Newsflash - Australian Patent Reform Bill Introduced in Senate

Senator Kim Carr, the Minister for Innovation, Industry, Science and Research has introduced the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 in the Australian Senate.

The Minister's somewhat jingoistically-titled press release, 'IP Reforms to Safeguard Aussie Ideas', can be found here.  (Why is it, we wonder, that IP reforms are always touted as benefiting local innovators, when most countries are bound by international agreements to provide equal access to foreign applicants?  Compare this with the current proposed US reform bill, the 'America Invents' Act.)

Although there was no public feedback (of which we are aware) from IP Australia on submissions received in reply to the exposure draft (see IP Australia's Exposure Draft Exposed!), a quick look over the Bill available from the ParlInfo website indicates that there have been amendments made in response to the submissions of stakeholders.

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Tags: Australia, Law reform, News, Patent law

Patentology Newsbytes – 21 June 2011

A semi-regular round-up of breaking news, current events and brief comments.

IN THIS ISSUE…

Proposed NZ Software Patent Ban Goes Mainstream – Will USPTO Fee Diversion Issue Kill Patent Reform? – Australian Government Responds to ACIP Report on Patent Enforcement – Rwanda Joins the PCT Club

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Tags: Australia, Law reform, New Zealand, News, Newsbytes, Patent law, US, WIPO

Choose Your Experts Well (or, How Not to Run a Patent Case)

VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd [2011] FCA 660 (10 June 2011)

You might have thought that an inventor, or other employee of a patent-owning company, would make a poor ‘impartial’ expert witness in a patent infringement case.

You might also have thought that a relatively senior academic who has ‘published books and papers on engineering design theory, engineering education, the innovation process, and mechanical equipment research and development’ would make an excellent expert witness.

However, if you thought either one – or both – of these things, then you would be sadly mistaken, at least in this case, and under the law as it stands in Australia.

This Federal Court decision, of Justice Kenny, concerns a claim by VIP Plastic Packaging Pty Ltd (‘VIP’) that various claims of its Australian patent no. 2001235262 were infringed by B.M.W. Plastics Pty Ltd (‘BMW’).  For its part, BMW counterclaimed that the patent was invalid on various grounds, including lack of novelty and lack of inventive step.

The patent is entitled ‘Variable-length Dip Tube for a Fluid Transfer Container’, and the specification states that the invention relates to ‘container apparatus and more particularly relates to a variable-length dip tube suitable for connection to a pump or valve at an opening of a container.’

The technology, however, is not the aspect of the case that interests us.  Nor is the court’s entirely conventional application of the law relating to infringement and validity of the patent.  We are interested in the court’s treatment of the evidence provided by expert witnesses for the two parties, which was ultimately wholly determinative of the findings that BMW had indeed infringed the VIP patent, and that the patent is valid.

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Tags: Australia, Evidence, Infringement, Validity

‘Additional Damages’ Awarded for HSV Design Infringement

GM Holden Ltd v Paine [2011] FCA 569 (30 May 2011)

To Australians, at least, Holden Special Vehicles (HSV) – the official branded performance vehicle division of General Motors Holden – requires little introduction.  Whether you love them or hate them, the modified Holden vehicles with their unique body-work, alloy wheels, interiors, upgraded performance engines, brakes, transmissions and suspension are hard to miss on the roads. 

The HSV-branded performance division is operated by a company called Premoso Pty Ltd under licence from GM Holden.  Premoso only sells genuine spare parts and accessories for HSV vehicles to the network of authorised HSV Dealers, which are required to only sell spare parts and accessories to customers who provide a build and tag number to certify their ownership of a HSV vehicle.

This exclusive arrangement (which would no doubt otherwise fall foul of competition law) is supported by relevant intellectual property rights, including registered trade marks for HOLDEN and HSV, as well as relevant badges, and design registrations, all of which are owned or controlled in Australia by GM Holden Ltd and related companies.

The decision of Justice Gordon in the Federal Court of Australia in GM Holden Ltd v Paine concerns what appears to have been a particularly flagrant case of counterfeiting of HSV parts, and alloy wheels in particular.  While Her Honour also found in favour of Holden in relation to accusations of trade mark infringement and the common law tort of ‘passing off’, our interest was piqued by an award of A$10,000 by way of ‘additional damages’ under subsection 75(3) of the Designs Act 2003.  Notably, since 2007 there have been similar provisions available under subsection 122(1A) of the Patents Act 1990.

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Tags: Australia, Damages, Designs

Australian R&D Tax Credit to Commence on 1 July 2011

On 15 June 2011, the Australian Minister for Innovation, Industry, Science and Research, Senator Kim Carr, Jointly with the Treasurer Wayne Swan, announced that crossbench Senators are giving their support to a new R&D Tax Credit Program.

The R&D Tax Credit was announced in the May 2009 Budget as part of the Government’s Innovation Agenda, Powering Ideas – An Innovative Agenda for the 21st Century.  It was originally intended to commence on 1 July 2010, but has been delayed for a year due to what the Labor Government has characterised as a ‘parliamentary road-block put in place by the [Liberal/National conservative] Coalition’. 

As of July, the new Senators elected in last year’s elections take their seats, resulting in a major change in the make-up of the upper house, with nine Greens senators gaining the balance of power.

Although the final legislation will not be passed until after 1 July 2011, when the new Senate sits, companies undertaking eligible R&D activities from this date will be entitled to access the R&D Tax Credit.

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Tags: Australia, Funding, Innovation policy, News