September 2013
1. General
United States of America
USPTO Grants Itself an Extension of Time
In the current general US Government shutdown that began on 1st October 2013 the USPTO is classed as a non-essential service. However, the USPTO has notified that it is continuing to operate by using reserve funds, which will allow it to remain open for approximately four weeks. If the reserve funds are exhausted before the general government shutdown ends the bulk of the USPTO would shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions.
2. Patents
Australia
Raising the Backlog
On account of the unprecedented number of filings made prior to the commencement of the ‘Raising the Bar’ legislation, IP Australia has indicated that it will not be able to keep to some of its customer service charter commitments. In particular, it is expected that from April 2014 till early 2015 the first examination report will issue more than 12-months after being requested. In order to attend to the backlog as soon as possible IP Australia has restricted the issuing of directions to request examination to applications that have been pending at least 57 months.
Patentability of Computer Implemented Inventions
In RPL Central Pty Ltd v Commissioner of Patents a Federal Court Judge rejected the Patent Offices narrow approach to the patentability of computer implemented inventions.
RPL’s application concerns a method and system for the automated collection of evidence of skills and knowledge. Claim 1 involves the following steps:
(a) a computer retrieving via the internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
(b) the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
(c) an assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and
(d) receiving from the individual via their computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and experience in relation to each of the elements of competency and performance criteria, wherein at least one said response includes the individual specifying one or more files on their computer which are transferred to the assessment server.
The Court applied the flexible approach to patent eligibility espoused in the 1959 High Court NRDC decision in rejecting the objections to patentability. The invention was found to have utility and produce economically beneficial outcomes. It was also held that the computer implemented steps created an artificial state of affairs that resulted in physical effects, such as the presentation of questions to the user. The Court held that these physical effects did not need to be substantial or central to the claimed purpose. The computer implemented steps were deemed to be of sufficient substantiality and effectively necessary to the worthwhile implementation of the method. While on such an approach it might be argued that any computer implemented method would satisfy the artificial state of affairs requirement, the Judge was satisfied that each case would have to be judged on its merits. The Judge held that attempting to strip away the computer implemented aspects of the method so as to be left with a business method was unjustifiable. The computer is essential to the invention as claimed and it would not be feasible to perform the method without a computer. The Federal Court Judge used this last point and the detailed disclosure to distinguish this case from the contrary finding on patentability in the recent case of Research Affiliates LLC v Commissioner of Patents.
Europe
Human Observers in Patent Specifications Deemed Contrary to Ordre Public
In T 0149-11 Stork PMT BV v Meyn Food Processing Technology BV the Boards of Appeal (BoA) for the European Patent Office held that device claims that included a human observer as a claim feature were excluded from patentability under article 53(a) for being contrary to ‘ordre public’. In particular, it was considered that the commercial exploitation of the invention would be contrary to morality because it raised serious concerns regarding human liberty and the prohibition of slavery. It was sufficient that the immediate wording could potentially lead the broader public to believe that such a claim could be enforced by demanding the delivery up (or possibly even destruction) of the claimed device, including the observer. It was not relevant that the patentee is unlikely ever to enforce the disputed claim in this way.
United States of America
USA Ratifies PLT
On the 18th September 2013 the United States of America deposited its instrument of ratification of the Patent Law Treaty (PLT). Consequently, the PLT will enter into force in the USA from 18th December 2013. The PLT harmonizes formal patent procedures between the various member countries. When it takes effect in the USA the more significant changes it will make to USA 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.
3. Trade Marks
New Zealand
Partial Renewal Guidelines
IPONZ has updated the trade mark renewal and restoration practice guidelines to explain how multi-class trade mark registrations can be partially renewed. This can be done either by altering the registration by deleting classes of goods or services, or by dividing the registration. In either case the request to alter or divide can take up to 15 working days to be processed, so should be made in advance of the renewal date.
Alteration is best when the owner knows they want to delete a particular class or classes from the registration. Once the struck-out classes have been cancelled, the remaining classes can be renewed.
If the trade mark owner is uncertain whether to renew some of the classes, then those classes can be divided out from the classes of interest. Once the application to divide has been processed the classes of interest can be renewed at that point. The decision whether or not to renew the divided out classes can then be made during the following year when the divided registration covering those classes will be expired but restorable.
United States of America
Restrictions on Assignment of Intent-To-Use Applications
A recent USPTO Trademark Trial and Appeal Board (TTAB) decision highlights the different status of trade mark applications in the United States of America compared with New Zealand, Australia and European countries. For intent-to-use trade mark applications filed by US applicant’s the application will not be registered until proof of use has been filed. This policy was introduced to deter warehousing or trafficking in trade marks. An adjunct to this policy is that intent-to-use trade mark applications cannot be assigned until proof of use has been filed, although there are exceptions for assignments to successors to the applicant’s business or part thereof.
In Central Garden & Pet Company v Doskocil Manufacturing Company Inc failure to adhere to the non-assignment provision cost Central Garden its trade mark registration. Central Garden obtained assignment of ZILLA trade mark applications from a subsidiary. However, the assignment was not pat of a larger transaction between the companies and Central Garden was not the successor of the subsidiary. Instead, all that was assigned was the mark and the goodwill associated with the mark. Consequently, when Central Garden sued Doskocil for using the marks PETZILLA and DOGZILLA, Doskocil counterclaimed that the ZILLA registrations were invalid for wrongful assignment of intent-to-use applications.
The TTAB was not swayed by the contention that Central Garden in effect owned the marks from the beginning given that they were applied for by a subsidiary. Central Garden chose its business structures and it has to live with the restrictions that apply to each of its corporate vehicles. “The existence of a corporation cannot be turned on or off at will to suit the occasion.”
Neither was the TTAB swayed by Central Garden’s argument that it should not be subject to the provision since its conduct did not constitute trafficking or other bad faith measure. Here the TTAB held that the words of the statute were clear and Central Garden’s conduct fell within it.