- Email: [email protected]
News from Australia and New Zealand
World Patent Information 33 (2011) 97–99
Contents lists available at ScienceDirect
World Patent Information journal homepage: www.elsevier.com/locate/worpatin
News from Australia and New Zealand [Adapted by the editor from information kindly provided by Grant Shoebridge, Michael Deacon, Chris Bevitt, Matthew Ford, Jack Redfern, Gareth Dixon, Charles Tansey and Jacinta Flattery-O’Brien]
1. Senate inquiry into the patentability of genes In 2008 a Melbourne-based company, Genetic Technologies, which held an exclusive license to conduct tests for determining susceptibility to breast cancer based on mutations in genes BRCA-1 and BRCA-2, decided to assert their rights and charge licensing fees. The resulting potential increase in breast cancer testing costs gave rise to a ‘‘front-page outcry”. Although Genetic Technologies ultimately backed down, the scare motivated Senator Bill Heffernan to secure an inquiry by the Australian Senate’s community affairs committee into the patentability of genes and other biological material. It is testament to the complexity of the issues involved that the deadline for reporting the Senate committee’s recommendations was extended on three separate occasions, and then further delayed by the federal election held on 21 August 2010. In view of the considerable public interest and substantial debate in relation to the subject matter of this Inquiry, it seems very likely that it will continue once the new Parliament sits. The full text of an article on this topic is available at http:// www.shelstonip.com/news_story.asp? m=9; y=2010;nsid=158. Authors: Grant Shoebridge and Jacinta Flattery-O’Brien
2. auDA considers proposals for new .au domains The Australian Domain Name Administrator (auDA) is responsible for the development and implementation of policy relating to the use and allocation of .au domains. There are currently 16 active second level domains (2LDs) available for use in the .au space. Each 2LD is for a specific purpose. auDA policy restricts the type of entities that may register a domain name and also the type of 2LD that may be used by each relevant entity. Some of the currently available 2LDs include com.au (for general commercial use), id.au (for use by individuals) and gov.au (for use by government bodies and departments). On 1 October 2009, auDA called for public proposals for new 2LDs and subsequently set up the New 2LDs Advisory Panel to evaluate proposals and provide recommendations to auDA. Subject to public consultation, auDA is also considering re-activating the existing conf.au and info.au domains, which became inactive following their introduction in 2002. auDA has since received two proposals for new 2LDs and two proposals relating to the existing conf.au and info.au domains.
doi:10.1016/j.wpi.2010.09.002
blog.au AusRegistry proposes that blog.au should be introduced for use by registrants wishing to establish websites purely for blogging purposes. Under AusRegistry’s proposal, registrants will be permitted to use any name considered appropriate as their domain name in conjunction with blog.au. For example, the domain name could be cars.blog.au or joebloggs.blog.au. According to AusRegistry, internet users will find it easier to locate blog websites about particular topics if descriptive terms are allowed to be used in conjunction with a 2LD that specifically identifies the website as a blog. event.au Brian Burnett proposes that event.au should be introduced for users hosting websites with the primary purpose of promoting or providing information about events. According to Mr. Burnett, this will assist with consolidating the event industry across Australia. Under the proposal, the types of events for which the new 2LD may be used is broader than the eligible event types under the previous conf.au eligibility requirements and includes events such as meetings, conferences, seminars, exhibitions, fairs, festivals, tournaments, races, games, parades, performances and parties. conf.au Mark Tearle re-submitted the proposal he initially submitted in 2002 in relation to conf.au. Mr. Tearle proposes that conf.au should be available for use by registrants that already have an existing .au domain but wish to host a separate site specifically for an event the registrant is organising. This may assist to reduce the amount of unnecessary registrations for these events in other domains. Under this proposal, the domain name license will be temporary and will expire at the conclusion of the event. info.au auDA staff submitted two proposals for info.au, recognising its potential to be a useful domain for Australian users. Firstly, the staff proposed that info.au be re-introduced for websites providing major information resources. This is the purpose for which it was originally introduced. Registrants would be made up of organisations that maintain and provide major public information resources and campaigns, such as the Australian Federal Police. Alternatively, the staff suggested that info.au could be re-introduced as a premium commercial domain name for use by legitimate commercial entities that have been unable to register a com.au or net.au domain. AusRegistry also supports the re-introduction of info.au. However, under AusRegistry’s proposal, info.au should only be available to registrants that do not qualify for the other open 2LDs (com.au,
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News from Australia and New Zealand / World Patent Information 33 (2011) 97–99
net.au, org.au and asn.au) and do not want the domain to reflect an individual name as required for an id.au domain. 2LDs advisory panel The Panel has already provided some preliminary views on the proposals. Firstly, the Panel has indicated that it will be difficult to define and enforce a requirement for registrants to use blog.au for the sole purpose of operating a blog. With this in mind and given that users can set up blogs under other domain names, the Panel currently questions whether blog.au is required. Secondly, the Panel does not believe both event.au and conf.au are required. Whether either of these domains is required will likely depend upon public demand. Finally, at this stage the Panel appears inclined to close down the info.au domain. According to the Panel, it will be too difficult to define which organisations properly fall within the scope of a ‘‘major information resource” for the purpose of enforcing the intended eligibility and use requirements for the info.au domain. Also, there does not appear to be a sufficient need for a new domain for that purpose given that most authoritative information resources already provide information via gov.au or edu.au domains. Limiting availability of the info.au domain only to registrants that do not qualify for the other open 2LDs will also result in the domain being available only to a small number of users. Following a period for public submissions, the Panel will file its final report with the auDA Board for decisions. Authors: Michael Deacon and Chris Bevitt 3. Not all protection is equal – beware IP-related scams Recently, there has been an increase in so-called ‘‘scams” involving apparent IP-related companies sending misleading letters to applicants and owners of IP rights in an attempt to extract money from those persons. A number of official intellectual property organisations, including the World Intellectual Property Organisation (WIPO), have recognised this issue and distributed warnings against these scams. Often these scam letters take the appearance of invoices requesting the applicant/owner to pay for services that are essentially worthless. Examples include offers or invoices for registering patents or trade marks in international registers and offers for patent and trade mark monitoring services. These companies obtain their targets’ details from official registers where details of their patent, trade mark or application are published, often together with the applicant/owners personal details. The companies use e-mails, fake websites, faxes and telephone numbers to give the appearance of a legitimate IP-related organisation. In a recent example, late last year, a Florida-based company had been found to have violated the state’s Deceptive and Unfair Trade Practices Act by sending misleading invoices requesting payment for essentially worthless IP-related services. This victory is a small step towards combating this deceptive practice. However, recently, WIPO has witnessed a rise in the number of IP related scams. IP Australia has also advised that they occasionally receive notification of similar instances. To combat this issue, if you are an owner or applicant of a patent or trade mark, you should question correspondence from unfamiliar organisations offering services such as those mentioned above. Typically, the only organisations sending IP-related correspondence to applicants/owners of IP rights should be their legal representatives such as patent or trade mark attorneys, the official intellectual property offices such as WIPO and IP Australia, and Computer Patent Annuities (CPA), which is an organisation involved in managing renewal fees for patents and patent applications.
IP Australia and WIPO have issued lists of companies reported to have distributed unsolicited communications. The WIPO list also includes examples of the misleading correspondence sent by each listed organisation. These lists can be found at the following addresses. http://www.ipaustralia.gov.au/factsheets/unsolicited_ip.shtml. http://www.wipo.int/pct/en/warning/pct_warning.htm. Authors: Matthew Ford and Jack Redfern
4. Software patents may be consigned to history under New Zealand’s New Patents Act The progress towards New Zealand’s new Patents Act over the last six years has been slow. Following public consultation on the Patents Bill 2008, the Commerce Select Committee has now proposed that computer software should be excluded from patentability. Such a reversal is at odds not only with the position adopted during drafting of the Patents Bill, it is also contrary to the stance taken by New Zealand’s major trading partners, especially Australia and the United States, who generally allow software patents subject to satisfying what approximates to a mild ‘‘technical effect” criterion. However, perhaps most significantly, the exclusion also contravenes New Zealand’s obligations under Article 27 of the TRIPs Agreement, which requires that signatories make patents available ‘‘in all fields of technology”. However in July 2010, New Zealand’s Minister of Commerce, Hon. Simon Power, confirmed that the exclusion will remain, but that patents for ‘‘embedded software” will be allowed when the Bill is finally passed in Parliament. This policy decision leaves software developers seeking patent protection in New Zealand somewhat in limbo. Further, it places the Intellectual Property Office of New Zealand (‘‘IPONZ”) in a near-impossible situation, for in the same announcement, Mr Power also instructed IPONZ to develop guidelines that allow inventions for embedded software to be patented. In drawing a line in the sand between ‘‘software” and ‘‘embedded software”, IPONZ must now ‘‘succeed” where other jurisdictions – both at Patent Office and indeed Court level have consistently failed. Not only that, but they must hope the guidelines stand up in Court, which will surely place greater emphasis on legislative intent and persuasive decisions from other jurisdictions. A reason that the New Zealand Government may yet reconsider the proposed exclusion is the forthcoming United States-New Zealand Free Trade Agreement (‘‘FTA”); President Obama confirmed in September 2009 that this was to proceed. Whilst the opportunity to trade freely with the US is a boon for New Zealand exporters, any such agreement will inevitably come at a price; New Zealand would likely need to yield in certain areas in order to secure such a deal. To this end, one need only look to the changes that were made to the Australian Patents Act 1990 following the Australia-United States FTA in 2008. Authors: Gareth Dixon and Jack Redfern
5. A new and improved patent prosecution highway Harmonisation of patent laws and practices is occurring slowly but surely throughout the world. It follows that the less ‘‘idiosyncratic” a country’s laws and practices are, the cheaper and easier it should be to obtain patent protection in that country. Harmonisation therefore potential benefits to Australian patent applicants seeking protection in countries closely aligned with our own patent system.
News from Australia and New Zealand / World Patent Information 33 (2011) 97–99
The existing AU-US PPH is intended to shorten examination delays before each patent office by leveraging work conducted by the other. Under the PPH, allowance of a claim in either jurisdiction provides an avenue to accelerate examination in the other. This in turn encourages consistency of examination and provides greater certainty both for patentees and competitors. Whilst sound in theory, attempts by Australian patent applicants to make use of the AU-US PPH have led to criticism of the scheme’s complexity and the increased burden on the applicant. The perceived weaknesses of the AU-US PPH include: The burden on the applicant to demonstrate how each claim of a ‘‘first” application matches a claim of a corresponding application in a partner office; The PPH scheme cannot be used if examination has already commenced in the country in which expedited examination would otherwise be sought; The application must have been first-filed in one of the countries party to the PPH scheme. The above limitations have rendered the AU-US PPH scheme – and indeed many of its variants throughout the world, largely ineffectual in practice. Recently however, another PPH-type arrangement has been established between the so-called ‘‘Vancouver Group”, which comprises the patent offices of Australia, Canada and the United Kingdom. However, this agreement goes even further than the AUUS PPH – and is based on several ‘‘mutual exploitation principles”, namely: To the extent possible, one patent office will rely on a search or examination performed by a ‘‘partner” office. However, any office is free to perform further searching if it is deemed necessary;
99
The onus is upon each patent office to ascertain earlier work of any partner offices (i.e., this is not an applicant-driven procedure); An applicant is to be kept apprised of where the earlier work of a partner office is to be relied upon. If further searching or examination is required, both the applicant and the partner offices will be advised as to the reasons this was considered necessary; The applicant has the facility to apply for expedited examination in one or more partner offices as soon as a first patent office indicates any claim is in order for Allowance. Once the Vancouver Group agreement is implemented, applicants will be provided with means for quickly and cheaply progressing patent applications filed in two or more of Australia, Canada and the United Kingdom. Authors: Gareth Dixon and Charles Tansey List of all authors Grant Shoebridge Michael Deacon Chris Bevitt Matthew Ford Jack Redfern Gareth Dixon Charles Tansey Jacinta Flattery-O’Brien Shelston IP, Level 21, 60 Margaret Street, Sydney, NSW 2000, Australia E-mail address: [email protected]
Contents lists available at ScienceDirect
World Patent Information journal homepage: www.elsevier.com/locate/worpatin
News from Australia and New Zealand [Adapted by the editor from information kindly provided by Grant Shoebridge, Michael Deacon, Chris Bevitt, Matthew Ford, Jack Redfern, Gareth Dixon, Charles Tansey and Jacinta Flattery-O’Brien]
1. Senate inquiry into the patentability of genes In 2008 a Melbourne-based company, Genetic Technologies, which held an exclusive license to conduct tests for determining susceptibility to breast cancer based on mutations in genes BRCA-1 and BRCA-2, decided to assert their rights and charge licensing fees. The resulting potential increase in breast cancer testing costs gave rise to a ‘‘front-page outcry”. Although Genetic Technologies ultimately backed down, the scare motivated Senator Bill Heffernan to secure an inquiry by the Australian Senate’s community affairs committee into the patentability of genes and other biological material. It is testament to the complexity of the issues involved that the deadline for reporting the Senate committee’s recommendations was extended on three separate occasions, and then further delayed by the federal election held on 21 August 2010. In view of the considerable public interest and substantial debate in relation to the subject matter of this Inquiry, it seems very likely that it will continue once the new Parliament sits. The full text of an article on this topic is available at http:// www.shelstonip.com/news_story.asp? m=9; y=2010;nsid=158. Authors: Grant Shoebridge and Jacinta Flattery-O’Brien
2. auDA considers proposals for new .au domains The Australian Domain Name Administrator (auDA) is responsible for the development and implementation of policy relating to the use and allocation of .au domains. There are currently 16 active second level domains (2LDs) available for use in the .au space. Each 2LD is for a specific purpose. auDA policy restricts the type of entities that may register a domain name and also the type of 2LD that may be used by each relevant entity. Some of the currently available 2LDs include com.au (for general commercial use), id.au (for use by individuals) and gov.au (for use by government bodies and departments). On 1 October 2009, auDA called for public proposals for new 2LDs and subsequently set up the New 2LDs Advisory Panel to evaluate proposals and provide recommendations to auDA. Subject to public consultation, auDA is also considering re-activating the existing conf.au and info.au domains, which became inactive following their introduction in 2002. auDA has since received two proposals for new 2LDs and two proposals relating to the existing conf.au and info.au domains.
doi:10.1016/j.wpi.2010.09.002
blog.au AusRegistry proposes that blog.au should be introduced for use by registrants wishing to establish websites purely for blogging purposes. Under AusRegistry’s proposal, registrants will be permitted to use any name considered appropriate as their domain name in conjunction with blog.au. For example, the domain name could be cars.blog.au or joebloggs.blog.au. According to AusRegistry, internet users will find it easier to locate blog websites about particular topics if descriptive terms are allowed to be used in conjunction with a 2LD that specifically identifies the website as a blog. event.au Brian Burnett proposes that event.au should be introduced for users hosting websites with the primary purpose of promoting or providing information about events. According to Mr. Burnett, this will assist with consolidating the event industry across Australia. Under the proposal, the types of events for which the new 2LD may be used is broader than the eligible event types under the previous conf.au eligibility requirements and includes events such as meetings, conferences, seminars, exhibitions, fairs, festivals, tournaments, races, games, parades, performances and parties. conf.au Mark Tearle re-submitted the proposal he initially submitted in 2002 in relation to conf.au. Mr. Tearle proposes that conf.au should be available for use by registrants that already have an existing .au domain but wish to host a separate site specifically for an event the registrant is organising. This may assist to reduce the amount of unnecessary registrations for these events in other domains. Under this proposal, the domain name license will be temporary and will expire at the conclusion of the event. info.au auDA staff submitted two proposals for info.au, recognising its potential to be a useful domain for Australian users. Firstly, the staff proposed that info.au be re-introduced for websites providing major information resources. This is the purpose for which it was originally introduced. Registrants would be made up of organisations that maintain and provide major public information resources and campaigns, such as the Australian Federal Police. Alternatively, the staff suggested that info.au could be re-introduced as a premium commercial domain name for use by legitimate commercial entities that have been unable to register a com.au or net.au domain. AusRegistry also supports the re-introduction of info.au. However, under AusRegistry’s proposal, info.au should only be available to registrants that do not qualify for the other open 2LDs (com.au,
98
News from Australia and New Zealand / World Patent Information 33 (2011) 97–99
net.au, org.au and asn.au) and do not want the domain to reflect an individual name as required for an id.au domain. 2LDs advisory panel The Panel has already provided some preliminary views on the proposals. Firstly, the Panel has indicated that it will be difficult to define and enforce a requirement for registrants to use blog.au for the sole purpose of operating a blog. With this in mind and given that users can set up blogs under other domain names, the Panel currently questions whether blog.au is required. Secondly, the Panel does not believe both event.au and conf.au are required. Whether either of these domains is required will likely depend upon public demand. Finally, at this stage the Panel appears inclined to close down the info.au domain. According to the Panel, it will be too difficult to define which organisations properly fall within the scope of a ‘‘major information resource” for the purpose of enforcing the intended eligibility and use requirements for the info.au domain. Also, there does not appear to be a sufficient need for a new domain for that purpose given that most authoritative information resources already provide information via gov.au or edu.au domains. Limiting availability of the info.au domain only to registrants that do not qualify for the other open 2LDs will also result in the domain being available only to a small number of users. Following a period for public submissions, the Panel will file its final report with the auDA Board for decisions. Authors: Michael Deacon and Chris Bevitt 3. Not all protection is equal – beware IP-related scams Recently, there has been an increase in so-called ‘‘scams” involving apparent IP-related companies sending misleading letters to applicants and owners of IP rights in an attempt to extract money from those persons. A number of official intellectual property organisations, including the World Intellectual Property Organisation (WIPO), have recognised this issue and distributed warnings against these scams. Often these scam letters take the appearance of invoices requesting the applicant/owner to pay for services that are essentially worthless. Examples include offers or invoices for registering patents or trade marks in international registers and offers for patent and trade mark monitoring services. These companies obtain their targets’ details from official registers where details of their patent, trade mark or application are published, often together with the applicant/owners personal details. The companies use e-mails, fake websites, faxes and telephone numbers to give the appearance of a legitimate IP-related organisation. In a recent example, late last year, a Florida-based company had been found to have violated the state’s Deceptive and Unfair Trade Practices Act by sending misleading invoices requesting payment for essentially worthless IP-related services. This victory is a small step towards combating this deceptive practice. However, recently, WIPO has witnessed a rise in the number of IP related scams. IP Australia has also advised that they occasionally receive notification of similar instances. To combat this issue, if you are an owner or applicant of a patent or trade mark, you should question correspondence from unfamiliar organisations offering services such as those mentioned above. Typically, the only organisations sending IP-related correspondence to applicants/owners of IP rights should be their legal representatives such as patent or trade mark attorneys, the official intellectual property offices such as WIPO and IP Australia, and Computer Patent Annuities (CPA), which is an organisation involved in managing renewal fees for patents and patent applications.
IP Australia and WIPO have issued lists of companies reported to have distributed unsolicited communications. The WIPO list also includes examples of the misleading correspondence sent by each listed organisation. These lists can be found at the following addresses. http://www.ipaustralia.gov.au/factsheets/unsolicited_ip.shtml. http://www.wipo.int/pct/en/warning/pct_warning.htm. Authors: Matthew Ford and Jack Redfern
4. Software patents may be consigned to history under New Zealand’s New Patents Act The progress towards New Zealand’s new Patents Act over the last six years has been slow. Following public consultation on the Patents Bill 2008, the Commerce Select Committee has now proposed that computer software should be excluded from patentability. Such a reversal is at odds not only with the position adopted during drafting of the Patents Bill, it is also contrary to the stance taken by New Zealand’s major trading partners, especially Australia and the United States, who generally allow software patents subject to satisfying what approximates to a mild ‘‘technical effect” criterion. However, perhaps most significantly, the exclusion also contravenes New Zealand’s obligations under Article 27 of the TRIPs Agreement, which requires that signatories make patents available ‘‘in all fields of technology”. However in July 2010, New Zealand’s Minister of Commerce, Hon. Simon Power, confirmed that the exclusion will remain, but that patents for ‘‘embedded software” will be allowed when the Bill is finally passed in Parliament. This policy decision leaves software developers seeking patent protection in New Zealand somewhat in limbo. Further, it places the Intellectual Property Office of New Zealand (‘‘IPONZ”) in a near-impossible situation, for in the same announcement, Mr Power also instructed IPONZ to develop guidelines that allow inventions for embedded software to be patented. In drawing a line in the sand between ‘‘software” and ‘‘embedded software”, IPONZ must now ‘‘succeed” where other jurisdictions – both at Patent Office and indeed Court level have consistently failed. Not only that, but they must hope the guidelines stand up in Court, which will surely place greater emphasis on legislative intent and persuasive decisions from other jurisdictions. A reason that the New Zealand Government may yet reconsider the proposed exclusion is the forthcoming United States-New Zealand Free Trade Agreement (‘‘FTA”); President Obama confirmed in September 2009 that this was to proceed. Whilst the opportunity to trade freely with the US is a boon for New Zealand exporters, any such agreement will inevitably come at a price; New Zealand would likely need to yield in certain areas in order to secure such a deal. To this end, one need only look to the changes that were made to the Australian Patents Act 1990 following the Australia-United States FTA in 2008. Authors: Gareth Dixon and Jack Redfern
5. A new and improved patent prosecution highway Harmonisation of patent laws and practices is occurring slowly but surely throughout the world. It follows that the less ‘‘idiosyncratic” a country’s laws and practices are, the cheaper and easier it should be to obtain patent protection in that country. Harmonisation therefore potential benefits to Australian patent applicants seeking protection in countries closely aligned with our own patent system.
News from Australia and New Zealand / World Patent Information 33 (2011) 97–99
The existing AU-US PPH is intended to shorten examination delays before each patent office by leveraging work conducted by the other. Under the PPH, allowance of a claim in either jurisdiction provides an avenue to accelerate examination in the other. This in turn encourages consistency of examination and provides greater certainty both for patentees and competitors. Whilst sound in theory, attempts by Australian patent applicants to make use of the AU-US PPH have led to criticism of the scheme’s complexity and the increased burden on the applicant. The perceived weaknesses of the AU-US PPH include: The burden on the applicant to demonstrate how each claim of a ‘‘first” application matches a claim of a corresponding application in a partner office; The PPH scheme cannot be used if examination has already commenced in the country in which expedited examination would otherwise be sought; The application must have been first-filed in one of the countries party to the PPH scheme. The above limitations have rendered the AU-US PPH scheme – and indeed many of its variants throughout the world, largely ineffectual in practice. Recently however, another PPH-type arrangement has been established between the so-called ‘‘Vancouver Group”, which comprises the patent offices of Australia, Canada and the United Kingdom. However, this agreement goes even further than the AUUS PPH – and is based on several ‘‘mutual exploitation principles”, namely: To the extent possible, one patent office will rely on a search or examination performed by a ‘‘partner” office. However, any office is free to perform further searching if it is deemed necessary;
99
The onus is upon each patent office to ascertain earlier work of any partner offices (i.e., this is not an applicant-driven procedure); An applicant is to be kept apprised of where the earlier work of a partner office is to be relied upon. If further searching or examination is required, both the applicant and the partner offices will be advised as to the reasons this was considered necessary; The applicant has the facility to apply for expedited examination in one or more partner offices as soon as a first patent office indicates any claim is in order for Allowance. Once the Vancouver Group agreement is implemented, applicants will be provided with means for quickly and cheaply progressing patent applications filed in two or more of Australia, Canada and the United Kingdom. Authors: Gareth Dixon and Charles Tansey List of all authors Grant Shoebridge Michael Deacon Chris Bevitt Matthew Ford Jack Redfern Gareth Dixon Charles Tansey Jacinta Flattery-O’Brien Shelston IP, Level 21, 60 Margaret Street, Sydney, NSW 2000, Australia E-mail address: [email protected]