Patents – Page 10 – IP Law Watch

Recycling or Remaking – Exhaustion of Patent Rights

Dec 04 2017

In the case Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403 (29 November 2017), Seiko sold various Epson inkjet printer cartridges for use with its printers. Ninestar collected used cartridges in Malaysia, made modifications to facilitate their reuse, and refilled them with ink. Calidad purchased the cartridges in Malaysia from Ninestar, then imported and sold them in Australia.

Seiko sued Calidad for infringement of two patents for printer cartridges. Calidad defended the claim on the basis that an implied licence ran with the cartridges, alternatively Seiko’s patent rights had been exhausted when Seiko first put the cartridges on the market.

Ninestar modified some cartridges more than others in order to make them suitable for re-use. Justice Burley found that the defence was available in some cases but not others. It was a question of degree, but the Judge considered that in some cases Ninestar so materially altered the cartridges that “the licence implied by a sale without restriction of the original Epson cartridge does not apply”.

Australian Patent Office considers plausibility in a test for sufficiency

Nov 24 2017

The emergence of “plausibility” as a test for inventive step, sufficiency and industrial applicability represents a significant legal development in Europe in recent years. Now the concept of plausibility has reached Australian shores, with the Australian Patent Office applying it in a test for sufficiency.

Jury awards profits for infringing sales in post-Samsung design patent case

Oct 05 2017

On September 29, a jury in California awarded Columbia Sportswear more than US$3.4 million for infringement of its design patent on heat-reflective technology for clothing and outdoor gear. Columbia accused Seirus Innovative Accessories of infringing its utility and design patents for its wavy lining material, which reflects body heat, but allows for breathability and moisture-wicking. This appears to be the first jury verdict on a design patent after the Supreme Court’s decision in Samsung v. Apple.

Petitioners bear the burden of proving invalidity of amended claims in IPR proceedings

Oct 05 2017

On October 4, 2017, the Federal Circuit held en banc that the proper interpretation of 35 U.S.C. 316(d) and (e) requires the Petitioner in an inter partes review (IPR) to prove all propositions of unpatentability, including for amended claims. Aqua Prods., Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017). The en banc Court further determined that the PTAB must consider the entirety of the record when assessing the patentability of amended claims under 318(a), not merely the face of a motion to amend.

The Aqua case resulted in five opinions totaling 148 pages, each presenting views on judgment and underlying rationale, ultimately leading to a narrowly tailored holding. In the decision, the Federal Circuit made clear that the burden of persuasion of patentability does not rest with the Patent Owner; instead, it is left to the Petitioner to establish that any proposed amended claims are not patentable.

Innovation patents as strategic tools for clients (Business Bytes video)

Sep 28 2017

As part of the K&L Gates Business Bytes series, Sydney partner and patent attorney, Nigel Lokan, discusses the use of innovation patents as strategic tools for clients.

Significant changes ahead for Australian patents

Sep 07 2017

The Australian Government has proposed significant changes to Australian patent law following an inquiry into the IP system recently completed by its advisory body, the Productivity Commission. These include:

Amending the inventive step threshold to reflect that of the European Patent Office
Phasing out innovation patents
Requiring applicants to identify an invention’s technical features in their claims, and
Adding an objects clause to the Patents Act.

UK to introduce new Unjustified Threats Bill across IP law

Aug 16 2017

The United Kingdom’s new Intellectual Property (Unjustified Threats) Act 2017 (the Act) was recently granted royal assent and is set to come into force in October 2017. The Act should make it easier to advise clients, avoid litigation and facilitate the negotiation of settlements by outlining what types of threats are unjustified. The Act will also harmonise the UK law on unjustified threats across patents, trade marks and design rights.

Currently, the law allows those accused of infringing intellectual property to sue for damages if threats of legal action against them are revealed to be groundless. This can lead to rights-holders becoming wary of challenging perceived threats to their intellectual property because they do not want to risk their threats being perceived as groundless and, as a result, do not exercise full protection of their intellectual property rights.

USPTO Issues Report on Public Views Regarding Subject Matter Eligibility

Aug 06 2017

On July 25, 2017, the United States Patent and Trademark Office (USPTO) issued Patent Eligible Subject Matter: Report on Views and Recommendations From the Public (Report). The Report summarizes public comments on the state of subject matter eligibility law. Comments came from varied sources including industry, private practice, academia, trade associations, inventors, and small business.

After beginning with an overview of eligibility law in the U.S. and abroad, the Report summarizes the comments supportive and critical of the Supreme Court’s Bilski, Mayo, Myriad, and Alice decisions regarding subject matter eligibility. It polls opinions from the two most-impacted technology sectors, and reviews recommendations on how to move forward.

PL: PROCESS OF DETERMINING A WIDER SCOPE OF AUTHORIZATION FOR LEGAL ADVISORS AND ADVOCATES IN PROCEEDINGS BEFORE THE POLISH PATENT OFFICE – CURRENT STATUS

Aug 02 2017

The 10 May 2017 draft act of the Ministry of Science and Higher Education, amending certain acts in order to improve the legal environment for innovative activities, provided for the introduction of changes in the scope within which authors can be represented before the Polish Patent Office (PPO). The draft stipulated that, in cases related to submitting and considering applications and maintaining protection over inventions, medicinal products, plant protection products, utility designs, industrial designs, geographic signs and integrated circuit topography, attorneys in Poland (adwokat and radca prawny, hereinafter “advocate” and “legal advisor”) would also be able to represent the parties involved – previously, in such cases only patent attorneys or persons providing cross-border services in the meaning of the Act on Patent Attorneys of 11 April 2001 had been able to represent parties.

Protecting Plant Innovations in the U.S., Australia and New Zealand

Jul 19 2017

The development of new plant varieties can be a costly and time-consuming process. To incentivise breeding endeavours, governments around the world have developed legal mechanisms which effectively provide breeders with a period of market exclusivity in which to commercialise their new variety. The mechanisms vary from country to country, and this article briefly reviews those available in the United States, Australia and New Zealand.

To read the full alert, click here.

By: Michael Christie and Margaux Nair

Category:Patents