March 2014

1. Patents

Singapore

Singapore's Positive Examination Changes
Singapore recently changed to a “positive grant system”, whereby applications only proceed to grant if all objections in examination reports or written opinions have been overcome. Previously, Singapore had a “self-assessment system”, under which patent applications could be granted even if their examination reports contain objections.

United States of America

USPTO Updates Subject Matter Eligibility Guidelines
The USPTO has issued a practice note entitled “Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, & Natural Products”. The practice note replaces the practice note issued following the Supreme Court’s decision in Association for Molecular Pathology v Myriad Genetics Inc.
Under the new practice note patent eligibility of such claims requires passing the following three step test.
(1) Is the claimed invention directed to one of the four statutory patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? If ‘no’, then ineligible. If ‘yes’, then
(2) Does the claim recite or involve one or more judicial exceptions? Judicial exceptions include abstract ideas, laws of nature/natural principles, natural phenomena, and natural products. (Abstract ideas continue to be according to previous practice.) If ‘no’, then eligible. If ‘yes’ or ‘maybe’, and does not involve an abstract idea, then
(3) Does the claim as a whole recite something significantly different than the judicial exception(s)? If ‘yes’, then eligible. If ‘no’, then ineligible.
When determining what qualifies as something ‘significantly different’ under step (3) the following 6 factors weigh towards eligibility:
(a) Claim is a product claim reciting something that initially appears to be a natural product, but after analysis is determined to be non-naturally occurring and markedly different in structure from naturally occurring products.
(b) Claim recites elements/steps in addition to the judicial exception(s) that impose meaningful limits on claim scope, i.e., the elements/steps narrow the scope of the claim so that others are not substantially foreclosed from using the judicial exception(s).
(c) Claim recites elements/steps in addition to the judicial exception(s) that relate to the judicial exception in a significant way, i.e., the elements/steps are more than nominally, insignificantly, or tangentially related to the judicial exception(s).
(d) Claim recites elements/steps in addition to the judicial exception(s) that do more than describe the judicial exception(s) with general instructions to apply or use the judicial exception(s).
(e) Claim recites elements/steps in addition to the judicial exception(s) that include a particular machine or transformation of a particular article, where the particular machine/transformation implements one or more judicial exception(s) or integrates the judicial exception(s) into a particular practical application. (See MPEP 2106(II)(B)(1) for an explanation of the machine or transformation factors).
(f) Claim recites one or more elements/steps in addition to the judicial exception(s) that add a feature that is more than well-understood, purely conventional or routine in the relevant field.
The following 6 factors weigh against eligibility:
(g) Claim is a product claim reciting something that appears to be a natural product that is not markedly different in structure from naturally occurring products.
(h) Claim recites elements/steps in addition to the judicial exception(s) at a high level of generality such that substantially all practical applications of the judicial exception(s) are covered.
(i) Claim recites elements/steps in addition to the judicial exception(s) that must be used/taken by others to apply the judicial exception(s).
(j) Claim recites elements/steps in addition to the judicial exception(s) that are well-understood, purely conventional or routine in the relevant field.
(k) Claim recites elements/steps in addition to the judicial exception(s) that are insignificant extra-solution activity, e.g., are merely appended to the judicial exception(s).
(l) Claim recites elements/steps in addition to the judicial exception(s) that amount to nothing more than a mere field of use.

2. Trade Marks

Australia

Extra Protection for Major Sporting Events
On the 26th March 2014 the Major Sporting Events (Indicia and Images) Protection Bill 2014 was introduced into Parliament. While restricted to major sporting events, as with New Zealand’s Major Events Management Act 2007, the Bill is designed to:
• prevent the unauthorised commercial use of certain indicia and images associated with major events in the lead up, during, and immediately after the events; and
• provide a more secure environment in which the relevant local organising committees can raise revenue through sponsorship and prevent ambush marketing.
The Bill has been introduced now with a view to it being in force to provide increased protection for the following upcoming sporting events to be held in Australia:
• the Asian Football Confederation (AFC) Asian Cup 2015;
• the International Cricket Council (ICC) Cricket World Cup 2015; and
• the Gold Coast 2018 Commonwealth Games.
The Bill appears to have a wider application than some of the provisions of the New Zealand Major Events Management Act 2007. Namely, the Bill applies to conduct across Australia rather than at specific venues or ‘clean zones’ leading thereto as is the case in New Zealand.