Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Tuesday, December 18, 2012

Patent breakthrough! The new EU Unitary Patent

By Chris Bird, Partner

After 30 years of wrangling, many false starts and a fair degree of compromise, on 11 December 2012 the European Parliament and Council finally approved proposals for the Unitary Patent, including a language regime and a Unified Patent Court. It is expected that applications for a Unitary Patent will open on 1 January 2014, with the first Unitary Patents possibly issuing as early as April 2014.

New structure

The Unitary Patent is similar to the current Community Trade Mark. It is a single EU patent granted by the European Patent Office, which will have effect throughout all Member States, unlike the current European Patent which only takes effect as a bundle of national patents in the countries in which a patent has been validated, which therefore need to be enforced (and challenged) separately in each country. The aims of the new system are firstly to reduce costs, both of patenting and litigation, and secondly to improve legal certainty for industry, side-stepping the divergence that can result from parallel litigation of the same patent claims in different countries.

The Unitary Patent system will not change the rules on patentability, but will simply provide a new mechanism for gaining protection in Europe to operate in addition to the current options (separate national patents, or a European Patent).

The Unified Patent Court (UPC) will be a single court system to deal with infringement and validity disputes relating Unitary Patents and European Patents. The Central Division of the UPC will be located in Paris, with divisions of the Central Court in London (dealing with patents in the areas of pharmaceuticals, biotech, chemistry and metallurgy), and Munich (dealing with patents in the areas of mechanical engineering, lighting and heating). 

An inventor or applicant will be able to apply to the EPO for a Unitary Patent providing protection in all 25 EU member states.  Like a European Patent application, the Unitary Patent application must be filed in an 'official language', namely English, German or French, or in another member state language provided a translation into one of the official languages is provided within a set period. The rules include a compensation scheme for translation costs so that translation costs can be reimbursed to SMEs, non-profit organisations and universities which file a patent application in an unofficial language.

Lower costs

Currently, a European Patent providing protection in the 27 EU Member States can cost up to around €40,000, including up to around €25,000 in translation fees alone. According to the European Commission, the new Unitary Patent will cost between around €5000 and €6500. 

Renewal fees account for a large part of the total cost of having a European Patent, as renewals must be effected in each country where the patent is in force. Although the renewal fee system for Unitary Patents has not yet been announced, it will be set at a level that takes account of the special needs of small firms.

The only hurdle which remains is a challenge by Italy and Spain regarding the process, which could mean that these countries are left out of the new system - at least for now.

We will provide updates as further details are released, in particular with regard to the advantages and disadvantages of the new Unitary Patent compared with the current European Patent regime.

Monday, December 17, 2012

Two steps are one too many for the Australian Patent Office

By Linda Govenlock, Senior Associate

It is typical in patent oppositions for costs to follow the event. However, recent Australian Patent Office decisions reflect a change in this practice in relation to objections to an extension of time to serve evidence where the initial application was deficient.

In Meiji Dairies Corporation v Fonterra Co-operative Group Limited, the opponent (Fonterra) belatedly sought an extension of time to serve its evidence in support of its opposition to a patent application owned by Meiji. In its initial application, Fonterra indicated that the reason for the extension was the unavailability of an expert witness and delays for personal reasons. Meiji objected to the extension being granted.

The Hearing Officer agreed with Meiji that the initial explanation provided by Fonterra to justify the extension of time was 'severely lacking', but decided that Fonterra had followed up with sufficient details during the hearing to justify the extension of time being granted.

Fonterra ultimately succeeded in obtaining an extension of time but no award of costs was made.
This approach reflects earlier decisions in Apotex Pty Ltd v Les Laboratoires Servier and Osmoses Australia Pty Ltd v Kippers Arch Wood Protection (Austl) Pty Ltd in which the Hearing Officer criticised the use of a 'two step' process for explaining the need for an extension of time to serve evidence. 

It is therefore important to provide sufficient details at the time of filing an application for an extension of time to improve the chances of favourable consideration and lower the risk that the other side will object to the extension of time - particularly as the other side may be emboldened by the reduced prospect of having costs awarded against it if unsuccessful at the hearing. 

Monday, December 10, 2012

New Zealand accession to Madrid Protocol

By Daniel Wilson, Trade Marks Attorney

From 10 December 2012, internationally based businesses may apply for protection of their trade marks in New Zealand under the Madrid Protocol.

New Zealand is the most recent country to join to the Madrid Protocol, which now includes 87 national jurisdictions including the European Union, the United States of America, China, and Australia. A Madrid application may designate New Zealand to obtain protection of a trade mark without having to file a separate national application. If there are any objections to protection of the trade mark in New Zealand, the applicant will be notified via a provisional refusal.

Allens Patent & Trade Mark Attorneys acts in New Zealand and is able to assist applicants to overcome  provisional refusals in New Zealand.

Friday, December 7, 2012

Tic Tac No!

By Senior Associates Lester Miller, Nicky Shanks and Deborah Jackson and Trade Marks Attorney Daniel Wilson

A recent case joins others in showing the difficulties in obtaining shape trade mark protection.

Ferrero SpA applied to register the shape of its Tic Tac box as an Australian trade mark on 31 May 2010. IP Australia examined the application and objected, under s41(6) of the Trade Marks Act 1995, asserting that it was not to any extent inherently adapted to distinguish the goods from those of other traders. A delegate of the Registrar of Trade Marks recently heard Ferrero on the matter.

The hearing

s41(5) or 41(6)?

Ferrero argued that the box was to some extent inherently adapted to distinguish its goods by setting out the combination of features in the application, but the Delegate viewed the features as 'not unusual' (box shape), 'extremely commonplace' (transparency of the box), functional (lid position and label) or completely absent from the application (the nature of the hinge).

Also, a patent had been granted for the box in 1977, which claimed many of the features of shape. The Delegate took this patent into account, finding that all features of the box were central to the subject matter of the patent and therefore only functional.

Finally, after applying the factors considered in the Global Brands decision, the Delegate concluded that the features described in the application were non-distinctive, functional and overwhelmed by the overall impression of an oblong box with a lid. As none of the features was striking or made the goods 'more arresting of appearance', the box was considered to lack any inherent adaptation to distinguish, falling under s41(6).

Use of the mark

Ferrero also argued that the application should be accepted on the basis of evidence of use which it had filed. The evidence showed that the 'Tic Tac' box had been used since around 1976, (although mostly in conjunction with Ferrero's 'Tic Tac' trade mark) that there had been 'substantial' sales of 'Tic Tac' confectionery and 'overwhelming' amounts of advertising expenditure. There was also evidence of popular culture references to the 'Tic Tac' box (it featured in the movie Juno and in its merchandising) and there was evidence of people referring to 'Tic Tac boxes' on websites.

The Delegate found that the shape trade mark was a feature of certain promotional activities, that some of the evidence demonstrated use of the shape as a trade mark and that there is recognition among some consumers of the shape of the box in the Australian market-place. Despite this, the Delegate was not convinced that the public recognised the shape on its own (without the words 'TIC TAC') as a trade mark, or a 'badge of origin'. The Delegate quoted Jacobs J in the UK Vienetta case, suspecting this kind of case involves 'trickiness' on the applicant's part, trying to secure shape protection for confectionery boxes to stop third parties without impure motive from using their own word marks on confectionery boxes which might look box-like.

Tactics for shape mark registration

The decision highlights the difficulty of registering shape marks on the basis of factual distinctiveness. In principle, Australian law recognises that a shape is able to be registered as a trade mark if, because of the extent to which the shape has been used as a trade mark before the filing date, the shape mark is capable of distinguishing the goods from those of other traders. In this case, 45 years of use of the shape of the box was considered insufficient to demonstrate that the shape was distinctive. In practice, shape marks are difficult to register unless they are particularly imaginative, unique or contain striking features that are not commonly used or not purely functional. Even when registered (there are 701 registered in Australia) their scope is often likely to be narrow. Many endorsements on the Register for those shape marks include reference or description of colours or other striking features and often shapes are registered in combination with word marks applied to their surfaces. Ferrero would not, for example, have the same difficulty registering its Tic Tac box with the words 'Tic Tac' applied to the label but, of course, this would not protect the shape on its own. Nevertheless, the registration of a label-less shape trade mark is possible as a number of companies have been successful in registering shape trade marks for well known label-less beverage and coffee containers.

Traders who wish to register a shape that lacks inherent registrability on its own without any other identifying words or signs will need to educate consumers that the shape itself functions as a trade mark and show that it is recognised as a badge of origin for their products.

Thursday, December 6, 2012

Raising the bar for patents – act ASAP

By Lester Miller, Senior Associate

From April 2013, Australian patents will be more difficult to obtain, patent specifications will be judged more strictly, and applicants will have to act more swiftly in prosecuting their applications. We recommend that you file Australian complete or national phase applications and request examination on or before 12 April 2013 to take advantage of potentially broader scope of protection and stronger rules reducing the availability of prior art against innovation patents and standard patent applications under the present regime.

In our Intellectual Property Focus of 26 March 2012 we reported on major changes to intellectual property protection laws in Australia. Important aspects of those changes will apply to patent applications filed on or after 15 April 2013, or applications filed before that date and for which a request for examination has not been filed.

More complete specifications

Disclosure of an invention in provisional, innovation or standard patent specifications under an amended s40 of the Patents Act 1990 will no longer be held to the 'real and reasonably clear' fair basis test. Instead, the applicant or patentee will be required to disclose the invention in a manner which is 'clear enough and complete enough for the invention to be performed' by a person skilled in the art. Applicants and their attorneys may need to work more closely to ensure that sufficient supporting information is provided in patent specifications to meet the tighter disclosure test.

Claims of complete specifications must be 'fully supported' by the matter disclosed in the specification, a test which is applied in Europe and China and may lead to narrower scope of patents granted in Australia.

Other amendments to the Act also provide clarification of the usefulness of the invention requiring a 'specific, substantial and credible' application of the invention to be actual and disclosed.

Prior art base expanding

Common general knowledge available against a patent application or patent is presently limited to Australia; under the new regime it will be judged on a worldwide basis.

Under the present regime, prior art documents must be reasonably expected to be ascertained, understood and regarded as relevant by a person skilled in the art in order to be considered for inventive step. Under the new amendments that requirement will be removed and the test will be whether a skilled person could be reasonably expected to have combined any single piece of prior art information with the common general knowledge, or any two pieces of prior art information together. This will make it easier for IP Australia to sustain inventive step objections.


Patent applications will be required to be placed in order for acceptance within 12 months of the issuance of an examination report, removing the current nine months of available paid extension. This is not a date on which a response must be filed, but the date by which the Examiner must be satisfied that the application overcomes all objections to patentability of the claimed invention.

Amendments adding further support for an invention will no longer be allowable.

Divisional applications

IP Australia has suspended the present practise of expedited examination of certain divisional applications because of the new prosecution time limit to be introduced under the new regime.

Modified and deferred examination

These options of examination will no longer be available to applicants.

Quicken your step

For potentially greater patent breadth than may be available on or after 15 April 2013, we recommend applicants thoroughly review their patent applications without delay. Applicants should consider entering the National Phase of any PCT application designating Australia, filing divisional applications, filing associated complete applications, requesting examination on all pending applications, and making amendments to any application before 12 April 2012.

Exposure drafts of associated Regulations are now available.