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

Tuesday, February 5, 2013

Prostrate punnet patent punches through

If a patent for a tree punnet falls, and no one is around to watch for its revival, does it ever really die? Senior Associate Lester Miller reports.

recent case tells a story of an Australian patent that ceased but was revived to maintain a monopoly just as effectively as it did before the cessation period - even arguably during the cessation period.
Garden City Planters' Australian Patent no 769039, directed to improvements to a sapling punnet, ceased in February 2008 due to failure to pay a renewal fee. The patent was revived in September 2009, 19 months later, through an application for an extension of time.
After the patent's revival, Vivre Veritas Pty Ltd applied to the Australian Patent Office for a licence to make the improved punnet, saying that it had been making the punnets during the cessation period. Section 223(9) of the Patents Act 1990 provides protection or compensation for actions taken during a cessation period. Garden City opposed the licence application.

Garden City make about 10 million of the patented punnets per year. Vivre Veritas said it received enquiries to make the punnets in 2008, and tried various apparently unsuccessful workarounds. Luckily, though, during 2009, Vivre Veritas discovered that the patent had ceased.
The hearing
The bar is set high for licence applicants under s223(9). Bennett J in Law v Razer Industries found that even though the regulation associated with s223(9) doesn't refer to it, the applicant for the licence must be more than 'lucky' to be making products which are the subject of a ceased patent. There must be a link between the fact that a patent has ceased and the reliance on that fact by the person seeking to obtain the licence. In other words, Vivre Veritas had to prove it exploited the patent because of its ceased status.
The evidence presented by Vivre Veritas was patchy, but there were indications that it had made prototypes and commenced sales of punnets. The Hearing Officer ultimately found that, at least, Vivre Veritas had ordered tooling moulds for some punnets, supplied samples to customers and had some discussions with potential buyers to buy punnets. Unfortunately, the exact shape and features of those punnets was unclear. 
Evidence regarding the products sold was in the form of variously redacted invoices for punnets 'as per drawings' and subsequent payments of those invoices, as well as product codes. Even though the product codes were copied from Garden City's catalogue, none of the drawings mentioned was in evidence. 
The Hearing Officer was satisfied that Vivre Veritas was aware during the ceased period that the patent had ceased. Unfortunately for Vivre Veritas, there was not sufficient evidence provided  for the Hearing Officer to determine whether the patent's exploitation was commercial or not, or whether there was a link between the patent's exploitation and the ceased status of the patent.
Instead, the Hearing Officer found that the evidence did not show any link between any punnets which may have been commercially produced by Vivre Veritas and the claims of the patent. 
The Hearing Officer rejected the licence application.
Take home
  • Ceased patents can be revived even after what seems like a significant time. 
  • Monitor the status of a ceased patent of commercial interest to determine whether the patentee attempts to revive the patent through extension of time provisions. 
  • Even if a person had taken steps to exploit a (later) revived patent during the period it was ceased, they must be able to show that they made the decision to exploit the patent because of the ceased status.
  • In a licence application under s223(9) it must be shown that the product produced actually falls within the scope of the claims of the revived patent.

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