Today’s post is by Angeline Behan (firstname.lastname@example.org) who, I’m very pleased to announce, has recently joined us here at Michael Buck IP and who is a specialist trade mark practitioner. Angie recently helped a client deal with a person who was systematically copying the client’s product.
Imagine the shock you’d experience if you discovered that every aspect of you product’s packaging – the artwork, the product name, your name, the bar code and the place of manufacture – was being copied without your knowledge.
Imagine the distress you’d further experience when you discover that many of your existing clients were purchasing the counterfeit product thinking you were the manufacturer.
After you’d recovered from the initial shock, you’d want the manufacture and sale of the counterfeit product – a product which was cheaper and of poorer quality than yours – to stop. But how?
The Research Affiliates decision that was handed down last November (2014) by the court of Appeal of the Federal Court has been much on my mind lately. In the last few weeks I’ve attended two seminars where speakers made mention of the case. In the first seminar the speaker continually mixed “manner of manufacture” and “inventive step” concepts, contrary to the judgment in RA and (also contrary to Justice Gummow’s teachings in Doric) and even more fundamentally, contrary to the provisions of the Patents Act!
In the second seminar the speaker advised us that the Australian court had approved the methodology set out in the US Supreme court for determining patent eligible / non-eligible claims, which I don’t think is correct either. Neither speaker pointed out that toward the end of the Research Affiliates decision there is a very helpful list of “does” and “don’ts” when drafting IT related patent specifications. Continue reading
WIPO PCT Patent Publication Pamphlet
So you’ve just received an international search report on your PCT application and the searching authority has stated that all the claims are lacking in novelty. Well, all’s not lost, there are opportunities for making amendments to an international patent application. It’s possible to make an amendment, to the claims only, under Article 19 of the Patent Cooperation Treaty prior to the publication of the international patent application. It’s also possible to lodge amendments to the claims, description and drawings with a Demand for International Preliminary Examination. In either case your amendments must be supported by material in the international patent application as originally filed.
It’s almost the deadline
Don’t miss the deadline, darling
When all your bad dreams will come true
Don’t miss the deadline
It’s almost the deadline, darling
I wouldn’t want it to happen to you
from the song Deadline – By Blue Oyster Cult
Unlike say Canada and China, there are no particular provisions for late national phase entry into Australia. However, the general extension of time provision (under Section 223 of the Australian Patents Act), is applicable in some circumstances. (This post is about late national phase entry but the situation is pretty much the same for the late filing of a Convention application into Australia.)
Extensions of time of twelve months (or even longer) have been granted in the past for late national phase entry into Australia . So it is possible but it depends on the reasons why the applicant missed the initial 31 month deadline and, when they subsequently realised that they had missed it, what steps they then took.
I’ve recently had to request the recordal of the change of applicant details on a PCT application. It was a straightforward situation. I had a signed Deed of Assignment from the current applicant company to the new applicant company. The only complication was that the national phase entry deadline was less than a month away.
The first option was to submit a letter to IP Australia, which is the receiving office for this international patent application, requesting that they ask WIPO to record the change. Because I wanted to be sure that the details of the new applicant were recorded on the WIPO database (Patentscope) before national phase entry I was concerned that lodging the request through IP Australia might add to the time taken for WIPO to receive and process the request. The second option was to file directly with WIPO. It is possible to do that and that’s what I ended up doing.
You can only get a valid patent if your invention is truly “novel”, i.e. new. Apart from being novel the invention must also be inventive, for a standard patent or at least innovative, for an innovation patent.
Without getting too far off track I’ll just point out that at present ACIP (i.e. the Advisory Council for Intellectual Property) is investigating whether or not the innovation patent system is working properly. Depending on the outcome of their investigations It could be that the innovation patent system will be either abolished or altered so that the test for “innovative” step is changed to the same test for “inventive step” that applies to standard patents.
Although there are a few exceptions, the US Patent and Trademark Office (USPTO) generally requires that a trade mark applicant provides evidence that the mark has actually been used in the USA before the certificate of registration can actually issue. Another country that has a similar requirement is Canada. In addition to providing evidence of use before registration, some countries also require that evidence of use be provided at some stage after registration, usually before the registration can be renewed.
You’ll be interested to learn that in Australia there’s no requirement that an applicant must show evidence of actual use, either before registration or renewal of an Australian trade mark.
Although there’s no requirement to show evidence of use there is a mechanism for third parties to apply for removal of a trade mark registration if they believe that the owner of the trade mark, or its authorized user, hasn’t been using the trade mark. The baseline requirements for a non-use removal application are that the registration in question must have been in force for at least five years and that it hasn’t been used as a trademark in the preceding three years.
About a month ago I had just got home and was in the kitchen talking to Megan when my mobile phone rang. It was an inventor (I’ll call him “Jack”) calling from Los Angeles in California. Jack wanted to extend his US patent application coverage to Australia.
He said, “Hi Michael, I’ve got a patent application filed with the USPTO and I want to lodge in Australia. What’s the deal for doing that?”.
It was a great surprise to hear his US accent coming over the line. Usually when I do work for clients in the USA, or other countries, it comes in as an email from their attorney. Not as a direct phone call from the applicant / inventor. My mobile phone number is on the contact page of my website so people can do exactly what Jack had done and simply give me a call.
I’m based in Brisbane but I’d say that about a third of the patent specifications I write are for inventors that are located in other parts of Australia. I’ve prepared patent applications for people needing patent attorney help in lots of other towns e.g. Lismore, Melbourne, Townsville, Bundaberg, Caloundra, Cairns, to name a few.
My process for helping inventors that can’t meet with me face to face has gradually improved over the years. If you call me about your invention then there are three main issues that I like to get sorted out initially. Firstly, I want to make sure that your invention is more than a concept. For example, do you know how to actually make the invention or are you still at the stage where you know what you want to the invention to do but you don’t know how it will do it? I’ll ask you if you’ve got any drawings that illustrate your invention and show how it works. If you’ve got a mechanical invention like a new builder’s tool or a component for an engine or a machine for working in a mining environment then the drawings will show a physical object and especially the new parts.
I’ve recently been organizing the lodgment of a patent application in Chile.
The duly legalized Chilean Power of Attorney
These days many countries either don’t require a Power of Attorney for a patent filing or if they do then a faxed, or scanned and emailed, copy of the power signed by the applicant will do.
In case you’re wondering, a Power of Attorney is a legal requirement of the country in question. It’s to formally empower the local patent attorney to represent the applicant before the particular country’s Patent Office.
You’ll appreciate the reasoning behind this. It’s simply that without a Power being on file the Patent Office can’t be sure that the attorney has actually been authorised by the applicant. A few months previously I’d been involved with legalization of a Power of Attorney for the United Arab Emirates. That involved a notary public, the Australian Department of Foreign Affairs and Trade (DFAT) and the UAE embassy in Canberra, to which a fee of about $1200 had to be paid.