Are you aggrieved, or just a little bothered?
May 10, 2010. Under Australian trademark law, a party must be “aggrieved” in orderto challenge the validity of a trademark. The High Court of Australia recently handed down a unanimous decision in Health World Limited v Shin-Sun Australia Pty Ltd [2010] HCA 13, allowing an appeal from a Full Federal Court decision where Health World was found to have no standing to seek revocation of Shin-Sun’s trade mark. The Court in that instance applied the test of whether “there is a reasonable possibility of the applicant being appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified.”
The High Court took a more liberal interpretation of the term “aggrieved”, applying the broader test in Daiquiri Rum [1969] RPC 600 which requires only that the parties “were rivals in relation to the goods to which the mark applied.” Since this was clearly the case, the Justices allowed the appeal and remitted the case back to the Full Federal Court. Given that Health World’s standing has been established, it is expected that the Full Federal Court will order the removal of Shin-Sun’s trade mark from the Register. Back
Apple loses trademark case against a little guy.
12 May, 2010. Wholesale central is a small business in Sydney that sells accessories for Apple iPod and iPhone products. The company applied for the mark “dopi” (iPod ®, spelled backwards) but was opposed by Apple before the Australian Trademarks Office on the basis of deceptive similarity to a number of its own marks. Apple relied on the argument that the lower case “i” drew the eye and was therefore a dominant feature of the dopi mark. The “i” is rendered in a bright green and italicized type face, compared with the remaining letters which are black and non-italicized. In addition, a graphical representation of three sound waves is seen to emanate from the “i”. Apple’s representative argued that the prevalence of a lower case “i” in many Apple trademarks would lead a consumer to assume a connection between dopi products and Apple.
The Delegate was not persuaded that the lower case “i” is distinctive of Apple products, noting that the names of many other products (and indeed products of a similar nature to Apple’s) include that letter. Furthermore, the Delegate noted the lack of evidence of actual confusion among a significant number of consumers. Accordingly, the opposition was dismissed and the dopi mark advanced to registration. Back
CSIRO sues US mobile carriers for infringement of WiFi patent.
May 20, 2010. As many readers will know, Australia's government research agency has reaped significant royalties from chip manufacturers including Intel, Dell and Toshiba for their patented industry-standard WiFi technology. CSIRO is now changing tack and filing suits against telecommunication carriers AT&T, Verizon and T-Mobile in a bold move to extract further value from their WiFi patent portfolio.
These fresh actions have been filed in the East Texas District Court, probably due to the reputed speed by which patent litigation cases are run in this court (such courts are often referred to as a "rocket docket"). Judge Ward Of the East Texas court is known to be very knowledgeable in patent law, and his ability to quell any time wasting and unnecessary argumentation from counsel legendary. For plaintiffs without deep pockets seeking damages from industry giants, this approach to litigation is very appealing. Very large corporations often seek to protract proceedings hoping that the smaller party will simply run out of funds. While CSIRO is not the smallest fish in the sea, as a government agency it would not have access to a massive litigation fund. Back
Recent News Items.
Changes to Divisional Patent Practice in Australia.
October 14, 2010. Under Australian law, a patent application must be accepted within twenty-one months of the issuance of the first Examination Report. Faced with an impending deadline, many applicants choose to file a divisional application and allow the parent application to lapse. This strategy can save significant late response fees, and also gives applicants more time to address any outstanding objections. The Australian Patent Office has decided to minimize the advantages gained by this strategy in an effort to avoid any undue protraction of prosecution.
The Commissioner of Patents will now issue a Direction to Request Examination shortly after the filing of a divisional application. This compells the applicant to request examination within several months of the filing of a divisional. Furthermore, Examiners will now give priority to issuing reports on divisional applications to force applicants to deal with any objections more rapidly.
In issuing a Report on a divisional, an Examiner may set a period of two months in which the applicant must file amendments to overcome all objections. If effective amendments are not timely filed, the case will be set for a hearing.
The Patent Office will not apply these new rules where it is deemed that the filing of any divisional application is for genuine reasons (for example, where a divisional is filed to pursue a second invention). Back
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US Court invalidates Myriad Genetics patent claims covering isolated breast cancer genes. May 2, 2010. This case concerned in part the patentability of genes useful in the identification of individuals susceptible to breast cancer. The defective genes of interest (BRCA 1 and BRACA 2) are claimed in an “isolated” form in Myriad’s patent. Patent attorneys have routinely claimed genes in their isolated form to confer novelty over the naturally occurring form of the gene present in the cocktail of chemicals inside a cell. In this case, however, the Southern New York District Court held that even though the claimed genes were isolated, they are nonetheless a “product of nature”, and therefore contrary to section 101 of the US patent code.
Judge Sweet considered how different an isolated gene would need to be from a naturally occurring gene in order to clear the “product of nature” bar. The judge concluded that “purification of a product of nature, without more, cannot transform it into patentable subject matter. Rather, the purified product must possess ‘markedly different characteristics’ in order to satisfy the requirements [of patentability]”. It was reasoned that because the function DNA is to encode information, and that function is not altered in the process of isolating the DNA from a natural source, then the isolated form is not markedly different. This outcome relies on the unprecedented assertion that a DNA molecule can be so narrowly characterised as a vehicle for the storage of information.
Myriad’s attorneys probably expected that they could rely on other claims directed to methods for assaying for the presence of the defective BRCA 1 and BRCA 2 genes. Not so. These claims were also held invalid because they did not satisfy the “machine or transformation” test proposed in the recent Bilski case. That’s bad luck, to say the least.
Is this the end of gene patenting in the United States? Possibly not. Myriad will likely appeal to the US Federal Circuit, whose decision will be of significantly greater importance since it will be binding on all Federal Courts (with the exception of the Supreme Court). In the meantime, the US Patent Office does not appear to be considering amendment to its own guidelines for assessing the patentability of genes. In this writer’s opinion, this fight is far from over and it would be a brave company that would ignore any possibility of litigation based on this decision of this lower Court. Back
