ISSUE 125 – September 2021
EDITORIAL – BY FIONA ROTSTEIN
This issue of Intellectual Property Forum focuses on patents – an area of IP which is always a hot topic. Recently, patent law has been in the news for a range of reasons. Firstly, a number of World Trade Organization (“WTO”) members, including the United States and New Zealand, announced their support for a potential TRIPS Agreement waiver of patent rights on COVID-19 vaccines and medicines. According to a Senate Estimates hearing on 3 June 2021, Australia “is not one of these [WTO] members, who are resisting a move to text-based negotiations” of the waiver proposal. But, since then, the Australian Government has been silent as to whether it will support the proposed waiver. Second, on 30 July 2021, in a world-first court decision, Thaler v Commissioner of Patents [2021] FCA 879 (“Thaler”), Justice Beach of the Federal Court of Australia held that an Artificial Intelligence (“AI”) system can be an inventor. On 30 August 2021, it was announced that the Commissioner of Patents has decided to appeal Justice Beach’s decision in Thaler. In a coup for the Journal, the lead author of the first article in this issue is Professor Ryan Abbott, the international leader of the legal team behind the AI system in this case.
In Conversation with The Honourable Justice Ian Gault by Fiona Rotstein
From a locked down Melbourne in June 2021, Fiona Rotstein caught up with The Honourable Justice Ian Gault of the High Court of New Zealand on Zoom to discuss His Honour’s career, intellectual property, significant changes in law firm practice and some of the silver linings of litigating during COVID-19.
Articles
A Brief Analysis of DABUS, Artificial Intelligence, and the Future of Patent Law
Introduction: the emergence of inventive AI
Artificial Intelligence (“AI”) is really doing some very exciting things these days – from making music that sounds vaguely like Katy Perry made it, to writing books that are almost worth reading for novelty’s sake. AI is doing some less practical things like dominating people at conventional board games, but it has also been engaged in scientific developments. For instance, in November 2020, the company DeepMind created an AI that outperformed human teams at predicting 3D protein folding structure from a 2D sequence. This was interesting for a number of reasons. From a medical point of view, predicting protein folding can be a critical component of drug discovery. From a legal point of view, this sort of activity is exciting because of its legal implications – including with respect to intellectual property. For instance, cases in which traditionally inventive activity is undertaken by an AI has led to challenges in acquiring a patent over such useful inventions.
Professor Ryan Abbott, Professor of Law and Health Sciences at University of Surrey School of Law and Adjunct Assistant Professor of Medicine at the David Geffen School of Medicine at University of California, Los Angeles;
Dr Rita Matulionyte, Dr, LLM (Munich); Senior Lecturer at Macquarie Law School, Macquarie University; associate senior researcher at the Law Institute of Lithuania; and
Paul Nolan, LLM (University of Sydney), MIP (University of Technology Sydney).
Patentees and Prior Users: Does Section 119 of the Patents Act 1990 (Cth) Get the Balance of Rights Right?
Abstract
When more than one person develops the same invention, it is necessary to provide both with the opportunity to exploit that invention, even though only one can obtain a valid patent. Section 119 of the Patents Act 1990 (Cth) provides an exemption from infringement to the prior user and has developed in the 20 years since its enactment from a defence of little use to a clear exemption that has been recommended to be adopted in other first-to-file jurisdictions. This article explores the various amendments to the provision, and juxtaposes the Australian law with that of other jurisdictions. The article concludes with a discussion of the imminent inclusion in the Designs Act 2003 (Cth) of a prior user exemption based on section 119.
Jacqueline Simpkin, Lawyer, Davies Collison Cave Law and
Michael Caine, Principal, Davies Collison Cave
The Positive and Negative Effects of Patent Grace Periods: How Do They Apply to New Zealand?
Abstract
New Zealand’s patent law was amended to introduce a grace period provision in effect from 30 December 2018 which provides that self-disclosures made 12 months before filing a patent application are not prior art. This article attempts to identify if the positive and negative effects that are generally associated with a grace period are pertinent to New Zealand. Certain factors specific to New Zealand such as a large proportion of co-filing in foreign Patent Offices could discourage potential rightsholders from relying on New Zealand’s grace period. Therefore, the positive effects may not transpire in New Zealand’s case. Likewise, certain aspects of New Zealand’s patent legislation do not allow adverse effects, such as an increase in uncertainty and a likelihood of abuse of the grace period to extend the period of patent monopoly, to occur.
Nirupama Buddha
Patent Executive, James and Wells, Hamilton, New Zealand
“Technicality” and Section 11 of the New Zealand Patents Act 2013: It’s More Than a Technicality
Abstract
Section 11 of the New Zealand Patents Act 2013 (“the Act”), containing a “computer programs as such” exclusion from patentability, is something of an enigma: openly modelling itself on overseas jurisprudence while rejecting a concept (technical character) that is at the core, for good reason, of that same jurisprudence. The definitions of certain key s.11 terms recently proposed in Thomson Reuters Enterprise Centre GMBH [2020] NZIPOPAT 7 (“Thomson”) may potentially compound the problems around this; with the continued effect of genuinely deserving innovations being denied patent protection. The situation would be mitigated by admitting into New Zealand law a criterion modelled on the “technicality” yardstick used in other jurisdictions.
Anna Klepacki
Patent Attorney, PIPERS Intellectual Property, Auckland, New Zealand
The Playwright, the Director, and the Audience: “The course of true love never did run smooth”
Abstract
There is an age-old creative feud between playwrights and directors. From a playwright’s perspective, repugnant interpretations of, and alterations to, their play are damaging. Yet this threat to an author’s integrity must be balanced against the public need for creativity and innovation. From a contrasting perspective, directors make a vital contribution to the staging of a play, raising a question as to whether their interpretative creation can be protected through copyright. Specific contractual terms provide the most promising means for balancing these competing interests so that the law can support creativity and creators alike.
Alexandra de Zwart
Solicitor, DLA Piper, Sydney
Reports
Book Review: The Trans-Pacific Partnership: Intellectual Property and Trade in the Pacific Rim
By Mathew Rimmer
[Edward Elgar 2020 pp. 616. The eBook version is priced from £25/AU$47 from eBook vendors while in print the book can be ordered from the Edward Elgar Publishing website <www.e-elgar.com>.]
Doug Calhoun
IP mentor from Wellington, New Zealand
Book Review: Copyright In The Music Industry: A Practical Guide to Exploiting and Enforcing Rights
By Hayleigh Bosher
[Edward Elgar Publishing 2021 pp. 272. The e-Book version is priced from £52/AU$98 from e-Book vendors while in print the book can be ordered from the Edward Elgar Publishing website <www.e-elgar.com>.]
Julius Hattingh
Solicitor at Hudson Gavin Martin, Auckland. He makes music in his free time, and plays and records with the band “Sleep Years”.
Book Review: Kritika: Essays on Intellectual Property, Volume 4
Edited by Peter Drahos, Gustavo Ghidini and Hanns Ullrich
[Edward Elgar Publishing 2020 pp. 232. The e-Book version is priced from £25/AU$47 from e-Book vendors while in print the book can be ordered from the Edward Elgar Publishing website <www.e-elgar.com>.]
Ben Hopper
Lecturer, Melbourne Law School
Current Developments
IP Australia
Roseanne Mannion and Martin Friedgut
Spruson & Ferguson
ATMS replaces the Australian Official Journal of Trade Marks
Research showing trade mark activity linked to export growth
Revised form for extensions of term under section 70 of the Patents Act 1990 (Cth)
Phase out of the innovation patent
CASES
Tom Cordiner QC, Melissa Marcus, Clare Cunliffe and Marcus Fleming
Barristers, Victoria, Western Australia, South
Australia, Tasmania and Northern Territory
Ariosa Diagnostics, Inc v Sequenom, Inc
[2021] FCAFC 101
18 June 2021
Patents – method of diagnosis – manner of manufacture – sufficiency – fair basis – infringement
Ono Pharmaceutical Co, Ltd v Commissioner of Patents
[2021] FCA 643
11 June 2021
Patents – extension of term – which ARTG registration may be relied on
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3)
[2021] FCA 729
30 June 2021
Trade Marks – Corner – condition or limitation imposed on registration
Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd
[2021] FCA 617
8 June 2021
Trade Marks and Australian Consumer Law – termination and breach of Trade Mark Licence Agreement (“TMLA”) – trade mark infringement – misleading or deceptive conduct – false representations – use of CALTEX and STARCARD
McCallum, in the Matter of Re Holdco Pty Ltd (Administrators Appointed) (No 2)
[2021] FCA 377
1 April 2021
Valuing intellectual property – registering security interests concerning intellectual property on the Personal Properties Securities Register (“PPSR”)
Lauren Eade, Jodie Goonawardena, Miriam Zanker and Courtney White
Davies Collison Cave, Sydney
Taxiprop Pty Ltd v Neutron Holdings Inc (No 3)
[2021] FCA 274
24 March 2021
Universal Music Publishing Pty Ltd v Palmer (No 2)
[2021] FCA 434
30 April 2021
AGL Energy Limited v Greenpeace Australia Pacific Limited
[2021] FCA 625
8 June 2021
Dr Dimitrios Eliades
Barrister, Queensland
Falkenhagen v West
[2021] FCA 575
31 May 2021
Vald Performance Pty Ltd v Kangatech Pty Ltd
[2021] FCA 539
20 May 2021
NEW ZEALAND
Andrew Brown QC
Barrister, Auckland
Correspondent for New Zealand
Flujo Sanguineo Holdings Pty Limited v Merisant Company & Ors
High Court of New Zealand, Woolford J
19-23 April, 1 June 2021
[2021] NZHC 1505
CHINA & HONG KONG
Dan Plane and Mai Lin
Simone Intellectual Property Services (“SIPS”) Hong Kong
Correspondents for China & Hong Kong
Fendi Case Provides Solid Justification for Class 35 Filings in the Fight Against Aggressive Parallel Importers in China
JAPAN
John A Tessensohn
Board Member, SHUSAKU-YAMAMOTO, Osaka, Japan
Correspondents for Japan
Coffee Giant Defeated by Bubble Tea Upstart at IPHCJ
SINGAPORE
Winnie Tham, Aaron Thng, Marcus Hoh
Amica Law LLC
Correspondents for Singapore
“Prosecco” as a Geographical Indication: Distinctively Italian, or just a Grape Variety?
EUROPE
EUROPEAN UNION
Phillip Johnson
Professor of Commercial Law, Cardiff University and main author of the Law of Patents (5th Ed, Lexisnexis, forthcoming).
Correspondent for the European Union
Double Patenting: finally banned (again) at the European Patent Office
G 4/19 Double patenting/NESTLÉ, 22 June 2021, EP:BA:2021:G000419.20210622
UNITED KINGDOM
Roosa Tarkiainen and Simon Clark
Bristows LLP
Correspondents for Untied Kingdom
The House of Commons Digital, Culture, Media and Sport Select Committee Publishes a Report on their Inquiry into the Economics of Music Streaming
GERMANY
Christopher Weber and Sören Dahm
Kather Augenstein
Correspondents for Germany
Düsseldorf Higher Regional Court refines case law on patent infringement by equivalents
Higher Regional Court of Düsseldorf, decisions dated 8 April 2021, 2 U 42/20
FRANCE
Emmanuel Baud and Philippe Marchiset
Jones Day
Correspondents for France
Additional clarifications provided by French courts regarding misleading trade marks
NORTH AMERICA
CANADA
Catherine Dennis Brooks
Partner, Miller Thomson LLP
Correspondent for Canada
Measures to Improve Timely Examination of Canadian Trade Mark Applications
UNITED STATES OF AMERICA
Leon B Greenfield, Hartmut Schneider, Alyssa DaCunha, Heather M Petruzzi and Nana Wilberforce
WilmerHale
Correspondents for the United States of America
Focus on Healthcare in New Biden Administration Executive Order on Competition