Startup keeps its cool with IP protected

/ Madderns / Articles

Startup keeps its cool with IP protected

As a startup, deciding where and how you spend your limited dollars is one of many early crucial business decisions. Investing in marketing and branding was a given for Thomas deMasi, CEO of Coolsan®. But he admits that initially he wasn’t so convinced about investing in the company’s intellectual property.

The Coolsan® journey began in rural New South Wales in 2005. Dr Gary Erickson and his wife Merrill were running a restaurant and were constantly frustrated at the short shelf-life of their fresh herbs and vegetables. Spoilage of fresh foods is an annoying and expensive problem for the restaurant industry supply chain. Often fresh produce doesn’t show any signs of spoilage until the end of the chain, which leaves producers, suppliers or end-users bearing the costs.

Simple food-safe solutions

Drawing on his experience as a chemist, Gary developed a prototype system to decrease spoilage by delivering low levels of hydrogen peroxide into refrigerated spaces. In 2010, Gary and Merrill took their prototype system to a food and wine show in Sydney, where they met Thomas – an experienced food retailing and marketing consultant. Thomas immediately saw the potential of Gary’s prototype system.

Three years later, Gary and Thomas had founded their company Coolsan® and turned Gary’s prototype system into a marketable product. ChillSafe® is an environmentally-activated sachet that releases a low dose of a vapour to reduce the levels of bacteria, mould and ethylene that cause food to spoil.

“When we first started up, we generated a lot of interest in our product ChillSafe®, maybe too much too soon. Without revealing its secrets, I was showing it to a lot of people and then I realised it was at risk because it wasn’t protected,” said Thomas.

Although Gary had taken out an initial patent on his original system, ChillSafe® was a new and improved version and not all of its features were protected by the initial patent.

“ChillSafe® was now a unique marketable product and I realised my initial patent wasn’t enough to protect it,” said Gary.

Turning up the heat on the competition

Gary and Thomas met with Mark O’Donnell, a Patent Attorney at Madderns in Adelaide. It was the beginning of a partnership that would help Gary and Thomas make sense of a complex process, and make informed spending decisions about their intellectual property (IP).

“Mark helped me understand the importance, need and value of a patent to protect our interests,” said Thomas.

It did not take long for Thomas to work out they had made the right move.

“I had a major international food manufacturer with factories all over the world contact me. The head of their sanitation department told me he’d seen our product and asked his partners and global suppliers if they could copy it,” said Thomas.

“Two weeks later the advice from their guys was no we can’t copy it, it’s protected.”

The international food manufacturer is now trialling ChillSafe® at one of their sites.

“Now we have something of substance when we engage with global partners. When they ask if we’re protected we can say yes,” said Thomas.

Warming up to intellectual property

Mark has guided Coolsan® through every step of the patent application procedure, including advising on which countries to pursue patent applications to get the best value for money.

“As a startup, Coolsan’s® IP is their asset. Our job is to find the most cost-effective way to protect this asset,” said Mark.

Mark has worked in the IP field for more than 25 years. He has seen the patent process from all sides and believes that a well thought out IP strategy gives his clients a massive strategic advantage. The patent application process generally starts with filing a provisional patent application in Australia, which is effectively a stake in the ground that is recognised around the world. The next step is the filing of an international Patent Cooperation Treaty (PCT) application, which gives applicants the right to file in over 150 countries. The final step is the national phase where patent applications are filed in individual countries and some regions.

Coolsan® have now filed patent applications in 6 countries as well as Europe, and have signed a MoU with a major agribusiness supplier for use of ChillSafe® in the post-harvest industry in Australia and New Zealand. They are also in negotiations with a potential global partner with outlets in over 100 countries and have master distribution agreements with companies in Australia, the United Kingdom and South Africa.

“We have a novel, unique and multi-award winning product that has attracted a global audience. That is worth protecting,” said Thomas.

“If it wasn’t for Madderns’ support we wouldn’t have been able to get through the patent process.”

Get in touch with Mark at Mark.ODonnell@madderns.com.au.

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Toll Dodging: trade mark registration may decrease the cost of challenging domain name registration

/ Lucy Deane / Articles

A recent Domain Name Decision highlights the importance, and benefit, of having a registered trade mark when seeking to challenge the registration of a .com.au domain name by a third party.

Administrative Panel Decision – Case No. DAU2016-0036

The Parties

Mr Michael Arnold of Lorimax Pty Ltd (the Complainant) sought to challenge the registration by Tolling Customer Ombudsman Pty Ltd (the Respondent) of the domain name www.tollingcustomerombudsman.com.au (the Domain Name).

The Complainant, through his company, is contractually appointed by a number of entities, who operate toll roads in Australia, to provide a free complaints and alternative dispute resolution process for customers of such toll roads experiencing issues.

The Complainant submitted that it had provided such services since 2008 from the website www.tollingombudsman.com.au.

The Respondent was registered on 2 September 2016 and registered the Domain Name on the same day.  The Domain Name resolves to a website where individuals can file a complaint, free of charge, with the toll road operator Transurban Limited.

The Complainant’s Trade Marks and the Complaint

On 12 September 2016 the Complainant filed Australian trade mark applications for the word mark “TOLLING CUSTOMER OMBUDSMAN” (No. 1795768) and for a composite trade mark featuring these words (No. 1795772) (the Complainant’s Trade Marks).

Shortly thereafter, on 19 September 2016, the Complainant filed a Complaint under the .au Dispute Resolution Policy (auDRP).

At the time the Decision was issued, the Complainant’s Trade Marks were awaiting examination and hence had neither been accepted nor rejected for registration.

To succeed in this Complaint under the auDRP, the Complainant was required to establish each of the following elements:

  1. the Domain Name was identical or confusingly similar to a name or a trade mark in which the Complainant has rights; and
  2. the Respondent had no rights or legitimate interests in respect of the Domain Name; and
  3. the Domain Name had been registered or subsequently used in bad faith by the Respondent.

The Decision

The Panelist found that the act of filing the Complainant’s Trade Marks was not, of itself, sufficient to establish rights in the subject trade marks (as required to satisfy the first element).

The Panelist then considered whether the Complainant had established common law or unregistered rights in the Complainant’s Trade Marks, noting that to do so, the Complainant would need to show that through use, the Complainant’s Trade Marks had acquired a secondary meaning and become a distinctive identifier associated with the Complainant.

The Complainant had addressed the issue of unregistered trade mark rights by stating in the Complaint:

“The Complainant has invested a significant amount of time and resources to develop and promote the Trade Marks and Services under the Trade Marks. As a result of this extensive use, the Complainant has acquired a valuable and exclusive reputation and goodwill in the Trade Marks in Australia, in relation to the Services”.

The Panelist found that this statement was not sufficient to discharge the burden of establishing common law or unregistered rights in the Complainant’s Trade Marks.

In considering the question of common law rights, the Panelist noted that where the trade mark on which a complainant is relying is descriptive in nature, it can be difficult to show that the trade mark had acquired a secondary meaning and become a distinctive identifier of the complainant. In such cases, the Panelist noted that clear evidence will be required to support an assertion of common law rights.

The Panelist provided some guidance as to what might constitute clear evidence of an established secondary meaning, in finding that the Complainant had not provided any evidence of:

  • the number of customer interactions provided by the Complainant under the Complainant’s Trade Marks; or
  • advertising used to promote the Complainant which featured the Complainant’s Trade Marks; or
  • surveys showing consumer recognition of the Complainant’s Trade Marks; or
  • Media references to the Complainant’s Trade Marks

In summary, the Panelist found that there was no evidence filed by Complainant “that would suggest that a consumer would come to associate “Tolling Customer Ombudsman” with the Complainant.

Accordingly, the Complaint was denied as the Complainant failed to establish the first element of the Complaint.

However, the Panelist did note that there may be grounds to consider a re-filed complaint in the event that the Complainant’s Trade Marks were to be registered (as has now occurred with the Complainant’s trade mark No. 1795772 “TOLLING CUSTOMER OMBUDSMAN” composite trade mark).

Discussion

This decision under the auDRP is a pertinent reminder that without a relevant trade mark registration, it may be difficult (or at least costly) to succeed in challenging third party registration of .com.au domain names featuring your trade marks/brands.

This decision further confirms that assertions of common law rights in a trade mark in complaints filed under the auDRP should be supported by the filing of relevant evidence.

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Trade Marks: Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd

/ Jacqueline Leong / Articles

In the recent case of Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406, the Australian Federal Court considered a dispute in respect of two logo marks that include the word “insight”:

The facts of the case are as follows: Both parties are in the business of providing medical imaging services. Insight Clinical Imaging Pty Ltd (“ICI”) has been operating in Western Australia since 2008 and filed a trade mark application for the “insight Clinical Imaging” logo mark depicted above (“the ICI logo mark”) in October 2012.  This application was accepted in December 2012 and proceeded to registration. Insight Radiology Pty Ltd (“IR”) commenced using the “insight radiology” logo mark depicted above (“the IR logo mark”) in New South Wales in 2012.  IR’s sole director, Mr Pham, filed a trade mark application for the IR logo mark in his own personal name in December 2011 and Mr Pham then assigned the application to IR (i.e. the company) in July 2013.  The IR trade mark application was opposed by ICI.

In summary, ICI opposed IR’s trade mark application on various grounds as well as claiming that the use of the IR logo constituted trade mark infringement, misleading/deceptive conduct and passing off. IR cross-claimed to cancel ICI’s trade mark registration.

ICI contended as part of its opposition that Mr Pham was not the true owner of the IR logo mark because the evidence pointed to the company, IR, being the correct owner at the time of filing of the application.  The evidence showed that there was never a licensing arrangement entered into between Mr Pham and IR authorising IR to use the IR logo. IR paid for the creation of the IR logo and commenced use of the IR logo and name in 2012. ICI also contended that the assignment from Mr Pham to IR was ineffective because it was made without consideration and that Mr Pham, in any event, had no rights of ownership to assign. The Court held, however, that although Mr Pham did not appear to be the correct owner at the time of filing, IR became the owner via the assignment. The Court was satisfied that the assignment was properly recorded from Mr Pham to IR as there was a document evidencing the intention to transfer the application, a clear identification of the application and, most importantly, the transfer of ownership was effected to the correct owner when the application was still pending.

Although ICI was unsuccessful in attacking the validity of IR’s trade mark application on the basis of the ownership issues, the decision was ultimately in ICI’s favour as the Court held that ICI had established a reputation for the ICI marks as at the filing date of IR’s application and, because of that reputation, the use of the IR logo by IR would likely cause deception or confusion.  IR had argued that ICI’s reputation should be limited to Western Australia; however, the Court considered that ICI had established a sufficient reputation so as to successfully oppose IR’s trade mark application on this basis.

With respect to ICI’s trade mark infringement claim, the Court held that IR had infringed ICI’s logo and IR failed to establish that it was entitled to the statutory defences sought. In particular, IR unsuccessfully argued that it should have a defence to the trade mark infringement claim on the basis that it had adopted the IR trade mark in good faith without knowledge of ICI.  The Court rejected IR’s submissions finding that IR was not entitled to claim that use of the IR mark was in good faith given that IR had not conducted proper and diligent searches to check whether the name “Insight Radiology” was available for use.

Finally, the Court also held that IR’s conduct constituted misleading/deceptive conduct as well as passing off.

Lesson: Prior to adopting a new trade mark, it is important to carry out reasonably comprehensive searches to check whether any other parties are already using a similar trade mark.  Searches of the Trade Marks Register should be conducted as well as general searches of the internet, businesses directories etc. Then, when filing trade mark applications, it is important to ensure that the correct entity is listed as the owner to avoid any ownership challenge by third parties in the future.

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Patents for Space Telescopes

/ Martin Pannall / Articles

Last year saw a great many exciting developments in space exploration.

Starting with our own solar system, we discovered that Venus (our nearest planetary neighbour, depending on the relative orbits of Venus and Earth around the Sun at a given time) shows some evidence that it may have once had oceans that may have supported life.

Our next planetary neighbour, Mars, has been the subject of significant exploration for many years, including by many robotic probes that have landed on its surface. Each exploration yields new insights, with last year’s discoveries including an ice sheet over 170 metres thick.

New evidence for oceans on other planets, dwarf planets and moons also came to light last year, including suggestions of an ocean on Pluto.

September 2016 also saw the launch of NASA’s first asteroid sampling mission, called the OSIRIS-Rex spacecraft. The craft will study the asteroid Bennu, and return a sample to Earth in 2023.

Moving even further beyond our solar system to the hunt for exoplanets (planets orbiting other stars), in May 2016, an announcement was made by astronomers who are using NASA’s Kepler space telescope, that a further 1284 planets had been found, bringing the number of confirmed new exoplanets to over 2000, and the number of identified potential planets to over 4000.

These discoveries are the result of great human ingenuity, including designing, building and deploying of space craft, as well as the use of innovative detection and data analysis techniques. While many discoveries are made using a variety of earth-based and space-based sensors and devices, space telescopes play a very important role in our current knowledge of our own solar system, our galaxy and the Universe.

Telescopes such as the legendary Hubble Space Telescope (capturing images in visible light), the Spitzer Space Telescope (with infrared vision), the Kepler telescope and the yet-to-be-launched James Webb Space Telescope with its 18-segment primary mirror that will unfold once launched, each drive our knowledge of the Universe further.

This article looks at some patents behind a few of the technologies related to space telescopes, including optics, craft design, sensors and signal processing. The patents discussed below are not necessarily covering technologies currently being used in deployed telescopes, and the patents are not analysed in detail from a technical or legal position, but have been selected simply to provide an indication of the range of technologies developed for such application.

One particularly interesting area of application is in relation to segmented mirrors. A segmented mirror provides a primary mirror made of multiple sub-mirror elements. Such a mirror is part of the design of the James Webb Space Telescope. In this design, 18 hexagonal sub-mirror elements together form a 6.5 metre-wide primary mirror. The design allows the mirror to be folded for launch and then to unfold once in space. The 18 sub-mirror elements may be individually aligned to produce the best optical performance for the mirror.

A number of the patents and patent applications referred to below are directed to aspects of segmented-mirror design.

 

1. Autonomously Assembled Space Telescope US20050088734 (The Boeing Company)

This patent application was filed on 28 October 2003 and is directed to a space telescope having a primary mirror comprising a plurality of modular, segmented mirrors. The segments of the primary mirror are supported by a backing structure which itself comprises a plurality of interlocking mirror backing structure elements.

The invention provides a system for forming a large mirror in space, by assembling multiple segments, once launched. These segments can be launched in separate launch vehicles, thus enabling a completed mirror to be larger than one that could be launched in a single launch.

 

2. Achromatic shearing phase sensor for generating images indicative of measure(s) of alignment between segments of a segmented telescope’s mirrors US7106457 (NASA)

This granted patent in the name of NASA, provides a sensor for assisting in the alignment of the segments of a multi-segmented mirror. As will be appreciated, for a multi-segment mirror to perform optimally, the different segments must be aligned such that they operate as a single contiguous surface. When properly aligned, each segment produces an image at the same place in all three spatial dimensions. The alignment of the segments in the x and y dimensions perpendicular to the direction of propagation is achieved by direct measurement of the irradiance from a particular segment. The third dimension, the z-axis, involves measurement of the phase of a wavefront.

The invention of this patent provides an achromatic shearing phase sensor for use in alignment of a segmented telescope’s mirrors.

 

3. Apparatus and method for a light direction sensor US7924415 (NASA)

This granted patent filed on 19 February 2009, is directed to a light direction sensor for determining the direction of a light source. Knowledge of the precise direction of a light source such as the Sun or Moon, can be used for various applications including spacecraft navigation.

The sensor comprises a Cartesian mask, an array image sensor and an image processing algorithm.

 

4. Hybrid architecture wavefront sensing and control system and method US8044332 (NASA)

This granted patent is directed to an optical system for providing both fine guidance sensing and wavefront sensing in a single instrument. In some applications, the system can generate instructions to adjust the position of at least one mirror comprising the optical assembly of the telescope in accordance with the sensing operations.

 

5. Device for protecting optical and/or electronic apparatuses, space telescope comprising said device, and device for removably occluding an aperture US8064154 (Thales Alenia Space Italia SpA)

This granted patent is directed to a protective device to protect sensitive optical and/or electronic apparatus mounted to a spacecraft such as a space telescope.

The protective device is mounted over an aperture through which the optical and/or electronic apparatus is accessed. The device comprises a plurality of pairs of elements, each of which can be actuated between a first position and a second position, to provide a closed cover or screen for the aperture when the elements are in the first position, and an open aperture when the elements are in the second position.

This provides protection for the sensitive instrumentation which can be easily damaged if struck by small objects or particles in space.

 

6. NanoStructured additives to high-performance polymers for use in radiation shielding, protection against atomic oxygen and in structural applications US20130161564 (International Scientific Technologies, Inc.)

This patent application, filed on 22 December 2011, is directed to nanostructured additives for improving the shielding capabilities of a high-performance polymer to which the additive is added, without significantly affecting the thermal and mechanical properties of the polymer.

The environment in space can be extremely harsh to craft and objects, with cosmic radiation being a significant danger. Sensitive electronics and instruments can be damaged when exposed to certain types of radiation, and there is a need to protect against the adverse effects of radiation. The invention is concerned with general Galactic Cosmic Radiation, Solar Energetic Particles, as well as secondary particulate and electromagnetic radiation resulting from nuclear reactions from power sources within the shield.

 

7. Occulter for exoplanet exploration US8480241 (Lockheed Martin Corporation)

This patent is directed to a space based occulter to block out starlight emitted from a star, to facilitate the detection of planets orbiting that star. The occulter comprises a base portion and a blanket section extending radially from the base portion. A plurality of starlight blocking petals is attached to the base portion and the blanket section, with each of the panels being hingedly connected to an adjacent petal.

8. Deployable telescopic shade US7557995 (Itt Manufacturing Enterprises, Inc.)

The image quality of a telescope can be adversely affected by the presence of stray light – ie light not produced by the object being imaged. This granted patent is directed to an imaging apparatus comprising a telescope and a shade. The shade comprises a plurality of pivotable panels which act to provide a collapsed state of the shade to block light from reaching the telescope, and a deployed state of the shade to expose the telescope to light.

The selected patents are but a small sample of patents representing this very active area of development.

For more information on the achievements of space exploration and research in 2016 and news on upcoming developments, see NASA’s website here.

NOTE – images from respective patent publications on Google Patents

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Plant Breeder’s Rights: The variety must be distinct and the result of breeding

/ Michael Dow / Articles

A rare decision was recently handed down by the Australian Plant Breeder’s Rights Office, revoking a granted Plant Breeder’s Right (PBR) for a variety of the native Australian grass Lomandra known as ‘Lime Tuff’. The PBR grantee was Bushland Flora (‘Bushland‘) and the applicant for revocation was Majestic Selections Pty Ltd (‘Majestic‘). Majestic successfully made out two grounds for revoking the PBR.

 

THE VARIETY WAS NOT DISTINCT

For a plant variety to be registrable it must be “distinct”. A distinct plant variety is one that is “clearly distinguishable from any other variety whose existence is a matter of common knowledge”.

A variety may become common knowledge for a number of reasons, including commercialisation of propagating or harvested material of the variety, the variety being the subject of a PBR application resulting in the grant of a PBR right, or the public availability of plant material in a collection.

The first ground pressed (and subsequently made out) by Majestic was that the variety of Lomandra the subject of the PBR, ‘Lime Tuff’, was not clearly distinguishable from a variety of common knowledge known as ‘Little Pal’.

 

DNA Testing

Majestic attempted to show the relatedness of ‘Lime Tuff’ to 23 samples of Lomandra through the use of DNA evidence, specifically, the presence or absence of a suite of molecular markers.

The Delegate considered that the usefulness of DNA evidence in determining distinctiveness is limited, and that the DNA evidence provided by Majestic established relative relatedness between ‘Lime Tuff’ and the other varieties, but not necessarily phenotypic similarity.

 

Phenotypic Examination

The Delegate then considered phenotypic similarity between ‘Lime Tuff’ and other prior existing Lomandra varieties.

Majestic’s botanical expert indicated that there were only slight morphological differences between ‘Lime Tuff’ and the other Lomandra varieties and that “[t]hey all form robust tussocks with very numerous, narrow leaves of the same yellow-green colour and texture, both are equally hardy and adaptable to a wide range of conditions in horticultural applications, and they do not differ in method(s) of propagation.”

In view of the Expert’s evidence, the Delegate found that ‘Lime Tuff’ was not clearly distinguishable from the other Lomandra varieties (including ‘Little Pal’).

 

Common Knowledge

The Delegate then had to consider whether one or more of the other Lomandra varieties (including ‘Little Pal’) were plant varieties of common knowledge that existed prior to the PBR application for ‘Lime Tuff’. ‘Little Pal’ had been sold to a school prior to the filing date of the PBR application.

The Delegate indicated that this sale was sufficient for the variety to be considered as commercialised and was therefore common knowledge. The Delegate also indicated that it is how a plant variety looks that is important in determining whether it is common knowledge, rather than the labelling under which a plant variety is sold.

 

THE VARIETY HAD NO BREEDER

For a plant variety to be eligible for PBR protection, it must have been bred. Consequently, a PBR application must describe the breeding involved and nominate the breeder.

The second ground pressed (and subsequently made out) by Majestic related to the PBR application for the variety ‘Lime Tuff’ inaccurately describing the breeding process.

The breeder of ‘Lime Tuff’ intended to select progeny resulting from the hybridisation of Lomandra longifolia and Lomandra confertifolia subsp. pallida.

However, evidence from the Melbourne Herbarium and Majestic’s botanical expert suggested that ‘Lime Tuff’ was not the result of hybridisation, and therefore, as Bushland submitted no evidence to the contrary, the Delegate held that ‘Lime Tuff’ was not bred as described.

 

TAKE-HOME MESSAGES

This decision teaches us that a plant variety the subject of PBR will be deprived of registrability if it is not clearly distinguishable from another variety that has been sold prior to the filing date of the PBR application, regardless of whether the breeder is aware of the other variety. It also does not matter what name the other variety is sold under, it is what the variety looks like that is important.

This decision also highlights the importance of accurately recording the breeding methods used to produce a plant variety, lest the PBR be susceptible to revocation. If there is any doubt as to whether the variety is clearly distinguishable from known varieties, it may be wise to seek independent verification of a variety by, for example, a Herbarium, before filing the PBR application. This may also help resist an attack on the breeding methods of the PBR.


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