Grace Period Introduced for Australian Design Rights

/ Phillip Boehm / News

The introduction of a 12-month grace period for designs in Australia will make it easier to coordinate the filing of Australian design applications into a broader international filing strategy, where there has been a pre-filing disclosure.

Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was passed by Parliament on 30 August 2021, which among other things, introduces the 12-month grace period for filing a design application in Australia. This grace period will have effect in Australia, but not other jurisdictions, and so cannot remedy pre-filing disclosure for an applicant in another jurisdiction without similar provisions.

A design application in Australia will need to be filed within 12 months of disclosure to receive the benefit of the grace period, and the disclosure will need to have been made by:

  • The designer(s);
  • The owner(s) of the design where this is someone other than the designer;
  • A party authorised by the designer or design owner; or
  • A party who obtained the design from the designer or design owner without their permission.

Publication of a design by any official designs office is not eligible for the grace period.

The Australian design grace period will come into effect 10 March 2022.

In order to balance the rights of design owners and third parties in light of the introduction of this grace period, the Bill also introduces an infringement exemption that protects third parties against infringing a registered design where they were using it before its priority date.

This applies to both independent creation, and in the case that the third party uses the design based on the disclosure made by the design owner before the priority date.

Accordingly, it remains preferable to file a design application in Australia before making any disclosure, or which claims priority under the Paris Convention, but the grace period will be available if required.

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Steel Product Not a Manner of Manufacture

/ Phillip Boehm / Articles

Bluescope Steel engaged in long running battle with IP Australia to protect branding pre-painted steel strip.

Bluescope Steel Limited [2017] APO 59

Patent application AU2016208431 (the ‘431 application) entitled “Branded Products” was filed by Bluescope Steel on 29 July 2016 and was the third successive divisional patent application stemming from a complete patent application filed in 2005.   Each application was directed to forming an improved brand on a pre-painted steel strip by partially removing a section of a layer on the strip so that branding did not form a “dominant” part of the steel strip product.

The history of the family of applications included a total of nine unfavourable examination reports, with “manner of manufacture” and “inventive step” objections remaining an unresolvable stumbling block throughout the examination process.

During examination of the ‘431 application, a single examination report issued which maintained the “manner of manufacture” and “inventive step” objections raised in the previous reports for the earlier applications. The report also indicated that, as a result of several adverse examination reports having previously issued in relation to the subject matter, the application would be referred to a hearing officer to consider whether to either refuse the application or direct an amendment.

The ‘431 application fared no better at the hearing, with the Delegate finding “that the claims are not for a manner of manufacture. I find no patentable subject matter in the application. I need not consider inventive step. The application is refused.”

 The refusal based solely on manner of manufacture is of particular interest.  It is well established law in Australia that for an invention to be a ‘manner of manufacture’  it must belong to the ‘useful arts’ rather than the ‘fine arts’; it must provide a material advantage; and its value to the country must be in the field of economic endeavour.

While claim 1 of the ‘431 application was directed to “[a] pre-painted steel strip includes a steel strip and a layer of paint covering at least one surface of the strip…”, the Delegate considered that the substance of the invention was merely the presentation of information characterised solely by a visual arrangement, because claim 1 recited “a plurality of brands at spaced intervals along the length of the steel strip…wherein the size of each brand is relatively small compared to the surrounding area of the un-branded paint layer.”

Claim 1 further claimed that each brand was “defined by a section or sections of the paint layer from which the paint has been partially removed and therefore has a thinner paint layer than the remainder of the paint layer which is un-branded and is visually identifiable”.  In relation to this feature, the Delegate  stated that “there is no contribution to the art in partially or wholly removing paint layer from a substrate such as a steel to form a thinner paint layer. Informatively, I note that a range of patent documents support this understanding.”

Undeterred, Bluescope has recently filed a further divisional application (AU2017251846) for the same subject matter covered by the ‘431 application. The Delegate made ominous reference to this new application, saying it will likely be “the cause of considerable wastage of Patent Office resources and presumably significant inconvenience for any interested third parties”.

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Steering the way – Arthur Bishop (1917–2006)

/ Phillip Boehm / Articles

Most people would give no thought to how a car steers unless it steers terribly, or not at all. But have you ever considered how it is that your car’s steering is stable on the open road, but easy to turn at slow speed and in car parks?

Many would give credit to power steering, but the key lies in Australian Arthur Bishop’s patented variable-ratio steering technology.  Without variable-ratio steering, power steering makes for nervous or twitchy steering at speed.

Others had tried to develop such a system before Bishop, but had concluded that it was not possible. Not only did Bishop figure out not how to make a working variable-ratio system, but how to mass-produce it as well.

But Bishop was not only a brilliant engineer, he was also a strategic user of the patent system, with an estimated 300 patents in 17 countries to his name. He once said that:

‘The patent system plays an essential role for the innovator in preventing others pirating his ideas before he has had time to perfect them’.

‘It’s important to patent other ways of accomplishing the same object, but also to find and cover the best way to manufacture, or the best process associated with that new idea. And so you build up a matrix or pyramid of protection around the idea. That makes it much more invulnerable to challenges by other manufacturers who very often have resources which go far beyond the innovators.’

As a result of Bishop’s vision, an estimated one in five of the world’s cars, including 11 million new cars each year, use some aspect of his variable-ratio, rack and pinion and associated power steering technologies. Yet Bishop’s company manufactures none of them. They are all made under license agreements paying up to A$14 million a year, or in joint ventures with car manufacturers or their suppliers.

And so it is that Arthur Bishop’s legacy may not lie is his inventions, but the realisation that exporting knowledge may be just as valuable as exporting anything else.

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