Tag:Office Decisions

1
PayPal Inc. [2023] APO 54: PayPal Machine Stalls in the Face of Intangible Resistance
2
Aussie Burger Wars Continue: KFC v. HFC
3
A Thorny Issue Resolved as “Flowers For All” Trade Mark Deemed Distinctive
4
Upcoming UKIPO Representation Changes – The Effects of Brexit Continue
5
WIPO Updates Deadlines for Responses to Provisional Refusals
6
In Starch Contrast: Australian Patent Office Makes key Finding on use of Trade Marks in Patent Specifications
7
Honey, I Lost the Trade Mark: MANUKA HONEY Declared not Exclusive to New Zealand
8
Technical Effect Embodied in Technical Teaching
9
Singapore Maintains Hard-Line Take on Goodwill in Million-Dollar Wonton Noodle Feud
10
Substance Over Form: The Importance of Substantive Grounds in Parallel District-Court Litigation and Prior Petition IPR Denials in OpenSky Indus., LLC v. VLSI Tech. LLC

PayPal Inc. [2023] APO 54: PayPal Machine Stalls in the Face of Intangible Resistance

The recent refusal of a patent application by PayPal Inc. at the Australian Patent Office sheds light on the challenges surrounding the patentability of AI and machine learning systems (PayPal Inc. [2023] APO 54). The rejected application, which proposed a system for generating more accurate recommendations using AI machine learning, faced scrutiny on the grounds that, while the combination of machine learning models was innovative, it did not offer a substantial technical contribution beyond standard computer usage.

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Aussie Burger Wars Continue: KFC v. HFC

In KFC THC V Ltd v. Grill’d IP Pty Ltd [2023] ATMO 192, KFC THC V Ltd (KFC) brought an opposition against the registration of the trade mark “HFC” filed by Grill’d IP Pty Ltd (Grill’d). KFC is a global chain of fast food restaurants otherwise known as Kentucky Fried Chicken. Grill’d is an Australian chain of burger restaurants which markets its food as a healthier, fresher alternative to the major fast food chains. The trade mark “HFC,” standing for “Healthy Fried Chicken,” is used by Grill’d for the fried chicken options on its menu.

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A Thorny Issue Resolved as “Flowers For All” Trade Mark Deemed Distinctive

Business blooms for one trade mark owner as “FLOWERS FOR ALL” has been deemed distinctive enough to be registered as a trade mark in Australia.

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Upcoming UKIPO Representation Changes – The Effects of Brexit Continue

One of the effects of Brexit was that the UK introduced a requirement for a UK based representative for all UK national trade marks, patents and designs and international registrations designating the UK in January 2021. However, there was a grace period for comparable trade marks or re-registered designs deriving from an EU national trade mark or international registration designating the EU.

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WIPO Updates Deadlines for Responses to Provisional Refusals

Businesses seeking registration of trade marks overseas will have greater clarity on deadlines for responding to provisional refusals, following an update by the World Intellectual Property Office (WIPO). As of 1 November 2023, local intellectual property offices are required to give the holders of Madrid System international trade mark registrations (IR Holders) a minimum period of 60 days or two months to respond to provisional refusals.

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In Starch Contrast: Australian Patent Office Makes key Finding on use of Trade Marks in Patent Specifications

In the field of intellectual property, the interplay between trade marks and patent claims is very rarely discussed, given the distinct scope of protection provided by each. In Australia and New Zealand, patent examiners tend to raise an immediate clarity objection when a trade mark finds its way into a claim. This concern arises from the fact that a trade mark is an identifier of origin, and products bearing them can undergo variations across jurisdictions and time frames. This makes the intended scope of the claim unclear in many situations. Consequently, Australian and New Zealand examiners commonly raise objections based on clarity when trade marks feature in patent claims during the examination process.

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Honey, I Lost the Trade Mark: MANUKA HONEY Declared not Exclusive to New Zealand

An attempt to trade mark the term MANUKA HONEY in New Zealand has come to a sticky end. Assistant Commissioner of Trade Marks Natasha Alley found that the term MANUKA HONEY was descriptive of the goods it claimed and MHAS had “fallen short of establishing the necessary distinctiveness, both inherent and acquired”.1

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Technical Effect Embodied in Technical Teaching

European Patent Office: Enlarged Board of Appeal decision G2/21

The Enlarged Board of Appeal EBoA is the highest judicial authority under the European Patent Convention. It handles patent examination for about 37 member states including the EU. The EBoA has recently published its decision G2/21 dealing with the principle of free evaluation of evidence in the context of inventive step. This decision is relevant for patents in the pharma, biotech and life science field.

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Singapore Maintains Hard-Line Take on Goodwill in Million-Dollar Wonton Noodle Feud

In Singapore, popular eatery “ENG’S Wonton Noodles” is known for its springy noodles, luscious wonton dumplings and fiery chilli sauce. Its popularity attracted more than S$1.6 million in revenue one year, but a fallout between the founder’s children and their business partners led to multiple disputes, including a dispute over trade mark rights to the “ENG’S” name in Pauline New Ping Ping v Eng’s Char Siew Wantan Mee Pte. Ltd. [2022] SGIPOS 10.

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Substance Over Form: The Importance of Substantive Grounds in Parallel District-Court Litigation and Prior Petition IPR Denials in OpenSky Indus., LLC v. VLSI Tech. LLC

On 23 December 2021, the Patent Trial and Appeal Board (“the Board”) instituted inter partes review (IPR) of U.S. Patent No. 7,725,759 B2 (“the ’759 patent”). See OpenSky Indus., LLC v. VLSI Tech. LLC IPR2021-01064, Paper 17 (Dec. 23, 2021). Petitioner OpenSky Industries, LLC (“OpenSky”) relied on expert declarations of Dr. Sylvia D. Hall-Ellis and Dr. Bruce Jacob originally filed by Intel Corporation in two other IPR proceedings (“Intel IPRs”).1 Indeed, the declaration included the same coversheet that accompanied the declaration in the Intel IPR. The Board analyzed OpenSky’s Petition under §314(d) and §325(d), declining to deny institution, finding, in part, that since Fintiv and General Plastic did not warrant discretionary denial, the arguments, which were almost identical to those made in the Intel IPRs, deserved to see their day in court at the PTAB.

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