Category: IP and Trade Practices

Co-patentees jump the gun in appealing to the AAT

Case note by Peter Heerey AM, QC, Tom Cordiner & Alan Nash: correspondents for South Australia, Victoria and Western Australia
Stylis and Commissioner of Patents [2014] AATA 796 28 October 2014
The Administrative Appeals Tribunal has refused an application to review a particular decision of the Commissioner of Patents on the basis that the AAT lacks jurisdiction to review it.

A costly exercise – s 19(2) of the Patents Act

Alphapharm submitted that, although AstraZeneca had succeeded, it had no need to litigate at all because Alphapharm had made it clear that it would desist from conduct of the kind that was alleged to be in infringement of patents, until such time as the result of the appeal in Ranbaxy was known. Nevertheless AstraZeneca commenced proceedings against Alphapharm. AstraZeneca submitted that not only was it entitled to its costs in the normal course, but also that those costs should be taxed on the special basis for which section 19(2) of the Patents Act provides.

Do you hear what I hear – musical patent less than clear as a bell

Lisica v Commissioner of Patents [2014] FCA 433 7 May 2014 – On appeal to the Court, the applicant did not seek to lead any expert evidence, which might have explained the area of the useful arts to which his invention would make a contribution or at least assist in understanding the language of the specification and the claims. Justice Jessup concluded that in those circumstances, the claim was neither clear nor succinct as required by s 40(3) of the Act: “As a statement marking out the area of the public monopoly which the applicant seeks, the claim falls well short of the standard of clarity required.” His Honour echoed the view expressed by the delegate that the applicant’s attempt to draft the specification and claims without professional assistance, had not helped him.

Telstra continues to see red over competitors’ use of yellow for phone directories

Telstra and, more recently, Sensis have published the well known Yellow Pages phone directories since 1975, and also used the “Walking Fingers” logo since shortly after that date. The applicants’ more recent online directories and mobile applications similarly have featured a yellow theme. Yellow has been a strong theme in the applicants’ marketing from an early date. Telstra and Sensis brought claims of misleading and deceptive conduct and passing off against three publishers of print and online phone directories (the PDC respondents). The relevant publications had yellow covers and yellow pages in the case of the print publications, and yellow icons, background and other visual elements in the case of online directories and mobile applications.

Failures to change corporate names and deliver up infringing material leads to fines for contempt

Late last year, the Federal Court ordered that the fourth respondent, Bob Jane, and the companies he controlled, be restrained from trading as a business under any name that is or includes the word JANE. The corporate respondents were also ordered to forthwith change their names, transfer certain domain names and deliver up promotional material to Bob Jane Corporation. Early this year, Bob Jane Corporation brought charges of contempt of court against each of Bob Jane and various of the corporate respondents he controlled for failure to comply with those orders. Bob Jane Corporation sought a declaration of guilt and imposition of a fine in relation to each alleged contempt.

When is an exclusive patent licence not so exclusive?

The first applicant, Damorgold, successfully established that JAI Products had infringed the patent in suit. A residual issue left for later determination was whether the second applicant, Vertilux, was an exclusive licensee of the patent and therefore also entitled to have initiated proceedings pursuant to section 120 of the Patents Act 1990. A written licence was in place between Damorgold and Vertilux that imparted on Vertilux an exclusive licence to exploit the patent, and also purported to record the terms of an oral licence between the parties said to have been in place at least since the start of 2006. Under the licence, Vertilux was entitled to grant sublicences, with Damorgold’s written consent (although Damorgold could waive that requirement).

Copyright, ISPs and authorisation

The Commonwealth Government released an Online Copyright Infringement discussion paper (pdf) on 30 July 2014. Responses are required by 1 September 2014. The problem the discussion paper identifies is the high level of usage of the Internet by Australians to infringe copyright by downloading illegally movies, recorded music and the like and a perceived need, following the High Court’s decision in Village Roadshow v iiNet, to compel ISPs to negotiate with copyright owners about the introduction of systems such as ‘Notice and Takedown (and Put back)’ procedures.

Successful patentee not required to amend patent to reflect adverse findings in respect of certain claims before obtaining relief for infringement

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from his Honour’s decision reported above, JAI Products asserted that, because the only patent claims upon which Damorgold succeeded were dependent on claims that had been found invalid, it was necessary for Damorgold to amend the patent pursuant to section 105 of the Patents Act before it was entitled to an order for injunctive relief. JAI Products plainly wished to argue that the Court should exercise its discretion not to amend the patent because of culpable delay or the like.