Selection of Extracts

ISSUE 136 – June 2024

EDITORIAL – BY FIONA ROTSTEIN

It is hard to believe that we are already at the half-way mark of the year and the June 2024 issue of Intellectual Property Forum. This issue of the Journal has something for everyone: from the construction of patents to whether Australian anti-circumvention laws harm copyright holders in
the audiobook market. The protection of fictional characters in IP law is also explored, as are patent trolls. There is also analysis of a keenly-awaited copyright decision of the New Zealand Court of Appeal (which the New Zealand Supreme Court has just given leave to appeal) plus reviews of three
newly published but very different IP texts.

This edition starts with my interview of Sarah Matheson AM who spent 26 years, including 20 years as a partner, in the IP group at Allens in Melbourne. Sarah reflects on how her IP career ignited her varied work for numerous boards and notfor- profit organisations. Among other roles, Sarah is currently a Trustee of the Royal Melbourne Hospital Neuroscience Foundation and the Chair of the Australian Ballet School.  Sarah also discusses her 22 years volunteering for the International Association for the Protection of Intellectual Property, known as AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle), including her responsibilities as Reporter General. When I ask Sarah about the incident that sparked her fascination with IP law, she comments:

And that’s the beauty of IP – always pushing at the boundaries of the status quo, creating solutions to problems, and finding clever ways to do things better. 

This response is characteristic of Sarah’s expertise and how she contributes her IP knowledge across her diverse governance roles.

The first of our four articles is by the Honourable Steven Rares KC who recently retired from the Bench after almost  18 years of service as a Judge of the Federal Court of Australia. Rares considers the construction of patents.
Drawing on his Health of experience as a Judge, Rares explores the following three issues. First, the statutory context as provided in the Patents Act 1990 (Cth), secondly, the skilled addressee and the common general knowledge and thirdly, the general principles for construing a patent. Rares also provides useful examples of patent construction relating to best method and to claim construction. A range of judgments by the High Court of Australia, Federal Court and Full Court of the Federal Court are examined, including the recent decision by the Full Court in Airco Fasteners Ltd v Illinois Tool Works Inc (2023) 170 IPR 225.

Then, Dean Gerakiteys, Joel Parsons and Grace Griffiths consider the IP implications for The Walt Disney Company after Steamboat Willie’s copyright expired in the United States on 1 January 2024. The article explores the copyright protection of fictional characters beyond the earliest iteration
of Mickey Mouse and other ways fictional characters can be protected after copyright has expired. The authors examine the nature of copyright protection and its duration, a range of relevant copyright cases from the United States, United Kingdom and Australia, plus how Mickey Mouse can be
defended via Disney’s trade mark rights. The safeguarding of a fictional character or brand pursuant to Australian consumer law is also discussed. As the authors note, Mickey Mouse is “an interesting lens” to examine the means for protection that brands may wish to use regarding their prized IP.

Next, Nancy Du explores Australia’s anti-circumvention laws in the audiobook market. In 2006, Australia’s anticircumvention laws were amended to the Copyright Act 1968 (Cth) with the aim of protecting copyright holders in the digital sphere against piracy and unauthorised access
to their copyright material. According to Du, the laws abet anti-competitive behaviour by major audiobook platforms and harm copyright holders. Du proposes various solutions to reconcile Australia’s anti-circumvention laws with their original intention. Her solutions include amending the
sections of the Copyright Act relating to anti-circumvention laws, extending the interoperability exceptions in the Copyright Act beyond computer programs, and imposing mandatory transparency and interoperability requirements.

Our final article by Panayiotis Xenos examines patent trolls in Australia. Xenos explores the vexed definition of the term “patent troll” and the risks and rewards they can offer to a patent market. The strategies commonly employed by patent trolls are analysed as well as their typical characteristics. The role of public policy regarding patent trolls is also closely considered. While noting the differences to the Australian patent market, Xenos looks at the US market and the impact of US patent policy on trolls’ behaviour. Finally, the article provides examples how policy regarding patent troll activity in Australia can be improved. According to Xenos, there can be a “legitimate role” for patent trolls in Australia, “provided that regulators maintain a discerning eye on developments in their business practices” such as the incorporation of AI programs that could streamline the patent enforcement process.

We also feature four reports on a variety of topics. First, Ken Moon examines the recent decision by the New Zealand Court of Appeal (Collins, Katz and Mallon JJ) in Alalääkkölä v Palmer [2024] NZCA 24 (“Alalääkkölä”). The judgment considered how copyright in artistic works created
by one spouse during a marriage should be classified for the purpose of the Property (Relationships) Act 1976 (NZ) when the marriage ended. Alalääkkölä is also discussed in this issue of the Journal by our regular New Zealand correspondent, Andrew Brown KC. In his report, Moon explores the
preceding New Zealand Family Court and High Court judgments and reflects on the various questions the Court of Appeal decision raises. On 9 May 2024, the New Zealand Supreme Court (Ellen France, Kós and Miller JJ) gave leave to appeal Alalääkkölä ([2024] NZSC 56) so both these
submissions are very timely.

Next, Associate Professor Kanchana Kariyawasam reviews Research Handbook on Empirical Studies in Intellectual Property Law. The text showcases research from a range of leading international IP scholars, including various Australian academics. As Associate Professor Kariyawasam
notes, the book offers “a comprehensive evidence-based global perspective on IP law”. Then Associate Professor  Vicki Huang (who wrote a chapter in the aforementionedbook) reviews Teaching Intellectual Property Law: Strategy and Management. Associate Professor Huang discusses
the challenges faced by IP academics when teaching the modern law student in today’s online age. According to associate Professor Huang, the insights offered by the book’s respected IP scholars and practitioners will “inspire all types of educators”. Finally, Dr Daniela Simone reviews
Literary Characters in Intellectual Property Law by Australian Associate Professor Jani McCutcheon. Dr Simone’s review is interesting to read in light of the article in this issue by Gerakiteys, Parsons and Griffiths – both contributions explore the protection of highly valuable fictional characters
in IP law.

As usual, this edition also features current developments from Australia, New Zealand and around the world. Locally, these include reports on a string of patent judgments from the Federal Court of Australia and the Full Court of the Federal Court. There are also updates from China and Hong Kong
SAR, Japan, Singapore, the UK, European Union, France, Germany, Canada and the US. These cover a plethora of topics, such as trade mark infringement and keyword advertising in Singapore, a UK Court of Appeal decision on a dispute between rival supermarket chains regarding trade
mark infringement, passing off and copyright infringement, plus preliminary injunctions at the Unified Patent Court. As the official Journal of IPSANZ – the leading organisation of IP professionals in Australasia – I encourage reader feedback and invite contributions to editors@ipsanz.com.au. In the meantime, happy reading!

In Conversation with Sarah Matheson AM by Fiona Rotstein

For 26 years, Sarah Matheson AM worked in the IP group at Allens in its Melbourne office, including 20 years as a partner. In late January 2024, Sarah met with Fiona Rotstein to discuss IP law and practice plus Sarah’s extensive
governance work for various not-for-profit organisations, including her role as Reporter General of the International Association for the Protection of Intellectual Property, known by its French acronym, AIPPI (Association Internationale
pour la Protection de la Propriété Intellectuelle).

Photo courtesy of Allens

 

 


Articles

The Construction of Patents

In our digital age, we have become increasingly obsessed with instantaneous communication. But everyday life is also concerned with communication of, among others, information, concepts, ideas, instructions and opinions. The recipient of any communication must process and understand it. Sometimes the message can still get through even if the recipient does not speak or read the same language as that in which communication is made, such as we can experience when in a foreign country with road signs or traffic signals.

Those of us who have ever had to read a patent can find the process much more challenging than, say, comprehending the latest Instagram post from someone you follow. However, if the reader of a patent works in the field of the claimed invention, often, that person will have a head start in
appreciating what it is revealing, or in the lexicon of patents, teaching. He or she will read the patent, as Lord Hoffmann explained, with a view to its purposive construction, that is to say, “on the assumption that its purpose is to both to describe and to demarcate an invention – a practical idea which the patentee has had for a new product or process”.

The process of construing a patent is similar to how one construes other documents that have to be evaluated for some legal purpose, such as a statute, a contract, an allegedly defamatory or incorrect publication, or a will. But, there are nuances apposite for each of those separate legal situations. Importantly, a patent is not a document that operates like a contract: that is, to regulate a relationship in the manner agreed between its parties. Rather, as Dixon CJ, Kitto and Windeyer JJ explained in Welch Perrin & Co Pty Ltd v Worrell, a patent “is a public document which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood”.

In this article I want to cover how one must approach the construction of a patent taking into account, first, the statutory purposes, now set out in the Patents Act 1990 (Cth), secondly, the perspective from which one reads a patent, namely that of “a person skilled in the relevant art” or the
“ skilled addressee”, being a person who has the common  general knowledge that all non-inventive workers have inthe art or field for which the patent is written, and thirdly, the fundamental rules that the courts have developed as the guides to arrive at a patent’s proper construction.

The Honourable Steven Rares KC

 

Uncharted Waters for the House of Mouse: Mickey Mouse Enters the Public Domain

Introduction
Mickey Mouse is likely one of, if not the most, well-known cartoon characters of all time. As one of Walt Disney’s first cartoon characters, Mickey Mouse made his debut in the short film, Plane Crazy in May of 1928, but he was not introduced to the public until the distribution of Steamboat Willie in November of that year. Over the years, Disney has refined Mickey’s design and persona to create both an anthropomorphised ambassador of The Walt Disney Company and cultural icon.

Dean Gerakiteys, Joel Parsons and Grace Griffiths


Do Australian Anti-circumvention Laws Harm Copyright Holders in the Audiobook Market and How Can the Laws be Improved?

Introduction
Anti-circumvention laws in Australia, amended to the Copyright Act 1968 (Cth) in 2006 with the intention of protecting rightsholders in the digital realm, merit a critical examination over a decade later. This article focuses on the effects of anti-circumvention laws in the audiobook market. It contends that these laws, which were initially meant to protect audiobook rightsholders against piracy and unauthorised access to their copyrighted material, now facilitate anti-competitive behaviour from major audiobook platforms. As a result, harm is inadvertently inflicted upon rightsholders.

Nancy Du

 

Patent Trolls in Australia: Beware the Claws of a Toothless Tiger

Introduction

In 2015, a submission to the Australian Productivity Commission’s (“APC”) Inquiry into Intellectual Property Arrangements was filed by (now Distinguished Emeritus Professor) Dianne Nicol and (now Professor) Jane Nielsen in response to a wide array of intellectual property related matters. As part of its findings, the authors conclude that whilst “patent trolls” do not present an immediate risk to the integrity of the Australian patent markets, constant vigilance is still warranted. This  article will concur with the findings presented in this submission and articulate inmore granular detail why watchfulness is necessary by examining the role of these entities in the Australian context. The analysis herein will involve two components.

Panayiotis Xenos, LLM graduate from the University of New South Wales and has worked as a solicitor at a boutique Sydney firm, specialising in intellectual property law.

 

Copyright and the New Zealand Property (Relationships) Act 1976

Introduction In Alalääkkölä v Palmer, the New Zealand Court of Appeal has made a decision  as to how copyright should be treated under the Property (Relationships) Act 1976(NZ) (the “PRA”) when one of the now separated parties was the creator of the works giving rise to the copyrights at issue. This is the first New Zealand case where copyrights have constituted subject matter to be assessed for division between marital partners in a terminated relationship.

Ken Moon, Consultant, AJ Park, Auckland.

 

Reports

Book-Review: Research Handbook on Empirical Studies in Intellectual Property Law
Associate Professor Kanchana Kariyawasam :
Associate Professor at Griffith Business School, Griffith University, Australia.

Edited by Estelle Derclaye
[Edward Elgar Publishing 2023 pp 436. The eBook version is priced from £48/AU$92 from eBook vendors while in print the book can be ordered online from the Edward Elgar Publishing website <www.e-elgar.com>.

 

Book Review: Teaching Intellectual Property Law: Strategy and Management
by Associate Professor Vicki Huang : Associate Professor of Law (Intellectual Property) at Deakin University. She is the recipient of the University’s Teacher of the Year Award (2022) and Deakin Law School’s Teaching Excellence Award (2022).

Edited by Sabine Jacques and Ruth Soetendorp
[Edward Elgar 2023 pp 362. The e-book version is priced from £31/AU$60 from e-book vendors while in print the book can be ordered from the Edward Elgar Publishing website <www.e-elgar.com>.]

Book review: Literary Characters in Intellectual Property Law
Dr Daniela Simone : Senior Lecturer, Macquarie University and Honorary Lecturer, University College London.

Jani McCutcheon
[Edward Elgar Publishing 2023 pp 302. The eBook version is priced from £25/AU$48 from eBook vendors while in print the book can be ordered online from the Edward Elgar Publishing website <www.e-elgar.com>.]

Current Developments 

IP Australia

Diana Bogunovic, Michelle Catto, Sarah Dixon, Esther Lestrell and Andrea Ruhrmann
FB Rice

Design rights terminology: key terms for informed discussion
Your business plan – don’t forget IP!
Patent Analytics Reports: quantum technology filings and the power of hydrogen
Partnering with WIPO to build capacity in the Indo-Pacific region
Count Her In: Invest in Women – Accelerate Progress/ International Women’s Day 2024
IP infringement resource for rights holders
Understanding IP resource
Just launched – Australian Patent Search
It’s live! IP Australia adopts the Madrid Goods and Services list
Updated online trade mark searching experience
TM Checker advanced out of pilot
Newly notified signs under Article 6ter of the Paris Convention published on 28 March 2024

CASES

Tom Cordiner KC, Melissa Marcus, Clare Cunliffe, Marcus Fleming and Amy Surkis
Barristers
Correspondents for Victoria, Western Australia, South Australia, Tasmania and Northern Territory.

This quarter’s instalment presents a mixed bag of patent disputes, each dealing with distinct patent law issues. We start with an invention to deal with drill rod failure in Jusand, in which the Full Court broke new ground by applying the UK principle of “relevant range” in  oncluding that Jusand’s patent was invalid for lack of sufficiency. Leaving the mining space, we delve into the latest collision in the long running  dispute between SARB and VMS over parking overstaytechnology. The Full Court gave us some rare guidance on the interpretation of omnibus  claims and the application  of the lack of best method ground. We then shift gears tothe electronic gambling dispute that keeps on giving – the Aristocrat remitter. Justice Burley delivered a disappointing result for Aristocrat, finding that he was bound to follow the result of the Full Court and to conclude that the remainder  of the patent claims were not to a manner of manufacture.Aristocrat has elected to roll the dice again, appealing that decision. Finally, we wind down with Justice Nicholas’ decision in Neurim, in which he declined the opportunity to find a pharmaceutical (melatonin) to be a staple commercial  product. This finding leads these authors to dream aboutwhat it would take for a court to find a pharmaceutical a staple commercial product.

Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd
[2023] FCAFC 178
13 November 2023 – Perram, Nicholas and McElwaine JJ
Patent validity – sufficiency and support – patent infringement – construction of claims

SARB Management Group Pty Ltd trading as Database Consultants Australia v Vehicle Monitoring Systems Pty Limited
[2024] FCAFC 6
9 February 2024 – Burley, Jackson and Downes JJ
Patent infringement – construction of claims – patent validity – best method

Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3)
[2024] FCA 212
8 March 2024 – Burley J
Patents – manner of manufacture – computer implemented inventions

Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 5)
[2024] FCA 360
12 April 2024 – Nicholas J
Intellectual property – patent law – section 117 – authorisation and “Swiss-style” claims

 

Rohit Dighe, Claudia Sobral and Miriam Zanker
Davies Collison Cave Law, Sydney

HRB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd
[2024] FCAFC 10
16 February 2024 – Nicholas, Burley and Hespe JJ

 

NEW ZEALAND
Andrew Brown KC
Auckland
Correspondent for New Zealand

Alalääkkölä v Palmer
Court of Appeal of New Zealand
Collins, Katz and Mallon JJ
Hearing: 9 March 2023
Judgment: 21 February 2024
[2024] NZCA 24

 

CHINA & HONG KONG SAR
Dan Plane, Sherry Li
and Jeremy Chiu
Simone Intellectual Property Services (SIPS) Hong Kong
Correspondents for China and Hong Kong SAR

Defending Against Non-use Cancellation Attacks of Trade Marks in China

 

JAPAN
John A Tessensohn
Board Member, SHUSAKU-YAMAMOTO, Osaka, Japan
Correspondent for Japan

Japan’s New Consent System for Trade Mark Registration

 

SINGAPORE

Aaron Thng and Tan Wei Ming
Amica Law
Correspondents for Singapore

Treading Lightly: Trade Mark Infringement and Keyword
Advertising in Singapore

 

EUROPE

UNITED KINGDOM
Jake Palmer

Bristows LLP
Correspondents for the United Kingdom

Lidl Trouble in Big Tesco – UK Court of Appeal upholds findings of trade mark infringement and passing off by Tesco but overturns finding of copyright infringement

Lidl Great Britain Limited and Anor. v Tesco Stores Limited and Anor.
[2024] EWCA Civ 262

 

EUROPEAN UNION
Professor Phillip Johnson
Professor of Commercial Law, Cardiff University
Correspondent for the European Union

The Court of Appeal of the Unified Patent Court Sets a High Bar for Preliminary Injunctions

 

FRANCE

Emmanuel Baud and Philippe Marchiset 
Jones Day
Correspondents for France

Admissibility of a patent infringement claim filed by an assignee

 

GERMANY

Christopher Weber, and  Carsten Plaga
Kather Augenstein
Correspondents for Germany

Language regime at Unified Patent Court is beginning to crystalise: German to English procedural shift approved by Court of Appeal
Court of Appeal of the UPC decision dated 17 April 2024, docket number EPG_CoA_101/2024
ApL_12116/2024

 

NORTH AMERICA

CANADA

Catherine Dennis Brooks
Partner, Miller Thomson LLP
Correspondent for Canada

Canadian Intellectual Property Office Introduces New Trade Mark Examination Service Standards

 

UNITED STATES OF AMERICA
Guy Yonay
Pearl Cohen Zedek Latzer Baratz LLP
Correspondent for the United States of America
Federal Circuit Broadens Liability for US Patent Infringement Based On Foreign Activities

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