eurasian Design, with applications able to be made either directly with the Eurasian Patent Office or through one of the member states.
The Court of Appeal for the Federal Circuit’s (CAFC) recent decision In Re Hu 19-2104 involved consideration of whether patent applications that violated currently established laws of physics were sufficiently enabled and whether the onus of establishing their unpatentability had been discharged.
In Lego AS v EUIPO T-515/19 the General Court upheld Lego’s appeal, finding that the EUIPO Boards of Appeal erred in considering whether Lego’s design application relating to a toy building block is invalid.
In Swatch AG v Apple Inc 2021 EWHC 719 a UK Judge has held that the Hearings Officer was wrong to find that Swatch’s trade mark application for a phrase used by Apple was made in bad faith on account of its potential parodic use.
As part of efforts to reduce the hearings backlog for both patents and trade marks, from 1st April 2021 until 30th September 2021 IPONZ will trial a system that aims to utilize spaces for hearings that become available at short notice.
In G 1/19 (Simulation) the Enlarged Board of the Boards of Appeal held that whether a computer implemented simulation of a technical system or process solves a technical problem by producing a technical effect that goes beyond the simulation’s implementation on a computer needs to be determined on a case-by-case basis.
IPONZ has updated its patents hearings practice in the event that the opponent / applicant for revocation withdraws the opposition / revocation.
In The Ohio State University v Redbubble Inc 19-3388 the Court of Appeal for the Sixth Circuit (CA6C) found that Redbubble’s online marketplace more than merely facilitated infringement of Ohio State University (OSU) trademarks and so reversed and remanded the District Court’s summary judgment of non-infringement.
As a common law country New Zealand's trade mark legislation favours use over registration. However, the privileges available for unregistered marks appear vulnerable to non-use due to circumstances outside the control of the owner.
In Olaf Sööt Design LLC v Daktronics Inc 2020-1009, 2020-1034 one of the Court of Appeal for the Federal Circuit (CAFC) Judges expressed concern about the misuse of the doctrine of equivalents and sought to reaffirm the primacy of the claims in determining the scope of a patent’s monopoly.
In the recent Board of Appeal decision Max Kiene GmbH v Frito-Lay Trading Co GmbH R 204/2020-4 delays during the opposition period have subsequently resulted in the appeal against the successful opposition being allowed due to intervening changes in the legislative landscape brought about by Brexit.
In Thomson Reuters Enterprise Centre GmbH [2020] NZIPOPAT 7, the IPONZ Patent Hearing Office had its first opportunity, since the passing of New Zealand’s Patents Act 2013, to consider s 11, which excludes from patentability “computer programs as such”.
In Waterwipes Unlimited Co v Church & Dwight Co Inc 2021 NZIPOTM 2 the Assistant Commissioner held that Waterwipes Unlimited (WU) has not discharged its onus of demonstrating that its stylised application for WaterWipes is either inherently or factually distinctive for wipes consisting mainly of water.
In light of recent legislative changes and judicial decisions IPONZ has updated its Trade Mark Examination Guidelines.
Australia’s .au Domain Administration (auDA) organisation has given notice that .au domains will be subject to a raft of stricter rules when they are registered or next renewed from 12th April 2021.
The Trademark Modernisation Act 2020 has the focus of improving the accuracy and integrity of the register and seeks to achieve this through new procedures for challenging inaccurate claims of use in applications and registrations.
In Energy Beverages LLC v Frucor Suntory New Zealand Ltd [2020 NZHC 3296] the Judge upheld the Assistant Commissioner’s rejection of invalidity and non-use challenges to Frucor’s colour mark based on the shade of green shown on the register being different to the register’s description of the trade mark and as used.
Former cricketer Peter George was spurred into finding a more instantaneous technological solution for bowler’s front foot no-ball determinations after feeling that reliance upon TV replays detracted from enjoyment of the game for both players and spectators.
While the end of the Brexit transition period has seen the creation of UK equivalents for registered EU IP rights, going forward the location of first disclosure of a product will determine whether UK or EU unregistered design rights can be obtained.
In Donner Technology LLC v Pro Stage Gear LLC 20-1104 the US Court of Appeal for the Federal Circuit (CAFC) clarified the approach to considering analogous art in relation to obviousness determinations.
It is best if all your IP is under the watchful eye of one firm of attorneys.
In Kiwi Fresh Orange Company Limited v Monde Nissin (Australia) Pty Ltd 2020 NZIPOTM 26, despite spill-over reputation from the Australian market, the Assistant Commissioner declined to find a likelihood of deception or confusion due to the low distinctiveness of Monde Nissin’s marks.
Following on from the consultation late last year the Australian Government has now introduced and given the first reading of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020.
In Lonza NZ Limited v Koppers Performance Chemicals New Zealand 2020 NZIPOPAT 4 the Assistant Commissioner confirmed that close prior art is not sufficient for a finding of obviousness.
In Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Babel Sajt Kft 2020 EWHC 2858 a UK Judge held that the Hearings Officer was wrong to hold that members of the trade do not qualify as average consumers for the purposes of evaluating the likelihood of confusion.
The Supreme Court of New Zealand has issued its decision in Ortmann, van der Kolk, Batato, Dotcom v USA and Anor [2020] NZSC 120. The case relates, among other things, to s 131 of the Copyright Act 1994, which sets out criminal offences in relation to copyright works.
The recent Assistant Commissioner’s decision Nitro AG v Nitro Circus IP Holdings LP 2020 NZIPOTM 23 is the first non-use decision to take into account the Supreme Court’s recent decision in International Consolidated Business Pty Ltd v SC Johnson & Sons Ltd 2020 NZSC 110.
On 17th October 2020 the Standing Committee of China’s 13th National People’s Congress (NPC) approved the Draft Amendments to China’s patent law. The amendments will take effect from 1st June 2021.
In International Consolidated Business Pty Ltd v SC Johnson & Sons Ltd 2020 NZSC 110 the Supreme Court partially overturned the Court of Appeal judgment, but still upheld the Court of Appeal’s conclusion that SC Johnson’s mark can proceed to registration.
In InterAg v Bayer Intellectual Property GmbH 2020 NZIPOTM 21 the Assistant Commissioner revoked a trade mark after finding that a ban on the use of a product did not constitute special circumstances sufficient for justifying the non-use of a registered trade mark that was used in relation to a product that contained the banned product.
In Tigercat International Inc v Caterpillar Inc 2020 NZIPOTM 18 the Assistant Commissioner denied Caterpillar’s request to halt a second proceeding involving an identical mark covering the same and some additional class 7 goods primarily due to the potential relevance of their different filing dates and the consequent absence of issue estoppel.
The Australian Government’s Department of Industry, Science, Energy and Resources has commissioned a Patents Accessibility Review with a view to ensuring that the standard patent system is as accessible as possible to Australia’s Small and Medium Sized Enterprises (SMEs).
In the recent Canadian Federal Court decision Choueifaty v Canada (Attorney General) 2020 FC 837 the Judge rejected the problem-solution approach to claim construction, finding that that interpretive framework can restrict the purposive construction of the claims.
The recent Assistant Commissioner’s decision Waiwera LLC v Savernake Holdings Ltd [2020] NZIPOTM 16 involved actions against some of each side’s applications or registrations, with Savernake being successful in both respects despite being yet to trade.
The Australian Government has opened a new consultation on its legislation relating to Geographical Indications (GIs) in light of its on-going Free Trade Agreement negotiations with the EU. Responses are sought by 30th November 2020.
The USPTO Director-General has issued a guidance memorandum to standardise how the Patent Trial and Appeal Board (PTAB) will treat applicant admitted prior art (AAPA) in Inter Parties Review (IPR) proceedings.
IP Australia's has been trialling an Australian Government anti-counterfeiting initiative that allows consumers or other interested parties to check whether a website sells genuine branded products.
A recent APO decision, successfully handled by PIPERS Patent Attorneys, comes as welcome news for innovators of computer-implemented inventions (“CIIs”).
In 2020 NZCA 306 Pharmazen Limited v Anagenix IP Limited the Court of Appeal confirmed that the likelihood of actual use is not relevant to discharging the onus of establishing lack of deception or confusion on a notional use basis.
In Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd the unanimous decision of the Full Court of the Federal Court (FCAFC) held that when assessing whether a Swiss-style patent claim has been infringed the intention of the accused infringer is not a necessary factor to take into consideration...
In 2020 NZIPOTM 5 Frucor Suntory New Zealand Limited v Energy Beverages LLC a discrepancy between the IPONZ register representation of Frucor’s colour mark and the accompanying description and the mark as used was held not to justify revoking the mark for non-use.
With effect from 1st June 2020 Customs no longer require up-front security from trade mark and copyright owners when requesting Customs to detain goods suspected of being pirated or counterfeit.
Following the Therapeutic Goods Administration’s (TGA) February 2019 consultation on whether to publish that a prescription medicine is under evaluation they have now released an implementation options paper with the objective of increasing public transparency around whether treatment options are likely to be available...
IP Offices around the world are responding in various ways to the Coronavirus threat...
Recent Assistant Commissioner’s decision 2020 NZIPOTM 3 Mia Nathan-Joyce involved the rarely considered but important issue of copyright ownership in device marks...
In C-371/18 Sky PLC v SkyKick UK Ltd the Court of Justice for the European Union (CJEU) gave important guidance on both whether a trade mark can be invalidated for having an inappropriately wide specification and on whether a specification that contains goods or services for which there is no intention to use is invalid for bad faith...
In 2019 NZIPOTM 30 Apple Inc v Swatch AG the Assistant Commissioner held that Apple’s assignment of IWATCH trade mark applications from an affiliated entity was not in contravention of the Trade Marks Act (and Paris Convention) provisions that only allow priority to be claimed from the first priority filing...
Within the context of on-going Free Trade Agreement discussions between New Zealand and the European Union the Ministry of Foreign Affairs and Trade (MFAT) has released a discussion paper on potential changes to New Zealand’s geographical indication (GI) legislation, with feedback sought by Friday, 27 March 2020...
In 2019 NZHC 2522 Rapid Labels Ltd v Excel Digital Ltd the Judge held that a prior agreement between the parties did not estop Rapid from seeking an interim injunction against Excel...
IPONZ has announced some applicant friendly changes to its practice in respect of Global Patent Prosecution Highway (GPPH) program, which allows accelerated examination of qualifying applications that have already had at least one claim found to be allowable by an IPO of a GPPH member...
Significant fee rises will take effect in respect of patents and fee reductions for trade marks from 13th February 2020...
In 2019 NZIPOTM 17 Kellogg Company v Société des Produits Nestlé SA the Assistant Commissioner held that Kellog’s application for the shape of a whole piece of its NUTRI-GRAIN cereal shown from various perspectives must not be registered as it lacks distinctiveness...
Following on from last year’s Plant Variety Rights Issues Paper the Ministry of Business, Innovation and Employment (MBIE) has now released an Options Paper, for which submissions will close on Monday, 9 September 2019...
The Ministry of Business, Innovation and Employment (MBIE) has released a Discussion Paper - Intellectual Property Laws Amendment Bill 2019...
Amazon has adopted two programs in an effort to discourage the sale of pirated or counterfeit goods on its website, namely the “Project Zero” and “Neutral Patent Evaluation” programs...
Following feedback from submissions sought during the middle of 2018 IPONZ has now submitted and received Cabinet approval for its Fees Review, which will involve amendments to patent and trade mark fees and hence regulations.
In 2019 NZCA 61 International Consolidated Business Pty Ltd v SC Johnson & Son Inc the Court of Appeal confirmed that when a prior registration is in force a different applicant can make a valid application for the identical mark and goods, which can proceed to registration once the prior registration is no longer in force...
From 19th August 2019 the exemptions from the prohibitions on restrictive trade practices that allowed for certain dealings in intellectual property will be removed when the repeal of subsection 51(3) of the Competition and Consumer Act 2010 takes effect.
In the recent Federal Court decision Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 a computer implemented business method was found to involve a technical solution to a technical problem and so was found to have patentable subject matter.
Have an idea that you want to convert into money? - this webinar could be of interest to you!
In 2018 NZIPOPAT 18 Bayer New Zealand Ltd v Zoetis LLC the Assistant Commissioner distinguished between three different types of insufficiency and upheld the opposition principally on the basis of insufficiency by ambiguity...
On 23rd November 2018 an Issues Paper on the Copyright Act 1994 was released, with feedback sought (by the 5th April 2019) on a wide range of issues, which will influence the subsequent production of an Options Paper...
IP Australia has now released its response to submissions received in respect of the exposure draft of the Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) Bill 2018...
The Ministry of Business, Innovation and Employment (MBIE) has released an Issues Paper on the Plant Variety Rights Act 1987...
As expected the UK Government has now confirmed that registered EU IP Rights will automatically convert into national UK IP rights post-Brexit and will not be subject to any official Registry fee for such conversion...
In Sealegs International Limited v Zhang [2018] NZHC 1724 the Judge upheld Sealegs’ claim of copyright infringement against several defendants in relation to its retractable wheel system for amphibious crafts...
In the recent revocation decision Target Australia Pty Ltd v Target New Zealand Ltd the Assistant Commissioner applied a high standard in determining what can constitute evidence of use, particularly in relation to claimed use over the internet...
On 16th May 2018 the first reading of the Patents (Advancement Patents) Amendment Bill was initiated, but only 2 of the scheduled 11 speeches were made before progress of the Bill was interrupted. The Members Bill, which is sponsored by an opposition party member, has subsequently slipped down the Order Paper...
On 5th April 2018 the Member’s Bill Patents (Advancement Patents) Amendment Bill was drawn on its first ballot...
In the recent Hearings Office decision Syngenta Crop Protection AG v Bayer Intellectual Property GmbH the Delegate held that claims to a synergistically effective active compound combination to be obvious as the person skilled in the art would find the synergistic effect through routine trials...
In SC Johnson & Son Ltd v International Consolidated Business Pty Ltd the High Court Judge quashed an Assistant Commissioner’s decision and ordered a rehearing before the Assistant Commissioner on the issue of ownership...
In Rozenberg & Co Pty Ltd v Velin-Pharma A/S the Delegate held that a post-filing publication of the same applicant can be covered by the grace period provisions, and so could be disregarded for novelty and inventive step purposes as a ‘whole of contents’ prior art base document...
In Merial Inc v Intervet International BV the Judge upheld the Assistant Commissioner’s finding that a request for an extension of time in which to file a counterstatement satisfied the relevant exceptional circumstances provisions in the Patents Regulations 2014...
The Law Commission has released an issues paper titled: Dividing Relationship Property - time for a change? The review of the Property (Relationships) Act 1976 (Act) is wide ranging and intellectual property considerations arise in several areas...
In 2017 NZIPOPAT 23 Merial Inc v Alleva Animal Health Limited the Assistant Commissioner declined to make a finding of obviousness even though the prior art primarily only differed in not mentioning the specific salt of levamisole used and despite allowing salts of levamisole to be used...
In 2017 NZHC 2393 Monster Energy Company v Ox Group Global Pty Ltd the Judge rejected Monster Energy’s appeal of an Assistant Commissioner’s decision that allowed Ox Groups device mark to proceed to registration...
In the recent Commissioner’s Decision 2017 NZIPOPAT 16 Charles Caulder Bree the Assistant Commissioner confirmed that the test for the ‘fair basis’ requirement that applied under the Patents Act 1953 cannot be used when considering the ‘support’ requirement under the Patents Act 2013...
On the 6th July 2017 IPONZ joined the Global Patent Prosecution Highway (GPPH) pilot program.
In 2017 NZCA 217 ESR Group v Burden the Court of Appeal overturned the trial Judge’s findings in respect of ownership, holding that while Burden was a joint author of technical drawings he was not the owner of copyright in the drawings...
In Auckland Agricultural Pastoral and Industrial Shows Board v Royal Agricultural Society of New Zealand an Assistant Commissioner held that an opponent can establish awareness of the marks it relies on under s 17(1)(a) of the Act even when use of those marks may have been a technical breach of other legislation...
Even re-orienting the alleged infringing mark deemed insufficient to lead to deception or confusion...
Recent Assistant Commissioner’s decision A Menarini Industrie Farmeutiche Riunite SRL clarified the assessment of descriptiveness in relation to foreign words...
Supreme Court rules that marks used by Lacoste cannot count as use of contested mark...
Increased regulation of patent attorney conduct soon to commence...
