Phillips Ormonde Fitzpartick, the firm behind this Blog has announced the appointment of some new partners, and the retirement from the partnership of its longstanding Senior Partner.
Technicon has been unsuccessful in its appeal against the decision of Cowdry J reported here in which the trial judge found that Technicon had infringed Caroma’s registered design. The Full Court decision in Technicon Industries Pty Ltd v Caroma Industries Ltd [2009] FCAFC 76 largely affirms the reasoning at first instance and in doing so gives approval to what appears to be a new approach to the question of infringement.
Small differences between the registered design and the prior art will generally lead to a finding of no infringement if there are equally small differences between the registered design and the alleged infringing article. On the other hand, the greater the advance in the registered design over the prior art, generally the more likely that a court will find common features between the design and the alleged infringing article to support a finding of infringement.
The Full Court in this case noted that the trial judge had found the design in suit to represented a clear advance over the prior art and accordingly:
his Honour held that it was necessary for Technicon to demonstrate a greater degree of difference between the Technicon Pan and the Design in order to establish that there had been no infringement. Contrary to Technicon’s submissions, the primary judge’s approach to the relevance of the prior art (at [30]) was orthodox.
This approach seems to go a step further than the principle enunciated by Lockhart J such that the scope of the monopoly of a design is not merely assessed in light of the prior art but defined by it. The decision suggests that, at least in the context of assessing fraudulent imitation, any impugned design which is closer in appearance to the registered design than the closest prior art must be an infringement.
New IP Regulations will amend the Patents Regulations 1991 from 1 July to update the English text of the Regulations under the Patent Cooperation Treaty (PCT Rules) to reflect the changes that were agreed to at the PCT Union meeting of September 2008.
They will also align the various requirements for declarations in the designs, patents and trade marks legislation in accordance with current government recommendations and make a number of minor typographical corrections.
Further to our post on Thursday 11 June, Facebook has announced that it is allowing Facebook page administrators to request usernames for trade marks previously blocked by them.
It appears that the first applicant for a trade mark held by a number of people (in different classes or jurisdictions) is more likely to be successful, although Facebook reserves the right to remove or reallocate a name for any reason.
Melbourne’s Age newspaper has reported today that Police have seized almost 7,000 pirated computer games and DVDs after raids on a computer swap meet and two private homes.
In the recent decision Fermiscan v James [2009] NSWSC 546, a second invention for a method and instrument for analysing nail and skin samples using X-ray diffraction to screen for disease was found not to be an improvement on a first invention by the same inventor for substantially the same method and instrument, the difference being that the first invention was for analysing hair samples using X-ray diffraction to screen for disease.
In this case, an issue in dispute was who owned a PCT application covering the second invention.
Subsequently, Dr James continued to research the use of X-ray diffraction to screen for disease. She discovered that nail and skin samples could also be used to screen for disorders and she filed a PCT application for that (second) invention.
Fermiscan claimed it was the owner of the PCT application on the basis that the second invention was an improvement on the first invention. Fermiscan said that the use of different biological material samples (nail and skin, rather than hair) did not give rise to a new invention of a kind that was outside the definition of an “improvement” on the first invention.
The Court agreed with Dr James that the second invention was a different invention to the first invention, in particular because the second invention was not within the scope of the claims of the Australian and US patents. It seems a different decision might have been reached if the claims of the Australian and US patents covered analysis of any biological material samples, as the second invention would have then presumably have fallen within the scope of those claims.
The Court also relied on the fact that the PCT application described the second invention as being an
“alternative test…which may overcome at least some of the…disadvantages” of the first invention.
It was relevant also that Dr James had signed a non-exclusive consultancy agreement with Fermiscan at the same time she assigned the Australian and US patents. The Court said that if Dr James was required to hand Fermiscan the results of all work she conducted relating to using x-ray diffraction to screen for disease, her non-exclusive consultancy agreement would be rendered meaningless.
The Court further relied on evidence that the second invention would not in all circumstances “replace” the first invention.
This decision is a reminder to parties who wish to purchase future improvements to an invention, to ensure that the purchase agreement is drafted broadly and clearly enough to capture any such improvements.
The Director General of the World Intellectual Property Organization, Dr Francis Gurry, will present a public lecture at the Melbourne Law School on 3 August.
Gurry is the highest-ranking Australian official in a United Nations agency, and only the third to ever head a UN agency. He is making his first official visit to Australia since his election as Director General last year.
He will speak on the subject of “Intellectual Property, Innovation and Creativity - Future Global Directions”.
This morning’s Age newspaper report of US$1.92 million fine imposed on a Minnesota woman who illegally downloaded 24 songs contrasts markedly with the approach of Australian courts. The matter was a civil suit, with a jury deciding the penalty.
In arguably a much more serious breach of copyright, a Sydney Internet Cafe was convicted on 40 charges of copyright infringement and fined A$82,000, plus costs and forfeiture of computer equipment. Criminal penalties for copyright infringement in Australia are up to $60,500 and five years imprisonment per offence for individuals, and up to $302,500 for corporations.
While additional (punitive) damages are increasingly applied in civil copyright cases in Australia, juries are not involved in the process and damages against an individual are unlikely to be anywhere near those reported in this US case.
IP Australia has released three consultation papers discussing proposals for improving patent opposition proceedings, trade mark opposition proceedings and divisional application processes.
The objective of the proposals is to reduce the period of uncertainty during which the public and third parties do not know where they have freedom to operate.
Submissions are invited by 17 August 2009.
The granting of interlocutory injunctions continues apace with Ryan J in Wake Forest University Health Sciences v Smith & Nephew Pty Ltd [2009] FCA 630 ordering Smith & Nephew be restrained from commercial dealings in their Negative Pressure Wound Therapy Foam Dressing Kits said to be an infringement of Wake Forest’s patent.
An interim entry into the market by Smith & Nephew would disturb KCIM’s monopoly over the supply of NPWT foam dressing kits and associated medical devices, and would be likely to alter the market in ways which are not readily predictable or for which an award of pecuniary damages would not afford adequate compensation.
Assessing the balance of convenience, the Court had little sympathy for the arguments of Smith & Nephew based on repercussions it said would follow from the granting of an injunction, noting that:
Having elected to enter the market without first seeking to clarify the validity of the Patent, it should not readily be allowed to take advantage of the uncertainty which its own conduct has fostered.
This and other recent decisions suggest that provided the argument for infringement is not obviously weak and there are no clear grounds of invalidity, a patentee who acts quickly is likely to be in a strong position to obtain an interlocutory injunction restraining infringement.
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