IPTA DECEMBER 2009

The Institute Council has been particularly busy since the Annual Conference in April. As you will

all be aware, IP Australia has released some seven consultation papers on IP Reform from March

of this year. The IPTA response to the substantive paper “Getting the Balance Right” was prepared

jointly with FICPI Australia. IPTA would like to thank FICPI for the cooperation and effort in the

preparation of this response. The preparation of responses to the consultation paper has generated

a very heavy workload for the Patent Legislation Committee headed by Michael Caine. Through

the Patent Legislation Committee, the IPTA has prepared and lodged

comprehensive responses to all consultation papers. Michael has been

assisted in this process by Greg Gurr, Richard Baddeley, Greg Chambers,

David Tadgell, Bill McFarlane, Kathryn Morris, Jason Coonan, and Keith

Leslie. Special thanks should be given to Ian Horak and Tom Cordiner

who researched and wrote substantial portions of the submissions in the

“Getting the Balance Right” paper. Our “special envoy” Katrina Howard QC

is also to be thanked. Katrina conducted extensive research, particularly

in the United States and United Kingdom, on our behalf and wrote a

substantial section of our submissions. The work that has been done by

the Patent Legislation Committee represents a substantial team effort and

something for which the Institute members should be grateful.

In addition to the IP Australia consultation papers, ACIP has released

documents requiring responses in respect of its review of Patentable

Subject Matter and Review of Post Grant Enforcement of Patents. IPTA

has, through the efforts again of Michael Caine and Greg Gurr, provided

responses to these documents.

At the same time you will all be aware that the Senate Inquiry into

Gene Patents has been proceeding vigorously. Trevor Davies has been

responsible for the IPTA response and has also appeared before the

Senate inquiry. Trevor and other IPTA members including Tania Obranovich

have also been involved in media briefi ngs (see pages 3 and 4 inside)

and interviews to put forward the IPTA position and hopefully balance

the debate on the issue somewhat. Thanks are also due to Professor

Andrew Christie of Melbourne Law School and Hamish Hawthorn of

APT Innovations who assisted by participating in a panel discussion at a

recent media event held by IPTA. Thanks also to Michael Gilbert from the

Australian Centre for Plant Functional Genomics who agreed to be part of

the panel but was unable to attend due to an airline problem.

From the president...

ContentsReport: Senate Community Affairs p.3

Enquiry Into Gene Patents

Media Release p.4

Diary Dates p.6

Recent Case Law p.7

IP Quiz p.9

IP Professionals Gathering p.10

YIPTA Report p.11

List of on-line seminars p.12

Announcement Academy of Education p.13

IPTA Notices to Members p.14

Essay: Entitlement to Confusion? p.15

Oddfellow p.20

IPTA Committees p.24

IPTA Advertisements p.25

IP Quiz Answers p.31

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nt... IPTA has also been involved for the fi rst time as an amicus curie in the Full Federal Court Appeal

Hearing of Mont Adventure Equipment Pty Ltd v. The Phoenix Leisure Group Pty Ltd. Members will

be aware that the result of that appeal was the reversal of the previous interpretation of the Patents

Regulations which had the effect of denying the provisions of the grace period to divisional innovation

patent applications. This matter was run on IPTA’s behalf on a pro bono basis by Simon Williams

of Spruson & Ferguson Lawyers, David Catterns QC and Hamish Bevan. IPTA is indebted to the

generosity of these individuals in providing their services in these matters.

Stuart Smith has also been busy in his capacity as Convenor of the Public Relations Committee in

organising publicity associated with the Senate Enquiry into Gene Patents. You may have seen the

signifi cant media exposure that has been obtained as a result of these efforts.

In August, IPTA was privileged to host a lunch for Dr Francis Gurry, the recently elected (Australian)

Director General of WIPO. Dr Gurry delivered an interesting address on the future of the PCT which is,

or shortly will be, available on webcast.

IPTA in conjunction with Melbourne Law School has established an annual public Intellectual Property

named after Francis Gurry. The inaugural lecture was delivered by Dr Francis Gurry to an audience of

around 300. The lecture will be given on an annual basis by an eminent international speaker.

Improving IPTA’s relationship with sister organisations is also on our agenda. During the past several

months it has been my pleasure to represent IPTA at the CIPA Congress in London, the AIPLA Annual

Meeting in Washington and at a joint IPAA/JPAA event in Japan.

I should also mention that the other Councillors have been solidly working away on the less high

profi le and more regular business of Council including the areas of education, publications, IP

Australia business relations, trade marks and designs.

Finally, you will all have recently seen a notifi cation concerning the Annual Conference for 2010. This

conference is to be held from 15-17 April 2010 in Melbourne. In view of the GFC and its impact on

the businesses of Australian patent attorneys, it has been decided to have a slightly more modest

conference next year. There will still be two days of substantial business content but the conference

will extend over Friday and Saturday and will not have the usual excursion day. The good news is

that we will retain the traditional annual dinner which will be held in the Melbourne Museum. It has

been quite a while since we have held an Annual Conference in either Sydney or Melbourne and I do

hope that it will be well attended.

All the best.

Leon Allen

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SENATE COMMUNITY AFFAIRS ENQUIRY INTO GENE PATENTSPress Conference Briefi ng DocumentImagine a world where the BRCA breast cancer diagnostic test was simply never developed and women were ignorant of the fact that they could have advance warning of their predisposition to the development of an aggressive form of breast and ovarian cancer. This is the likely outcome if the companies prepared to take the risk and invest the hundreds of millions of dollars required to bring a diagnostic or treatment to the market are not provided with a patent monopoly to enable them to recoup this investment and generate the profi t which is invested into the next great fi nding. Without this investment, University research fi ndings can never leave the laboratory. Imagine a world without Gardasil…

In recent months there has occurred signifi cant debate in relation to the issue of patenting “genes”. This debate has led to a Senate enquiry which is currently underway. The terms of reference of this enquiry are stated to be directed to:

“the impact of the granting of patents in Australia over human and microbial genes and non-coding sequences, proteins, and their derivatives, including those materials in an isolated form...”

This debate, and the subsequent Senate enquiry, was triggered by Genetic Technologies Limited (GTG) announcing that it proposed to control BRCA breast cancer screening test in Australia. This test is the subject of granted patents which are owned by Myriad Genetics Inc and its University partners. Myriad has licenced the Australian rights to this technology to GTG.

IPTA is very concerned about the signifi cant level of misinformation which has been circulating in relation to this issue and it is seeking to place into perspective the matters which are under discussion. These matters are as follows:

(i) Patent Monopoly• A patent is a temporary monopoly which provides the owner of the patent a limited

time period within which to exclude others from performing the technology covered by the patent.

• Although a 20 year monopoly may sound lengthy, it should be noted that patent applications are fi led very early in a research program. It can take a further 10-15 years to bring a treatment or diagnostic to market. By the time the public is given access to such a development, there is often only a few years left on the patent. Once the patent has expired, the technology is available for any other party to exploit.

(ii) Discovery vs. inventionA view has been expressed that allowing patenting of genes and proteins is equivalent to allowing a third party to own a part of your body. Still further, it has been stated that genes are a product of nature and thereby belong to humanity. Further views have been expressed that the identifi cation of new genes and proteins is a matter of routine procedure and that identifying these molecules is therefore a mere discovery, much like discovering a new mineral.

report

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Genes – No patents – No funding – No medical breakthroughsSydney, 5 November, 2009: Any suggestion that genes, proteins or other biological materials should not be patented would deny the world breakthrough medical developments similar to the BRCA breast cancer diagnostic test and the Gardasil vaccine, the peak body for patent and trade attorneys claims.

According to the Institute of Patent and Trade Mark Attorneys of Australia (IPTA), companies would only be prepared to take the risk and invest the hundreds of millions of dollars required to bring a diagnostic or treatment to market if they have a patent protecting their return on investment.

“The reality is without this investment, university research fi ndings will never leave the laboratory,” IPTA president Leon Allen says.

In recent months there has been signifi cant debate on gene patenting leading to a current Senate enquiry. Both were triggered by Genetic Technologies Limited (GTG) announcing that it proposed to control BRCA breast cancer screening in Australia. As a result signifi cant and emotive misinformation has been introduced into the debate.

Importantly, universities and other public research institutes are not the sole bastions of research. High level research is performed in companies. Without patent protection, these companies could keep their research a secret to maintain a competitive edge. The patent system however, forces publication of the invention to occur 18 months after fi ling the application and limits the monopoly to 20 years.

There is no evidence that research has been inhibited because of patents. Gene and protein patents are only a small proportion of the totality of technology patents which exist and which are used by laboratories. In their submission to the Senate enquiry, The Walter and Eliza Hall Institute of Medical Research indicated it had not experienced any patent-related diffi culties in relation to performing their research.

It should also be recognised that medical research encompasses much more than just gene and protein technologies. If stifl ing research is the underlying concern and is a real problem, then this problem exists across all technologies and should be dealt with by a uniform solution rather than singling out gene technologies for patent exemption. This would best be achieved by a research use exemption in the patent laws, which benefi ts all and is not limited according to any particular subject matter.

In 2004 it was realised that no such research use exemption existed and it was proposed that an exemption be introduced to clarify the situation. IP Australia is currently moving this proposal forward.

According to IPTA, preventing the patenting of genes, proteins, other biological materials and their uses in many methods would effectively prevent patents on almost all medical research in the area and would result in a catasthropic withdrawal of investment by the corporate sector. In fact it could bring the Australian biotech industry to its knees.

Without corporate funding, the issue is not one of whether or not a test exists, the cost of that test or issues of monopolistic behaviour but the fact that the test may simply never be developed. In the absence of the investment of millions of dollars by Myriad, the BRCA test may not have been brought to market.

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media release

Debunking the myths> Allowing the patenting of genes and proteins is equivalent to allowing a third party to

own a part of your body

The mere identifi cation of the existence of a new gene or protein in the human body is not suffi cient to secure a patent. It is the act of isolating that molecule and/or artifi cially reproducing that molecule in the laboratory and developing a use of the molecule that leads to the existence of an invention. The isolated molecule or artifi cially generated molecule and its uses are the subject of the patent. The patent law does not allow the patent owner to have any rights in relation to these molecules while in the body.

> The patent system stifl es research

There is no empirical evidence that research activity in Australia has been inhibited because of the existence of patents. Gene and protein patents are only a small proportion of the totality of technology patents which exist and which are used by laboratories. In a US analysis less than 1% of US scientists reported that their research activity had been impeded by patents. In addition, the patenting process requires publication of the invention to occur 18 months after fi ling the application and limits the patent monopoly to 20 Years. Without patent protection, important research may be kept secret.

> A patent risks public health and drives up costs

The existence of patents does not eliminate competition and decrease the incentive to fi nd better and more affordable treatments and tests. Rather, the patent system encourages such research since any improvement on a test or technology may itself be patentable and enables a new party to secure a position in the market. This is a huge incentive to develop improved second generation tests.

> Governments and Research Institutes will develop research fi ndings into a product and bring it to market

Governments are not in the business of bringing products to market and never will be. Governments provide relatively small amounts of money, in the amount of tens or hundreds of thousands of dollars per project, in order to enable basic research. Governments rely on the corporate sector to invest the many millions of dollars which are required, per project, to bring diagnostics and therapeutics to market.

Without the existence of a patent monopoly, no company will take the risk of investing millions of dollars to bring a product to market. These companies rely on the fact that although not all their leads will make it to market, where one does make it to market, the patent will enable costs to be recouped and profi t to be generated. If these companies do not achieve a return on their investment, their research investment will cease.

If companies cease to invest in product development and clinical trials, new medicines and diagnostic tests will not come to market and the public will suffer.

Further enquiries please contact:Viv Hardy, CallidusPR, (02) 92834113/ 0411 208 951Louise Nealon, CallidusPR, (02) 9283 4114/ 0403 569 177

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DIARY DATESAdelaide: 8 December 2009,

IPTA Christmas Lunch, The Wine Underground

Brisbane: 4 December 2009,IPTA Christmas Lunch, Peak Dining Room, Iceworks

Melbourne: 9 December 2009,IPTA Christmas Lunch, The Residence, Grand Hyatt Hotel

Perth: 4 December 2009,IPTA Christmas Lunch, Royal Perth Yacht Club

Sydney: 11 December 2009,IPTA Christmas Lunch, The Wharf

Melbourne: 15-17 April 2010,IPTA 2010 Annual Conference, The Langham Hotel

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reportRecent Case LawPrepared by Ian Horaki

Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142Full Federal Court of Australia, Finn, Bennett and Middleton JJ (9 October 2009)

Patents – interlocutory injunction – serious question to be tried - collocation

On 15 June 2009, his Honour Justice Ryan restrained the appellant, Smith & Nephew, on an interlocutory basis from exploiting an invention relating to certain Negative Pressure Wound Therapy Foam Dressing Kits. ii Smith & Nephew appealed to the Full Court.

Smith & Nephew argued that there was no serious question to be tried because, as a matter of construction, the relevant patent claims were invalid as they represented a mere collocation of known integers. The Court considered the claim and said in the circumstances, the case for invalidity was so overwhelming that there was no serious question to be tried and the injunction should be dissolved.

The Full Court set out the law relating to the collocation of known integers and summarised the position as follows:

“In this appeal the respondents have put forward a construction claiming the aseptic package as an essential integer of the combination claimed as the invention. Upon this basis, the only remaining question in this appeal was whether there was a working interrelation brought about by the collocation of integers claimed. On this question, we have found there was not a patentable combination.”iii

Apotex Pty Ltd v Les Laboratories Servier (No. 2) [2009] FCA 1019Federal Court of Australia, Bennett J (11 September 2009)

Patents – amendments under Section 102 – exercise of discretion to refuse amendments

The patentee, Les Laboratories Servier (Servier), sought to amend its patent during the conduct of proceedings relating to patent infringement and revocation. It sought to introduce a new claim set restricted to a feature described within the specifi cation.

Apotex Pty Ltd (Apotex) resisted the amendment and argued that the amendment was impermissible and that it should not, in any event, be allowed in the exercise of the Court’s discretion.

The Court found that the amendment satisfi ed section 102 of the Patents Act in that the new limiting feature was “in substance” disclosed within the specifi cation. The Court, however, found that in the exercise of discretion, the amendment should not be allowed.

Her Honour stated that Servier had intended to knowingly take advantage of wider claims which did not refl ect the invention, while at the same time seeking amendment so as to better defend the validity of the patent and prove infringement. This fact was used to exercise her discretion under section 105 to refuse the amendments.iv

Medrad Inc v Alpine Medical Pty Ltd [2009] FCA 949Federal Court of Australia, Kenny J (25 August 2009)

Patents – interlocutory injunction

The Applicant, Medrad Inc (Medrad), is a patentee of a patent relating to a medical syringe. It sought urgent injunctive relief against Alpine Medical Pty Ltd (Alpine) to restrain it from the sales of syringes that were claimed to be suitable 1-1 replacements for syringes sold by Medrad. Alpine had only recently commenced offering these syringes for sale.

Alpine argued that there was not a serious question to be tried because its product different from that required in the claims and that the balance of convenience did not favour Medrad. Her Honour considered the authorities in the area and found that there was a serious question as to infringement of the patent and that the substantial business of Medrad favoured the granting of the injunction and maintenance of the current position in the market place.

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rt Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 Federal Court of Australia, Sundberg J (18 August 2009)

Trade marks – shapes – distinctiveness

The applicant (Guylian) is a manufacturer of boxed chocolates. It sought registration of a trade mark for a “seahorse” shape. The delegate of the Registrar of Trade Marks refused to register the seahorse shape mark on the basis that it was not capable of distinguishing Guylian’s goods within the meaning of subsection 41(5) of the Trade Marks Act.

The Court discussed in detail the operation of section 41 in terms of the presumption of registerability and stated as follows:

“[21] …… The ultimate question under s 41(3) is whether the mark is inherently adapted to a suffi cient degree to conclude that it is “capable of distinguishing”. In my view, the effect of the presumption of registrability on s 41(3) is that, in considering whether a mark is capable of distinguishing by reason of the “inherently adapted” criteria, it should be presumed that the mark is suffi ciently adapted unless the Registrar is satisfi ed otherwise on the balance of probabilities. If the Registrar is otherwise satisfi ed, then he or she will be “unable to decide the question” (see s 41(4)) whether the mark is capable of distinguishing on the basis of any inherent adaptation alone, and must then proceed to consider s 41(5) or (6). Under those provisions, the presumption no longer has any operation, as the applicant is then required to either “satisfy” the Registrar (s 41(5)), or “establish” (s 41(6)), that the relevant criteria set out therein is met.”

The Court applied the above criteria to the evidence before it, showing the way in which Guylian had used the seahorse shape, and suggested that it considered the use to which that shape was put was not such that there was suffi cient evidence of use as a trade mark to meet the criteria under subsection 41(5).

VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd [2009] FCA 593 Federal Court of Australia, Kenny J (2 June 2009)

Patents – compulsion to re-examine

The respondent was sued for patent infringement. It bought an application before the Court seeking an order under subsection 97(3) of the Patents Act that the Commissioner of Patents be directed to re-examine a complete specifi cation of the patent in suit.

The applicant/patentee opposed that order and submitted that re-examination would not be expeditious nor would it necessarily reduce the costs of the litigation between the parties. The Court agreed and said that such a report issued by the Commissioner, even if unfavourable to the patentee, would not be binding on the Court and hence it would be necessary to determine the dispute between the parties in any event. It therefore declined to order re-examination.

i. Ian Horak is a barrister at the Victorian Bar. He is also a Patent and Trade Marks Attorney and member of the Institute. The following is a selection of cases that are selected based on their potential interest to practitioners. The full text of each of these decisions may be found on the AustLII case law database at www.austlii.edu.au.

ii. [2009] FCA 630 (15 June 2009)

iii. Paragraph [43]

iv. This decision has been appealed to the Full Federal Court.

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quizTwo Minute IP Trivia QuizOne point questions1. The fi rst British patent to be granted related to a method of making stained glass. Was that in the (a) 15th,

(b) 16th or (c) 17th century?

2. True or False - Michael Jackson obtained a United States patent for a “Method and means for creating anti-gravity illusion”?

3. The Patents Act 1990 commenced on what date?

4. Next year’s IPTA Annual conference will be held in which Australian city?

5. The PCT country code for Iceland is (a) IL, (b) IC or (c) IS?

6. True or False - OHIM, The Trade Marks and Designs Registration Offi ce of the European Union is located in Alicante, Portugal?

Three point questions7. In the 1994 action comedy fi lm “True Lies” starring Arnold Schwarzenegger and Jamie Lee Curtis, the character

played by Jamie Lee Curtis worked as a paralegal at which Washington DC-based IP law fi rm?

8. World IP Day is celebrated each year on what day?

9. The USPTO is the acronym for the Government IP Offi ce of the United States, but what are the acronyms for the IP Offi ces of Canada, China and South Africa? (one point for each correct answer)

Five point question10. We all know that Weet-Bix was Australia’s favourite trade mark in the 2006 survey conducted by IP Australia,

but can you name fi ve others that appeared in the Top 10 list? (one point for each correct trade mark)

Turn to page 31 for the Answers15-20 points: Amazing!

10-14 points: Excellent

5-9 points: Pretty good

0-4 points: What? It wasn’t that tough!

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ip g

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ring IP Professionals Gathering

Melbourne & Sydney (Nov)

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report

YIPTA November 2009The Sydney division of YIPTA held their fi rst event on Wednesday, 7 October. The event was a dinner attended by around 10 YIPTA members following a Sydney IP Professionals Gathering, at the Dome Restaurant of the Arthouse hotel. A great night was had by all who attended! Other divisions of YIPTA will be holding their events soon, so make sure you keep an eye out for events in your area!

Maryam Khajeh

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sem

inar

s IPTA Online CPE SeminarsThe following online seminars are available from the Members pages of the IPTA website:

Topics Speakers Date

International Search and Examination - Future Directions

Dr Francis Gurry 03/08/09

Do Patents Matter for Commercialisation? Dr Paul Jensen 25/05/09

Trends in U.S. Patents and Trade Mark Law Ms Teresa Stanek Rae 24/04/09

International Contrast of Patentable Subject Matter | AU EU US

Dr Bill ChristiansenMr Steven WulffMr Aidan Robson Prof Andrew Christie

23/04/09

Upcoming Legislative and Other Developments

Mr Philip Noonan 23/04/09

Patents, Designs and Trade Marks Case Roundup

Mr Ben Fitzpatrick 24/04/09

IP Professionals and Ethics – an IPRIA / IPTA Seminar

Dr Linda HallerDr Trevor Davies

19/04/09

Enforcement Trends in Japan and China Mr Takaki NishijimaMr Dajian Wu

23/04/09

Developments in Corporate IP Management Mr Rick AaronsMr Michael Angliss

24/04/09

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Academy of EducationMASTERS COURSE IN U.S. PATENT PRACTICE IPTA is planning a one-day intensive course in aspects of U.S. patent practice. It is anticipated that the course will be held in Melbourne on Thursday, 15 April 2010 (immediately prior to the 2010 Annual Conference also being held in Melbourne). If there is suffi cient interest, the course may be repeated in Sydney and/or another city after the Annual Conference.

A panel of highly experienced U.S. patent attorneys will present the course through a series of lectures dealing with the more unique aspects of drafting and practice.

You can pre-register your interest by returning the slip below to the Institute secretariat.

Graham CowinChair

MASTERS COURSE IN U.S. PATENT PRACTICE I am interested in the proposed U.S. Masters Course in 2010

Please indicate city:

Melbourne Sydney

Other City ....................................................................................................................

Name: ................................................................................................................................

Firm: ..................................................................................................................................

Technology Specialisation: ................................................................................................

Address: ............................................................................................................................

Email: .................................................................................................................................

Please respond to the Executive Secretary of IPTA by 4 December at the address below:

Level 2, 302 Burwood Road, Hawthorn Vic 3122PO Box 419, Hawthorn Vic 3122 AustraliaTel: 613 9819 2004 Fax: 613 9819 6002Internet: www.ipta.org.au Email: mail@ipta.org.au

announcement

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IPTA NOTICES TO MEMBERS VIA EMAIL 13/03/09 to 04/08/09

noti

ces

Date To Subject

05-Aug-09 All Members Trademark Publisher

10-Aug-09 All Members auDA reviews domain renewal, expiry & deletion policy

18-Aug-09 All Members IP Australia Consultation Papers on IP Rights Reforms

20-Aug-09 All Members IPTA Newsletter August

26-Aug-09Sydney Fellows & Ordinary Members

IPTA Sydney Xmas Lunch

28-Aug-09 All Members Call for nominations for election to auDA board

31-Aug-09Melb Fellows & Ordinary Members

IPTA Melbourne Xmas Lunch

14-Sep-09Adel Fellow & Ordinary Members

IPTA Adelaide Xmas Lunch

18-Sep-09 All MembersIPRIA/IPTA Seminar: “What difference does a patent Make?” Perth and Adelaide

24-Sep-09 All Members Notice of auDA 2009 AGM

25-Sep-09 WA & SA MembersIPRIA/IPTA Seminar: “What difference does a patent Make?” Perth and Adelaide

28-Sep-09 All Members “Flexible Search & Examination” Consultation Paper

28-Sep-09 All Members auDA Lunchtime forum 19/10/09

01-Oct-09 All Members Journal Notice re Extension of Time for Trade Mark applications

01-Oct-09 All Members auDA invites proposals for new 2LDs, conf.au and info.au

02-Oct-09 All Members IP Professionals Gathering, Sydney, 7/10/09

02-Oct-09 Sydney Members YIPTA Dinner

07-Oct-09 Firm Contacts Senate Inquiry into Gene Patents

09-Oct-09 All Members IPRIA/IPTA Seminar: “What difference does a patent Make?” Melbourne

02-Nov-09 All Members IP Professionals Gathering, Sydney, 4/11/09

04-Nov-09 Melbourne Members IP Professionals Gathering, Melbourne 10/11/09

09-Nov-09 All MembersSuppourt requested for IP Australia’s Vocational Education and Training (VET) Initiative

10-Nov-09 Melbourne Members IP Professionals Gathering, Melbourne 10/11/09

10-Nov-09 All Members IPTA 2010 Annual Conference

11-Nov-09 All Members AIPLA

13-Nov-09 All Members Survey on IP Attorney Fees

18-Nov-09 Sydney Fellows Sydney Free Consulting Service Roster, Jan-June 2010

18-Nov-09 Melbourne Members Melbourne Free Consulting Service Roster, Jan-June 2010

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Entitlement to Confusion?The Potential Trap For the Australian Patenteel. BackgroundIt is well accepted in many countries that to own a patent or an application to a patent a person must be either an inventor or have an enforceable interest from the inventor. Yet diffi culties can arise when there are multiple inventors, applicants and patentees. Additionally, issues may arise depending upon how a person is defi ned to be an “inventor” or what constitutes an “invention” or a transfer of interest in and to an invention. lt is especially important in Australia to ensure that the entitlement is correct as what many applicants have taken for granted as a minor technicality can erase any patent protection for an invention.

A. Entitlement in qeneralAccording to the Merriam-Webster Online Dictionary, “entitlement” is defi ned as “a right to benefi ts specifi ed especially by law or contract.”1 When used in the context of patent ownership, it refers to the exclusive rights given by a patent to a patentee.2 This is due to the structure of the Patents Act 1990 (“the Act”). Under the Act, the exclusive rights provided to the patentee are “personal property and are capable of assignment and devolution by law.”3 According to the defi nition section of the Act, “patentee means the person for the time being entered in the Register as the grantee or proprietor of a patent.”4 This defi nition sets up a structure where the registered proprietor is treated “as the owner of the patent subject to any interests in it created by the owner and registered in the Register,” which thereby ensures “some certainty and fi nality” in regards to a title to a patent.5 Thus, to be able to assert the patent rights, a person must be recorded on the Register to be recognised as the patentee. However, it is not enough to be simply recorded as the patentee. The patentee must also have entitlement to the patent (i.e., have an ownership interest in the patent).6 The nature of a patent as property means that a patentee’s ownership must have a clean chain of title in order to have proper entitlement.7 The consequences of invalid entitlement are set forth below.

B. The consequences of invalid entitlementWhere it is demonstrated that an applicant or patentee does not have entitlement to the claimed invention, the application may be refused, or the patent revoked as the case may be.8 In the situation of a pending application for patent, it is a ground of opposition that the nominated person is either: “(i) not entitled to a grant of a patent for the invention; or (ii) entitled to a grant of a patent for the invention but only in conjunction with some other person.”9 Once the patent has been granted, the patent may be subject to revocation on the ground “that the patentee is not entitled to the patent.”10

Consider, for example, the situation in University of British Columbia v Conor Medsystems, lnc.11 (“UBC v Conor Med”). The University of British Columbia (“UBC”) and Angiotech Pharmaceuticals, Inc. (“Angiotech”) jointly fi led a PCT application. UBC had an assignment from two of the fi ve listed inventors. Angiotech had an assignment from the other three listed inventors. At the time national phase was entered in Australia, all the inventors had contributed to the claimed subject matter.

During prosecution of the related U.S. application, certain claims were cancelled which changed the inventorship of the U.S. application. Specifi cally, the cancellation of claims resulted in UBC’s inventors being deleted from the U.S. application. The inventorship of record in the U.S. application was amended to refl ect the changed scope of the claims and the resulting U.S. patent issued to Angiotech as the sole assignee.12 Claim amendments corresponding to those of the U.S. application were made to the Australian application so that in effect, UBC’s inventors were no longer contributors to the claimed subject matter of the Australian application. The Patent Request in the Australian application was not amended to refl ect the changed inventorship. Therefore UBC and Angiotech remained as co-applicants of the Australian application.

In the lower Court decision, Finkelstein J held that UBC was not entitled to the grant of the patent at the time the patent granted because its claim to entitlement relied solely on an assignment from persons, who after the claims of the Australian application were amended to correspond to that of the U.S. application, were no longer inventors of any claimed subject matter.13 One of the grounds of revocation in Australia is that “the patentee is not entitled to the patent.’’14 Accordingly, the lower Court held that the patent could be revoked on this basis.15 The Full Federal Court in UBC v Conor Med vacated the lower decision to permit the exploration as to whether UBC might have gained entitlement to the claimed invention through other means.16 The Court’s reasoning is discussed in more detail below. Thus, as demonstrated by UBC v Conor Med, uncertain entitlement can jeopardise patent rights.

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ll. How is entitlement determined?How entitlement is determined depends on when a person obtained entitlement (i.e., whether prior to or after grant of the patent).

A. Obtaininq entitlement prior to grant of the patentUnder s 15(1) of the Act, a patent may only be granted to a person who:

(a) is the inventor; or

(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or

(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).17

Thus, a patent may only be granted to an inventor, or someone who has obtained entitlement from the inventor by conduct, agreement or assignment. The starting point of any entitlement analysis is with the inventor as that is where entitlement fi rst originates. The entitlement of the inventor is ordinarily straight forward unless there are multiple inventors, or the named inventor is not really a true inventor in relation to the claimed subject matter. Where there are multiple inventors, entitlement may change depending upon the contribution (or lack thereof) of individual inventors. The question that must be answered in such a situation is what contribution is necessary before a person may be deemed an “inventor” for purposes of entitlement to the invention.

(1) Inventorship in AustraliaThe Act under s 15(1)(a) provides that a patent may be granted to a person who is the inventor. The Act does not contain a defi nition for “inventor.” However, there are several cases in Australia which provide guidance as to the determination of an “inventor.” When determining inventorship “[t]he role of joint inventors does not have to have been equal; it is qualitative rather than quantitative.”18 One accepted criteria for determining inventorship is to determine whether the contribution of a person had “a material effect on the fi nal concept of the invention.”19 This “material contribution” analysis was further articulated by Crennan J in JMVB Enterprises Pty Ltd v Camofl ag Pty Ltd,20 where she stated that

[r]ights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. lf the fi nal concept of the invention would not have come about without a person’s involvement, then that person has entitlement to the invention. One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants.21

The Court went further in Polwood Pty Ltd v Foxworth Pty Ltd, stating that “[fl or joint inventorship, each inventor must generally contribute to the conception of the invention.”22 Additionally, the contribution much be such as to necessarily provide enablement to the invention.23

The endpoint in any inventorship determination is the invention as claimed.24 This is in accord with the language of the Act in relation to the entitlement of eligible persons in proceedings for sealing the patent in the names of the correctly entitled persons.25

(2) Entitled to have the patent assignedThe Act under s 15(1)(b) provides that a person may obtain entitlement if that person would, on the grant of a patent for the invention, be entitled to have the patent assigned to himself or herself. This provision recognises that entitlement may be obtained through “some act or conduct capable of effecting an assignment, disposition or alienation.”26 The most common situation covered by this section would be an employment or service agreement.27

(3) Entitlement by transfer of titleThe Act under s 15(1)(c) provides that a patent may be granted to a person who derives title from the inventor or someone having entitlement from the inventor. This section covers the more traditional and common method of transferring title by way of written assignment

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B. Obtaining entitlement after grant of the patentThe requirements for obtaining entitlement after grant of the patent are more formalistic. In particular, s 14 of the Act specifi es that “[a]n assignment of a patent must be in writing signed by or on behalf of the assignor and assignee.” lf the assignee wishes to enforce any of the rights of the patent, they must submit a request to be recorded as a patentee on the Register along with proof of entitlement (e.g., a copy of the assignment).28

C. Analysing a patentee’s entitlementWhen asserting a patent against an alleged infringer, it is common for the alleged infringer to counter claim for revocation of the patent under one or more grounds of s 138 of the Act. One of the grounds of revocation is s 138(3)(a) of the Act, which states that “the patentee is not entitled to the patent.”29 According to Cooper J in Stack v Brisbane City Council,30

[w]hen s 138(3)(a) speaks of the “patentee” it is referring to the then registered patentee. The entitlement of the patentee to the patent depends upon whether or not the patentee is the original grantee or a successor in title from the original grantee. ln the case of the original grantee remaining the registered holder at the time of the revocation proceedings, the entitlement of the grantee will depend upon the eligibility of the grantee under s 15 of the Act to receive a grant of letters patent in respect of the claimed invention.31

Accordingly, to ascertain whether the patentee is entitled to the patent, the chain of title must be analysed similar to that performed with a real property transfer. This is necessary because the Act defi nes the exclusive rights provided by a patent as personal property “capable of assignment and devoution by law.”32 Further, to enforce those rights, the person must be recorded on the Register as a patentee.33 The Regulations require proof of entitlement in order for the interest to be recorded.34 Accordingly, the transfer of ownership of an interest in a patent is very similar to transfers of real property.

When analysing the chain of title, an analysis of the applicant’s entitlement under s 15(1) of the Act is required as the chain of title must pass through it. As reasoned by Cooper J, this is necessary because

“any subsequent holder of the title to the patent stands in the shoes of the person from whom title was acquired by assignment or by devolution by law. No holder in the chain of title obtains a better entitlement to the patent than the immediate predecessor in the chain and ultimately of the original grantee. An original grantee who was not entitled to a grant under s 15 of the Act cannot make good an improper grant by assigning the patent to another person.”35

ln the lower Court decision of UBC v Conor Med, Finkelstein J stated that if s 138(3)(a) were to be read as requiring a present entitlement, then “the way in which I would read the section is that if a person were not entitled to the patent at the time of grant then, at least in most cases, that non-entitlement would be (as here) a continuing state of affairs.”36

However, Emmett J took a different approach to analysing the entitlement of a patentee in relation to s 138(3)(a). In particular, Emmett J stated that

s 138(3)(a) must refer to being entitled at a point in time anterior to the grant of a patent. lf s 138(3)(a) has work to do, it cannot be suffi cient to say that a patentee is entitled to a patent simply because the patent has been granted to that patentee. Thus, s 138(3)(a) must refer to a patentee’s having been entitled to have the patent in question granted to that patentee. That is consistent with the language of s 59(a).37

Emmett J’s remarks read into the language of s 138(3)(a) of the Act more than what is actually stated. There is nothing in s 138(3)(a) to suggest that it applies only to a point in time anterior to the grant of the patent. According to the defi nition section of the Act, “ patentee means the person for the time being entered in the Register as the grantee or proprietor of a patent.”38 This defi nition encompasses changes in the patentee, which must be post grant. lt could be that a patentee became listed on the Register of Patents after grant, but without a proper transfer of interest. Thus, such a patentee would not have entitlement and s 138(3)(a) would operate to revoke a patent on that basis. Emmett J’s remarks for interpreting s 138(3)(a) so as to be “consistent with the language of s 59(a)” of the Act (lack of entitlement as a ground of opposition) is not necessary, Section 59(a) deals with events prior to the grant of a patent. Section 138(3)(a) of the Act is not limited to events occurring prior to the grant of a patent. The

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approach taken by Cooper J in Sfack v Brisbane City Council 39 would seem to be the preferred approach as it follows the plain meaning of the language of s 138(3)(a) of the Act and would still involve an analysis of s 15(1) as part of the analysis of the chain of title.

Bennett J in UBC v Conor Med determined that the language of the statute indicated that the entitlement of the patentee referred to in s 138 of the Act was a present entitlement, which is consistent with the view of Cooper J. Bennett J based her conclusion in part on the fact that the corresponding section on revocation under the UK Act, s72(1)(b) of the Pafents Act 1977 (UK), states that “the patent was granted to a person who was not entitled to be granted that patent,”40 which is a clear attempt under the UK Act to limit the entitlement determination to the time of grant. The Patents Act 1990 also contained clear differences with reference to past and present entitlement in relation to invalid entitlement. Former s 28 of the Act read that a person may notify the Commissioner that a petty patent is invalid on the ground “that the patentee was not entitled to be granted the petty patent.”41 Section 28 of the Act was later amended when the petty patent system was replaced by the present innovation patent system.

Although the Justices in UBC v Conor Med were unanimous in setting aside the order of the lower Court, the reasoning of Emmett J on the one hand, and Bennett J on the other, differ in some aspects, notably as to whether s 138(3)(a) pertains to a present entitlement or entitlement at the time of grant. One wonders whether it would have made a difference if Angiotech had assigned a one-half interest to UBC prior to the revocation action. lf Angiotech had assigned a one-half interest prior to the revocation action, would UBC then be “entitled to the patent,” or re-phrasing the question, is UBC entitled to the patent by virtue of an assignment from a patentee having entitlement. lf the answer is “yes,” then the patent cannot be revoked on the ground that “patentee is not entitled to the patent.”

lll. ConclusionUnder Australian law, each applicant or patentee is required to have entitlement to the invention as claimed. Where one of the applicants or patentees does not have proper entitlement, the application or patent is subject to refusal (through opposition proceedings) or revocation, as the case may be.

A person may be entitled to an application or patent by virtue of being the inventor (making a material contribution to the claimed invention), or through a devolution of interest such as written or oral assignment, employment agreement, or some act or conduct capable of effecting an assignment, disposition or alienation of interest.

Entitlement is a technical issue of Australian patent law, but an important one as failure to ensure proper entitlement can lead to the revocation of the patent.

Todd Martin Martin & Ferraro, LLP17383 Sunset Blvd, Suite 315Los Angeles, California 90272United States of America

E-mail: todd.martin@martinferraro.comPhone: 310-286-9800 Fax: 310-286-2795

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1 Merriam-Webster Ontine Dictionary (www.merriam-webster.com/dictionary/entitlement (30 October 2008).2 See generally, Pafenfs Act 1990 (Cth), s 13.3 Patents Act 1990 (Cth), s 13(2).4 Patents Act 1990 (Cth), sch 1.5 Stack v Brisbane City Council [1999] FCA 1279, paragraph 38 (Cooper J).6 See, e.g., Patent Act 1990 (Cth), s 138(3)(a).7 See, Stack v Brisbane City Council [1999] FCA 1279, paragraph 52 (Cooper J).8 Patents Act 1990 (Cth), ss 59(a) and 138(3)(a).9 Patents Act 1990 (Cth), ss 59(a)(i) and (ii).10 Patents Act 1990 (Cth), s 138(3)(a).11 [2006] FCAFC 154 (Emmett, Stone & Bennett JJ).12 University of British Columbia v Conor Medsysfems, lnc [2006] FCAFC 154, paragraph 2 (Emmett, Stone & Bennett JJ).13 Conor Medsystems, lnc v University of British Columbia (No. 2) [2006] FCA 32, paragraph 21 (Finkelstein J).14 Patents Act 1990 (Cth), s 138(3)(a). 15 Conor Medsystems, lnc v University of British Columbia (No. 2) [2006] FCA 32, paragraph 21 (Finkelstein J).16 University of British Columbia v Conor Medsysfems, lnc [2006] FCAFC 154, paragraph 51-52 (Emmett, Stone & Bennett JJ).17 Patents Act 1990 (Cth), s 15(1).18 Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9, paragraph 33 (Finn, Bennettand Greenwood JJ).19 Row Weeder Pty Ltd v Nielsen [1997] APO 38 (quoted with approval Merk Co Inc v Bernard Chartes Sherman

[2007] APO 9, paragraph 25).20 [2005] FCA 1474 (Crennan J).21 JMVB Enterprises Pty Ltd v Camofl ag Pty Ltd [2005] FCA 1474, paragraph 132 (Crennan J).22 Polwood Pty Ltd v Foxwotlh Pty Ltd [2008] FCAFC 9, paragraph 48 (Finn, Bennett and Greenwood JJ (quoting Shum v lntel

Corporation 499 F.3d 1272 (2007)(US Fed Cir)).23 University of Southhampton’s Applications [2006] RPC 21 (Laddie J)(“ln the context of entitlement to a patent a mere, non-

enabling idea, is probably not enough to give the patent for it solely the devisor. Those who contribute enough information

by way of necessary enablement to make the idea patentable would count as ‘actual devisors’, having turned what was

‘airy-fairy’ into that which is practical”)(referred to in Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9, paragraph 44

(Finn, Bennett and Greenwood JJ)).24 Merk Co Inc v Bernard Charles Sherman [2007] APO 9, paragraph 29.25 See, e.g., Patents Act 1990 (Cth), ss 34 and 35 (“eligible persons...so far as claimed in any claim”).26 University of British Columbia v Conor Medsysfems, lnc [2006] FCAFC 154, paragraph 63 (Emmett, Stone & Bennett JJ);

see also Speedy Gantry Hire Pty Ltd & Anor v Preston Erection Pty Ltd (1998) 40 IPR 543 at 550 (Emmett J)(“lt has been

suggested that an assignment may even be implied from the conduct of the parties”).27 Patent Manual of Practice and Procedure, Section 2.6.3.5, p 146 (11 January 2006).28 Patents Act 1990 (Cth), s 187(1); and Patents Regulations 1991 (Cth), s 19.1(1)and (2).29 Patents Act 1990 (Cth), s 138(3)(a).30 [1999] FCA 1279 (Cooper J).31 Stack v Brisbane City Council [1999] FCA 1279, paragraph 51 (Cooper J).32 Patents Act 1990 (Cth), s 13(2).33 Patents Act 1990 (Cth), s 187(1); and Patents Regulations 1991 (Cth), s 19.1(1)and (2).34 Patents Regulations 1991 (Cth), s 19.1(1)and (2).35 Stack v Brisbane City Council [1999] FCA 1279, paragraph 52 (Cooper J).36 Conor Medsystems, lnc v University of British Columbia (No. 2) [2006] FCA 32, paragraph 19 (Finkelstein J).37 University of British Columbia v Conor Medsystems, Inc [2006] FCAFC 154, paragraph 24 (Emmett, Stone & Bennett JJ);38 Patents Act 1990 (Cth), sch 1.39 [1999] FCA 1279 (Cooper J).40 University of British Columbia v Conor Medsysfems, lnc [2006] FCAFC 154, paragraph 79 (Emmett, Stone & Bennett JJ);

discussing Patents Act 1977 (UK), s 72(1)(b) emphasis in the original). 41 See generally, Stack v Brisbane City Council [1999] FCA 1279, paragraph 42 (Cooper J).

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The smother of invention?

2 November 2009The UK magazine “The Economist” has a nice way with titles. Its 25 July 2009 edition had one on the European patent system called “Smother of invention”. It’s not often that patents creep into the mainstream press, and when they do, it’s usually a gripe about Big Pharma. However, this short but relevant article was on the horrendous cost of the so-called “European patent”. As regular readers may have noticed, the US patent system is the system I love to hate, largely because of the diffi culties of prosecution there. On the other hand, the EPO, with which we deal directly, is generally of good quality – and of course it’s free for us, as we pay only offi cial fees. However, once the thing is granted, it’s out of sight, out of mind for me, because the payment of renewals is automatic via Dennemeyer and requires no effort on my part, except to implement the renew/abandon decisions of the Givaudan Patents Committees.

However, the article was a reminder that the US system does have one major advantage over the European one (well, there has to be one somewhere, doesn’t there?) and that is the bargain basement price after grant. In the US, one patent covers a market of over 300 million avid consumers for an absolute pittance – the three US offi cial renewal fees (at years 4, 8 and 12) come to a total of $US7200 ($AU 7960). Compare that with Germany alone, where the renewal fees come to EUR 12821 (about $AU 20,973). And then there are European validation costs, meaning translations in many countries. It all adds up to a colossal bill for 20 years for a “European” patent, which is why many companies (Givaudan included) opt for a small core list of countries.

The London Agreement thankfully covers most of Givaudan’s core country group, so we need only a claims translation for the Netherlands and full translation for Spain. Nevertheless, those renewal fees mount…and mount…and mount… Say you get your “European patent” and start paying national renewal fees from year 6 on in France, Germany, Italy, Netherlands, Spain, Switzerland and the UK. Your total renewals bill up to year 20 will be somewhere in the vicinity of (please sit down – now) about $AU 50,000. And heaven forbid if you have to litigate in even some of those countries…“The Economist” quotes some innovative European companies that have simply given up the idea of patenting in Europe on the grounds of expense.

Comparisons with the US are of course unfair, as Europe is not a single country but a patchwork of national self-interests. Dr Johnson’s famous defi nition of “patriotism” as “the last refuge of a scoundrel” starts to sound remarkably accurate. The hold-up in the potential answer to the problem, the unitary Community Patent and a single European patent court to enforce it, is not in everyone’s perceived national interest. Spain has been a particular opponent, on the surface because of the language issue, but perhaps also because it’ll be a loser in a Community system. Spain is a big country (47 million) but hardly a technological powerhouse. Indeed, it is a centre of the generics pharma industry. However, there are renewed efforts to get the Community Patent moving (again).

There are now quite a number of blogs written by US patent attorneys, the best-known (and indeed the most popular patent blog on the planet) being Dennis Crouch’s excellent “Patently-O”. However, not all of them are so good. I came across another, written by a guy who is clearly full of American exceptionalism and occasionally evincing the “I’m mad as hell and I’m not gonna take any more” persona currently de rigeur in the loonier circles of US Republicanism. In a recent piece, he argued forcefully against a uniform patent system for the world, a point of view with which I have much sympathy. America should not change its laws for the sake of change (no argument there).Then he went completely off the rails. US patents should be the world standard, he said, because everyone wants a US patent. So, just because the US market is the biggest and most potentially lucrative, is the US patent system the best? Nothing to fi x? Universal application of the insanity of fi rst-to-invent?

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Then came some complete piffl e. He said that there had been a dispute between James Madison and Thomas Jefferson, the former favouring a strong patent system and the latter a weak one. And why did Tom, the fi rst US Commissioner of Patents, favour a weak patent system? Because he didn’t want a patent system like the British one, where the monarch granted patents to favourites. This was so outrageously wrong that I had to write to him. I pointed out that there was this thing called the Statute of Monopolies that put a stop to the granting of royal favours, and that this was enacted when Thomas Jefferson’s great-grandfather, never mind Thomas Jefferson, wasn’t a twinkle in anyone’s eye. So who was wrong, Tom or the attorney? I received the reply, “Actually, what you write proves I am right. I didn’t say when the practice ended, just that it existed, which you admit is correct”. Huh? Not the best advert for the US profession. Mind you, when I asked our agent (a fi ne attorney and a regular guy), he’d never heard of the Statute of Monopolies. You’d think the US profession would have a bit more of a world view. Apparently not.

The fragrance approach to trade marks is a very odd one. The basic law of the universe is (or at least was) that one NEVER uses a registered trade mark as an adjective – or so the theory goes. There are exceptions of course. “George lit another Marlboro and consulted his Rolex, while he waited for his Mercedes to arrive”. Some things are just so famous and/or associated so intimately with their markets that there is no need for an identifi er. Indeed, an identifi er would be seen as holding up the fl ow of golden advertising verbiage.

When it comes to naming chemical substances, the pharma and agro industries have a long-established practice, forced upon them to a certain extent by regulatory requirements. A drug will have three names, its chemical name, stretching to the end of the road and back again, a trivial name given to it by the manufacturer, and which everyone can use, and the trade mark, used only by the manufacturer. It’s easy to understand why the former Sandoz (now Novartis) might want a simpler name for (here take a VERY deep breath) (E)-14,17,26,32-tetrabutyl-5-ethyl-8-(1-hydroxy-2-methylhex-4-enyl)-1,3,9,12,15,18,20,23,27-nonamethyl-11,29-dipropyl-1,3,6,9,12,15,18,21,24,27,30- undecaazacyclodotriacontan-2,4,7,10,13,16,19, 22,25,28,31-undecaone. I mean, the packet would need a fl at surface of about half a square metre to accommodate it. (It looks like this – pretty eh? Makes a great Christmas decoration).

Apart from being a bit of particularly bizarre organic chemistry, it is also the substance that made transplants possible – it suppresses the immune reaction, which rejects foreign bodies. To stop people dying of exhaustion before they got to the end of supercalafragalisticexpialidocious, Sandoz called it cyclosporin, and sells it under the registered trade mark “Sandimmun”. (As an aside, when Gordon Grange joined Sandoz, before the immune suppressant properties were discovered, they wondered what to give him to do. Then someone suggested, “Give him cyclosporin, he can’t possibly come to any harm with that…” – and Gordon’s career until retirement was assured.)

This trade mark policy seems a very good way of doing business. However, in the fragrance business, it appears universal to use the registered marks as generic names, and nobody cares. Why? Probably because the fragrance houses sell their molecules only to each other. If, say, great rival Firmenich has a nice molecule that our perfumers want to use, we simply buy it in a normal commercial transaction, and vice versa. There is never deception or confusion of the public, because this “public” is always highly skilled and knowledgeable and not even slightly confused as to the origin of the goods. To the big fragrance customers, the Unilevers, P&Gs, Colgate-Palmolives, etc., etc. of this world, as well as to the fi ne fragrance sellers, the fragrance houses sell fully formulated perfumes, not individual molecules, and of course the customers couldn’t care less what you call the stuff that goes in the perfume – just make sure it smells like this, and have half a ton of it at the factory by midday yesterday.

It does introduce some problems. Once, one of the lawyers at our Geneva HQ rang me with a question about a toll manufacturing agreement. It was an agreement to toll-manufacture Bloggolide for us. “No, it isn’t,” I said. When there came indications of incomprehension from the other end, I had to explain that Bloggolide® was a registered trade mark of Bloggs, Inc., and that we should not, must not, dare not say that we are making Bloggolide®, because we aren’t. We needed to describe the molecule in another way, I said, use the chemical name. I never did fi nd out what happened. I suspect that it stayed Bloggolide.

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In our fl avours business, we do sometimes sell individual fl avour molecules to customers. Flavours are often very simple indeed – it can be that a single simple molecule is responsible for a particular fl avour. These are “artifi cial fl avours” – but usually “artifi cial” only insofar as they have been synthesised in a chemical plant, as opposed to being the result of processing half a hectare of botany; they are absolutely identical to the natural molecule. The trick is to determine what gives a natural fl avour that fl avour and then synthesise it. That molecule then falls under the category of GRAS (generally recognised as safe). This means no testing by bodies such as the US Food and Drug Administration is required in order for it to be sold commercially for use in foodstuffs

At one point, the boss, with his pharma background, was mulling over whether there could possibly be any advantage in trying for fl avours molecules as “food additives”, which fall under the purview of the US FDA, and which therefore might be able to benefi t from some of the advantages of US Hatch-Waxman procedures. However, as I pointed out, the whole intention of the Flavours people is to avoid FDA scrutiny. If the stuff can’t be GRASsed, prepare for several millions’ worth of testing. We have this great new cooling compound (feels cool on your skin or in your mouth), the best ever made. It is descended from the original cooling compound, the naturally-occurring menthol, but it has no natural equivalent, so it has to run the full gamut of the FDA procedures. Ouch.

On the subject of “artifi cial” fl avours, when my boss came into the industry, he moaned to someone that they can’t make strawberry ice cream taste like strawberries. “They can and do,” came the answer, “the things that don’t taste like strawberries are strawberries themselves.” And it’s true – strawberries are bred to be large, red, nicely and uniformly shaped, candy for the eye, if not for the taste buds. Some time later, the boss bought some strawberries from a small local shop in the south of France. They were a poor colour, not particularly big, misshapen, odd sizes – and they tasted like strawberry ice cream.

Michael Caine’s interesting essay on early publication in the last Newsletter triggered off a stream-of-consciousness series of thoughts that I shall mention here, purely for gratuitous waste of space (and which Michael doesn’t therefore have to read). I suspect that Australia may have been the fi rst country to publish pre-examination applications. However, it was not the fi rst to publish patent documents early – that honour goes to Belgium. One could sort-of say that these Belgies were also published pre-examination as Belgium doesn’t examine patent applications. As a result, you had a Belgian patent a maximum of 6 months after Belgian application, or 18 months from priority (and this six months was the delayed publication date – you could have it earlier).

This Belgian early publication was to give the world Derwent, arguably the greatest patent searching resource. Derwent founder Montague Hyams saw the possibility of an alerting patent bulletin using Belgian publications, so every week Monty would travel to Brussels, pick up the latest batch of publications and bring them back for translation and publication. Initially he concentrated on the pharmaceutical industry, so the fi rst Derwent bulletins in around 1963 were FARMDOC (for farmaceuticals – AGDOC was to appear in 1965). In 1970, Derwent introduced CPI (Central Patents Index, later called more accurately Chemical Patents Index, which sought to cover all of chemical technology).

Derwent soon spread its patent net and included other patent publications. One of these was Japan, which, in those days, had pre-grant opposition, and published so-called kokoku (accepted applications for opposition). These were later joined by the kokai (pre-grant publication at 18 months)). The Japanese numbering format that time was serial number preceded by the Imperial Reign Year. Emperor Hirohito had ascended to the Chrysanthemum Throne in 1926. This was the start of the Showa (“enlightened peace”) reign (ha, ha), so 1926 became S01. Thus, for example, 1980 was S55. Derwent changed this to the Gregorian calendar year for the kokoku, so, 80-12345 instead of 55-12345, and when the kokai arrived, Derwent retained the Japanese format to distinguish the two identical formats. The fi rst Japanese applications to appear in Derwent bore the year prefi x 64 - and as His Imperial Highness lived on…and on…and on…, Derwent began to get more and more nervous as the dreaded S64 (1989) and total confusion approached. However, nine days into S64, The Grim Reaper took pity on Derwent, and suddenly S64 became H01 (Heisei (“achieving peace”)), and Derwent breathed again. With the disappearance of the kokoku with the Japanese adoption of post-grant opposition, and the Japanese adoption of the Gregorian calendar for the kokai, all is well, except you’ll still need the old Japanese numbers to search older stuff on the JPO website.

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In the August-September issue of the EPO Offi cial Journal, the EPO published its thoughts on the Internet as a source of prior art, and more particularly, how to establish a date for such a publication and what happens if this date is questioned. It’s basically all good commonsensical stuff, set forth in the light of the Boards of Appeals case law on evidence. In some circumstances, the EPO demands proof beyond reasonable doubt (“up to the hilt” in a celebrated BoA case), in others the balance of probabilities suffi ces. In the dating of Internet publications whose date is questionable, balance of probabilities will be the standard, logically enough and beyond reasonable doubt may not be possible in such cases.

Still on the EPO, it’s about to acquire its sixth President. The current President, the UK’s Alison Brimelow, will not seek to extend her term when it fi nishes in December. When President No.3, Germany’s Ingo Kober decided to leave, there was an enormous bunfi ght between the French and the British (who else?) for the job. The Brits pushed Ms. Brimelow, then the highly regarded Comptroller of the UK Patent Offi ce. The French pushed Professor Alain Pompidou, scientist of no IP experience whatsoever, but son of Georges, the French President who succeeded Big Chuck de Gaulle. In the end, they split the job, M. Pompidou taking the fi rst 3 years and Ms. Brimelow the second. During Ms. Brimelow’s time, the EPO has become a less happy ship, not because of her, of course, but because the EPO’s problems have been steadily mounting. As the workload has increased and the funding has decreased (the EPO has serious fi nancial problems), unhappiness in the ranks has risen in direct proportion and there have been a few strikes by Examiners. (For more on this and similar bunfi ghts, see the website of the EPO’s Staff Association, http://www.suepo.org). The Presidency is very much in the fi ring line from both above and below, so Ms. Brimelow probably decided she’d had enough.

There are four candidates for the job, and you can read all about them on the EPO website. They are French, Danish and Swiss gentlemen and a Swedish lady, all heads of their respective national patent offi ces. We’ve already had a French President, and a Swiss (Smiling Paul Brändli was the EPO’s second President, after founding President Bob van Benthem (Dutch)), so, all other things being equal, the Nordics must be the front runners. The Swedish lady is relatively young and inexperienced, so my money’s on the Great Dane (woof). However, according to one source, he is about as popular as Attila the Hun with the EPO staff. In the fi rst round of voting, none of the candidates got the necessary three-quarters of the votes cast by the member states, so the fun and games will continue in December. Ladeeeeees an’ genlemen, place your bets…

And so, dear readers, I wish you all a pleasant Christmas and a peaceful and successful 2010, hopefully free from disasters both natural and fi scal.

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Administrative Committees Convenor 2009 Contact Details

Annual Conference Leon Allen T: 03 9254 2777 E: lallen@davies.com.au

Education Graham Cowin T: 03 9614 1944 E: graham.cowin@pof.com.au

Ethics & Disputes Trevor Davies T: 02 9230 4000 E: Trevor.Davies@aar.com.au

Fees Richard Baddeley T: 03 9819 1664 E: r.baddeley@watermark.com.au

Finance & Secretariat Richard Baddeley T:. 03 9819 1664 E: r.baddeley@watermark.com.au

IP Australia Business Relations Janelle Borham T: 03 9243 8300 E: janelle.borham@griffi thhack.com.au

Membership Paul Davis T: 07 3229 2655 E: pdavis@fak.com.au

Publications Mark O’Donnell T: 08 8311 8311 E: Mark.ODonnell@madderns.com.au

Public Relations Stuart Smith T: 02 9777 1111 E: stuartsmith@ShelstonIP.com

Rules Janelle Borham T: 03 9243 8300 E: janelle.borham@griffi thhack.com.au

Legislative Committees

Designs Jeremy Dobbin T: 02 8231 1000 E: jdobbin@fbrice.com.au

International Patents David Tadgell T: 03 9614 1944 E: david.tadgell@pof.com.au

Patents Legislation Michael Caine T: 03 9254 2777 E: mcaine@davies.com.au

Patent Practice Greg Gurr T: 02 9393 0100 E: ggurr@sprusons.com.au

Plant Breeders Rights Trevor Davies T: 02 9230 4000 E: Trevor.Davies@aar.com.au

Trade Marks (Australia + International) Anne Makrigiorgos T: 03 9243 8300 E: anne.makrigiorgos@griffi thhack.com.au

IPTA Representatives at:

YIPTA Liaison (Young IPTA) Paul Davis T: 07 3229 2655 E: pdavis@fak.com.au

IPRIA Leon Allen T: 03 9254 2777 E: lallen@davies.com.au

IPTA Executive Members Leon Allen T: 03 9254 2777 E: lallen@davies.com.au

Graham Cowin T: 03 9614 1944 E: graham.cowin@pof.com.au

Anne Makrigiorgos T: 03 9243 8300 E: anne.makrigiorgos@griffi thhack.com.au

Jeremy Dobbin T: 02 8231 1000 E: jdobbin@fbrice.com.au

Richard Baddeley T:. 03 9819 1664 E: r.baddeley@watermark.com.au

IP Professionals Forum Leon Allen T: 03 9254 2777 E: lallen@davies.com.au

Graham Cowin T: 03 9614 1944 E: graham.cowin@pof.com.au

Anne Makrigiorgos T: 03 9243 8300 E: anne.makrigiorgos@griffi thhack.com.au

Jeremy Dobbin T: 02 8231 1000 E: jdobbin@fbrice.com.au

Richard Baddeley T:. 03 9819 1664 E: r.baddeley@watermark.com.au

Patents Consultation Group Michael Caine T: 03 9254 2777 E: mcaine@davies.com.au

Greg Gurr T: 02 9393 0100 E: ggurr@sprusons.com.au

Trade Marks Consultation Group Anne Makrigiorgos T: 03 9243 8300 E: anne.makrigiorgos@griffi thhack.com.au

Michael Wolnizer T: 03 9254 2777 E: mwolnizer@davies.com.au

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Trainee Patent Attorney – Chemistry – Melbourne

Trade Marks Practitioner – Sydney

Phillips Ormonde Fitzpatrick has been at the forefront of intellectual property law in Australia since its establishment in 1888. The firm has offices in Melbourne, Sydney and Adelaide. Two excellent opportunities exist to join the POF Group.

As part of a team with exceptional IP expertise, you will be exposed to an impressive local and international client base, as well being presented with the challenge of involvement in marketing and client development activities.

Within an environment that supports on-going professional and technical development, you will be encouraged and required to also attain business acumen and people and practice management skills.

Your honours degree qualification in a Chemistry related field (majors in organic, polymer or pharmaceutical chemistry), coupled with a PhD will ensure your strong candidacy.

A “best practice” study support policy is available while undertaking IP studies to gain registration as a Patent Attorney.

Trainee Patent Attorney – ChemistryMelbourne

This is a unique role for an entry-level Trade Marks professional perhaps with some IP experience and a law degree.

As a mature self-starter, you will demonstrate exceptional client relationship skills in working with a large existing local client base, whilst also taking up the challenge of continuing to develop the practice.

Your advanced time management skills and enthusiasm for IP will ensure your satisfaction in undertaking IP studies to attain Trade Marks Attorney registration (where required) and to undertake further developmental activities.

A robust and confident approach to the diversity of working in a small office team environment, whilst liaising with the broader Trade Marks team interstate, will ensure your success.

Trade Marks PractitionerSydney

Apply now! Please forward your CV and covering letter in confidence to: hr@pof.com.au

Applications close Friday December 18.

Inquiries should be directed to the People & Development Manager on 03 9614 1944.

IPTA

31

quizTwo Minute IP Trivia Quiz - Answers1. (a) 15th century (Patent granted to John of Utynam in 1449; www.ipo.gov.uk) 2. True (US Patent No 5,255,452), 3. 30 April 1991, 4. Melbourne, 5. (c), 6. False, Alicante is in Spain, 7. Sterne Kessler Goldstein & Fox, 8. 26th of April, 9. CIPO, SIPO and CIPRO, respectively, 10. ABC, Arnott’s, David Jones, Penfolds, Qantas, R.M. Williams, Vegemite, Wallabies, and Woolmark