News Bulletin
Patent Reform in Australia
On 20 March 2012 the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 was passed by the House of Representatives and is expected to soon receive the Governor General's Assent to become law. Most of the changes in the Bill will commence 12 months from Assent. Importantly, however, the changes to introduce a research exemption will commence the day after Assent.
A brief outline of the main changes are listed below.
Inventive Step (obviousness) – The current law limits to the test of obviousness to what is known in Australia. The limitation to Australia is removed by the amendments. This means that from the date of commencement the obviousness of a claimed invention will be tested against the common general knowledge of a person skilled in the relevant art anywhere in the world.
Inventive Step (obviousness) – It is permissible under the current law to combine two or more documents when raising an inventive step objection but only if a skilled person would “be reasonably expected to have ascertained, understood, regarded as relevant” the documents. Under the amended law the requirement is only that the skilled person would “be reasonably expected to have combined” the documents. This is a significantly lower test to pass and it can be expected that more objections based on two or more documents will be raised during examination and in challenges to validity.
Utility – A new section is added to the Patents Act to define the meaning of useful. It is currently a requirement that a patented invention must be useful but this is not defined and Examiners do not examine for the requirement. The new section defines what is meant by useful and gives Examiners a basis for raising objection during examination if they believe a claimed invention is not useful. The amendments provide that, “an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification” and “The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art”.
Disclosure – The Act amends the level of disclosure required in a patent specification. The new language is that a” specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art”. This applies to provisional and complete specifications. In a practical sense it is not clear that this change will have any impact on examination.
Examination Standard – The standard for examination has changed significantly by adding the words, “on the balance of probabilities”. At present the requirement is that the Commissioner of Patents is “satisfied” that there are no objections to the grant of a patent. This has been interpreted to mean that the Commissioner (through an Examiner) is not convinced that a patent should not be granted. Essentially this gives the benefit of the doubt to the Applicant. The addition of “on the balance of probabilities” gives Examiners more power to reject an application if they are not convinced it should be allowed. The same standard will apply during re-examination and opposition.
Regulatory Approval Exemption – After the amendments it will not be an infringement of a patent to do an act that would infringe if the act is solely for the purposes of regulatory approval. However, this does not apply to pharmaceutical patents.
Experimental Use Exemption - After the amendments it will not be an infringement of a patent to do an act that would infringe if the act is for experimental purposes. Experimental purposes are defined as: determining the properties of the invention; determining the scope of a claim relating to the invention; improving or modifying the invention; determining the validity of the patent or of a claim relating to the invention; determining whether the patent for the invention would be, or has been, infringed by the doing of an act.
Other Amendments – Other amendments are made in relation to the filing of divisional applications, power to summon witnesses, and incorporation of Patent Attorney practices. While interesting they are not as significant as the changes outlined above. Whether these changes make a significant impact at a practical level, only time will tell.
For more information, please contact mhorsburgh@fak.com.au or T +61 7 3229 2655.
Fisher Adams Kelly Client Showered With Success On World Stage
The future looks bright for Australian innovators, if the success of Fisher Adams Kelly client, Nick Christy, is anything to go by. Nick's Water Recycling Shower recently took out top gong in the Dutch Postcode Lottery Green Challenge, netting his company a 500,000 Euro first prize and congratulatory messages from Bill Clinton, Richard Branson and Brad Pitt.
Considering Mr Christy's innovation saves 70% less water and 70% less energy than a regular shower, it's no surprise it has now been recognised on the world stage, a win that casts a greater spotlight on Australia as a hotbed of innovation and highlighted the importance of protecting a business' intellectual property.
The Dutch Postcode Lottery Green Challenge win follows a year of home runs for several businesses Fisher Adams Kelly advises on intellectual property protection, proving that Australian innovation is far from flagging.
Just several weeks before the Recycling Shower received international praise, one of the Firm's other clients, Edward Evans, was announced as ‘Inventor of The Year’ on ABC’s The New Inventors program for his innovation, The Swing Gate. The gate is designed to reduce injuries (from serious to fatal) resulting from livestock charging in confined spaces, such as a cattle truck or a cattle yard.
“It has been a great year for our clients receiving recognition of their achievements and Fisher Adams Kelly has been proud to assist with the early identification and protection of their intellectual property,” Managing Partner, Dr Horsburgh explains.
“I believe the more Australia is recognised for leading-edge, inventive thinking, the more other organisations will start to look at protecting their own IP. Since intellectual property is poised to be the currency of the future, this will ultimately put Australia on a much stronger footing globally, moving forward,” says Dr Horsburgh.
Both of the Firm's awarded clients are moving to roll out production of their respective products further, with the Water Recycling Shower using its prize money to hasten the speed with which showers are brought to market, while The Swing Gate is already being distributed and retrofitted to cattle yards across the country.
McDonald's To Lose Heart Foundation Tick
By Danielle Jepson
Fast food giant McDonald's has been using the Heart Foundation Tick on a range of its food products for the past 5 years, paying up to $300,000 per year for the privilege. However yesterday, the chain was informed that they would no longer be able to do so.
Foundation Chief Executive Lyn Roberts said yesterday there was no criticism of McDonald's or other chains, but that the healthy food program would change direction to concentrate on ingredients delivered to restaurants and food outlets. However, the move comes after years of criticism from nutrition industry bodies for allowing the Heart Foundation Tick to be used endorsing fast food chains that sell primarily high fat, high salt and high calorie food products.
A number of smaller takeaway chains, including the gourmet pizza group Crust, will also lose the right to display the Tick Device, but the symbol will remain on supermarket foods. Contracts with the takeaway groups will be honoured, with the Tick phased out on fast foods from the first half of next year.
The Australian Heart Foundation Tick (“Tick Device”) is a self-funded public health program which aims to improve the nutrition of the foods Australians eat most often and deliver better nutritional health outcomes for all Australians. The National Heart Foundation have held a range of certification trade marks for the Tick Device since the late 80s.
Certification trade marks "certify" that the goods or services in respect of which they are used are of a particular standard with regard to quality, accuracy or other characteristics. The Tick Device has been used on food products that meet strict nutritional criteria and represent choices that are lower in certain nutrients (e.g. saturated fat, sodium) and/or higher in others (e.g. fibre) compared with other foods in the same food category.
Owners of certification trade marks must ensure that licensees are not only using the trade marks in accordance with the approved criteria, but also, be mindful of the image the licensee is projecting to the marketplace. The actions and image portrayed by the licensees in the marketplace will affect the public view of the certification trade mark.
For more information about certification trade mark rights, please contact the Fisher Adams Kelly Trade Marks Team on (07) 3229 2655.