Intellectual Property News

Changes to Regulations under the Patent Act
The Patent Amendment Regulations 2007 (No. 1) came into effect on 22 October 2007, substantially removing the requirement for applicants and patentees to inform the Commissioner of the results of documentary searches conducted by, or on behalf of, foreign patent offices. The new rule only applies to parties due to provide their foreign search results after 22 October 2007. The amendment also allows notices which may affect the validity of a standard patent to be filed up to three months after the accepted patent application is advertised. Previously, notices could only be filed up to the date of acceptance.

Further information can be accessed at:
http://www.ipaustralia.gov.au/pdfs/news/ON20071018%20Patents%20Amendments%20Regulations.doc

E I Du Pont de Nemours & Co v Imperial Chemical Industries PLC [2007] FCAFC 163
The Full Federal Court has held that the anticipation of a standard patent application does not automatically mean divisional applications of the patent also lack novelty. The decision concerned an appeal by E I Du Pont de Nemours & Co (Du Pont), in a dispute against Imperial Chemical Industries PLC (ICI), regarding ICI's applications concerning refrigerant compositions which do not contain ozone destroying CFCs. After a long and complex patent dispute, ICI's parent application was declared invalid because it had been anticipated. Subsequently, ICI filed a divisional application which was challenged by Du Pont. The issue before the Full Federal Court was whether a lower Court, in dismissing the parent application, effectively decided that the divisional application also lacked novelty. The Court held that there was no 'issue estoppel' and dismissed the appeal, rejecting Du Pont's application for injunctive relief.

The decision can be accessed at:
http://www.austlii.edu.au/au/cases/cth/FCAFC/2007/163.html

The House of Lords redefines patent ownership rules
In its decision in Yeda v Rhône-Poulenc Rorer, the House of Lords in the UK has clarified how disputes regarding patent ownership should be resolved. The Court held that any person who seeks to be added as a joint inventor must prove that they contributed to the inventive step underlying the claimed invention. A person who claims to be the sole inventor of the invention must prove that the inventor named in the patent did not contribute to the inventive step at all. The ruling overturns previous law which required that any claim to entitlement required first proving breach of an independent rule of law such as contract or confidence. The case involved a number of pharmaceutical research companies disputing the ownership of a patent for a drug which inhibits the growth of tumour cells. The Court also considered a parallel argument put forward by Rhône, that Yeda's application should be dismissed as it fell outside the two year limitation period applicable to these claims in the UK. The Court noted that so long as an original claim was lodged within the limitation period, any amendment to the claim made outside the limitation period will be allowed. Applying the above reasoning, the House of Lords referred the matter back to the Court of Appeal, and allowed Yeda to pursue its patent claim.

The decision can be accessed at:
http://www.bailii.org/uk/cases/UKHL/2007/43.html

Federal Court rules on copyright dispute over artwork on 'skins'
The Federal Court has found in favour of Futuretronics.com.au Pty Ltd, a gaming company, in a copyright dispute against Graphix Labels Pty Ltd, a label manufacturer, in relation to unauthorised use of licensed artworks in advertising materials. Graphix was contracted by Futuretronics to reproduce the artwork on 'skins' - covers for mobile phones, ipods and handheld games and controllers - that it was manufacturing for Futuretronics. Graphix later started to manufacture its own 'skins' using artwork supplied by other sources. Graphix produced a brochure of its 'skins' to promote the products, and included in the brochure artworks supplied by Futuretronics for illustrative purposes. The Court found that Graphix infringed the copyright of Futuretronics in reproducing the artworks, and also breached an implied licence term that it would only use the artwork for particular purposes which were authorised by Futuretronics. Futuretronics abandoned its action for breach of copyright in relation to the manufacturing of materials. Futuretronics was unsuccessful in its claims for misleading and deceptive conduct and breach of fiduciary duty. The Court has not yet made orders.

The case can be accessed at:
http://www.austlii.edu.au/au/cases/cth/federal_ct/2007/1621.html

Record industry wins landmark music file sharing case
A US jury has found in favour of The Recording Industry Association of America (RIAA) and six recording companies, in the first US anti-piracy case to be considered by a jury. The case concerned an individual defendant who was found to have illegally shared music files online. According to the verdict, it was not necessary to prove that the defendant had actually distributed the files. Rather, the act of making copyrighted sound recordings available for electronic distribution on a peer-to-peer network, without licence from copyright owners, violated the copyright owners' exclusive right of distribution. This means that a person can be held liable regardless of whether actual distribution occurs. The case is seen as a victory for the RIAA in their anti-piracy campaign. The defendant is appealing the decision, claiming that the penalty of USD$222,000 in damages is 'unconstitutionally excessive'.

Further information can be accessed at:
http://www.managingip.com/Article.aspx?ArticleID=1450203&LS=EMS144352

Copyright action brought against mechanics who play loud music
The Kwik-Fit garage chain in the UK has been accused of violating musical copyright by the Performing Rights Society (PRS), a copyright collecting society in the UK. PRS allege that Kwik-Fit is in breach of copyright because the volume at which mechanics play the radio whilst working allows colleagues and customers to hear the music, thereby constituting a 'performance' in public. Once classified as a 'public performance' of music, royalties must be paid to the artists through PRS. PRS claim that Kwik-Fit has been given ample opportunity to acquire the appropriate licences, and has failed to do so. PRS is claiming GPB200,000 in damages. The proceedings are not yet final.

The press release can be accessed at:
http://www.mcps-prsalliance.co.uk/about_us/press/latestpressreleases/prs/Pages/kwikfitcase.aspx

The Scottish Court of Session decision can be accessed at:
http://www.bailii.org/scot/cases/ScotCS/2007/CSOH_167.html

.asia domain name launched
The new .asia domain, on which we reported in our July edition, has now been launched. In the initial 'sunrise' period, which ended on 30 October, the new domain was only open to certain government entities and holders of trade marks who applied for registration of their marks prior to 16 March 2004. This was to ensure that trade mark holders could protect their brand against cybersquatters. During the next phase, from 13 November 2007 to 15 January 2008, qualifying trade and service mark holders who applied for trade marks on or before 6 December 2006 may apply. Members of the public will be able to register an interest in .asia domain names in February, before they go on sale in March 2008.

The press release can be accessed at:
http://pioneer.domains.asia/press/2007-10-17-DotAsia-PR.html

European Court of Justice to rule on trade mark law in L'Oréal's dispute with several cosmetic companies
The English Court of Appeal has called on the European Court of Justice (ECJ) to decide five questions of law in relation to L'Oréal's trade mark dispute with seven cosmetic companies. L'Oréal claims that the defendants infringed its trade marks and were guilty of passing off when they sold products with replica scents and similar packaging to perfumes produced by L'Oréal. L'Oréal also objected to the way the defendants used the trade marked names of its own perfumes in comparison tables. L'Oréal and three of the defendants appealed after the High Court supported L'Oréal's trade mark claim and rejected its passing off argument. The Court of Appeal dismissed L'Oréal's appeal in respect of the packaging of the products, and said it would stay the defendants' appeals pending reference to the ECJ. The ECJ will consider whether traders can use lists of registered trade marks for comparative purposes, and will clarify the meaning of 'unfair advantage' in relation to trade mark infringement cases. The matter will then return to the English Court of the Appeal to be decided.

The Court of Appeal decision can be accessed at:
http://www.bailii.org/ew/cases/EWCA/Civ/2007/968.html

Californian law may require websites to be accessible to disabled users
The US National Federation of the Blind (NFB) and an individual, Bruce Sexton, have brought an action in a US Federal Court against large retailer Target, alleging that its website is not accessible to blind users, in breach of US legislation. The plaintiffs maintain that the site lacks various components upon which the blind rely. The plaintiffs brought claims under both state and federal legislation. The Court held that the inaccessibility of the website impeded the full and equal enjoyment of goods and services offered at Target, in breach of federal legislation. However, key questions in the suit remain unresolved - while Target has improved the accessibility to its site, the Court claims that many problems still exist. The Court still is to determine the scope of the legislation, and in particular, the meaning of the term 'full and equal access' in similar state legislation. The case has been certified as a class action.

The District Court decision can be accessed at:
http://claranet.scu.edu/tempfiles/tmp34480/targetclasscert.pdf

European Union simplifies design protection process
The European Commission has acceded to the Hague Agreement, an agreement of the World Intellectual Property Organisation (WIPO), which will allow companies to protect their designs throughout the European Commission and signatory countries around the world (notably, this does not include the US and Japan). It is thought that the move will allow European companies to protect their designs internationally in a simple, effective and affordable way, and will stimulate trade and innovation and create new commercial opportunities within the European Internal Market. The European Commission's accession to the agreement will take effect from 1 January, 2008.

The press release can be accessed at:
http://www.wipo.int/pressroom/en/articles/2007/article_0067.html

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