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

Thursday, December 24, 2015

Defining the relationship. Are we exclusive?

by Lauren John, Associate

Earlier this year, the Full Federal Court in Bristol-Myers Squibb Company v Apotex Pty Ltd (2015) 228 FCR 1 (Bristol-Myers) apparently resolved the uncertainty created by conflicting decisions by single judges as to the meaning of 'the right to exploit the patented invention' as used in the definition of 'exclusive licence' in the Patents Act. The Full Court confirmed that in order to be an exclusive license, a licensee must be granted all the rights to 'exploit' the patent to the exclusion of all others, including the patentee. The question of whether or not a license is exclusive is important in the context that an exclusive licensee has standing to commence proceedings for infringement of a patent pursuant to s 120(1) of the Patents Act.

A recent decision of the Federal Court has considered whether a party is an exclusive licensee in light of the decision in Bristol-Myers, and provides guidance for licensing entities as to how to structure their licensing arrangements to reflect their intended relationship.

Thursday, December 17, 2015

Full Court comes down hard on business method patent, but software remains patentable

by Chris Bird and Anthony Selleck

The Full Court of the Federal Court of Australia yesterday published its reasons in the eagerly-awaited appeal decision of RPL Central v The Commissioner of Patents. The Court reversed the first instance decision, deciding that the evidence-gathering method the subject of RPL Central's innovation patent was a 'mere scheme', abstract idea or business method that did not constitute patentable subject matter.

The Court's reasoning provides welcome clarification regarding the patentability of software-related inventions. Importantly, we do not see the decision as in any way preventing the patenting of inventions in these fields of technology. Indeed, the Court was at pains to point out that computer-implemented business methods are indeed patentable, provided there is technological innovation in the way in which the method is carried out by a computer or computer system. More broadly, the decision confirms that many areas of software innovation constitute proper subject matter and are thus potentially protectable by patents.

Conversely, the decision casts doubt on the validity of some granted Australian patents with broad claims directed to business methods implemented using well-known computer and Internet functionality. Such patents were relatively readily granted, particularly during the dot-com boom of the early 2000s, when the Australian Patent Office was operating under less restrictive patentable subject matter guidelines.

It is open to the patentee to apply for special leave to appeal the Full Court's decision to the High Court of Australia.

Wednesday, December 9, 2015

Databases are protected by copyright, right?

by Scott Joblin

These days, businesses are built on the back of the databases they've compiled, and fortunes are made and lost on making sure those databases are safe, secure and proprietary.

Obviously, the easiest way to keep your database secure is to never reveal it to the public. However, what happens if the content of your database must be public or your revenue model relies on revealing or publicising your data (e.g. publicly searchable indices or television programming schedules)?

If your content is out there in the wild, can you rely on copyright to stop people from copying your content and profiting from your hard work? 

The short answer is: probably not. The slightly longer answer is: it depends on what you want to protect.

Monday, December 7, 2015

And it was all Yellow, Not.

Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd

By Brydon Wang, Lawyer

A recent Trade Mark case heard on appeal by the Full Court of the Federal Court Australia has upheld the finding that the word 'Yellow' is descriptive and unable to aid in distinguishing print or online directories. The case looked at an older version of section 41 of the Trade Marks Act 1995 (Cth) (TMA) but the principles laid down by the court are relevant to the current version of section 41.

The case offers a number of points for clients:

  • When considering the level of distinctiveness of a trade mark, the court will consider whether other traders would use the same sign in the ordinary course of their business and may even consider commercial practices overseas to inform a 'hypothetical' trader in Australia.
  • Where appealing a rejected application over a broad range of goods and services, clients should consider limiting the range of goods and services for which registration is sought as the court will be reluctant to exercise its discretion to reduce and grant registration over a narrower range of classes sought.
  • The onus of proof is on the opponent to prove on the balance of probabilities that a trade mark has no inherent capacity to distinguish.
  • While not part of the ratio of the case, the court continues to provide further guidance on acquired distinctiveness (s 41(5) of the previous version of the TMA).
  • The Full Court has again clarified that marks have to be viewed as a whole and where an essential feature of a mark is taken, it may not necessarily be deceptively similar.