Madderns

The Federal Government this month announced an increase in the instant asset write-off threshold, which presents an opportunity for businesses in defence and space, to biotechnology and health.

The announcement, as part of the Government’s COVID-19 stimulus package for businesses, increases the instant asset write-off threshold from $30,000 to $150,000 and has been expanded to include businesses with an aggregated annual turnover of less than $500 million. Previously, the turnover had been $50 million.

The changes came into effect on 12 March until 30 June this year and applies on a per-asset basis.

South Australian companies are becoming increasingly recognised in defence, space, biotech and health and medical technologies. South Australia is home to leading centres of excellence like Tonsley Innovation District, Lot Fourteen, Edinburgh Parks and BioMed City – employing many of our State’s brightest to create new technologies and advancements in many fields.

The government’s announcement presents an ideal opportunity to take advantage of threshold changes to properly protect IP, such as patents, registered designs and copyright.

For further information, please see the following link: Media Release – Use Federal Stimulus to Protect Intellectual Property

Sequenom, Inc. v Ariosa Diagnostic, Inc. [2019] FCA 1011, is a recent Australian Federal Court decision, which has been widely reported on, with writers predominantly focusing on aspects of validity (whether or not the invention claimed was a manner of manufacture) and infringement. This article however, focuses on the lesser reported aspect of the decision relating to infringement of the patent.

In short, Sequenom holds a patent comprising a series of method claims directed toward a prenatal detection method using non-invasive techniques. Co-respondent, Ariosa, developed the Harmony non-invasive prenatal test some 15 years after the priority date of the patent. Aspects of the Harmony Test were found to infringe the claims of the patent.

A portion of this much larger decision dealt with whether infringement occurred during a period of time, where prior to being licensed by Ariosa to use the Harmony Test in Australia, Australian co-respondents Sonic Healthcare and Clinical Laboratories each operated a “send out” testing service where they collected blood samples from pregnant women in Australia and sent those samples to Ariosa in the United States, where Ariosa would use the Harmony Test to produce the results which were then provided to Sonic and Clinical in Australia, and were subsequently forwarded to healthcare professionals in Australia. Sonic and Clinical each promoted and supplied Harmony Test results produced by their own and Ariosa’s use of the Harmony Test in the United States.

Sequenom sought relief for infringement against Sonic and Clinical, arguing that the Harmony Test results were a “product” resulting from the performance of the patented method and the promotion and supply of the results was an infringement.

The respondents cross-claimed that the test results were not a product that could be imported (or kept or sold) within the meaning of the definition of “exploit” in the Patents Act, and that the test results were “the information that could be brought within Australia by a form of communication, or by a person receiving that communication directly overseas and themselves travelling to Australia whilst retaining that information in their memory”.

In reaching his conclusion, Justice Beach turned to Section 13 of the Act, which provides that the patent gave Sequenom the exclusive rights during the term of the patent, to “exploit” the invention as defined in the relevant claims and to authorise another person to exploit the invention.

Schedule 1 of the Act states that where the invention is a method or process, “exploit” in relation to an invention includes use of the method or process or to make, hire, sell or otherwise dispose of a product resulting from such use, offer to make, sell, hire or otherwise dispose of such a product, use or import it, or keep it for the purpose of doing any of those things.

Accordingly, a person will be taken to have infringed a method claim of a patent if that person:
(a)        within Australia uses the invention; or
(b)        exploits, in Australia, a product resulting from the use, anywhere, of the method or process; or
(c)         authorises or procures from anywhere an infringing act referred to in (a) or (b).

Justice Beach explained that the term “product” is not defined in the Act and should thus be afforded its ordinary meaning as “covering anything resulting from the patented method that can be commercially exploited”… “a vendible product” should be “understood as covering every end produced or artificially created state of affairs which is of utility in practical affairs and whose significance thus is economic”.

Critically, Justice Beach explained that “Interpreting the definition of “product” broadly limits the undesirable possibility that a potential infringer could utilise a patented process overseas and then import the resulting product into Australia, and so circumvent the monopoly granted by the method patent”.

Unpersuaded by the argument presented by the respondents, his Honour said “In my view, the reality is that the Harmony Test is carried out for the purpose of obtaining the results. The results are clearly commercially valuable; patients pay in the order of $400 to obtain them. The Harmony Test results, whether recorded in electronic or paper form, are the product of a patented process for the purposes of the definition of “exploit”. Moreover, by supplying the Harmony Test results to clinicians in Australia, Sonic and Clinical infringed the relevant claims during the send out [testing service] period.”

What could this mean?

This decision provides an important precedent that the exploitation in Australia of a product produced overseas by a patented process (i.e a process patented in Australia) constitutes an infringement. It is not limited to tangible products, but can also be found where the product of the patented process is one which is intangible such as medical test results like the prenatal test results obtained with the Harmony Test. It is, however, not hard to imagine how this decision might also be followed where the product of a patented process performed overseas constitutes some other commercially valuable information such as an online gaming outcome, or even a received telecommunication signal processed overseas according to a patented method, so the findings of this decision ought to be considered in analogous situations in other technical fields.

The Australian Government is negotiating a Free Trade Agreement (FTA) with the European Union (EU). As part of the FTA, the EU wants a variety of geographical indications (GIs) to be protected.

A GI indicates that a product comes from a specific geographical area. Use of a GI may indicate that the product was made according to, eg, traditional methods or may indicate a certain reputation. An example is “Champagne”, which refers to the specific region of France known for its sparkling wine.

The EU is looking for protection of a specific list of GIs (236 spirit names and 172 agricultural and other foodstuff names) which includes the names such as: “Camembert de Normandie” for cheese, “Καλαμάτα or Kalamata” for olive oil, “Φέτα or Feta” for cheese and “Scotch Beef” for meat. The EU has confirmed examples of where the protection it is seeking would not extend to the use of parts of EU GI names which are identified in the list by text that has been underlined. The complete list of names can be found here.

As well as seeking protection for the specific GIs, the EU is seeking broader protections that would prevent use of the GIs accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar, including when those products are used as an ingredient.

Accordingly, Australian cheese makers would no longer be able to sell cheese as “Feta” or even “Feta-style” or “Feta-like”. The same applies to “Kalamata” olive oil.

Seems like the EU is asking too much. Your thoughts?

If you have any objections, they can be made here and must be received by 6pm AEST Wednesday 13 November 2019.

We are delighted to announce the promotion of Phillip Boehm and Kin Seong Long to Partner.

Phillip Boehm is an Australian and New Zealand Patent and Trade Mark Attorney within our specialist Engineering team.  Phil is a trusted IP advisor to his clients across mechanical engineering technologies, especially automotive, aeronautics, heavy transport and mining. Phil is noted by his clients for his pragmatic approach, and has a key mentoring  role within Madderns.

Dr Kin Seong Leong is an Australian and New Zealand Patent and Trade Mark Attorney within our specialist ICT team. With a strong technological background in communication systems and signal processing, especially in Radio Frequency Identification (RFID) systems and applications, Kin is able to understand new inventions and advise clients of the best IP protection. Kin is fluent in Mandarin and is a member of our China Team, which provides specialist filing and prosecution services for patents, trade marks and designs in China, as well as strategic IP advice including anti-counterfeiting and litigation strategy for that jurisdiction.

Commenting on the promotions, Managing Partner Tom Melville said: “We are very pleased to welcome both Phil and Kin to the Madderns partnership. Both have gained a strong client following and recognition in their respective fields of expertise. They are known for teaming with their clients in protecting IP at home and in global markets.”

Australia and New Zealand are close trading partners and it is therefore worth considering whether to register your trade mark in both countries simultaneously. Madderns has attorneys registered in both Australia and New Zealand and can assist with filing New Zealand trade mark applications, as well as Australian trade mark applications.

New Zealand trade mark applications and registrations are overseen by the Intellectual Property Office of New Zealand (IPONZ). The process for filing a New Zealand trade mark application is similar to filing a trade mark application in Australia.

A New Zealand trade mark application can be filed directly with IPONZ or a New Zealand designation can be made through the Madrid Protocol System for international registrations (New Zealand became a member of the Madrid Protocol System in December 2012).

Like Australia, the New Zealand trade marks system follows the International NICE Classification whereby all goods and services are classified in one or more of 45 classes. Madderns can provide tailored advice on filing strategies, assist with drafting an appropriate description of goods and services for which protection is sought and then prepare and file the application with IPONZ.

Prior to formally filing a new trade mark application, it is also possible to file a request for a “Search and Preliminary Advice Report” (S&PA) from IPONZ. The S&PA report consists of two parts and provides an assessment within five working days as to whether your proposed trade mark complies with the requirements of the New Zealand Trade Marks Act 2002. The “Search Report” will involve the IPONZ Examiner searching the Register for any pre-existing conflicting trade marks and the “Preliminary Advice Report” will advise as to whether the proposed trade mark is distinctive enough within your industry to act as a trade mark. After receiving the S&PA report from IPONZ, you can decide whether you would like to proceed with formally filing your application or to abandon the process.

Once the New Zealand application is filed, it will generally be examined by IPONZ within 5-10 working days. If objections are raised during Examination (for example, based on the nature of the mark itself or pre-existing conflicting trade marks on the New Zealand Register), IPONZ will issue a Compliance Report. The Applicant will then have a period of 12 months (calculated from the filing date of the application) to file a response to the Compliance Report.

Once the application is accepted, it will be advertised in the public domain for a period of three months.  During this three month period, any third party may oppose the acceptance of the application. Assuming that there are no oppositions filed, the application will then proceed to acceptance.

In summary, the registration process in New Zealand, as well as Australia, can typically take around 8-9 months from the date the application is filed through to registration.

New Zealand trade marks are valid for a ten year period and can be renewed every ten years. There is also a 12 month “grace period” within which the renewal fees can still be paid after the registration has expired.

Finally, like Australia, it is possible to record registered New Zealand trade marks with New Zealand Customs in order to arrange border protection for your trade marks. In New Zealand, there is a requirement to file a “Customs Authorisation” and a “Security under the Trade Marks Act 2002” form, together with a security bond of NZ$5,000. In contrast, Australian trade mark registrations can still be recorded with Australian Customs by filing a “Notice of Objection” and “Deed of Undertaking”, however, there is no security bond required at the time of filing the two forms.

Madderns has experience in filing and prosecuting New Zealand trade mark applications and managing New Zealand trade mark portfolios, in addition to Australian trade marks. If you would like our assistance with New Zealand trade marks, please do not hesitate to contact us.