‘Mere Failure’ No Excuse for Missed Convention Filing Deadline

Kmart Australia Limited v Joseph Joseph Limited [2011] ADO 2 (21 April 2011)

Designs Act 2003 – Extensions of time – whether ‘misapprehension’ or ‘ignorance’ of the law provides basis for an extension of the time to file a design application claiming convention priority from earlier foreign application

We have previously used the excuse that protection for industrial designs is provided by ‘design patents’ in some jurisdictions (most notably the US) to justify commenting on this blog in relation to decisions on registered designs matters.

In this case, we have two additional excuses.  Firstly, we do not believe that there has been any previous published decision in relation to an application for an extension of time under section 137 of the Designs Act 2003.  Secondly, the relevant provisions in the Designs Act are almost identical with those set out in section 223 of the Patents Act 1990, such that decisions under one act are likely to be pertinent to the other.  (Section 224 of the Trade Marks Act 1995 also includes similar provisions.)

Hearing Officer Heath Wilson was required to consider whether it was appropriate to grant an extension of time so that the applicant could belatedly (by 20 months) file two applications – for a chopping board and a bowl respectively –  in Australia claiming priority from earlier European Community Design Registrations.  The evidence provided on behalf of the applicant suggested that the reason for failing to file the applications in time was merely that the applicant was unaware that the designs were not protected in Australia.

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Tags: Australia, Designs, Extensions of time

Patentology Soundbytes – 7 June 2011

"All the news that's fit to link!"

In this special edition – the two recent US court opinions setting the patents community abuzz…

>   Therasense, Inc v Becton, Dickinson and Company
>   Stanford v Roche

Patentology Soundbytes - we trawl the Web, so you don't have to!

~oOo~

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Tags: News, Soundbytes, US

Extension of Time Granted to Correct Extension of Term Error

Aphapharm Pty Limted & Ors v H Lundbeck A/S [2011] APO 36 (1 June 2011)

Back in July last year, we reported on the decision in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 (11 June 2009), which related to the refusal of a pharmaceutical extension 0f term for Lundbeck’s patent no. 623,144, which covers the S- or (+)-enantiomer of the antidepressant compound citalopram (see Pharmaceutical Extensions and International Inequities for further details).

A new Patent Office decision, by Hearing Officer Karen Ayres, is a direct consequence of the earlier Federal Court decision.  In particular, in an attempt to recover the patent term extension it had lost as a result of the court’s decision, Lundbeck filed a fresh application for an extension of term.  However, in order for this application to proceed, Lundbeck requires an extension of time of no less than 121 months, from the date upon which the request should have been filed originally.

The Patent Office initially proposed to grant the requested extension.  Four parties opposed.

Following a contested opposition, and a hearing, the Patent Office has confirmed the decision to allow Lundbeck extension of time within which to apply for the extension of term.

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Tags: Australia, Extension of patent term, Extensions of time, Pharmaceuticals

Cadbury Objections to Nestle Amendment Too Little, Too Late

Societe des Produits Nestle S.A v Cadbury Holdings Limited [2011] APO 35 (31 May 2011)

Opposition – final determination – amendments consistent with findings of initial decision sufficient to overcome grounds of opposition – opponent too late to raise objections to initial findings

This decision by Hearing Officer Karen Ayres is a final determination of an opposition originally heard on 24 March 2010, with the initial decision being issued on 24 June 2010 (Societe Des Produits Nestle S.A. v Cadbury Holdings Limited [2010] APO 9).

This case is a lesson for practitioners of the importance of identifying appealable findings in a decision, and filing any appeal within the relevant time limit following the date of the decision.  The fact that a decision may be of an ‘interim’ nature, and not a final determination, does not mean that any objection to, or appeal of, specific findings in the decision can be delayed until the time of final determination.

SUMMARY

Cadbury Holdings Ltd (‘Cadbury’) had been partially successful in an opposition to a patent application filed by Societe Des Produits Nestle S.A (‘Nestle’), however the Hearing Officer had provided Nestle with a strong indication of the nature and scope of patentable subject matter in the application, and provided it with an opportunity to amend its claims to overcome the successful ground of opposition.

Nestle duly made the suggested amendment, which was subsequently allowed by the Patent Office, and the case returned to the Hearing Officer for final determination.  It was only at this stage that Cadbury raised objections to the amended claims.

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Tags: Amendments, Appeal, Australia, Novelty, Opposition

Kiwis Unimpressed by Trans-Tasman Profession Proposals

Design by The Angry Kiwi

On 7 April 2011, IP Australia and the New Zealand Ministry of Economic Development released a discussion paper for a trans-Tasman patent attorney regulatory framework.

The key reform proposed in the discussion paper is the establishment of a single trans-Tasman (i.e. across Australia and New Zealand) governance body or board to regulate education, discipline and registration.  The central proposal is that the respective roles and functions of the Australian Professional Standards Board for Patent and Trade Marks Attorneys (PSB), the equivalent body proposed to be established in New Zealand, the Director General of IP Australia, and the New Zealand Commissioner of Patents would be merged into a single new body.

Under this regime there would be:

1. a single definition of the functions and services which can only be performed by a registered patent attorney or legal practitioner;
2. a single patent attorney code of conduct;
3. a single disciplinary regime;
4. a consistent attorney qualification/continuing education requirements;
5. a single registration process and register;
6. a single fees regime; and
7. a single secretariat support unit.

Essentially, in place of the current system, in which Australia and New Zealand have separate regimes for the registration and regulation of patent attorneys (i.e. a practitioner is an Australian Patent Attorney, a New Zealand Patent Attorney or, commonly, both), there would instead be a single ‘Trans-Tasman Patent Attorney’.

The deadline for public comment on the discussion paper was 16 May 2011, and all submissions can now be viewed on IP Australia’s web site.

We think it would be fair to say that the comments from Australian practitioners are generally not unfavourable, while the submissions by New Zealand practitioners are more numerous (despite the smaller size of the New Zealand profession), and almost universally opposed to the proposal.  And, frankly, we find this completely understandable!

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Tags: Australia, New Zealand, Patent attorney profession, Regulations