26 October 2009

Mere Collocation of Integers not Patentable

The Full Federal Court of Australia has affirmed the rule that a mere collocation of integers or parts is not inherently patentable. Read more...

"Skypal" deceptively similar to "Skypol"

The Delegate of the Registrar of Trade Marks has found that SKYPAL is deceptively similar to SKYPOL. This is a useful decision as it sets out some rules for comparing marks. Read more...

11 October 2009

Patent Office Decisions - September 2009

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In Terumo Corporation v B.Braun Melsungen AG [2009] APO 17. Melsungen objected to a request for an extension of time by Terumo to lodge a Statement of Grounds and Particulars. The Statement had been sent by fax one day late. The assistant for the opponent's attorney forgot to fax a copy of the Statement to Melsungen.

One of the grounds for obtaining an extension is the occurrence of an error and that error must be the cause of the failure to meet the deadline. The Delegate held that "forgetting" was the most basic of errors and it was the cause of the delay. Thus, the extension was granted. For more information on extensions of time, see my post of 12 April 2008.

This case has a useful summary of the requirements of success in an extension of time application.

In Novozymes A/S v North Carolina State University and Bioresource International, Inc. [2009] APO 18 (9 September 2009) Novozymes opposed the grant of a patent application filed by the university for improving the growth of poultry.

It is possible to request re-examination of a patent application. A patent examiner will accept a patent application if he or she believes that the invention is patentable. Instead of opposing the application, you can request that the application be re-examined if you disagree with the examiner. Re-examination is discretionary.

Usually, the request would be met. However, in this case, the Delegate said that re-examination would just slow the opposition process down as that would have to be put on hold until the re-examination was complete. This delay would not be in the public interest, which is that opposition proceedings be as speedy and as cost-effective as possible. Please see my post of 23 June 2009.

In David Gerard Clark v Ronald Neville Langford [2009] APO 19 Mr Langford requested an extension of time to pay a 6th year renewal fee. Mr Clark opposed the extension.

Mr Langford instructed Mr Smith of PSL Management, a consultancy based in Singapore, to pay the renewal fee. Mr Smith said that he was verbally instructed to pay the renewal fee. However, due to health issues he inadvertently failed to pay the fee.

The Delegate emphasized that there must have been an intention to pay the renewal fee and that there must have been an "error or omission" that led to the failure to pay the renewal fee. In this case, Mr Langford managed to show that there had been an intention. However, Mr Smith's statement merely set out that he inadvertently omitted to arrange payment. No details of how this happened were supplied. The Delegate said that it was plausible that the failure to pay the renewal fee could have been in the absence of a relevant error. As a result, the Delegate was not satisfied that an extension of time was appropriate.

It is very important that if you are attempting to get an extension of time, you make it clear that there really was an error or an omission and that it was connected to the failure to meet the deadline.

08 October 2009

Removal of Trademark for Non-Use

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A registered trade mark does not expire provided renewal fees are paid every 10 years. However, if you stop using the trade mark as a trade mark it can be removed. Such non-use can occur in respect of some or all of the goods or services in respect of which the trade mark is registered. For removal, that non-use has to be for a continuous period of 3 years terminating on a date 1 month before the date of application for removal.

The mechanism for removal makes it relatively easy for the applicant for removal. All that is required is the lodgement of the necessary application and the official fee. The onus then falls on the owner of the registered trade mark to prove use within the relevant 3 year period.  

In Shen v Gwei Ting International Fashion Corporation [2009] FCA 1131, it was emphasised that even a single instance of use during the three period is sufficient. However, the use must be in "good faith". That phrase has a well understood meaning in this context in that the use must be real, as opposed to token, use in a commercial sense.