Entitlement Matters

Foster’s Australia Limited v Cash’s (Australia) Pty Ltd [2013] FCA 527 (29 May 2013)

What happens if a patent application is inadvertently filed in the wrong name?  By ‘wrong’ I mean that a party is named as an applicant which is not actually entitled to ownership of the rights in the claimed invention.  More importantly, what happens if the patent proceeds to be granted to the wrong proprietor?  When such mistakes occur, and are subsequently discovered, what should be done to correct them?

These questions recently arose in Federal Court of Australia, in relation to four innovation patents owned by the well-known producer of alcoholic beverages Foster’s Australia Limited (FAL) (now known as CUB Pty Ltd).  Similar questions also arose in relation to two registered designs.

You might think that simple errors in filing details might be easy to fix.  You might also think that once they had been fixed, that might be the end of the story.  But the judgment of the Federal Court in this case demonstrates that you would be wrong on both counts!  Even after reassigning the patents and design registrations to the correct owner, the alleged infringer in this case – Cash’s Australia Pty Ltd (Cash’s) – challenged the validity of Foster’s rights based upon an initial error in the identification of the applicant.

Resolving this challenge was not a mere formality.  It involved numerous submissions to the court, a day of hearings, and resulted in a 139 paragraph judgment.

The moral of the story is that entitlement matters!  It is important that everybody involved in the process of applying for registration of IP rights takes the appropriate steps to ensure that all of the filing details are correct – especially the identity of the rights-owner.

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Tags: Designs, Entitlement

Professional Standards Board Releases Draft Code of Conduct

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 brought major changes to the way in which Australian patent and trade marks attorneys are able to conduct business, such as permitting us to incorporate. 

One of the key changes was to make the Code of Conduct, administered by the Professional Standards Board for Patent and Trade Marks Attorneys (PSB), into a statutory instrument.  Previously, the Code was published by the PSB, and was taken into consideration in disciplinary proceedings.  However, as the Explanatory Memorandum accompanying the Raising the Bar Bill foreshadowed:

In the interests of ensuring transparent standards for attorneys and their clients, it is desirable that attorneys be legally bound by the Code and that it be clear in the primary legislation that the PSB is entitled to take a breach of the Code into account in assessing a disciplinary complaint against an attorney.

Accordingly, the amendments explicitly permit the regulations to provide for assessing attorneys’ professional conduct against standards set by the PSB. This will enable regulations to be made clarifying the obligation of all attorneys (including new incorporated attorneys) to comply with the Code.

The wording of the amendment is intended to encompass amendments to the Code as are made from time to time, to avoid the necessity of amending the legislation every time the Code is amended. The Code will be registered as a Legislative Instrument under the Legislative Instruments Act 2003 (Cth).

Since a new Code was not finalised when the Raising the Bar reforms commenced, on 15 April this year, the existing 2008 Code was simply registered under the Legislative Instruments Act, with the goal of finalising a new Code to commence on 1 August 2013.

On 7 June 2013, the PSB announced that an Exposure Draft of the new Code of Conduct [PDF, 306kB] is now available and open to public comment until 12 July 2013.

Patent and trade marks attorneys, as well as clients and other interested stakeholders, would be well-advised to review this document.  Now is the time to ensure that the Code meets everybody’s needs!

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Tags: Australia, Law reform, Legislation, Patent attorney profession, Professional conduct

This Blogger Named Among IP’s ‘Strategic Elite’!

I am very proud – and more than a little humbled – to have been included among the IAM Strategy 300: The World’s Leading IP Strategists, which was released on Monday this week.  This annual guide is produced by Intellectual Asset Management Magazine (www.iam-magazine.com), a publication of the London-based IP Media Group Ltd.

I am also very pleased to be joined on the list by my Watermark colleague Marnie Williams.  Between us, we make up 40% of the total Australian contingent in this year’s IAM Strategy 300.  This is, I believe, a testimony to the particular focus of Watermark, in recent years, on the management of IP as a strategic business asset of vital importance to many companies.  As the introduction to the 2013 edition of IAM Strategy 300 states:

…the roles that IP strategists of whatever sort have to play are becoming ever more demanding. From creation, protection and management through valuation and monetisation to financing – with a whole lot more in between – the demand for top-flight advice on IP strategy has never been greater.

Now, I am not sure exactly what I have done to deserve being listed among such exalted company.  What is most gratifying about making this list, however, is that the research process involved feedback from clients, and other people familiar with the strategists’ work.  So, whether or not I am really worthy of inclusion in a list of the top 300 IP strategists in the entire world, it is clear that I am doing something right for those who know my work to have nominated and/or endorsed me!  Thank you all, whoever you are.

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Tags: Patentology admin, Personal, Strategy

‘Evergreenwashing’ the Pharmaceutical Patents Review

OK, I just invented a new word, so I had better explain it.

You may be familiar with ‘greenwashing’, which is the practice of using marketing spin to create a false impression that an organisation is environmentally friendly.

You may also be familiar with ‘evergreening’, which refers to a variety of techniques and strategies employed – principally in the pharmaceutical industry – to extend the effective period during which a product is covered by patents after initial patent protection has expired.

Thus ‘evergreenwashing’ is my term for the practice of generic pharmaceutical manufacturers using marketing spin to create a false impression that they are the champions of low-cost medicines, whereas originating drug companies are serial abusers using the patent system to unfairly extend their monopolies on blockbuster drugs in order to line their pockets at the expense of the community.

Now, we know that generic manufacturers are not the ‘white knights’ of the Australian pharmaceutical sector.  As I reported back in March, a recent study established that Australians are paying too much for generic pharmaceutical products (by up to 64 times, in one case) compared with consumers in other similar countries.  Furthermore, the vast majority of the $1.3 billion dollars in savings identified in the study would come from measures that would prevent us from overpaying for generic drugs, rather than from any potential cost reductions in patented drugs.

My thoughts on this issue have been prompted by the imminent release of the final report of Australia’s Pharmaceutical Patents Review.  The Review was announced back in October 2012, released a ‘background and issues’ paper in November 2012, and published its draft report in April 2013.  Last week I was reading through some of the submissions in response to the draft report, when my attention was drawn to a (green) breakout box headed ‘Evergreening must be eradicated’ which appears on page 5 of a submission by Australian generic manufacturer Alphapharm [PDF, 478kB]. 

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Tags: Andrew Christie, Australia, Evergreening, Law reform, Pharmaceuticals, Public policy

Updating the CCH Patents Commentary

Regular readers may have noticed a reduction in the rate of new posts on this blog in recent weeks.  Whereas I have generally aimed for three articles per week in the past, lately I have been happy enough just to publish two.

There is a reason for this.  And it is not laziness, or a loss of enthusiasm for Patentology!  It is because I have been ‘moonlighting’.  I have another writing project that has been taking up a lot of my time.

A few months ago I was contacted by the Law & Business Editor at CCH Australia.  For those who may be unfamiliar with CCH, its web site will inform you that:

For over 45 years, CCH has been building a solid reputation in accurate and timely resources by assisting Australian professionals to establish and maintain their practices and businesses. Our clients in the accounting & financial planning, employment & safety, and legal and business communities rely on CCH information to help them advise their clients, run their businesses and manage their obligations.

One of CCH’s products for the legal community is its Australian Industrial and Intellectual Property ‘loose-leaf’ service (which is also available as an online service).  Among other content, this service provides full text legislation and detailed commentary on copyright, designs, patents and trade marks.

With the Raising the Bar reforms coming into effect, CCH asked me if I would be interested in updating its Patents Commentary.  To cut a long story short, I did some quick lobbying around the office at Watermark, a little negotiating with CCH (and I have to say that everyone, on both sides, was really good about it) and ended up saying an enthusiastic ‘yes’!

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Tags: Australia, Patent law, Patentology admin, Personal