April 2016
1. General
Australia
Re-Alignment of Fee Structure Proposed
IP Australia has released a draft cost recovery implementation statement in which it seeks to realign its fee structure to more equitably recovery forecast costs while also streamlining its fee structure.
Currently IP Australia over recovers costs for trade marks and under recovers costs for patents. It seeks to recover the costs appropriate to each of its activity groups (patents, trade marks, designs, plant breeder’s rights and professional standards board) within that activity group.
For patents the application, prosecution and renewal fees up to and including the 9th anniversary would stay the same. However, the renewal due for the 10th – 14th anniversaries would increase from $500 to $550 and for the 15th – 19th anniversaries would increase from $1,120 to $1,250. Hence, the fee increases would only effect patents that remain active into the second half of their maximum term.
For trade marks the application fee would increase from $120 per class to $250 per class and the registration fee of $300 per class would be scrapped. Further, the renewal fee would increase from $300 per class to $400 per class. Hence, for applications accepted straight away the fees due up to and including the first renewal would cumulatively decrease, but would cumulatively increase when renewed two or more times.
2. Patents
South Korea
Time for Requesting Examination to be Reduced
The South Korean Patent Act was recently amended. The amendments were largely procedural and include a shortening of the period in which examination is to be requested. For applications filed on or after 1st March 2017 the period for requesting substantive examination will change from five-years to three-years from the application filing date. However, the applicant can file a petition for delayed examination, thereby postponing substantive examination up to five years from the application filing date.
United States of America
Court of Appeal Clarifies Indefiniteness
In UltimatePointer LLC v Nintendo Co Ltd the Court of Appeal of the Federal Circuit (CAFC) clarified when mixing device and method of use within a single claim leads to indefiniteness and when it is acceptable.
UltimatePointer is the assignee of a US patent for a handheld interactive direct-pointing system and presentation control system. UltimatePointer sued Nintendo for infringement on the basis of Nintendo’s Wii remote. In a summary judgement the Washington District Court held that the Wii remote did not infringe as it is an indirect pointing device, rather than a direct pointing device, and that relevant claims of the patent are invalid for indefiniteness. UltimatePointer appealed both the construction of the patent claims and the finding of indefiniteness. Claim 1 of the patent claimed:
1. An apparatus for controlling a feature on a computer generated image, the apparatus comprising:
a handheld device including:
an image sensor, said image sensor generating data related to the distance between a first point and a second point, the first point having a predetermined relation to the computer generated image and the second point having a predetermined relation to a handheld enclosure; and
a processor coupled to said handheld device to receive said generated data related to the distance between a first point and a second point and programmed to use the distance between the first point and the second point to control the feature on the image.
UltimatePointer contended that the District Court should not have limited the claim to ‘direct pointing’ devices. It contended that while the specific embodiments in the specification were of direct pointing devices the claims were not restricted to such. However, the CAFC upheld the ‘direct pointing’ construction, finding that the specification repeatedly emphasizes that the invention is directed to a direct-pointing system while disparaging indirect pointing systems and that the title explicitly states it is a direct pointing system.
The District Court’s finding of indefiniteness was based on the CAFC’s 2005 decision IPXL Holdings v Amazon in which it held a claim that claims both an apparatus and a method of using the apparatus to be invalid on account of being indefinite. In particular, the CAFC’s 2005 decision held that it is unclear whether infringement occurs when one creates an infringing system, or whether infringement occurs when the user actually uses the system in an infringing manner. Further, a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus. For this patent, the District Court held that the claim limitation “a handheld device including: an image sensor, said image sensor generating data . . .” made the claim indefinite, since it is not clear whether the claim is infringed when the apparatus is created, or when the apparatus is put to the specified use.
However, the CAFC reversed the District Court’s finding on indefiniteness on the basis that the facts of the case differ from those in IPXL. It noted that apparatus claims are not necessarily indefinite for using functional language and will not be indefinite where the apparatus claim is clearly limited to an apparatus possessing the recited structure and capable of performing the recited functions. The CAFC held that the claims do reflect the capability of the claimed apparatus. Unlike IPXL the claims at issue make clear that the “generating data” limitation reflects the capability of that structure rather than the activities of the user and do not require that any data is actually generated by the user.
3. Trade Marks
New Zealand
Court of Appeal Affirms Test for Establishing Use through Use of Another Mark
In Crocodile International Pte Ltd v Lacoste the Court of Appeal confirmed that the trial Judge applied the correct test in assessing whether use of one mark counts as use of another mark.
In long running litigation between the parties Lacoste was assigned Crocodile’s registration 70068 for a crocodile device mark that includes the word Crocodile. However, Lacoste never made use of that mark. Crocodile subsequently sought to have 70068 revoked for non-use, to which Lacoste argued that 70068 is effectively in use due to Lacoste’s use of its Crocodile device marks, which feature a Crocodile facing the opposite direction.
The trial Judge held that in assessing whether a trade mark has been used within the meaning of section 7(1)(a) it is necessary to undertake a two-stage analysis:
(a) First, the court must assess the points of difference between the mark as used and the mark as registered.
(b) Second, once the differences have been identified, the court must ascertain if the differences alter the distinctive character of the mark as registered.
Crocodile argued that before undertaking the two-stage analysis the trial Judge should first have identified the essential elements of mark 70068, that is, those elements that give it its “distinctive character”. Crocodile advanced this argument since Lacoste’s use was either of a Crocodile device or the word CROCODILE, but not both. However, the Court of Appeal rejected that approach for resulting in a mathematical comparison rather than an evaluative one. The Court of Appeal agreed with the trial Judge’s assessment that the differences are insignificant and do not alter the distinctive character of the mark depicted in registration 70068. In particular, it was held that the presence of the word Crocodile in that mark only serves to reinforce the dominant element and does not alter the central message because the word merely describes the device and adds nothing more.
Application Refused on Finding of Lack of Intention to Use Mark for Specified Services
In Green & Good Food Company Ltd v Monster Energy Company the Assistant Commissioner made a rare finding that the applicant did not intend to use the opposed mark for the specified services at the date of application. Normally, the making of an application is taken as prima facie evidence of intention to use the mark and detailed inquiry of any use that has been made is left to revocation proceedings.
In May 2014 Green & Good filed their (only) trade mark application for REHAB Juice Therapy as a device mark in class 42 for: Design of brand names; design of consumer products; design of logos; design of products. Monster Energy have 3 registrations in classes 5, 30, 32 which include REHAB and opposed the application, with one of the grounds of opposition being lack of intention to use the mark in relation to the specified services.
Given that making an application is taken as prima facie evidence of intention to use the onus was on Monster Energy to bring evidence for lack of intention or incapacity to use the mark. Monster Energy led evidence to show that Green & Good has only been a producer and retailer of non-alcoholic beverages and health foods and that this would make it unlikely that they would be intending to trade in the specified services. In its counterstatement Green & Good cited the use of the mark on consumer products (health foods and health drinks) it designed.
However, the Assistant Commissioner gave little weight to that and pointed out that Green & Good do not design products for any third parties, provide design services or compete with traders that provide design services. Consequently, the Assistant Commissioner held that Monster Energy were successful on that ground of opposition.
4. Copyright
United Kingdom
Copyright in Industrially Applied Artistic Works to be Extended
Section 52 of the Copyright, Designs and Patents Act 1988 limits copyright in artistic works made by an industrial process and subsequently marketed to 25 years from the end of the calendar year in which such articles were first marketed (anywhere). Section 52 was set for repeal by section 74 of the Enterprise and Regulatory Reform Act 2013 and a 2015 Order initially set section 74 to come into force on 6th April 2020 so as to allow a transitional period for businesses that produce and sell reproductions of articles that fall out of copyright protection. However, the Government subsequently repealed that Order and instituted a new consultation period. It has now issued the outcome of that consultation. Section 74 will come into force on 28th July 2016 with a 6-month period allowed for depletion of stock by replica businesses, which would end on 28th January 2017.