WIPO nominates Australian as next Director General

Dr Francis Gurry has been nominated by WIPO's Coordination Committee to be the WIPO's next Director General. Dr Gurry is an Australian national, who studied law and commenced practice here before joining WIPO in 1985. The General Assembly needs to formally appoint him at it's next meeting in September.

The WIPO announcement is here.

IPONZ streamlines patent applications acceptance process

From 1 June 2008, IPONZ will be streamlining the patent applications acceptance process.

The current acceptance process includes an examiner issuing an examination report indicating that the application is in order for acceptance and then a Notice of Acceptance is issued by IPONZ some time thereafter. In the new process, the examiner will issue the Notice of Acceptance when an application is considered by the examiner to be in order for acceptance. There will no longer be a separate examination report and Notice of Acceptance issued by IPONZ.

The new process will be applied to all patent applications where a response to an examination report places the application in order for acceptance and where a response is received by IPONZ on or after 1 June 2008.

Where an applicant has requested that acceptance of an application be delayed under s20(1), then acceptance will be delayed as requested.

Where an application is in order for acceptance at first examination, then an examination report will be issued providing the applicant with one month to file voluntary amendments or attend to filing of any divisional applications before the application is accepted.

Restoration of priority claims for PCT applications

The Patent Cooperation Treaty (PCT) Rules have been amended to allow Member States acting as a Receiving Office or as a Designated Office to provide restoration of a priority claim up to two months beyond the 12 month Paris Convention deadline for international patent applications filed on or after 1 April 2007. Under the amended rules two grounds are available for filing of requests for restoration of priority i.e. that the international application was not filed within the 12 month convention period either in spite of “due care” required by the circumstances having been taken, or that the failure to file in time was “unintentional”.

IPONZ has advised that it will only allow restorations of priority on the condition of “due care” having been exercised. That is IPONZ will not allow the priority to be restored under the ground of “unintentional” failure to file. In applying the “due care” requirement, the provisions of section 93A of the Patents Act 1953 will apply.

New Practice – contrary to morality objections

IPONZ has reviewed its practice with regard to raising objections under s17(1) of the Patents Act 1953.

Following this review, IPONZ will continue to raise objections under s17(1) where it appears that the use of the invention would be contrary to morality for New Zealand society as a whole or for a significant section of the community, including Maori.

As a general guide, claims to the following subject matter are likely to attract an objection under s17(1):
human beings;
processes which give rise to human beings and biological processes for their production;
methods of cloning human beings;
totipotent human stem cells;
human embryos and processes requiring their use;
placental and umbilical cord tissues and processes requiring the use of placental and umbilical cord tissues; and
transformed host cells within a human and other cells and tissues within a human.

New patents search system up and running

A new search system for Australian patents, called AusPat, is now in production as the Australian Patent Office's official source of online data.

The prior Patsearch and PATADMIN search systems should no longer be required.

Click here to see the story in full on IP Australia's website.

IPONZ - Current turnaround times for trade mark examination

Approximate turnaround times for trade mark examination at IPONZ are as follows:

New applications - examined within 5 business days

Consideration of Applicant's response (formalities issues) - 1 month

Consideration of Applicant's response (substantive issues) - 4-6 months

Consideration of Applicant's response (with evidence of use) - 12 months

Issuing final rejection notice - 12 months

Health World v Shin-Sun - deceptive similarity case review

Since 1991 Health World Limited (“Health World”), had manufactured and sold a medicine product which it called Inner Health Powder. In 2000 it commenced sale of a similar product called INNER HEALTH PLUS and in September 2001 applied to register that name as a trade mark. However, in May 2001 Shin-Sun Australian Pty Ltd (“Shin-Sun”) applied to register the trade mark “HealthPlus” and subsequently obtained registration of that mark.

Crucially, as the proceedings were commenced prior to the commencement of the Trade Marks Amendment Act 2006 (Cth), Jacobson J found that the provisions of the Trade Marks Act 1995 (Cth) applied as they stood prior to the 2006 amendments. This meant that Health World were precluded from relying on the ‘contrary to law’ ground under s 42, that there was an additional requirement under s 60 that the marks be deceptively similar, and that there was an additional requirement under s 92 that the applicant for non-use be “a person aggrieved”.

Jacobson J found that the two marks were not deceptively similar because they conveyed different ideas and concepts. He was of the opinion that HealthPlus conveyed an impression of overall or general health and that INNER HEALTH PLUS specifically concerned internal health. In addition, he found the marks to be visually different as the dominant part of the INNER HEALTH PLUS mark was the phrase “Inner Health”.

At the heart of the dispute was the question of the reputation of Heath World in INNER HEALTH PLUS. Shin-Sun contended that Health World’s reputation in the Inner Health Plus capsules was not separate and distinct from its reputation in Inner Health Powder, the product it had launched nine years before. Jacobson J accepted Shin-Sun’s submission, and was of the opinion that the entire thrust of Health World’s launch of the Inner Health Plus capsules was to take advantage of the reputation of the Inner Health Powder and the goodwill attaching to it. He therefore rejected Health World’s ground for removal of the HealthPlus mark under s 88(2)(a) and s 60, claims that Shin-Sun had passed off its pharmaceutical products as those of Health World, and claims that Shin-Sun’s conduct was misleading and deceptive under the Trade Practices Act 1975 (Cth).

Health World also sought revocation of the HealthPlus mark under sections 88(2)(a) and 59, as at the time Shin-Sun applied for registration of their mark, they did not intend to use or authorise the use of the HealthPlus mark. Health World also sought removal of the HealthPlus mark on the ground that Shin-Sun had failed to use the mark in Australia during the three year period referred to in s 92(4)(a).

These grounds were raised because of the failure of Shin-Sun and the persons who conduct the business of that company to distinguish between the separate identities of Shin-Sun and an associated company, Nature’s Hive Pty Ltd (“Nature’s Hive”). In particular, the HealthPlus products identified Nature’s Hive rather than the trade mark owner Shin-Sun as being responsible for those products. Accordingly, Jacobson J found that Shin-Sun had failed to show an intention to use the mark and that Shin-Sun had not used the mark during the relevant three year period, but rather it was Nature’s Hive that used the mark during that period and at all other times. He also found that use of the HealthPlus mark by Nature’s Hive, although having the same directors as Shin-Sun, did not amount to authorised use because Shin-Sun did not relevantly control Nature’s Hive’s use of the mark.

Health World further contended that as the HealthPlus mark was being used to identify the goods of Nature’s Hive and not those of Shin-Sun, it was likely to deceive or cause confusion under s 88(2)(c). For the reasons above, this was accepted by Jacobson J.

It followed that if Health World had standing as a person aggrieved, the grounds under sections 59, 88(2)(c) and 92(4)(a) were made out. However, Jacobson J found that Health World was not a person aggrieved because the evidence was inconsistent with any intention of Health World to use the HEALTH PLUS trade mark, other than as part of its existing INNER HEALTH PLUS mark. As he found that the HealthPlus mark was not deceptively similar to the INNER HEALTH PLUS mark, Health World was found not to be a person aggrieved. Therefore, Health World’s applications seeking that the HealthPlus trade mark be removed from the register were dismissed.

The difficulties encountered by Shin-Sun illustrate the importance of ensuring that a trade mark is registered and remains in the name of the party that will use the mark. While Health World were able to show that Shin-Sun did not use the HealthPlus mark within the three year period specified in s 92(4)(a), the HealthPlus mark was not removed because Health World failed to show that they were a person aggrieved. It is important to note that the 2006 amendments have removed the requirement in s 92 that the applicant for removal of a mark be a person aggrieved.

Click here to see the judgement.

Australian innovators lack adequate IP strategies

The Age newspaper has reported an IP expert as saying Australian innovators are failing to capitalise fully on their research by not having a proper intellectual property strategy.

Click here to read the article online.

Change of Practice - Madrid applications

It is now possible to amend the statement of goods/services for an IR through IP Australia, rather than just deleting items.

Previously, IP Australia would only delete goods (e.g. “cars and trucks” to “cars”) but would not allow an amendment (eg “motor vehicles” to “motor vehicles excluding trucks” or to “cars”). An amendment formerly had to be requested through the IB, which was very inconvenient.

This practice is now changing. Note, however, that amendment is only possible if the goods/services in question have caused a provisional refusal.

Click here to go to the IP Australia release.

Dismissal of patent opposition

The case of Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11 (11 April 2008) provides a useful summary of the principles applied by the Commissioner of Patents in determining a request for dismissal of a patent opposition.

Following is an excerpt from the Abstract of the decision:

Some general principles that flow through to the dismissal of patent oppositions from recent changes to Section 31A of the Federal Court Rules and subsequent Federal Court decisions are discussed. Notably, an opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed. An opposition may be dismissed if it is considered to have no reasonable prospects of success.

The claims as accepted defined a new polymorph of perindopril tert-butylamine salt which was characterised by X-ray crystallography. Uses of the compound in pharmaceutical formulations and methods were also defined. The proposed amendments sought to include claims to the compound and methods with the further characteristic that the polymorph was in the form of “individual needles”. The opponent opposed the amendments under section 104 and addressed all grounds of opposition available under section 102. The applicant requested dismissal of the opposition on the basis that it was manifestly groundless and could not possibly succeed.

A consideration of the case set out by the opponent shows that it has no reasonable prospects of success. The opponent has not established that there is a real issue to be determined, or the issues identified are in respect to matters that do not arise as a result of the amendments and would not be sustainable in an opposition under section 104. On that basis the opposition is dismissed.

Surrendering of patents under section 43 of the Patents Act

Where a patentee offers to surrender their patent under section 43, then the patentee should file a patent form 46 (regulation 107) ensuring that reasons are provided for the offer of surrender.

The offer of surrender will be acknowledged by IPONZ in a letter to the patentee. The offer will be advertised (regulation 107) in the next Journal for an opposition period of one month (regulation 108(1)). The patentee will be informed of any opposition lodged against the offer of surrender of the patent (regulation 108(2)).

The patentee will not otherwise be informed of expiry of the opposition period and the patent will consequently be marked off as surrendered by the patentee if no opposition is lodged (patent form 47) under regulation 108(1).

NZ trade mark case - Wild Geese v Wild Turkey

In the recent decision of Austin, Nichols Inc v Stichting Lodestar [2007] NZSC 41, the Supreme Court of New Zealand has clarified the weight that should be given to the decision of the Commissioner of Trade Marks by the High Court on an appeal.

Background

An application for the trade mark WILD GEESE in respect of alcoholic beverages was opposed by the registered proprietor of the trade mark WILD TURKEY. The Assistant Commissioner of Trade Marks held that the two marks were “too dissimilar” to be deceptive or confusing and allowed registration of the trade mark WILD GEESE.

High Court

This was appealed to the High Court, which allowed the appeal and refused registration of the trade mark WILD GEESE. Whilst acknowledging that “judges, of course, invariably accord a Commissioner’s decision considerable weight because of his or her position as an expert tribunal”, Gendall J held that in his opinion the applicant had not discharged the onus or burden on it to satisfy the Court that use of the trade mark WILD GEESE would not be likely to cause confusion or deception.

Court of Appeal

The Court of Appeal allowed the applicant’s further appeal and granted the application for registration. In its judgment the Court of Appeal suggested that the High Court had arrived at its decision wrongly, because it had erred in giving insufficient weight to the Assistant Commissioner’s views. Controversially, the Court of Appeal expressed the view that:

[30] …the High Court Judge ought not to have embarked on a reconsideration of the issue without considering, and giving weight to, the Assistant Commissioner’s conclusion. He was, of course, entitled to reach a conclusion contrary to that reached by the Assistant Commissioner, but not to do so without giving weight to her views. If he had done that, we believe that he would have upheld the Assistant Commissioner’s decision. We are satisfied that that should have been the outcome of the High Court appeal.

The Court went on to agree with the Assistant Commissioner’s conclusion, holding that the two marks were unlikely to be confused.

Supreme Court

Leave to appeal was granted by the Supreme Court. The short point raised by the appeal was whether the High Court on an appeal under s27(6) of the Trade Marks Act 1953 must defer to the assessment of the Commissioner, if the conclusion he or she has reached is one on which reasonable minds may differ.

This case attracted a great deal of attention, notably from the International Trademark Association which sought and was granted leave to intervene, being concerned with certain passages in the Court of Appeal’s judgment and their possible implications for future trade mark appeals.

Finding

In its decision, the Supreme Court of New Zealand held that an appeal under the Trade Marks Act 1953 (and similarly the Trade Marks Act 2002) is a general appeal and the High Court is required to form its own opinion on the merits of the case.

The weight that an appellate court gives to the decision of the Commissioner is a matter of judgment; however it is an error for the High Court to defer to a tribunal or Lower Court’s assessment without forming its own opinion. Thus, the Supreme Court concluded that the approach adopted by the High Court Judge was “consistent with his appellate obligations” and that the Court of Appeal was wrong to imply that the High Court Judge had erred in his approach.

Nonetheless, the Supreme Court dismissed the appeal, being satisfied that the Court of Appeal had also considered the merits of the appeal and had come to its own decision.

Conclusion

The Supreme Court of New Zealand upheld the general principle that each court is entitled to come to its own decision on an appeal, in particular when that decision is a matter of reasoning or comparison.

This decision is in keeping with the well-established principles governing all general appeals. It should be a relief to those concerned at the prospect of a narrowed scope of appeal, which could only create additional jurisdictional hurdles for appellants.

Two retailers concurrent use of the same trade mark – “Colorado”

Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184 involved the concurrent use of the trade mark “Colorado” by different retailers, Colorado Group and its predecessor in title (together “CG”) and Strandbags and its predecessor in title (together “Strandbags”).

CG obtained trade mark registration for “Colorado” from 2001 for goods including bags, wallets, purses and backpacks. Both CG and Strandbags had used “Colorado” before 2001.

CG brought trade mark infringement proceedings against Strandbags for its sale of Colorado-brand handbags, wallets, purses and backpacks. Strandbags counterclaimed, alleging CG’s registration was not valid in relation to those goods.

The trial judge had found that CG’s registration was valid for backpacks only and Strandbags’ handbags, wallets and purses would not infringe that registration.

The Full Court found that “Colorado” did not distinguish the relevant goods under section 41, so it was not a valid registration for those goods. The Full Court’s decision reversed the trial judge’s somewhat controversial finding that “Colorado” was inherently adapted to distinguish the relevant goods and was registrable under section 41(3).

The Full Court also found that, if “Colorado” was registrable:
* CG was the first user of Colorado for backpacks and was entitled to register “Colorado” for backpacks.
* Backpacks are not the same kind of goods as handbags, wallets and purses. Given Strandbags first used “Colorado” for handbags, wallets and purses, CG’s first use for backpacks did not entitle CG to claim ownership and register “Colorado” for handbags, wallets and purses.
* The registration was not obtained by a false suggestion.

Allsop J considered that Strandbags’ handbags would prima facie infringe a valid registration for backpacks, because handbags were of the same description as backpacks. Interestingly, the trial judge had formed the opposite view, finding that handbags were not goods of the same description as backpacks. However, Allsop J considered that Strandbags could take advantage of the prior use defence to infringement under section 124, because it had used “Colorado” on handbags prior to the date of CG’s registration or CG’s first use of “Colorado” on handbags.

The Full Court agreed with the trial judge that there was no actionable passing off or breach of the Trade Practices Act by Strandbags.

“Colorado” is not inherently adapted to distinguish the goods At trial, Finkelstein J recognised that “Colorado” was a geographical location, and that “Colorado” conjured up notions of trekking, ruggedness, fashion, Rocky Mountains and so on. However, in a decision that surprised many commentators, His Honour found that “Colorado” was inherently adapted to distinguish bags, wallets, purses and backpacks under section 41(3) because those notions did not describe the bags, wallets, purses and backpacks themselves.

The Full Court disagreed and found that “Colorado” was not inherently adapted to distinguish bags, wallets, purses and backpacks because an honest trader may wish to make use of “Colorado” given the notions “Colorado” conveys for those types of goods.

If a mark is only to some extent inherently adapted to distinguish, registration may be obtained if it is found that the applicant’s use of the mark does or will distinguish the goods (section 41(5)). The Full Court found that it could not be said that CG’s use of “Colorado” as at 2001 does or will distinguish the goods as being CG’s goods and no other’s, particularly because Strandbags was also using “Colorado” by that time.

This outcome demonstrates the difficulty of obtaining registration under section 41(5) (or s41(6)) if there is another trader concurrently using the same mark.

Ownership

If a trade mark has been used prior to the date of application for registration (as “Colorado” had been in this case), in Australia it is the first user of the mark for certain goods who is entitled to register the mark in respect of those goods and goods of the same kind.

CG asserted that it first used “Colorado” from 1982, when the mark was embroidered on backpacks. However the evidence was somewhat unclear about whether “Colorado” was first used alone or together with a mountain logo. If “Colorado” was used along with the mountain logo, CG may not be entitled to claim ownership of “Colorado” alone. If CG could not claim to be the owner of “Colorado” alone, its registration would be invalid in light of later use by Strandbags.

CG relied on the evidence of a store employee, who recalled that in 1982 and 1983 CG was selling a style of backpack which had the word “Colorado” but no logo embroidered on it.

Strandbags bore the onus of proving that CG did not use “Colorado” alone on backpacks. Allsop and Kenny JJ found Strandbags did not discharge the onus, as it was not clear that CG was not the first user of the mark “Colorado” alone on backpacks. This result illustrates the difficult evidentiary burden faced by a party disputing another’s claim to ownership of a mark by first use.

In addition to backpacks, CG’s registration covered bags, purses and wallets.

However, Strandbags used “Colorado” for handbags, purses and wallets before CG (but after 1982). Therefore, CG’s registration would not validly cover handbags, purses and wallets unless they were goods “of the same kind” as backpacks. The trial judge and Allsop and Kenny JJ all agreed that backpacks were not the same kind of goods as handbags, wallets and purses. (The Court was divided as to whether handbags were the same kind of goods as wallets and purses.)

Kenny J noted that a policy reason for assessing narrowly which goods are goods of the same kind is that “if the acquisition of a mark by a prior user were to extend to a broad ill-defined set of goods, this would have the capacity to undermine the efficiency of the registration system” (at [19]).

False suggestion

Strandbags also alleged that CG’s registration was accepted because of a false suggestion made to the Trade Marks Office about the extent of Strandbags’ use of “Colorado”, namely, a statement conveyed the impression that nothing of relevance happened after 1990 or 1991 in relation to the activities of traders other than CG.

In actual fact, Strandbags continued to use “Colorado” after 1991.

False suggestion is an unusual ground of revocation and it was not accepted in this case, primarily because the statement to the Trade Marks Office merely conveyed an impression - it was not a clear statement and it was not intended to be a false suggestion.

Infringement

Because the Full Court found that CG’s registration for “Colorado” was not valid for the relevant goods, it was not necessary to consider whether Strandbags had infringed the registration. However Allsop J went on to consider infringement in any event. For Strandbags’ handbags, purses and wallets to infringe CG’s registration for backpacks, those goods had to be “of the same description” as backpacks, or the service of supplying those goods had to be “closely related” to backpacks (s 120(2)).

The trial judge had found that neither handbags, nor purses and wallets were goods “of the same description” as backpacks. Allsop J disagreed, finding that handbags and backpacks were goods “of the same description”, (despite having found they were not goods “of the same kind” for ownership purposes.) Allsop J did agree with the trial judge that wallets and purses were not goods “of the same description” as backpacks. Allsop J concluded Strandbags’ backpacks and handbags would prima facie infringe.

Prior use defence to infringement

Allsop J then considered whether Strandbags could take advantage of the prior use defence to infringement under section 124, which would be available if Strandbags had continuously used “Colorado” before the earlier of CG’s 2001 registration or CG’s first use of “Colorado”.

For Strandbags to take advantage of section 124, Allsop J interpreted the section as requiring Strandbags to have been using “Colorado” before CG on the goods of the same description as those for which registration was obtained (ie on handbags) before CG had used “Colorado” on those same goods (ie handbags). That is, even if CG used “Colorado” on the goods specified in the registration (backpacks) before Strandbags used “Colorado” on handbags, Strandbags could still take advantage of section 124.

In this case, Strandbags used “Colorado” on handbags before CG did and this was before 2001, so Strandbags had a defence to infringement under section 124.

Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd

The Federal Court has confirmed that the door is now shut to trade mark owners seeking to use copyright in a mark or label as a means of preventing parallel importation in the recent decision of Rares J in The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCA 49.

Ziliani Holdings (Ziliani) had imported into Australia for sale a number of articles of clothing onto which the Polo/Lauren ‘polo player logo’ was embroidered. Ziliani did not have the licence or consent of Polo/Lauren to import or sell those articles in Australia. The central issue in the case was whether sales to and purchases by Ziliani in the United States of genuine articles of clothing under the Ralph Lauren brand entitled it to ‘parallel import’ those goods into Australia.

Polo/Lauren had claimed that Ziliani infringed its copyright in the ‘polo player logo’ in Australia when it appeared embroidered on a genuine article imported into Australia. However, the proceedings were dismissed with costs.

The main question was whether a symbol or trade mark comprised of an artistic work when lawfully applied or embroidered overseas to the external surface of an article of clothing, was protected by copyright under the Copyright Act 1968 (Cth) (“the Act”) such that the copyright owner in Australia could prevent importation into, or sale in, Australia. This turned on whether the ‘polo player logo’ when embroidered on an article of clothing was a “non-infringing accessory” and therefore within the scope of section 44C of the Act.

In a similar manner to section 123 of the Trade Marks Act 1995, section 44C provides that copyright in a work, a copy of which is on or embodied in a “non infringing accessory” to an article is not infringed by importing the accessory with the article. The term “non infringing accessory” is broadly defined in section 10 of the Act to be an accessory made in a Berne Convention or WTO country with the permission of the copyright owner in that country. An “accessory” is also broadly defined and relevantly includes a “label” affixed to, or incorporated into the surface of the article.

Section 44C of the Act was introduced in 1998 following the decision of Young J in the Supreme Court of New South Wales in R & A Bailey & Co Ltd v Boccaccio Pty Ltd ((1986) 4 NSWLR 701; 77 ALR 177) in which the plaintiffs, who owned copyright in a painting appearing on a label affixed to a liqueur bottle, were entitled to restrain the importation and sale of liqueur in the bottles on which the label appeared. The Copyright Law Review Committee in recommending the amendment to the Act stated that distributors of goods should not be able to control the market for their products by resorting to the subterfuge of devising a label or a package in which copyright subsists. Rares J stated that the 1998 amendments to the Act were designed to prevent such an inappropriate use of copyright.

Polo/Lauren argued that the polo player logo was not a label but rather a decorative feature of articles on which it was placed. Rares J noted that the term “label” is not defined in the Act and therefore it was likely that the ordinary English meaning was that intended by Parliament. This was held to include a brand name, trade mark and the name by which a design or fashion house, and its product, such as ‘Polo’ and ‘Ralph Lauren’ and ‘Polo Ralph Lauren’, is generally known.

The evidence accepted by Rares J had established that if a shirt had the polo player logo on it, the presence of the logo conveyed to the person looking at it that it was manufactured by an entity within the Ralph Lauren group. According to Rares J, the polo player logo ‘labels’ the garment as a product of that design or fashion house and was therefore a label within the definition of accessory.

Accordingly, it was held that the polo player logo when embroidered on an article of clothing was a “non-infringing accessory”, being a “label” for the purposes of section 44C and therefore that copyright was not infringed by the importation or sale of the article. Rares J in dismissing the proceedings, stated that the Trade Marks Act and the tort of passing off adequately protected trade mark owners of wrongful exploitation of the trade mark by another.

Additionally, Rares J held that the copyright/designs overlap provisions would apply to the ‘polo player logo’ such that it would not be an infringement of copyright to embroider the polo player logo on an article of clothing in Australia. Therefore an importer in that situation would not be liable for copyright infringement as it could not have the requisite knowledge that the article would infringe copyright if made in Australia.

Designs case - Prior publication

Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2007] FCA 1869

The applicant, Chiropedic Bedding Pty Ltd (“Chiropedic”), was the registered proprietor under the Designs Act 1906 (Cth) of a design in respect of a mattress. Chiropedic sued the respondent, Radburg Pty Ltd (“Radburg”) for infringement of its design. This case considered Radburg’s cross-claim for the cancellation of the Design registration, on the ground that the design was not new or original.

Before the priority date of the design, Chiropedic had exhibited a mattress to which the design was applied at a fair held at the Melbourne Exhibition Centre, and organised by the Furnishing Industry Association of Australia (Vic/Tas). The publication at the fair would invalidate the registration unless s 47 of the Designs Act 1906 (Cth) applied.

Click here to read the case note.

Need to file search results being discontinued

For some years there has been an obligation on applicants for Australian patents to lodge certain official search results with the Patent Office.

On 17 October, 2007, the Patents Amendment Regulations 2007 (No 1) removed that obligation in respect to all future (after 22 October) and many pending applications.

Search results are no longer required for

* Applications on which examination was requested on or after 22 April 2007, or

* Applications which were advertised as accepted for patent grant on or after 22 July 2007, or

* Applications lodged on or after 22 October 2007


Search results are still required to be lodged where

* Search results were completed before 22 April 2007, and

* Examination was requested before 22 April 2007, and

* The application was advertised as accepted for patent grant before 22 July 2007


Where the continuing obligation applies, it remains necessary to inform the Patent Office of the results of any official search results undertaken to assess the patentability of the invention disclosed in the application.

For patents granted before 22 April 2007, the continuing obligation only extends to search results completed before the date on which the patent was granted.

There are ongoing provisions for late lodgement of search results outside the prescribed time frames.

Non compliance with the obligation may continue to affect the allowance of any amendments proposed to a patent granted on the application.