The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015 seeks to amend the current legislation to remove unity of invention as a ground of pre-grant opposition and re-examination.

It is anticipated that any changes made by the Bill will not have retrospective effect.

“Clause 4 amends section 92 of the Act to remove the right to oppose a grant of patent on the ground that the claim or claims relate to more than 1 invention, and to bring the law back to the position under the Patents Act 1953.”

Certification Trade Marks allow the registered owner to certify that goods and services of other parties meet certain standards.  A certification trade mark might indicate that a product:

        (i)     is of a particular quality
        (ii)    has been manufactured in a particular location or by using a particular process
        (iii)   is made from particular materials or ingredients
        (iv)   is suited to a particular task.

The use of a certification trade mark by an authorised user may provide a market advantage.

To obtain a certification trade mark the trade applicant must first submit a set rules  to the ACCC.  The set of rules must specify requirements governing the use of the certification trade mark.  The ACCC will provide an initial assessment and a final assessment of the rules.

A number of registered certification trade marks are detailed below.

Some further information is available on: https://www.accc.gov.au/business/applying-for-exemptions/certification-trade-marks

Notably the Kit Kat confectionery shape was refused registration.  This was because the evidence did not demonstrate that the shape itself had acquired distinctiveness.

​On 7 October 2015, in D'Arcy v Myriad Genetics Inc & Anor [2015] HCA 35, the High Court of Australia held that an isolated nucleic acid, coding for a BRCA1 protein, was not a “patentable invention” within the meaning of the Australian Patents Act 1990 (“The Patents Act”). 

The Patents Act requires that, for an invention to be patentable, it must be a 'manner of manufacture’. The patent was challenged on the ground that the subject matter involved merely isolating naturally occurring nucleic acids.

The High Court held that an isolated nucleic acid is not a 'manner of manufacture’. In addition, it was considered that to attribute patentability to mere isolation would involve an improper extension of the concept of a 'manner of manufacture’. The patent was invalidated on this basis.

Any granted patents that include claims directed specifically to isolated nucleic acid sequences will be subject to review in the light of this decision. Mere isolation will likely be insufficient.

IP Australia has suspended examination of patent applications claiming nucleic acid sequences and will issue a formal response shortly.

IP Australia has released a consultation paper suggesting that the innovation patent system in Australia is not effectively stimulating innovation among Australian small to medium enterprises (SMEs).
 
When the innovation patent system was introduced in 2001, the government stated that its purpose was to stimulate innovation in SMEs by providing Australian businesses with industrial property rights for their lower level inventions.
 
The primary concern raised by the report is the system’s alleged failure to achieve its main objective of stimulating innovation of SMEs in Australia.  A number of other concerns have also been raised, such as, the granting of unexamined rights and the level of innovation necessary for an innovative step. 
 
In addition, the report suggest that the system is used in ways for which it was not originally intended, predominantly, when obtained by individuals and SMEs that have a limited understanding of its uses. At the same time, the system has been used by an overwhelming number of inventors and SMEs that have reportedly obtained an economic benefit from the system.  Those users have indicated their satisfaction with the innovation patent system.
 
The report notes that the concerns do not imply the system’s complete failure. Therefore, there seems to be no clear justification behind the removal of the innovation patent system. Moreover, it has largely been argued that the concerns about the system can be addressed without its abolition.
 
It is feared that the abolition of the system will have a negative impact on local Australian applicants, being the vast majority of its users. One of the important functions of the system is providing a necessary litigation tool in the patent system.  This function was apparently not taken into consideration. Overall, there are concerns that the proposal to abolish the system will have a significant detrimental effect on the ability of SMEs to protect their innovations.
 
http://www.ipaustralia.gov.au/about-us/public-consultations/Consultation-on-the-ACIP-recommendation-on-the-innovation-patent-system/

Regency Media Pty Ltd had entered into an agreement to license several patents from MPEG LA LLC (‘MPEG’).  Regency Media Pty Ltd contended that Section 145 of the Patents Act allowed them to terminate the agreement when one of the patents lapsed.  In the appeal the Court held that Section 145 did not allow the agreement to be terminated.

In arriving at the decision the Court considered the commercial reality of licensing multiple patents and the intention of section 145.  The Court also considered the unfairness in relation to the case at hand.  Notably, nowhere in the agreement were the inventions referred to separately. Rather reference was made to the ‘MPEG-2 Decoding Products’, the ‘MPEG-2 Encoding Products’, and the ‘MPEG-2 Packaged Medium’.   Various interpretations were applied to the wording of Section 145.

The case serves as a warning when preparing and entering into patent licensing agreements.

Among other things, it was found that:

1. The approach to be taken to deciding whether a claimed method or product is properly the subject of letters patent must be flexible and must allow for new technologies presently unknown. The principles should be applied irrespective of the area of human endeavour and invention under consideration. 
   
   However, that is not to say that any and every claimed method or process is properly the subject of a patent. Examples of exceptions have been identified, such as abstract ideas and mere schemes. There is no formula to be mechanically applied. It is a question of understanding what has been the work of, the output of, and the result of, human ingenuity, and to apply the principles that have been developed and explained so well in NRDC.
   
   
2. In the context of the claim, the significance lies in the content of the data rather than any specific effect generated by the computer..., in examining whether a claimed invention is properly the subject of letters patent, it is necessary to look not only at the integers of that claimed invention but also at the substance of that invention.

The High Court has overturned the The Full Court's finding in  Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110. 

Among other things it was held that: 'The evidence led by Modena to show that some traders in Australia used the expression "five star" on packaging of coffee and many traders used "five star" in respect of a range of services including restaurant and accommodation services also fell well short of proving that "cinque stelle" is understood in Australia by persons concerned with coffee products to be directly descriptive of the character or quality of such goods.

The court found that the question concerns 'the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods'.  "ORO" and "CINQUE STELLE" were not shown to 'convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods, as to be words having a direct reference to the character or quality of the goods'.

The full decision is available on http://www.austlii.edu.au/au/cases/cth/HCA/2014/48.html 

The Full Court in  Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 upheld an appeal against the Federal court’s decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8.  The Full court ordered that two trade marks consisting of words having a foreign meaning be cancelled.  

The first mark ‘ORO’ had a descriptive meaning of “gold” in Italian.  The mark was cancelled on the basis that there was high likelihood of traders thinking of, and wanting to use the word on their labelling.  An important consideration was how the marks were used in conjunction with other words to describe the quality of the goods.  The second mark ‘CINQUE STELLE’ had a meaning of “five stars” in Italian/Latin.  Even though the expression is not a commonly understood phrase, as it is combination of Cinque (Latin for ‘five’) and Stella (Italian for ‘star’), it was seen that traders and consumers would understand a meaning. Given that high quality coffee beans mostly originate from Italy, it was seen that the phrase CINQUE STELLE would call to mind an attachment to coffee.  The Court stated that monopolising the use of the words was not allowable. 

The case demonstrates the need to carefully consider the use of foreign words in Australian trade mark applications.