January 2013

1. Patents 

Australia

Progress on Regulations for the 'Raising the Bar' Act
IP Australia has now notified the outcome of the public consultation on the draft regulations to implement the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which come into effect on 15th April 2013. Notable practices include:
• Currently the applicant has 21-months from the date of issuance of the First Official Report to gain acceptance. This will be reduced to 12 months. The additional 9 months currently allowed subject to payment of late response fees will be discontinued. While a divisional can be filed, this will be less attractive under the higher patentability standards of the new Act.
• Currently the applicant has 6-months to request examination after receiving a Direction to Request Examination. This will be reduced to 2 months.
• The notice of entitlement for standard patent and national phase filings will no longer be required at time of filing. Instead it will be incorporated into the form for requesting examination. Innovation patents will still require a notice of entitlement with the application filing.
• The initial ‘Raising the Bar’ Bill gave the Commissioner the power to require and provide a preliminary search and opinion when no other early report was likely to be made available from a major equivalent patent office. This has now been dropped as it was considered to unfairly burden Australian Small and Medium Enterprises who may only want to file in Australia.
• The initially proposed search fee of $1,710 has been reduced to $1,400.
• Parties will no longer need to serve documents and evidence on the other party. They will only need to file the documents and evidence with IP Australia. IP Australia will then give the other party the evidence, preferably by electronic means.
• A more rigorous test will be applied to get an extension of time to file evidence. Apart from exceptional circumstances, the filing party must act promptly and diligently at all times during the opposition period. They must also make all reasonable efforts to comply with relevant time periods.

United States of America

Possible Infringement Insufficient for Finding of Infringement
In ePlus Inc v Lawson Software Inc the Court of Appeals for the Federal Circuit (CAFC) considered the requirements for infringement of a method claim. ePlus’s patents cover systems and methods for electronic ordering of goods with a novel feature being its ability to divide a single requisition (or shopping list) into multiple purchase orders.
While noting that Lawson’s system is capable of infringing each of the method claims, the CAFC only upheld infringement of one of the method claims. The CAFC reversed the infringement verdict for the remaining method claims due to lack of evidence showing performance of the ‘converting data’ step. Although Lawson’s system could carry out that step, that capability was an optional feature that had to be loaded by the customer. ePlus had not shown that any customers had actually done so, and so the CAFC held that there was no actionable infringement.

Secondary Evidence can Override Primary Evidence in Obviousness Assessment
In Transocean Offshore Deepwater Drilling Inc v Maersk Contractors USA Inc the CAFC held that secondary objective evidence of non-obviousness was strong enough to overcome a prima facie case of obviousness. Transocean had patents for a dual activity offshore drilling vessel. By having two activity stations efficiencies were gained by reducing the time taken to assemble and disassemble the various componentry of the drilling apparatus.
In an earlier judgement the CAFC held that a prima facie case of obviousness had been established, but remanded the case back to the district court on account of failure to consider any objective evidence of non-obviousness. The jury subsequently found the patents non-obvious, but the district court over-ruled their verdict.
The CAFC upheld Transocean’s appeal on the strength of the non-obviousness evidence. In particular:
• Commercial Success — Transocean’s customers expressly required dual activity rigs, which commanded a market premium over single activity rigs because of the efficiency gains.
• Industry Praise and Unexpected Results — Competitors noted the unexpected efficiency gains, and the claimed invention was praised as one of 50 key technologies to have shaped the offshore drilling industry.
• Copying — Maersk internal documents encouraged copying and specifically noted that Transocean’s dual activity rigs were the best known examples of dual activity vessels.
• Industry Skepticism — Industry documents showed scepticism as to whether any efficiency gains would be achieved with dual activity vessels.
• Licensing — Transocean’s royalties under its licenses exceeded any litigation costs and were thus an accurate reflection of the value of the claimed invention. The CAFC agreed that sophisticated companies would not pay such high royalties otherwise.
• Long-felt but Unresolved Need — Two of the inventors testified that prior to the claimed invention the industry was researching ways to increase drilling efficiency without interrupting operations of the drilling well, as achieved by the claimed invention.

USA Set to Implement Hague Agreement (Geneva Act) and Patent Law Treaty
The Patent Law Treaties Implementation Bill 2012 to implement the Hague Agreement (Geneva Act) in the United States of America has now passed by the House of Representatives and been signed by the President. However, the provisions of the new law will not take effect for another 12-months. Applications filed after the effective date will have a maximum term of 15-years from the date of registration, which replaces the current maximum term of 14-years from the date of registration.
The Hague Agreement has similarities to the Madrid Agreement and Madrid Protocol options available for trade marks. However, it differs in not requiring applications to be based on a home registration.
There are 2 active versions of the Hague Agreement: Hague Act (1960); Geneva Act (1999). The London Act (1934) ceased to have effect from 2010. The Geneva Act introduced the possibility of deferring publication of a design for up to 30 months and the ability to file samples of the design rather than photographs or other graphic reproductions. The latter features are of particular interest to the textile and fashion industries.
The Patent Law Treaties Implementation Bill 2012 also contains the implementation of the Patent Law Treaty (PLT), which likewise will not take effect for another 12-months. The PLT harmonizes formal patent procedures between the various member countries. When it takes effect in the US the more significant changes it will make to US law will concern the requirements for obtaining a filing date and include:
• Applications filed at the USPTO without any claims will still be accorded a filing date;
• Application filing fees can be paid after filing of the application; and
• Procedures will be established for restoring priority rights to a provisional application if the delay in filing the subsequent application within the 12-month priority period was unintentional and the subsequent request was filed within two months after the expiration of the 12-month priority period.

2. Trade Marks 

Australia

Australia Relaxes Policy on Trade Marks Containing INN Stems
A recent Australian Trade Marks Office decision is likely to lead to a relaxation of IP Australia’s strict policy regarding trade marks containing an International Non-Proprietary (INN) stem. IP Australia has a policy of objecting to trade marks that contain INN’s, unless the INN is not contained in a meaningful way or the goods covered by the specification are restricted to substances belonging to pharmacological group pertaining to the INN stem.
Boehringer’s application for ZELCIVOL was objected to on the basis of the INN stem –OL, which the examiner claimed indicates alcohol or phenol derivatives. Boehringer objected to the examiners proposed endorsement regarding the scope of the goods that the mark could be registered in relation to.
The Hearing Officer upheld Boehringer's appeal on the basis of the following factors:
• The trade marks register and the marketplace indicates that the suffix –OL is in comparatively widespread use in Australia in relation to pharmaceuticals that do not relate to the INN stem.
• The suffix –OL is used by pharmaceutical companies as a ‘diminutive’ to signify that the goods are pharmaceuticals, rather than a particular kind of pharmaceutical.
• The suffix –OL is short in the context of the mark under consideration, and is not obviously being used as an INN stem because the prefix ZELCIV- does not conform to the usual formula for construction of names for alcohols or phenols.
• The more logical suffix in the trade mark ZELCIVOL is –VOL rather than –OL.
• Boehringer had not been required to restrict its goods in other jurisdictions in which it had registered ZELCIVOL.
• Use of the trade mark on drugs other than those containing alcohol or phenol would be unlikely to deceive or cause confusion because of the above factors and the maturity of the Australian marketplace, the regulatory regime within that marketplace and the availability of comprehensive Federal and State laws relating to conduct which is misleading or deceptive.
The Hearing Officer considered that in general a section 43 objection should not be raised on the basis of an INN stem if the following applies:
• The suffix is in common use other than as an INN stem, as evidenced by both the state of the Register and the marketplace.
• The INN stem is 2 or 3 letters long.
• There are other or alternative obvious suffixes present in the trade mark.
• The INN stem is non-specific – in the context of the trade mark, the stem would not generally be apprehended as indicating only a particular kind of pharmaceutical.

China

China Partially Relaxes Policy on Registration of Service Marks
China has allowed the registration of marks in relation to services since July 1993, although not in relation to retail and wholesale services. However, from 1st January 2013 China slightly relaxed this exclusion by allowing registration of trade marks in respect of retail and wholesale services for pharmaceutical, veterinary and sanitary products. In particular, China announced that seven specific types of new retail or wholesale services in Class 35 will be allowed, namely:
• retail or wholesale services for pharmaceutical, veterinary, sanitary preparations and medicinal products;
• retail or wholesale services for medicine;
• retail or wholesale services for pharmaceutical preparations;
• retail or wholesale services for sanitary preparations;
• retail or wholesale services for medicinal products;
• retail or wholesale services for medicine for veterinary purposes; and
• retail or wholesale services for veterinary preparations.
Applicants are required to submit business documents to prove that their scope of business is consistent with or relevant to the new services applied for. The specification of services needs to match the above wording. Existing class 5 registrations for pharmaceutical, veterinary, sanitary preparations and medicinal products and class 35 registrations for sales promotion for others will not be considered similar to the new class 35 services. Hence, such existing registrations will be unlikely to block future applications for identical or similar marks in respect of the new services in Class 35.