Upcoming Online Conference on ‘Inventorship in Patent Law’

On Monday 16 May 2022 the European Patent Office (EPO) is running an online conference on ‘Inventorship in Patent Law’.  It commences at 1.30pm Central European Summer Time (CEST), which is 9.30pm on the east coast of Australia (AEST), 9.00pm in South Australia, and a positively civilised 7.30pm in Western Australia.  It is, unfortunately, a little less accessible to people in New Zealand, where it will be 11.30pm.  The total running time is two hours and forty minutes, so the event will finish a little after midnight here in Melbourne.

I am promoting the conference because I will be participating on a panel discussing the DABUS ‘AI inventor’ decisions in various jurisdictions.  It is not in doubt that I will be the least illustrious of the panellists.  The other participants are:

1. Wolfgang Sekretaruk, who is Chairman of the Legal Board of Appeal of the EPO, Deputy of the President of the Boards of Appeal and Head of the Legal Services of the Boards of Appeal, and will be discussing the EPO decisions on the DABUS applications;
2. Professor Duncan Matthews, of the Queen Mary, University of London School of Law, who will be discussing the UK decisions;
3. Professor Dr jur. Ansgar Ohly, of the Ludwig Maximilian University of Munich, and the University of Oxford Faculty of Law, who will be discussing the German case; and
4. Professor Dan L Burk of the University of California, Irvine, who will be discussing the US case.

I will, of course, be talking about the position in Australia – which is arguably the most interesting, given that we were the only country to (briefly) recognise DABUS as a legitimate inventor.

Our session of the conference will comprise a series of brief (10 minute) presentations on the position in each jurisdiction, followed by a 30 minute panel discussion.

Prior to the panel session, there will be a 20 minute presentation from Axel Voss, Member of the European Parliament, on the European approach to AI.  This will be followed by an introduction to the DABUS applications by the EPO’s Heli Pihlajamaa as a lead-in to the panel.

The panel session will be followed by a presentation on ‘the right to a patent, its origins and the consequences of the fundamental principle that the right to the patent is originally vested with the inventor’ from Martin Stierle, Associate Professor in Intellectual Property Law at the Faculty of Law, Economics and Finance at the University of Luxembourg.

The conference is free of charge, however registration is required in order to obtain the link to the online session (via Zoom).  Registered trans-Tasman patent attorneys should be able to claim 2.5 CPE hours for attendance at the full event.

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Tags: Artificial intelligence, Australia, DABUS, European Patent Office, Germany, Inventorship, UK, US

DABUS Again Denied in the US and the UK, Part III – Implications for Australia

In both the US and the UK, patent offices have refused to allow applications filed by Dr Stephen Thaler to proceed, on the basis that the named inventor – an ‘AI’ machine dubbed DABUS – is not a human being.  In the first article in this series I looked at the US approach to the role of the inventor in patent law and practice, and at the recent decision of Judge Leonie M Brinkema in the United States District Court for the Eastern District of Virginia (‘EDVA’) upholding the USPTO’s decision.  In the second, I discussed the split decision of the Court of Appeal of England and Wales, which upheld (by a 2-1 majority) the decisions of the UK Intellectual Property Office (UKIPO) and the High Court.

In Australia, the Patent Office also refused to allow a corresponding application by Dr Thaler to proceed.  In contrast to the US and the UK, however, that decision was overturned by Justice Beach in the Federal Court.  The Commissioner of Patents has now appealed that ruling to a Full Bench of the Court (case no. VID496/2021).  In this article, I will be looking at the potential implications of the recent US and UK decision for the conduct and outcome of the appeal in Australia.

It should be said at the outset that the US law is very different to that of Australia, and it is therefore unlikely that anything in Judge Brinkema’s legal reasoning will be influential upon the Full Court.  It has also become apparent through the UK High Court and Court of Appeal decisions that while the UK law shares some similarities with the corresponding provisions of the Australian Patents Act 1990, there are also some significant differences.  Even so, there are aspects of the reasoning of Lord Justice Arnold in the Court of Appeal that the Australian appeals court may consider persuasive, and that could therefore influence the outcome here.

There are two key questions likely to be addressed in the appeal, both of which also arose in the UK, although only the first received substantive attention in the US.  These are:

1. Can DABUS, as an ‘AI’ machine and not a human being, validly be named as an inventor on a patent application?
2. Can Dr Thaler, not being (at his own insistence) the inventor, establish a proper legal basis for entitlement to the grant of patents on inventions said to be generated by DABUS?

I shall look at each of these questions in turn.

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Tags: Artificial intelligence, Australia, DABUS, Inventorship, Patent law, UK, US

DABUS Again Denied in the US and the UK, Part II – the Split Decision in the UK

In the first article in this series I looked at the US approach to the role of the inventor in patent law and practice, and at the recent decision of Judge Leonie M Brinkema in the United States District Court for the Eastern District of Virginia (‘EDVA’) upholding the USPTO’s decision to refuse two patent applications on the basis that the ‘AI’ machine DABUS is not a human being and therefore cannot be an inventor under US law (Stephen Thaler v Andrew Hirshfeld and the US Patent and Trademark Office, Mem. Op. [PDF 998kB]).  In this article, I shall turn my attention to the split decision of the Court of Appeal of England and Wales in Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374, in which parallel efforts to name DABUS as an inventor have also been rejected, with Thaler’s appeal being dismissed despite a weighty dissent by Lord Justice Birss.

The issues in the UK case are somewhat different, and more nuanced, than in the US.  While all three judges on the Court of Appeal agreed that an ‘inventor’ under the UK law must be a human being, the fact that DABUS is a machine was not immediately determinative of the outcome.  An inventor is not required to play any active role in the filing, prosecution, or grant of a patent in the UK, so arguably there remains a question as to whether an application can be permitted to proceed even if a legally valid inventor has not been – or cannot be – named.  In the event, the answer to this question turned on whether or not the applicant (i.e. Dr Thaler) could satisfy statutory requirements to name the inventor, and to indicate how he is entitled to be granted patents on inventions that he did not claim to have devised himself.

Lord Justice Arnold and Lord Justice Birss disagreed on the outcome, with the tie being broken by Lady Justice Elisabeth Laing, agreeing with Arnold LJ that the DABUS applications should be deemed withdrawn. 

Arnold LJ is the preeminent patent law specialist on the Court of Appeal.  He was elevated to the Court of Appeal in 2019, after being appointed to the High Court in 2008, and as Judge in Charge of the Patents Court in April 2013.  In March 2016 he was appointed as an External Member of the Enlarged Board of Appeal of the European Patent Office.  Impressive as this is, however, Birss LJ is no lightweight.  In 2010 he was appointed as a Specialist Circuit Judge sitting in what was then the Patents County Court.  In 2013 he was appointed to the High Court, and in 2019 he filled the place formerly held by Arnold LJ as Judge in Charge of the Patents Court, before being elevated to the Court of Appeal in January 2021.

So this is a case in which the dissenting judgment must be taken seriously, especially with the possibility still open of an appeal to the Supreme Court.  But for now, at least, the balance of the law remains against DABUS in the UK.

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Tags: Artificial intelligence, DABUS, Inventorship, Patent law, UK

DABUS Again Denied in the US and the UK, Part I – the Approach in the US

On 27 August 2021, the Commissioner of Patents lodged an appeal (case no. VID496/2021) against the decision of Justice Beach in the Federal Court of Australia finding that the ‘AI’ machine known as DABUS could be named as sole inventor on an Australian patent application.  Unusually, and presumably in recognition of the media and public interest generated by this case, IP Australia took the step of announcing the filing of the appeal, while emphasising that ‘[t]he appeal is centred on questions of law and the interpretation of the patents legislation as it currently stands’ and that ‘[t]he decision to appeal does not represent a policy position by the Australian Government on whether AI should or could ever be considered an inventor on a patent application.’  The appeal will most likely be heard by a Full Bench of the Federal Court comprising three judges, although in rare cases deemed sufficiently significant a five judge panel may be assigned.  A hearing could take place as early as November this year, but at this stage it seems more likely to be scheduled for early in 2022.

In the meantime, however, parallel test cases initiated by Surrey University Professor Ryan Abbott’s Artificial Inventor Project have been making their way through the US and UK courts.  On 2 September 2021, Judge Leonie M Brinkema in the United States District Court for the Eastern District of Virginia (‘EDVA’) rejected Dr Stephen Thaler’s appeal against the USPTO’s decision to refuse two patent applications on the basis that DABUS is not a human being and therefore cannot be an inventor under US law (Stephen Thaler v Andrew Hirshfeld and the US Patent and Trademark Office, Mem. Op. [PDF 998kB]).  And on 21 September 2021, a majority of the Court of Appeal of England and Wales (Lord Justice Arnold and Lady Justice Elisabeth Laing, Lord Justice Birss dissenting) upheld a decision of the High Court which agreed with the UK Intellectual Property Office (UKIPO) that Thaler’s applications should be deemed withdrawn because of his failure to identify a natural person as inventor (Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374).

These cases are, of course, of interest because they concern the fascinating question of whether non-human machines can be inventors for the purposes of obtaining patent.  But they are also interesting for what they reveal about the differences between the treatment of inventors under US and UK law.  In the US the inventor is central and indispensable – a position that arguably derives ultimately from the Constitutional authority for Congress to make laws ‘promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries’.  In the UK, however – and in the view of Birss LJ in particular – the identity of the inventor is almost irrelevant in the majority of patents applied for, prosecuted and granted.

I will cover these latest developments in the DABUS saga over a series of three articles.  In this first article, I will look at the approach taken to the role of the inventor in the US, how it differs from other jurisdictions, and the recent decision from the EDVA.  The second article will cover the split decision in the UK, and how the differing opinions of eminent patent jurists Arnold LJ and Birss LJ stack up.  Finally, in the third part I will look at where Australia sits, and consider whether either of the US and UK decisions may be of any relevance in the upcoming Full Court appeal.

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Tags: Artificial intelligence, DABUS, Inventorship, Patent law, UK, US

Another Australian Patentee Bitten By ‘Unjustified Threats’ Provisions

Under section 128 of the Australian Patents Act 1990, a person or company that feels they have been unjustifiably threatened with patent infringement proceedings can take legal action seeking an injunction to prevent the threats from continuing, and the recovery of any damages sustained as a result of the threats.  The law particularly contemplates circumstances in which a patent holder seeks to inhibit competition by making vague or dubious claims, such as ‘by means of circulars, advertisements or otherwise’ as well as by more conventional means, such as cease-and-desist letters.
 
I am not a fan of the current unjustified threats provisions, at least not as they have been repeatedly interpreted by the Australian courts.  They can be successfully invoked in any case in which it ultimately turns out that a patent is invalid or not infringed, regardless of how objectively reasonable the patentee’s original belief may have been.  The law therefore does not particularly target bad actors such as ‘patent trolls’.  There is a very limited ‘safe harbour’ in section 131, according to which ‘the mere notification of the existence of a patent, or an application for a patent, does not constitute a threat of proceedings for the purposes of section 128.’
 
As a result, the unjustified threats provisions provide an accused infringer with an effective trigger for invoking full-blown, time-consuming and expensive proceedings in the Federal Court of Australia on infringement and validity of a patent at the merest hint of an allegation of infringement by the patentee.
 
A recent judgment in CQMS Pty Ltd v Bradken Resources Pty Limited [2016] FCA 847 reconfirms the position that any allegation of infringement which eventually turns out to have been incorrect (no matter how reasonably and sincerely believed) will be treated as an unjustified threat under the Australian law.  The case particularly highlights the difficulties inherent in drafting initial letters to potential infringers without risking exposure to subsequent proceedings for making unjustified threats. 
 
Patent attorneys and IP lawyers, who are commonly called upon to prepare such letters, should therefore take particular note, as should patentees who might otherwise feel inclined to make initial allegations without obtaining appropriate legal advice.

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Tags: Australia, Law reform, UK, Unjustified threats

‘Springboard Injunctions’ Considered by Federal Court of Australia

You may have read the title of this article and wondered, ‘what, exactly, is a “springboard injunction”?’  If so, I am sure you are not alone.  I encountered the term for the first time myself this past week, when I read a recent decision of the Federal Court of Australia, Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (No 2) [2015] FCA 140.

The background to this decision, very broadly speaking, is as follows.  Streetworx is the proprietor of two innovation patents relating to street lighting assemblies (also known as ‘luminaires’).  In a judgment handed down on 18 December 2014 (Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366), Justice Beach found that Artcraft had infringed the Streetworx patents by the supply of its own luminaires, which it had manufactured in China, and imported for sale in Australia. 

Artcraft has pre-existing contracts to provide luminaires to the Monash City Council and Moonee Valley City Council (which cover significant areas of Melbourne’s South East and North West, respectively).

After the December judgment was handed down, Artcraft determined that it was able to modify its existing stocks of luminaires such that they would no longer infringe the Streetworx patents, and could therefore be used to meet its obligations to supply luminaires under the council contracts.

Not surprisingly – considering its success in establishing the validity and infringement of its patents – Streetworx was not impressed by Artcraft’s ‘solution’ to its infringement problem.  Among other relief, Streetworx therefore sought an injunction restraining Artcraft from supplying its modified, non-infringing, luminaires to the Monash and Moonee Valley Councils.  It also sought orders requiring Artcraft to hand over all infringing luminaires in its possession for destruction by Streetworx.  The court has now denied both of these requests.

The so-called ‘springboard injunction’ is the requested order restraining Artcraft from supplying non-infringing products, on the basis that they have been produced by way of the importation and use of infringing products.  Acquisition of the infringing products may thus be regarded as a ‘springboard’ from which the non-infringing products are made and supplied.

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Tags: Australia, Injunctions, Litigation, Penalties for Infringement, UK

Pharmaceutical Extensions of Term: Is It Time for a Fix?

In light of news from Europe today, via the IPKat, it is becoming ever more clear that the law in Australia regarding the grant of extensions of term for pharmaceutical patents is flawed, and out-of-step with all of our major trading partners.

We have covered this topic before, most recently in the article Australia Slips Further Out-of-Step on Pharmaceutical Extensions, in which we highlighted the disparity between the Australian law and its Japanese counterpart.  We had previously discussed the difference in approaches between Australia and the US.  A new ruling from the Court of Justice of the European Union (CJEU) now establishes that a similar disparity exists between Australian and European law and practice.

The upshot of this is that patentees in Australia may obtain a shorter term of protection for various classes of pharmaceutical inventions, when compared with trading partners such as the US, Europe and Japan.  While some may see this as a benefit – shorter patent terms mean earlier availability of generic competitors, resulting in lower prices – the flip side is that jurisdictions with lesser protections tend to seen as less attractive for investment.  This may mean less funding for R&D to be conducted in Australia, fewer innovative drug manufacturers operating in this country, and a reduced focus on the specific needs of the Australian community and environment.

If Australia wishes to stand side-by-side with other advanced developed economies, to maintain and develop local capabilities for drug discovery and development, reduce its reliance on primary industry, and progress along the path of becoming a ‘knowledge economy’, we need to ensure that the laws protecting IP in this country are on a par with those nations against which we would compare ourselves.

As matters stand right now, this is clearly not the case when it comes to patent protection for pharmaceutical inventions.

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Tags: Australia, Europe, Extension of patent term, Japan, Pharmaceuticals, UK, US

UK Decision in HTC v Apple Will Not Influence Cases in Australia

On 4 July 2012, the England and Wales High Court (Patents Court) delivered a judgement in HTC Europe Co Ltd v Apple Inc [2012] EWHC 1789 (Pat), finding that five HTC devices – all running Android 2.3 (Gingerbread) – do not infringe any valid claims of four Apple patents.

This decision is the ultimate outcome of an an action brought by HTC, seeking revocation of three Apple patents.  In response, Apple counterclaimed for infringement of the three patents, and added a fourth – which HTC duly alleged was also invalid.

Overall, the court made the following findings:

1. HTC’s Gingerbread devices do not infringe any claims of European Patent no. EP2098948, entitled ‘touch event model’;
2. claims 1 and 2 of the ‘touch event model’ patent are invalid – claim 1 for obviousness, and both claims for being directed to unpatentable subject matter under the European ‘computer programs’ exclusion;
3. the Gingerbread devices infringe claims 1, 6 and 18 of European Patent no. EP1964022, entitled ‘unlocking a device by performing gestures on an unlock image’ (a.k.a. ‘slide-to-unlock’);
4. however, the claims of the ‘slide-to-unlock’ patent are invalid in view of various items of prior art, most dramatically the Swedish Neonode N1, originally launched in July 2004, in view of which the court found all Apple’s claims to be obvious (you can watch the N1 in action in this YouTube video – the ‘unlock’ feature is demonstrated at around 4:14);
5. European Patent no. EP2059868, entitled ‘portable electronic device for photo management’, was found to be valid, but not infringed by the HTC Gingerbread devices; and
6. European Patent no. EP1168859, entitled ‘portable radio communication apparatus using different alphabets’, was found wholly invalid for obviousness, though had it been valid the Gingerbread devices would have infringed.

A number of these European/UK patents have Australian counterparts, some of which have been asserted by Apple in its ongoing litigation against Samsung.

Florian Mueller, in a posting on his FOSS Patents blog, has suggested that the UK ruling ‘will have some relevance … in Australia’.  We disagree.  There is no reason whatsoever to think that the Australian courts will be influenced in any way by the outcome of a case involving a different party, different accused products, and which was decided under different laws.  If anything, quite the opposite is true – an Australian court may well be obliged to reject any attempt by either party to point to this UK decision as having some level of persuasive value.

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Tags: Android, Apple-v-Samsung, Australia, Innovation patent, Obviousness, UK

UK Court Allows Extradition of Alleged Copyright Criminal

This is one of the rare postings in which I slip a little off-topic (and into the first person) to write about something which is outside my area of legal expertise, but nonetheless of particular personal interest.

You may have been following the news – or, at least, trying to, considering the poor quality of some of the coverage – about 23 year-old UK citizen Richard O’Dwyer, who is studying ‘games software development and interactive media’ at Sheffield Hallam University.  He is also accused – with others – of operating a website, firstly from TVShack.net, and subsequently from TVShack.cc, which aggregated links to third party websites from which copyrighted first-run and other movies and television programs could be downloaded or streamed.  It is not alleged that TVShack actually hosted any pirated content itself, however O’Dwyer appears to have admitted to earning approximately £15,000 per month from advertising on the site.

TVShack.net was one of the sites closed down when US Immigration and Customs officials ‘seized’ the offending domain names in June 2010 (the US Attorney’s media release is still available, in PDF format).  If you attempt to access the site now, you will first be presented with the notice that heads this article, and then be redirected to this guilt-inducing YouTube video explaining the human consequences of piracy.  The US authorities have since been tenaciously pursuing those said to be behind the seized domains.  O’Dwyer has become the most high-profile target in recent days, as a result of an application by the US government for him to be extradited from the UK to face charges of copyright infringement in the United States.  If he is extradited, and ultimately found guilty, he faces a sentence of up to ten years in a US Federal penitentiary, of which he would necessarily serve at least 85% under US ‘non-parole’ laws.

And things are not looking good for O’Dwyer, with District Judge Purdy in the Westminster Magistrates’ Court, issuing a ruling on 13 January 2012 finding no barrier to grant of the US Request for extradition.  (Decision: The Government of the United States of America v Richard O’Dwyer – PDF).

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Tags: Copyright, Extradition, Personal, UK, US

Canadian Patent Office Concedes, Allows Amazon ‘1-Click’ Claims

After a mere 13 years, it appears that Amazon.com, Inc is finally to receive a Canadian patent on its famous ‘1-click’ ordering system.  Although a formal notification of patent grant has yet to issue, various observers have noted status changes in Canadian application no. 2246933 in late December, indicating that the Canadian Intellectual Property Office (CIPO) has conceded defeat in its efforts to declare the Amazon claims ineligible for patenting (see, e.g., this report from Canadian intellectual property lawyer Barry Sookman).

In particular, the records show that on 22 December 2011 the status of the rejected Amazon application as ‘dead’ was reversed, and on 28 December 2011 a ‘final’ fee payment was made, which is only required once the application is found allowable.

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Tags: Amazon 1-click, Australia, Business processes, Canada, Computer programs, Europe, Patent Office, Patentable subject matter, Politics, UK

Computer-Aided Design Method Held Patentable in UK

Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (5 October 2011)

UK Patents – patentable subject matter – whether claim to a method of designing a drill bit constitutes an unpatentable ‘mental act’

In the recent decision Re Halliburton Energy Services Inc, the England and Wales High Court (Patents Division) has overturned the rejection of four patent applications by the UK Intellectual Property Office (UKIPO), providing some much-needed clarity around the application of the exclusions from patent-eligibility in section 1(2) of the UK Patents Act 1977  to computer-implemented inventions.

The decision overturns a current practice of the UKIPO, which essentially adopts a wide approach to determining whether a claimed invention is excluded from patentability on the basis that it is a scheme, rule or method for performing a mental act.  According to this practice, a method that is expressly claimed in a computerised form, but which would constitute merely mental steps if performed without the aid of a computer, is rejected as being both a mental act and a computer program as such. 

This practice formed the basis for rejection of the four Halliburton applications, each of which related to a method of designing a drill bit using simulations based on a finite element analysis, i.e. essentially computer-aided design (CAD) techniques.

The Halliburton decision confirms that the ‘mental acts’ exclusion is narrow in scope, and acts to prevent the grant of claims that would be infringed merely by mental processes.  It also confirms the patentability under UK law of inventions having a requisite technical nature, even when implemented in the form of a computer program.

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Tags: Computer programs, Patentable subject matter, UK

‘Computer Readable Medium’ Claims – Substance Trumps Form

A recent decision of the US Court of Appeals for the Federal Circuit (CAFC) demonstrates a substantial harmony amongst the laws of jurisdictions including the US, Europe (and the UK) and Australia, regarding the determination of patent-eligibility of claims directed to computer program products (such as recorded CD-ROMs, DVDs, magnetic discs, or similar).

Specifically, in all of these jurisdictions, it is the substance of the ‘underlying invention’ which must be considered, and not the specific form (e.g. method, system, apparatus, software product) in which it is claimed.

Just last week, we reported on the recent decision of the Australian Patent Office in Discovery Holdings Limited [2011] APO 56 (see Computer-Implementation No Insurance Against Rejection).  In that case, the invention was, in essence, an insurance plan, which is not patent-eligible subject matter under the ‘manner of manufacture’ test.  The application also included ‘system’ claims, directed to a physical hardware arrangement comprising a suitably-programmed processor coupled to a memory device, and configured to implement the insurance plan.  Despite the fact that a physical apparatus is, on the face of it, patent-eligible (if also novel and inventive), the Hearing Officer applied a test by which the ‘substance’ of the invention (i.e. the insurance scheme) took priority over the form in which it was claimed.

A very similar approach has been taken by the CAFC in CyberSource Corporation v Retail Decisions, Inc (Fed. Cir. 2011, No. 2009-1358).  Here, the invention in the patent assigned to CyberSource was in essence a method of detecting fraud in online credit card transactions by analysing patterns of transactions involving particular cards against network addresses (such as an IP address) from which the transactions originate.  The court found that the method, as claimed, was ineligible for patent protection under 35 USC § 101 because it was so broad and trivial that it could be performed purely by mental steps.  Indeed, CyberSource’s CEO admitted that ‘before CyberSource created a computer implemented fraud detection system, “[w]e could see just by looking that more than half of our orders were fraudulent.”’

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Tags: Australia, Computer programs, Europe, Patentable subject matter, UK, US

Minister Announces Greater Cooperation between Canadian, UK and Australian IP Offices



Picturesque Vancouver

 On Thursday 17 March 2011, Senator Kim Carr – the Australian Minister for Innovation, Industry, Science and Research, announced the launch of a pilot program to be conducted between the Canadian, UK and Australian Patent Offices, to enable examiners in each office to gain electronic access to documents, such as search and examination reports, relating to corresponding patent applications filed with the other two offices.

The supporting IT system, known as Centralised Access to Search and Examination, or CASE (because every good project deserves an acronym), has been developed in partnership with the World Intellectual Property Organisation (WIPO).

Believe it or not, the three cooperating IP offices – collectively calling themselves the ‘Vancouver Group’, for the location of their first formal meeting in 2008 – have dubbed this particular initiative ‘Mutual Exploitation’.

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Tags: Australia, Canada, Harmonisation, News, Patent Office, UK

Rules for Calculation of Time Periods Measured in Months

Make sure you mark the
right date!

In an Official Notice issued on 30 September 2010, which appears to have taken everybody by surprise, the UK Intellectual Property Office (UKIPO) has announced a change in practice in relation to the period allowed for filing a Notice of Opposition to the registration of a national trade mark.  Specifically, the expiry of the two-month opposition period has been reduced by one day.

For example, if an application is published for acceptance on 6 October 2010, it would previously have been the case that a Notice of Opposition could be filed up until 6 December 2010.  Under the new practice, the final date for filing a Notice of Opposition is 5 December 2010.

While we do not usually trouble ourselves with trade mark matters on the aptly-named Patentology blog, this sudden change in practice by the UKIPO gave us pause to wonder whether some similar surprise may be lurking unnoticed in any of the regulations we operate under in our day-to-day practice.  We are pleased to report that this seems unlikely and, indeed, this particular UK rule appears to be an anomaly.

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Tags: Australia, Deadlines, Europe, New Zealand, Opposition, UK

The Importance of Establishing Early Ownership of Inventions

It is common for employers to assume that they own their employees' inventions, either due to express provisions in employment contracts or by operation of relevant statutes and/or common law.

It is also often assumed that, in any event, an assignment may be obtained from an inventor at any time after the invention has been made.  It appears to be particularly common in the US that the first time a written assignment document is executed by the inventors, whether employees or not, is after the filing of a nonprovisional application at the USPTO.

A relatively recent case from the UK highlights the potential danger of delaying formal assignment of inventors' rights until later in the patent process, while a recent Australian case serves as a further reminder that there is no guarantee, in all circumstances, that an employer will gain entitlement to an employee invention simply because it was made during a period of employment.

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Tags: Australia, Employee inventions, Patent law, Priority claim, UK