Wayback Machine Evidence Able to Blow Through Hearsay Admissibility Rule
In 2019 FCA 1552 Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2) the Judge found cause to waive the rules of evidence - in particular the rule against the admission of hearsay evidence – and thereby allowed material obtained with the Wayback machine to be admitted – albeit for restricted purposes.
An organisation known as the Internet Archive maintains a website known as the Wayback machine that allows users to access a digital library of web-pages that were captured at different dates. While material obtained via the Wayback machine is routinely used by IP Australia for examination purposes and in Delegates decisions, it is usually ruled inadmissible in Federal Court proceedings on account of the stricter evidential rules which prevent the admission of hearsay evidence. They are considered to be hearsay evidence, since they merely amount to a representation by the Internet Archive to be a copy of a given website at a given point in time.
Dyno sought to rely upon extracts of the website www.i-konsystem.com obtained via the Wayback machine, which shows technical and promotional material about i-kon detonators, which are promoted by Orica, in order to establish aspects of the common general knowledge for obviousness purposes.
Dyno first sought to rely on the specific exception to the hearsay rule provided by section 69 of the Evidence Act, which provides an exception for business records. However, the Judge upheld Orica’s objection that the website extracts did not qualify as business records. In line with precedent the section 69 exception was only found to extend to internal records kept in the course of or for the purpose of business, since such records can be assumed to be reliable and accurate. It does not extend to products or promotions. Hence, not only does the i-kon website not count as a business record of Orica for section 69 purposes, neither does the capture of that website by the Wayback machine count as a business record of the Internet Archive.
However, Dyno also sought to rely upon section 190, which provides a waiver to some rules of evidence, including the hearsay rule, where either the matter to which the evidence relates is not genuinely in dispute, or otherwise applying those rules of evidence would cause or involve unnecessary expense or delay. Given the way in which materials are collected for the Wayback machine the Judge considered the contect available therefrom was likely to be reliable. The Judge found that the fact that Orica did not dispute the accuracy of the Wayback machine evidence despite being unable to locate the same material in its own records pointed to it not genuinely being in dispute. The judge further found the Wayback machine material to be relevant and probative evidence which should be before the Court.
Consequently the Judge admitted the Wayback machine material as evidence subject to the proviso that it is only used as evidence to prove the availability of the i-kon website (and of the contents of the particular pages) on particular dates, but does not extend to prove the truth of any fact referred to in the particular pages. The date information does not count as hearsay as that is generated by the Wayback machine.
EPO President Opines on Patentability of Virtual Simulations
The Boards of Appeal decision T 489-14 Pedestrian simulation – Connor became currently pending referral G 1/19 to the Enlarged Board of Appeal after the following questions thereto on the patentability of computer implemented simulations were admitted:
- In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?
- If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
- What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?
The application resulting in the referred questions relates to a computer-implemented method for simulating movement of a pedestrian crowd through a modelled environment or building structure, the main purpose of the simulation being to give feedback on the efficiency of pedestrian flows for such environments or structures.
Under Article 9 of the Rules of Procedure of the Enlarged Board of Appeal the President of the EPO may submit comments on a pending referral either at the request of the Enlarged Board or by making a reasoned request to the Enlarged Board to do so. The President of the EPO has submitted comments to the Enlarged Board regarding both the general context and the referred questions.
The President noted that at a general level and before considering inventive step computer implemented inventions (CII) satisfy the technical character requirement for patentable subject matter on account of involving a computer. However, the referring Board of Appeal considered that when inventive step is being considered if the technical effect involved only relates to the virtual environment with no direct link to the physical world, then it just amounts to a claim to a computer-implemented simulation as such, which would fall under the Article 52(2)(c) exclusion.
Under the Board of Appeal’s case-law the problem-solution approach to the assessment of inventive step for inventions containing both technical and non-technical features requires taking account of all features which contribute to the technical character. Non-technical features are only taken into account to the extent that the solving of a technical problem requires their interaction with the technical subject matter of the claim. Hence, non-technical method steps carried out by a computer that reflect technical considerations aimed at ensuring that the method serves a technical purpose can be taken into account in the assessment of inventive step, and are deemed to be a “further technical consideration”.
After reviewing a similar decision the President considered that the technical effect achieved as a result of claimed method steps goes beyond computer-implementation of the simulation if the claimed simulation reflects technical principles underlying the simulated process. Further, the technical effect can reside in providing technical information, where it is not necessary that the technical information provided by the simulation is derived from real-world measurements. Similarly, image processing of computer-generated images not representing any real-world physical object has been found to be technical subject matter. The president further notes that the concept of technicality is not defined by the legislator in order to allow for patents to be granted for inventions in all fields of technology irrespective of the direction and scope of further technological developments. Hence the President considered that the first question should be answered in the affirmative. The President then went on to state in regards to the second condition that it is a sufficient condition if the simulation method reflects, at least in part, technical principles underlying the simulated system or process. Given these answers the President considered that the third question did not need to be answered as the simulation would solve a technical problem beyond the simulation’s implementation on a computer, irrespective of whether it is claimed as part of a design process. Amicus Curiae briefs relating to G 3/19 can be found here.
Issue of Patentability of Plants in Europe Hotting Up
On 19th September 2019 the European Parliament passed a non-legislative resolution stating that fruit, vegetables or animals obtained from conventional breeding processes, such as crossing and selection, must not become patentable.
The resolution was made in the lead-up to the closing of submissions in the Enlarged Board of Appeal case G 3/19 – Pepper, in which the President of the EPO referred questions on points of law to the Enlarged Board. That referral was made within the context of legislative and judicial divergence between the European Commission and the EPO regarding the patentability of plants. In March 2015 the Enlarged Board gave decisions G 2/12 – Tomato II and G 2/13 – Broccoli II, in which it held that the exclusion for essentially biological processes for the production of plants should be interpreted narrowly so as not to exclude patent protection for products obtained by such processes. In November 2016 the European Commission issued a notice concerning 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. However, 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 above 2015 Enlarged Board of Appeal decisions and more recently the Boards of Appeal T 1063/18 – Pepper decision.
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. In light of the European Commission notice in December 2016 the President of the EPO 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.
Following the Boards of Appeal T 1063/18 – Pepper decision, and in light of EPC member states aligning their law with the European Commission’s interpretation, the President of the EPO referred questions on plant patentability to the Enlarged Board given that the context has changed since the G 2/12 and G 2/13 decisions. The recent European Parliament resolution further confirms the position of the European legislature, but whether this changes the Enlarged Board’s approach will be interesting to see, especially given that the EPC is considered to be a piece of international law rather than European law. Amicus Curiae briefs relating to G 3/19 can be found here.
2. Trade Marks
ECJ Considers Distinctiveness Dependent Upon Particulars of Use
In C 541-18 AS v Deutsches Patent und Markenamt the German Federal Court of Justice requested a preliminary ruling from the European Court of Justice (ECJ) on how the distinctive character of a mark is to be assessed when its distinctiveness depends upon how it is used.
AS appealed from the rejection of his application for the mark #darferdas? in relation to clothing, in particular tee-shirts; footwear; headgear was rejected both by the German Patent and Trade Mark Office and the Federal Patents Court. The rejections were based on lack of distinctiveness and in particular that the hashtag indicated solely that the public is invited to discuss the question ‘Darf er das?’ (‘Can he do that?’), which when placed on the front of tee-shirts the public would understand as a simple interrogative phrase.
In the appeal to the German Federal Court of Justice the Court noted that the sign could be distinctive if placed on the inside label and that its own precedent states that a sign’s distinctiveness does not require that every conceivable use of the sign has to be distinctive. Nonetheless, it referred the following question to the ECJ:
Does a sign have distinctive character when there are in practice significant and plausible possibilities for it to be used as an indication of origin in respect of goods or services, even if this is not the most likely form of use of the sign?
The ECJ noted that the distinctive character of a sign is firstly determined in relation to the relevant goods or services and then in relation to a reasonably well informed, observant and circumspect average consumer of those goods or services, taking into account all the relevant facts and circumstances. However, it was also noted that applicants are not required to specify the precise use they will make of a mark, and that they are only required to make actual use of the mark within 5-years of the registration date. Consequently, examiners may need to determine the distinctiveness of a sign before knowing how it will specifically be used. In such circumstances examiners need to make their determination based on the customs of those in the relevant economic sector, while disregarding uses that are conceivable but unlikely. However, in the case at hand it was noted that it is customary for a sign to be placed on the exterior of garments as well as on the inside label, and so it was for the referring Court to determine whether such customary uses allowed the sign to have distinctive character taking into account all the relevant facts and circumstances.
Malaysia Joining Madrid Protocol and Getting New Trade Marks Act
Malaysia’s new Trade Marks Act completed its Parliamentary readings in July 2019, and will enter into force after the implementing regulations have been finalised.
While no specific implementation date has been notified, it appears that it will be implemented before the end of 2019, since Malaysia deposited its instrument of accession to the Madrid Protocol on the 27th September 2019, with the consequence that the Madrid Protocol will be in effect for Malaysia from 27th December 2019. Malaysia will apply an 18-month refusal period, or longer in the event of opposition, they have opted to receive an individual fee and licences recorded in the International register have no effect in Malaysia meaning that licences have to be recorded directly with the Malaysian IPO.
In addition to being Madrid Protocol compliant the new law will make the following changes:
- Non-traditional marks will in principle be registrable provided they are signs that are capable of being represented graphically. In particular, this will include shape, colour, sound, scent, hologram and positioning marks.
- Multi-class applications will be possible, along with the option to divide or merge marks.
- While priority will continue to be recognised, renewals will become payable on the 10th anniversary of the filing date instead of the priority date.
- Collective marks will be protectable, thereby allowing associations to protect their marks.
- Defensive marks will no longer be registrable.
- Marks will also no longer be associated.
- Following a provisional refusal there will only be one further chance to make submissions to the Registrar to put the application in order for acceptance. If the grounds of refusal are subsequently maintained, then the only option to maintain the application is by way of appeal to the High Court.
- The period after which a registration can be presumed to be valid and conclusive (subject to limited exceptions) reduces from 7 to 5-years after the registration date.
- The use of similar marks on similar goods will be capable of infringing a registered trade mark, and secondary users will be found to infringe if they knew or had reason to believe that they are making unauthorised use. Additional damages will be available for flagrant type infringement.
- Unjustified threats declarations will be available to aggrieved persons, who will be able to seek damages for losses and injunct against any continuation of such threats.
- Revocation on the grounds of non-use or wrongful grant will be available via the Registrar in addition to via the Court.
- Registered trade marks will be able to be made the subject of security interests. As with assignments, such security interests need to be recorded on the register in order to be enforceable.
- The registered user provisions are replaced by the simpler requirement that licences need to be in writing and signed by the licensor. Exclusive licences and sub-licensing become expressly recognized, with exclusive licences having enhanced rights compared to non-exclusive licensees.