December 2016

1. General

Australia

Submissions Sought on Exposure Drafts
IP Australia has released Exposure Drafts relating to the Intellectual Property Laws Amendment Bill 2017 and has requested submissions in relation thereto by 22nd January 2017.

The Bill would amend all of the intellectual property Acts with the aim of improving and streamlining the administration of the Australian IP system by reducing regulatory costs and better meeting the needs of businesses interacting with the system – with a particular focus on assisting small to medium enterprises. Currently there are a number of different administrative processes and rules specific to each IP right. The Bill will establish similar processes and where possible use the same terminology for obtaining, maintaining and challenging the different IP rights while also enabling greater use of electronic systems to manage and monitor IP rights.

Creating certainty for both applicants and third parties around time periods and extensions of time is a particular focus. The main proposed changes in this respect are to:

• repeal the ‘despite due care’ extension for patents;
• remove the Commissioner’s and Registrar’s discretion for all general extensions, for all rights. This will simplify the process and ensure compliance with the Patent Law Treaty and Patent Cooperation Treaty;
• require all requests for extensions to be filed within two months of the removal of the cause of the failure to comply, to ensure there are no unreasonable delays;
• improve the compensation for third parties that use inventions when a patent lapsed or ceased to reduce the burden on third parties;
• expand the protection against infringement for third parties that use a trade mark while it was ceased to include while a trade mark application was lapsed;
• introduce a streamlined process for short extensions, but ensure IP Australia can review and remake a decision on an extension of time;
• prevent applicants from obtaining consecutive ‘short’ extensions for the same action;
• provide general extensions and corresponding third party protection for PBRs.

The Bill empowers the Commissioner and Registrars to determine the preferred means for filing and fee payments and the Regulations allow for fees to be reduced when paid by the preferred means.

For the designs, trade marks and Olympic insignia protection legislation the Bill will:

• remove the requirements to publish Official Journals and replace that with the requirement for IP Australia to publish or give information via IP Australia’s website or by other electronic means; and
• have some time periods commence or end from the actioned date rather than the advertised date.

The Bill will allow design and trade mark applicants to amend certain administrative details of their applications themselves prior to registration in a single step, provided it does not change the identity of the applicant. The Registrar will be allowed to correct obvious errors in such administrative details such as misspellings of names or addresses, with the applicant being subsequently notified.

The Bill will remove the current applicant signature requirements in the Patents Act of paragraphs 151(4)(c) (request to reinstate an application as an international application) and 176(c) (request to treat a PCT application as a standard application). These are considered unnecessary on account of the requests not involving significant risk of unauthorised actions taking place.

The Bill will enable the use of automated systems to make decisions or undertake actions relating to the exercise of a delegate’s power or fulfilment of a delegate’s obligation. Such decisions will be limited to those listed in a yet to be made legislative instrument, and will be subject to review if incorrectly made.

Third parties will be able to request examination of a patent application directly, rather than having to request the Commissioner to require the applicant to request examination. The fee for requesting examination would still be shared evenly when initiated by a third party.

In anticipation of the PCT Union allowing patent specification drawings to be in colour the provisions relating to formalities will be amended to allow the Commissioner to prescribe the formalities requirements for complete patent specifications.

2. Patents

Europe

Proceedings for Patentability of Some Plant or Animal Subject Matter Stayed at EPO
In light of a recent European Commission notice the President of the EPO has stayed all proceedings before the EPO examination and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process.

The European Commission notice concerns the meaning of key articles of European Parliament Directive 98/44/EC, which covers the legal protection of biotechnological inventions by setting out principles regarding the patentability of animals, plants and the human body and its parts. The Directive contains provisions additional to those in Article 53(b) of the EPC which excludes patent protection for plant or animal varieties or essentially biological processes for the production of plants or animals. The additional provisions were inserted into the EPC’s implementing regulations instead of the text of the EPC, with the consequence that the text of the EPC would prevail if there was any conflict between the EPC and the Directive.

This has resulted in narrow interpretations of the exclusion, such as the 2015 Enlarged Board of Appeal decision that the exclusion for essentially biological processes for the production of plants does not exclude patent protection for products obtained by such processes.

However, in the notice, the European Commission stated that while such narrow interpretations are consistent with the EPC, they are not consistent with the intent behind the Directive. In particular, the European Commission considers that the Directive also applies to products obtained by essentially biological processes and that, in the European context, the Directive should not be subservient to the EPC.

The stay of relevant proceedings before the EPO examination and opposition divisions will remain in place until the effect of the European Commission’s notice is more fully understood. However, this will not affect the searching of such applications.

United States of America

PTAB Allows Conditional System Claims but not Conditional Method Claims 
An April 2016 decision by the Patent Trial and Appeal Board (PTAB) held that where a method claim contains conditional alternatives the broadest reasonable interpretation of the claim is satisfied by any of the conditional alternatives. That decision has subsequently been designated as precedential.

For the application in question claims 1-10 are method claims and claim 11 is a system claim, with claims 1 and 11 being independent. All claims were rejected by the examiner. Claim 1 is for:

A method for monitoring of cardiac conditions incorporating an implantable medical device in a subject, the method comprising the steps of:
collecting physiological data associated with the subject from the implantable device at preset time intervals, wherein the collected data includes real-time electrocardiac signal data, heart sound data, activity level data and tissue perfusion data;
comparing the electrocardiac signal data with a threshold electrocardiac criteria for indicating a strong likelihood of a cardiac event;
triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria;
determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria;
determining whether the current activity level is below a threshold activity level;
comparing the tissue perfusion data with a threshold tissue perfusion criteria for indicating a strong likelihood of a cardiac event if the current activity level is determined to be below a threshold activity level;
triggering an alarm state if the threshold tissue perfusion data is not within the threshold tissue perfusion criteria; and
triggering an alarm state if the threshold tissue perfusion data is within the threshold tissue perfusion criteria and the heart sound data indicates that S3 and S4 heart sounds are detected,
wherein if an alarm state is not triggered, the physiological data associated with the subject is collected at the expiration of the preset time interval.

During examination the USPTO has a policy of giving claims their broadest reasonable interpretation. This policy seeks to establish a clear record of what the applicant intends to claim and reduce the possibility that a claim will be interpreted more broadly after issuance.

The PTAB upheld the examiner’s broadest reasonable interpretation of the method claim as either requiring the steps triggered when the threshold criteria is met or only requiring the steps taken when the threshold criteria is not met. In the case of the steps taken when the threshold criteria is not met the application was found to be obvious in respect of prior art disclosures. Consequently, the PTAB rejected the method claims even though they contained inventive material.

Conversely, the PTAB overturned the examiner’s rejection of the system claim. Claim 11 is directed to a system for monitoring cardiac conditions and recites various “means for” limitations involving functions substantially similar to those recited in the method claims. As a system claim it had to disclose sufficient structure for performing a function whether or not the required conditions for performing the function were met. Consequently, the prior art did not render the structure obvious.

3. Trade Marks

Europe

Rubik's Cube Registration Invalidated in EU
In Simba Toys GmbH & Co KG v EUIPO the Court of Justice of the European Union (CJEU) held that Seven Towns Ltd’s registration for a 3-D representation of the Rubik’s cube is invalid.

Simba initially sought a declaration that the registration is invalid in November 2006, arguing that the cube is a functional design for which trade mark protection is not available with its shape being necessary to achieve the technical result of rotation. This argument was rejected through a series of appeals including the EU General Court, which held that 3-D puzzles in other shapes are also rotatable and that the rotatability of the cube could not necessarily be inferred from the grid structure in the graphical representation. More generally the General Court held that an objection on the ground that the shape of the goods is necessary to obtain a technical result is only applicable where all the essential characteristics of the sign are functional.

In overturning the General Court judgment the CJEU emphasised that when analysing the functionality of a sign consisting of a shape the essential characteristics of the shape must be assessed in the light of the technical function of the goods concerned. As such, the graphical representation of the shape had to be analysed in light of the goods being for a 3-D puzzle when assessing the functionality of the essential characteristics of the sign. By inappropriately restricting its analysis to the graphical representation the General Court had precluded consideration of the rotational functionality of the grid structure. When analysed in the context of being for a 3-D puzzle, the grid structure could not be considered an arbitrary or decorative feature. The CJEU further noted that if account was not taken of the technical function of the goods, then the proprietor would have had a monopoly on all 3-D puzzles in cube shape, regardless of the principles by which they function.