31 March 2010

Seven Sins — IP Mistakes Start-Ups Should Avoid

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Here is another excellent article from IPFrontline.

The reason for my posting it on an Australian blog is that I consistently run into one or two of these "sins". The most valuable asset a start-up has is its intellectual property. Yet is remains astonishing how often these sins are committed in this country.

Seven Sins — IP Mistakes Technology Start-Ups Should Avoid 

30 March 2010

United States - Judge Invalidates Human Gene Patent

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Here's an interesting article from the New York Times. There is no established legal precedent in Australia against the validity of a patent for a method of isolating a gene. On the other hand, the mere discovery of the gene would not be patentable.

Judge Invalidates Human Gene Patent - NYTimes.com

Somewhat related, our courts have held that there is no justification in law or logic to distinguish a process of curative treatment of the human body from that of cosmetic treatment, and that both of these forms of treatment may constitute a manner of manufacture (that is, proper subject matter) provided they have commercial application.

Finding your brand essence

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As a professional who often deals with the aftermath of the destruction wrought by marketing consultants, I enjoyed this pithy article.

Seth's Blog: Finding your brand essence

Those of you who deal with brands would do well to follow Seth Godin's blog. It's full of good, practical advice.

29 March 2010

GCFC - Where's your brand?

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As a Gold Coast resident, I am excited at the prospect of having an Aussie Rules football club. But I'm finding it difficult to rave about my new team.

You see, they haven't yet decided on a personality for themselves. So now they are using GCFC. Here's the website: http://goldcoastfc.com.au/. So we'll have GCFC v Lions, GCFC v Crows, GCFC v Saints, GCFC v Cats etc. Whether or not you like lions, crows, cats or saints, it's not difficult to see how fans (and particularly undecided youngsters) can identify with those clubs. Then there's the merchandise. I can envisage inflatable lions and fluffy crows and cats. But what will happen with GCFC? Inflatable letters?

Consider their competition here on the coast. It's the other code, rugby league - http://www.nrl.com.au. Our club here is the Titans - http://www.titans.com.au/. It's like chalk and cheese as far as branding is concerned. This was demonstrated by my 6 year old son who arrived home one day after school and quizzed me with: "Dad, do you know who came to see us at school today?" After displaying my ignorance, my son answered: "The Titans!". Then I was someone indifferent to rugby league. Now I'm a keen follower and supporter of the Titans. It wasn't that he knew what "Titans" meant. It was just easy to remember and to repeat. Once I told him what it meant he was well and truly hooked.

Apparently GCFC are looking for a new name. That's good news, but imagine the cost of building up the GCFC brand, only to discard it for another name. According to their website, they've been five years in the making. If they had chosen a brand name back then, it would have been household, helping to snare a large following of young impressionable children and their doting parents. With their season starting in 2011, I fear the horse has bolted.

25 March 2010

Don't "Describe" Your Brand

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IPFrontline has published an excellent article about brand enforcement. It warns against describing your brand in your marketing blurb. One of the examples given is the way in which Firefly Digital described its brand as being "descriptive of our products on many levels...". This is a dangerous admission and is sure to be used by Google as it defends a trade mark infringement lawsuit brought against it by Firefly. Read it here: What Ever You Do, Don't 'Describe' Your Brand!

As the article points out, and as I emphasise in this article, the problem with describing your brand is that it undermines a claim of "inherent distinctiveness" which you may need to make when enforcing your registered trade mark or even when you are attempting to obtain valid trade mark registration.

24 March 2010

Laudatory Luscious Lips

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Case: Nature's Blend Pty Ltd v Nestle Australia Ltd [2010] FCA 198

Result: Nature's Blend failed to show infringement.

The Robinsons own the registered trade mark for LUSCIOUS LIPS, which is registered from 12 March 2007 in respect of, inter alia, confectionery. Nature's Blend uses the mark in connection with lip shaped chocolates.

Nestle acquired Allen's confectionery business in 1989 and manufactures about 75 product lines under the ALLEN'S trade mark. ALLEN'S is well known in Australia. It has been used in connection with confectionery since 1891.

From about May 2007 to March 2009 Nestle manufactured, distributed and sold confectionary under ALLEN'S and RETRO PARTY MIX in packaging which included the expression "luscious lips" on the rear of the packaging. The expression appeared together with a description of the products: "That’s right! All your favourites are back, so put on those flares and get ready to party! Up to 7 lolly varieties including...cool Cola Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries." [emphasis added]

Sundberg J. discussed the relevant legislation. Section 120 sets out that infringement requires use as a trade mark. Also, the trade marks must be substantially identical or deceptively similar. Section 7(4) states that use in relation to goods means use of the trade mark upon or in physical or other relation to the goods. Section 17 defines a trade mark as, inter alia, a sign used to distinguish goods dealt with or provided in the course of trade by a person from goods so dealt with or provided by any other person. This would mean that descriptive or laudatory words would not usually qualify as trade marks.

In respect of trade mark infringement, the comparison is between the LUSCIOUS LIPS trade mark and Nestle's conduct. So, effectively, Nature's Blend said that Nestle was infringing its trade mark rights by selling the party mix described above.

Nature's blend said that "luscious lips" is not a phrase that ordinarily and naturally describes confectionery. They said that it is inherently distinctive and "newly-coined". Nestle cited various dictionaries which appear to indicate that "luscious" can mean "highly pleasing and pleasant to the taste or smell". According to them, the words were descriptive and laudatory.

It is possible for words to be descriptive and still serve as a badge of origin. In Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310, Gummow J said that the fundamental question is "whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “partly because” (emphasis supplied) they are described by the words in question."

His Honour held that the plain meaning of the words would be taken by consumers as being descriptive or laudatory of confectionery in the Retro Party Mix.

Whether or not Nestle used the words as a trade mark was also an important question.

The question is whether the words would have appeared to consumers as being used to indicate a connection in the course of trade between Nestle and the confectionery. As set out in Shell Co of Australia Ltd v Esso Oil (Aust) Ltd (1963) 109 CLR 407, the context of the use is all-important. Allsop J summarized it in Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [2002] FCA 390 - "The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others...The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use."

The words "luscious lips" appeared on the back of the packet as part of a description of the contents. The word ALLEN'S appeared prominently on the front of the packet. So did RETRO PARTY MIX.

In Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chip Co Pty Ltd (1996) 135 ALR 192 the Full Court held that the word ‘KETTLE” was not used as a trade mark in respect of kettle cooked potato chips. The packet also prominently displayed the well-known trade mark ‘Thins’ and another well-known phrase ‘Double Crunch’. In Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310, the Full Court held that CAPLETS on  a paracetamol product called "TYLENOL’ had not been used as a trade mark. In this case Lockhart J said: "A person looking at the packaging would assume that the word CAPLETS describes or indicates the shape of the product contained in it or the dosage form."

Possibly disingenuously, Nature's Blend referred to the High Court’s decision in Mark Foy’s Limited v Davies Coop and Company Limited [1956] HCA 41 where the majority held that the defendant's use of the words "Tub Happy" constituted infringement. Although the words meant "washable" it was a meaning that required suggestion. It was not a meaning that "sprang unaided to the mind". This did not help Nature's Blend because his honour felt that "Luscious Lips" did have a meaning that could "spring unaided to the mind". That is it meant a confectionery product that has a sweet taste and is in the shape of lips.

His honour said that "Luscious Lips" were significantly less prominent than the word CAPLETS and KETTLE.

Considering the evidence, he said that he was not satisfied that there had been "use as a trade mark". The two reasons were that the words were laudatory and descriptive and the effect of the words were diluted by the prominence of ALLEN'S.

17 March 2010

Employer's Ownership of Invention Governed by Common Law

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Case: Richwood Creek Pty Ltd v Williams [2010] FCA.

I came across this unreported case recently. It's a reminder of the importance of getting the business relationship right.

The case is an appeal to the Federal Court from an opposition decision handed down by the delegate of the Commissioner of Patents. The Commissioner had found that Williams' rights in respect of the patent vested in a company called Norkres Pty Ltd as well as the applicant, Richwood Creek. Since Richwood Creek alone was not entitled to the grant of the patent, according to the delegate, opposition was established and the patent application was refused.

14 March 2010

The Struggle to find a name

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I often meet prospective clients who struggle to find a name for their new product. For those of you who are scratching your heads trying to think of a name, here is a site that looks really useful - http://wordoid.com/.

Here's a quote from that site, with which I wholeheartedly agree: "Sometimes giving something a name can be the hardest thing in the entire world. Take a look at all the successful business around you and look at their names. They all mean nothing! Esso and Texaco being a few good examples. If you’re starting a blog, website or multinational company having a name that means nothing can be one of your most important assets."

10 March 2010

Updates to Trade Mark Examiners Manual

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IP Australia has updated their trade mark practice manual.

The updates deal with extension of time provisions, time limits for acceptance, deferment of acceptance, capacity to distinguish, deception or confusion, removal for non-use and the Madrid Protocol.

The changes will be published in the official journal of trade marks on 18 March 2010.

IP Australia : Resources > Official notices > Trade marks notices 2008

The Proposed First-to-File Statute in the US

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As some of my readers will know, the US is thinking about joining the rest of the world by becoming a "first to file" country. Here is the proposed statute, thoughtfully set out by Dennis Crouch in his Patently-O blog.

Patent Reform Act of 2010: Proposed First-to-File Statute - Patent Law Blog (Patently-O)

More IP litigation in China than anywhere else on earth?

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Many of my clients are concerned that they won't be able to enforce their IP in China. This article from the prestigious IAM magazine should be comforting.

IAM Magazine - IAM Blog - There is more IP litigation in China than anywhere else on earth

09 March 2010

Online Filing Facility for Patent and Design Applications New Zealand

IPONZ releases information in connection with online patent and design filing - Ministry of Economic Development - Business Update

Trade Marks and Keywords

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Here is an excellent article aptly entitled "When Your TM Becomes the Key to Your Competitor's Ad". It is well worth a read because it gives some useful guidelines on what to do when you discover that your registered trade mark is being used as a keyword in someone else's online advertising campaign.

05 March 2010

New IP Australia Lodgement Points - Convenient?

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IP Austraia has just announced that the new Brisbane lodgement point will become available on 6 April 2010. -http://www.ipaustralia.gov.au/about/state_transition.shtml.

I don't see any real benefit, apart from a saving for the taxpayer. I still can't go to my local post office and lodge a patent application. So I will continue to lodge online where possible.

It would really be convenient if, as in the US, we could use any post office. PCT applications are often huge and the weird PCT-Easy process that has been cooked up by the Europeans clashes with my system. Why we can just upload pdf's for PCT applications is beyond me. I would welcome an explanation.

Calling All Drafters - Free Claim Construction Dictionaries

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I have found this excellent resource for those of us who draft patent specifications regularly. The downloads are big, but worth it. -http://www.pubpat.org/garrodglossariesreleased.htm

False Marking in the United States

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It is my usual practice to advise clients to mark their patented products in the United States. This can help when extracting a damages payment from an infringer. The advice is to mark the product with the patent number so that it is clear that the product is covered by a patent. If it is not practical to mark the product, the associated marketing material should also indicate that the product is the subject of a US patent.

A number of my associates have warned me that the courts in the US are making full use of the "false marking" punitive provisions in their legislation.  

For example, In Forest Group v. Bon Tool Co., the Federal Circuit ruled that the $500 maximum false patent marking penalty of 35 U.S.C. § 292(a) should be imposed on a per article basis.  Therefore, each article that is falsely marked with the requisite intent to deceive constitutes a separate offence under § 292(a), which can result in substantial damage awards against patent owners. Any person can bring a false marking claim. So there is some concern that the decision may open the floodgates. 

02 March 2010

A Lesson in Claim Construction

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Case: Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108.


Inverness owns four patents related to a device for pregnancy testing at home. Inverness alleged that a number of respondents, collectively referred to as MDS, infringed its patents. The patents in question involved a parent with two divisionals and a separately filed patent. MDS challenged the validity of all four patents on the grounds of lack of utility and sufficiency.

To summarize the result:
  1. Claim 1 of the first patent is infringed.
  2. Claim 1 of the second patent is infringed.
  3. Claims 1 to 4 of the third patent are invalid for lack of novelty. The third patent has expired.
  4. Claims 1 and 22 of the fourth patent are invalid for lack of novelty and should be revoked.
  5. Dr Appanna is personally liable for the infringement as a joint tortfeasor.
  6. Dr Appanna is liable under s 13(1) of the 1990 Act for authorising infringement.

Claim Construction

Key issues were the meanings of certain terms. One of those terms was "specific binding reagent" which appeared as part of an essential integer of the claims. This term was important because it appeared that the only difference between the MDS kits and the example in the first patent was that the antibodies are reversed in the MDS kits. Inverness said that the reverse use of the antibodies made no difference.

Inverness asserted that the term meant the reagent could bind not only to the analyte sought to be detected, but also to other molecules related to the analyte. MDS asserted that the reagent will preferably bind only to the analyte and to no other molecule in the sample. Bennett JJ found that normal English usage in the field of immunology supported both positions. So she turned to the specification of the parent patent. She held that the specification appeared to draw a distinction between specificity and a specific binding reagent. "Specificity" defines the ability of the reagent to identify only that reagent. "Specific binding reagent" defines the characteristic that ensures that the reagent does bind with the analyte in a specific way. For example, the specification recognised the existence of cross-reactive immunoassays and made reference to antibodies that would cross-react with molecules other than the target antigen. That is, the reagents were not absolutely specific. MDS countered by finding examples in the specification where the word "specific" was not used, such that the use of that word would indicate a preferable binding. But Bennett held that it was equally likely that the claim included rather than excluded a particular embodiment of the invention. She did not accept that there was a deliberate differentiation. Furthermore, she pointed out that the specification used the term "highly specific" which did not mean "mono-specific".

In summarising this part of the judgement, Bennett held that the "untutored" approach of using the word "specific" as an adjective to describe a type of binding reagent should be rejected. The reasons included the manner in which the specification used the expression "specific binding reagent". The specification recognised the concept of degrees of specificity. The specification set out examples of antibodies which were not mono-specific.

Another term which was relevant was "dry porous carrier". It was part of an essential integer of the four patents. Inverness said that the specification focused on the function of the carrier rather than on the physical form of the carrier. So the term covered a single body or a number of discrete bodies. MDS on the other hand said that the term was limited to a a single continuous piece of material. The term was important, because the MDS device contained a number of dry, porous discrete pieces.

Bennett pointed out that the specification referred to the the carrier as a strip or sheet, but only as a preferred embodiment. The term was used in claim 1. Claim 9, dependent on claim 1, limited the carrier to a strip or sheet of porous material. This meant that claim 1 envisaged a broader interpretation. So she found that the MDS device contained a dry porous carrier within the meaning of claim 1.

Claim 1 of the first and second patents were found to be infringed.

Yet another term which came under scrutiny in the third patent was "within said casing". The claims of the third patent contained the integer of a ‘bibulous sample liquid receiving member within said casing to receive sample liquid applied to said application aperture’. The issue was whether the word "within" meant only "wholly within" as contended by MDS or also "partly within" as contended by Inverness.

MDS relied on the Oxford English Dictionary meaning of "within". Inverness responded by pointing out that figures 8 and 9 in the specification showed an embodiment with the sample member protruding from the casing. Bennett pointed out that the specification did not use the word "within" when describing figures 8 and 9. However, the specification did use the word "within" when describing a position of a carrier strip depicted as wholly within a casing. So Bennett concurred with MDS.

Inverness alleged that MDS also infringed claims that contained "porous material backed with transparent moisture-impervious material". MDS contended that its product did not take this integer because it was coated with a strip of white vinyl which was not transparent. Also the white vinyl did not perform the same function as the transparent material. Bennett concurred with MDS.

Utility

One test of utility is whether the claimed invention fulfils the promise of the specification, in that it does what was intended and claimed by the patentee (Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171), and whether the end obtained is itself useful (Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82; (2008) 77 IPR 449)

Bennett pointed out that the claims should be construed as they would be by the person skilled in the art desirous of making use of the invention. Furthermore, a claim does not need to specify a limitation that was common knowledge in the art for that limitation to apply in construing a claim to avoid want of utility. Where a claim omits a feature which proper construction leaves for the reader to supply, the claim will not be invalid for want of utility if the feature is one that the skilled addressee could reasonably be expected to supply to make the invention useful. 

Bennett said that the invention would be useful if the specific binding reagents were chosen such that, in combination, they were selective for the desired analyte. Inverness asserted that a person skilled in the art would be capable of selecting appropriate specific binding reagents. The specification of the first patent was silent on accuracy.

MDS said that what was promised in the first patent and claimed in claim 1was an analytical device which would function as an analytical device for the targeted analyte and, from that, accuracy is necessarily a promise.

But Bennet said that the fact that, in theory, one could construct a device according to the claims that, in certain circumstances, would not detect the analyte is insufficient to render the claims invalid for want of utility.

Sufficiency

The test for sufficiency is whether the disclosure in each of the patents enables the skilled addressee to produce something in each claim without new inventions or additions or prolonged study of matters presenting initial difficulty.

MDS contended that, on the construction of "specific binding reagent for an analyte", the first, second and fourth patents were invalid for insufficiency. According to Bennett, MDS in effect submitted that the claimed device of each of the patents is to test for an analyte with no cross-reactivity and no false positive or negative results, so that a device within the claims is not possible in the absence of scavenger molecules.

Bennett pointed out that the claims of the patents are not limited to devices which give no false positive and no false negatives. There was no evidence that the skilled worker could not make the inventions as claimed or that he or she would make a device that failed to detect an analyte.


Clarity

MDS contended that claim 1 of the second patent and claim 22 of the fourth patent were invalid for want of clarity. Claims are required to define the invention clearly and succinctly so that readers can ascertain the precise extent of monopoly claimed. If a claim is ambiguous, the ambiguity may be resolved by reference to the body of the specification. Failing that, the claim is invalid. MDS contended that the following words in claim 1 of the second patent were not clear or capable of any sensible meaning: "..the device also containing a labelled specific binding reagent for an analyte, or which can participate in a competition reaction in the presence of an analyte....". Inverness explained that this passage referred to two types of labelled specific binding reagents. One of the expert witnesses gave evidence that she understood the words in that way. Bennett said that made sense and was consistent with the disclosures in the specification.

MDS also contended that "having" was not clear in "the labelled antibody having freely mobile within the macroporous body and the porous carrier when in the moist state."  Bennett pointed out that in an almost identical passage in the body of the specification, the word "having" was replaced by "being". A reader wishing to clarify the meaning of the passage would go to the specification and see that the word "having" should be replaced by "being". So there was no lack of clarity.

Priority dates

There is a useful discussion of  the requirement of "fair basis" as it applies to priority dates. I won't discuss that in this post because I have already considered a number of the cases cited in that discussion. I also wanted to limit this discussion to claim construction, in particular.

Conclusion

This case is worth reading because it gives some practical guidelines on claim construction. It is a reminder of the strong connection between the claims and the body of the specification and of the fact that one cannot properly be considered in the absence of the other.