Anthony Selleck reviews today’s decision in Commissioner of Patents v Thaler [2022] FCAFC 62 which reverses an earlier ruling that artificial intelligence can be an “inventor” for the purposes of the Australian Patents Act 1990.

In July 2021, the Australian Federal Court delivered what can be described as a stunning decision, that an artificial intelligence can be an “inventor” for the purposes of the Australian Patents Act 1990. The decision seemingly opened the door to the Australian Patent Office granting patents to outputs wholly produced by artificial intelligence systems with no human intervention.

The Commissioner of Patents appealed the decision to the Full Court, and earlier today, the Court unanimously allowed the Commissioner’s appeal.

Prior to today’s decision, Australia was the only country in which a court decided in favour of the patent applicant, with courts in Germany, the United States and United Kingdom (along with Patent Offices in a number of jurisdictions) reaching the opposite conclusion.

Central to the Full Court’s decision was the observation that the law relating to the entitlement of a person to the grant of a patent is premised upon an invention that arises “from the mind of a natural person or persons”. In reaching this conclusion, the Full Court noted that it is those who contribute to, or supply, the inventive concept who are entitled to the grant of a patent, and that the patent grant is a reward for the inventor’s “human” ingenuity.

The Full Court also observed that it is the “inventor” (as opposed to the Applicant) who makes certain representations in the patent specification as to the nature of the invention. It is these representations that underlie the patent bargain between the inventor and the state, and are intertwined with concepts material to the validity of patent applications and patents. According to the Full Court, the Patents Act 1990 does not contemplate beings other than human being having the capacity to make representations, or indeed misrepresentations that may render a patent liable to be revoked.

In the absence of a successful appeal to the High Court of Australia, it can be assumed that Australian patent applications must name a human inventor, or are at risk of lapsing.

There are many policy issues that arise with respect to granting patent rights to the results and insights that artificial intelligence systems generate. We have no doubt that these will be hotly debated in the future, in the context of reforms to the patent system or the creation of new intellectual property systems specifically tailored to artificial intelligence.

Applications are now open for Artificial Intelligence (AI) and Digital Capability Centre Grants of up to A$11 million, as part of a Federal Government plan to drive the adoption of AI technologies by Australian businesses. Anthony Selleck explains why applicants should conduct IP due diligence before completing their submission.


The Australian Government released an Artificial Intelligence (AI) Action Plan in June 2021, which included a total of A$44 million funding to establish four “AI and Digital Capability Centres”.

Grants of up to A$11 million are now available for eligible entities to establish the new Centres, with applications needing to be submitted through the Business Australia website by 12 May 2022.

Overview of the grant

AI and Digital Capability Centres are intended to drive the adoption and use of AI technologies by Australian businesses. It is envisaged that the Centres will connect small and medium enterprises (SMEs) with AI equipment and tools, provide services and training, and link the enterprises to AI skills and expertise.

The Centres are also intended to support the development, commercialisation, and adoption of high-value AI products and services for the domestic and global marketplace.

According to the Action Plan, the objectives for establishing the Capability Centres are to:

  • establish a “front door” for SMEs to access capabilities, expertise and innovative technologies to adopt, adapt, test and deploy AI technologies;
  • foster collaboration and connect SMEs with opportunities to lift productivity and drive commercialisation;
  • coordinate and drive the growth of Australia’s AI ecosystem; and
  • lift SME capabilities to enable more confident adoption of AI solutions.

Important points for grant applicants

According to the applicable Grant opportunity guidelines, an application for a grant to establish a Capability Centre must be a joint application with a lead organisation that will be the main driver of the project.

Each joint application must include amongst its project partners and lead organisation, at least one Australian industry partner. It is intended that the Centres will build on an existing establishment, such as a technology or manufacturing precinct/hub, university or centre of excellence. In this regard, the guidelines list the following bodies as examples of Australian industry partners:

  • an Australian research partner (such as a university or co-operative research centre);
  • a multi-national technology firm;
  • a large sector-specific firm; and
  • a state/territory agency or body.

When applying for a grant, applicants must certify that they “have or will have relevant intellectual property guidelines in place” in order to establish and run the Capability Centre.

We strongly suggest that applicants conduct IP due diligence and establish relevant guidelines (if they are not already in place) prior to making any certification in a grant application. 

Summary 

Griffith Hack is committed to working with clients across the full spectrum of industries that adopt AI technologies. For more information or assistance, such as in conducting IP due diligence to support an intellectual property certification, please contact us

The Therapeutic Goods Administration has established new guidelines to govern how influencers can promote products on social media in return for payment or free products from brands. Gavin Adkins, Bridget Renehan and Aimee Foster review the updated code, how it will impact influencers, and what therapeutic goods brands need to be aware of.

What’s new?

The Therapeutic Goods Administration (TGA), Australia’s regulator of medicines and medical devices, released a new advertising code in January 2022, which set out new guidelines affecting how products the TGA regulates can be promoted by influencers on social media. This includes everyday goods, such as vitamins and sunscreens, but also includes goods that can treat serious conditions, such as prescription medicines and surgical implants.

Influencers, who promote products on social media in return for payment or free products or services from brands, must now be in accordance with the code where they promote therapeutic goods. The updated advertising code clarifies a difference between “testimonials” and “endorsements”. Testimonials which involve a personal statement about the perceived benefits of a product, must no longer be given by people involved in the marketing of the goods. Instead, influencers will be restricted to only making endorsements on social media provided the endorsement does not refer to the person’s personal experience using the good (which would amount to a testimonial). Endorsement must only illustrate the listed benefits of the goods and be made in accordance with the recommended use.

Therefore, advertisements should not include fanciful or deceptive representations, and any scientific claims must be supported by empirical data and research. They also should not perpetuate unrealistic expectations about the safety of the goods. To remain balanced and accurate, promotions should align with the good’s label and directions for use.

Reason for change

The aims of the changes include improving transparency in the wellness industry by preventing false or misleading claims about therapeutic goods. The review comes in response to incidents of influencers making apparently disingenuous reviews and unsubstantiated claims in exchange for payment or gifts from brands. By promoting ethical advertising, the code intends to reduce the misuse of therapeutic goods, as well as preventing the sale of goods under false pretences of the product’s performance.

Affected goods

The changes do not apply entirely across the beauty industry, but strictly applies to products alleging health benefits including vitamins and supplements, sunscreen, treatments for skin conditions, medicines and medical devices. The TGA recognises the demand for regulation of these goods due to their medicinal claims and associated risks.

Anticipated effect

After June 30, influencers must adapt their promotion of such items to be from an objective stance. They will be confined to relaying the approved purpose of the goods. Importantly, this extends to the removal of past paid-for testimonials to avoid penalties. Further, all sponsored posts need to contain a disclosure of their brand affiliation. This change will limit influencers’ ability to provide more personal product evaluations as they are no longer able to relate their own product experience where it is a paid promotion.

Contact us

If you are a therapeutic goods company who uses, or are considering using, influencers to promote your products on social media, please contact us to find out how these changes might affect you.

Our team discusses the key measures in Australia’s 2022-23 federal budget that could help drive innovation, research commercialisation and business growth, along with related digital technology and employee share scheme initiatives.

Treasurer Josh Frydenberg has handed down Australia’s 2022-23 federal budget, which spruiked optimism amid the post-pandemic recovery, a global surge in inflation, and an unstable geopolitical landscape.  

While much of the focus centred on easing cost of living pressures for Australians and the looming spectre of an election, the budget contained a range of measures to support Australia’s innovation agenda and ongoing business-led growth, including:

  • Extension of the patent box regime to the agriculture and low emissions technology sectors to underpin innovation. 
  • A $2.2bn economic accelerator program to progress research past the initial stages of high risk and uncertainty, and into thriving businesses. 
  • $988m to support university research commercialisation by driving university and industry collaboration, workforce mobility and research translation. 
  • Investment in apprentices in critical roles. 
  • Reduced red tape for foreign investment. 
  • Expanding employee share schemes to make our innovation industries attractive internationally. 

The budget also featured investments into industries and regions that are likely critical in ensuring the country’s future prosperity, including space, critical minerals, advanced manufacturing, and regional and Northern Australia.  

In his address before parliament, Frydenberg emphasised that Australia needs to be a country:

…where aspiration and enterprise are encouraged and rewarded. Where greater self reliance leaves our nation less vulnerable. Where our modern competitive industries create new jobs.”  

The measures included in this budget support this rhetoric – time will tell if they are an accelerant for innovation to take off. 

A high-level review 

The key innovation announcement is the expansion of the proposed new patent box regime to not only the low emissions technology sector but also to the agricultural sector, with effect from 1 July 2023.

There are also significant levels of government funding being made available to Australia’s regions, targeting improved university collaboration and research commercialisation, critical infrastructure and other key industries, some of which have previously been announced. 

From a digital perspective, the Government has also announced key initiatives such as a 120% deduction for digital investment through a Technology Investment Boost and a 20% reduction in external training costs through a Skills and Training Boost – targeted at small and medium businesses (an annual turnover of less than $50 million) to help the transition to increased digital operations. 

Our perspective 
The extension of the patent box regime to both the agricultural and low emissions technology sectors is a welcome announcement and will provide these critical sectors with significant opportunities. We look forward to continuing to engage in consultation with the Government on this key new development and the practical considerations needed to ensure it is successful. 

Since both the initial patent box and Refundable Digital Games Tax Offset (DGTO) legislation are as yet unenacted, it is hoped that these measures are prioritised in the next Parliament regardless of the outcome of the forthcoming election. The previously announced Australia’s Economic Accelerator (AEA) program to turn leading research into business opportunities, and the University Research Commercialisation Action Plan, should help improve commercialisation outcomes in high potential areas that are crucial to Australia’s future (such as critical minerals, food and beverage, medical products, recycling and clean energy, defence and space). 

We will continue to share our perspective on commercialisation frameworks with Government and work with universities and industry partners to facilitate collaboration.

Down to detail 

Patent box: Extended to agriculture and low emissions sectors 

It was announced that the proposed patent box regime will be extended to encompass the low emissions technology sector. This will support the Government’s technology-focused approach to reducing emissions in line with the target to achieve net zero emissions by 2050. 

The regime will also be extended to support practical, technology-focused innovations in the Australian agricultural sector. The Budget papers also reflect changes made to the initial patent box announcement for Australian medical and biotechnology patents in the Federal Budget 2021-22 that have arisen through consultation and are encompassed in the relevant legislation now before Parliament.  

The introduction of an Australian patent box regime is intended to support the onshore commercialisation of innovative developments in Australia by offering a globally competitive tax rate for profits generated from eligible Australian owned and developed patents. 

Eligible corporate income streams for all proposed sectors under the patent box regime will be subject to an effective income tax rate of 17% to the extent that the research and development (R&D) of the innovation took place in Australia, thereby satisfying the modified-nexus requirements of the OECD. This treatment will provide a reduction of 8% from the headline rates of corporate tax for base rate entities (BREs), and 13% for all other companies, with the eligible income proposed to be treated as non-assessable non-exempt (NANE) income. 

The following table summarises the key proposed dates for the now expanded patent box regime: 

SectorIncome yearsEligible patents
Medical and biotechnology Starting on or after 1 July 2022 Granted or issued after 11 May 2021 
Low emissions technology Starting on or after 1 July 2023 Granted or issued after 29 March 2022 
Agricultural Starting on or after 1 July 2023 Patents or Plant Breeders Rights (PBRs) granted or issued after 29 March 2022 

The Budget papers confirm that patents within the expanded sectors that are likely to be eligible are: 

  • Those relating to low emissions technology in the 140 technology areas listed in the Government’s 2020 Technology and Investment Roadmap Discussion Paper, or included as priority technologies in the Government’s 2021 and future annual Low Emissions Technology Statements  provided that the patented technology is considered to reduce emissions.
  • those linked to agricultural and veterinary (agvet) chemical products listed on the Australian Pesticides and Veterinary Medicines Authority (APVMA), PubCRIS (Public Chemicals Registration Information System) register, or eligible Plant Breeder’s Rights (PBRs). 

As with the initial medical and biotechnology phase of the patent box regime, the Government will consult with the relevant industry stakeholders before settling the detailed design of the patent box expansions.  

Australia’s Economic Accelerator (AEA) to turn leading research into business 

As previously announced on 1 February 2022, a $1.6 billion economic accelerator will form a critical part of a $2.2 billion package to commercialise six National Manufacturing Priorities (NMPs), including resources and critical minerals, food and beverage, medical products, recycling and clean energy, defence and space. 

By prioritising projects with high commercial potential under these six priority areas, the AEA’s provision of venture capital will help progress early-stage research past the initial stages of high risk and uncertainty, turning research ideas into thriving businesses that will contribute to a stronger Australian economy. The AEA will also work in collaboration with CSIRO’s Main Sequence Ventures, which will also receive a new $150 million boost to fund its expansion. 

The AEA will provide funding in three stages: 

  • Stage one being a proof-of-concept phase that will offer nearly 100 grants per year of up to $500,000 
  • Stage two as a proof-of-scale phase will provide funding for 36 recipients of up to $5 million 
  • Stage three will see up to 50 companies supported through Main Sequence Ventures, where $150 million will be provided in two successive co-investment funds 

Linked with the University Research Commercialisation Action Plan, it will be supported by investment of $296 million in industry-focused PhDs and fellowships, expected to generate 1,800 PhDs and over 800 industry fellows over a ten-year period, intended to place innovation “at the core of our economic future as nation”. 

University Research Commercialisation Action Plan 

Also announced on 1 February 2022, the University Research Commercialisation Action Plan will provide $988.2 million over five years from 2021-22. The Action Plan is intended to increase research commercialisation by driving university and industry collaboration, workforce mobility and research translation. The proposed funding will encompass the following: 

  • $505.2 million over five years from 2021-22 to establish AEA grants to support university research projects from proof-of-concept and proof-of-scale through to commercialisation. Under the AEA, the funded projects will align with the NMPs and will be in partnership with industry 
  • $295.2 million over five years from 2021-22 to establish new research training pathways for students and researchers, creating opportunities to work with industry through new Industry PhDs and fellowships, and delivering reforms to the Australian Research Council’s Linkage Program from 2026-27 
  • $150.0 million in equity funding over five years from 2021-22 to expand the Commonwealth Scientific and Industrial Research Organisation’s (CSIRO) Innovation Fund (Main Sequence Ventures). The venture capital investment will progress AEA projects with high commercialisation potential to reach at scale test and prototype stages 
  • $37.4 million over four years from 2022-23 to establish the CSIRO’s Research Translation Start program to take research from the lab into the market by building the entrepreneurial capacity of the workforce with a focus on the NMPs. 

Regional Accelerator Program (RAP) 

The Government has also identified 12 programs where it will specifically target Government investments through a $2 billion Regional Accelerator Program (RAP) to further grow Australia’s regional communities. The proposed funding over the next four years to 2025-26 will include the following: 

  • A $500 million Regionalisation Fund for regional manufacturers intended to enhance Australia’s international competitiveness by assisting regional manufacturers to translate ideas into commercial success.  
  • A $200 million Supply Chain Resilience Initiative.  
  • A $200 million Critical Minerals Accelerator Initiative over five years, which will provide grants to assist Australian critical minerals producers advance projects through planning, design, pilot and demonstration phases.  
  • The $500 million Modern Manufacturing Initiative (MMI). 
  • An additional $100 million for Export Market Development Grants (EMDG). 
  • An additional $60.4 million for the Recycling Modernisation Fund over the next four years, to support further regional investment in the recycling of plastics, tyres, paper and glass. 

As part of the commitment to critical minerals, the Government has also allocated $50.5 million over three years from 2022-23 to establish a virtual Critical Minerals Research and Development (R&D) Centre which will also assist in building Australian intellectual property in critical minerals processing and help create a competitive Australian critical minerals industry. 

Taking innovation to regional hubs and Northern Australia 

The Government has further committed $7.1 billion over 11 years from 2022-23 to support the economies of the following four key regional hubs across Australia: 

  1. The Northern Territory – aiming to fund infrastructure projects that support the manufacturing industry, promote the onshore processing of critical minerals and to strengthen the region’s position as an industrial and renewable energy hub. 
  1. North and Central Queensland – aiming to invest in water infrastructure and supply chain projects that promote water security and open up agriculture and industry growth opportunities. 
  1. The Pilbara region in Western Australia to fund infrastructure projects that support the mining, mineral processing and manufacturing sectors and accelerate growth in the hydrogen and renewable energy industries. 
  1. The Hunter region in New South Wales – aiming to fund transport infrastructure projects that will improve supply chain efficiencies and help diversify the economy, building on the region’s existing strengths and facilitating the development of new industries. 

The proposed investment funds will be targeted at strategic infrastructure and supply chain projects that will drive long-term economic and jobs growth in both existing and emerging industries. 

The Government also will continue to drive investment in Northern Australia’s agriculture, mining, education and tourism sectors by increasing funding for the Northern Australia Infrastructure Facility (NAIF) by $2 billion, to $7 billion. 

Other measures – making innovation start-ups more attractive, competitive and inclusive 

The Government will expand access to employee share schemes and further reduce red tape so that employees at all levels can directly share in the business growth they help generate. Where employers make larger offers in connection with employee share schemes in unlisted companies, participants can invest up to: 

  • $30,000 per participant per year, accruable for unexercised options for up to five years, plus 70% of dividends and cash bonuses; or 
  • Any amount, if it would allow them to immediately take advantage of a planned sale or listing of the company to sell their purchased interests at a profit. 

The Government will also remove regulatory requirements for offers to independent contractors, where they do not have to pay for interests. 

As part of its desire to reform Australia’s regulatory landscape, so as to ensure that the national economy “remains productive, competitive and agile”, the federal government is pledging $11.2 million over five years to continue work in reducing the regulatory burden for business arising from compliance with mandatory safety and information standards under Australian Consumer Law. 

And to support female founders and entrepreneurs, a commitment of $106.9 million has been allocated over 5 years from 2021-22 to further promote women in leadership. This includes $9.4 million over 5 years from 2021-22 to bring women into board positions, as well as funding for the Future Female Entrepreneurs program

Summary 

Australia’s 2022-23 federal budget presents opportunities for Australian innovators and researchers in both the private and academic space to commercialise their intellectual property assets. 

Griffith Hack is committed to working with our clients to take advantage of the measures included in this year’s budget, as well as working with Australian industry and the Federal Government to achieve innovation outcomes.

Our understanding of the way intangible assets and intellectual property in all its manifestations can underpin success, and our long track record in working with Australia’s innovation sector – large and small – place us in an ideal position to work with innovators. For more information or assistance, generally and particularly on the Government’s initiatives in the patent box regime, please contact us

A series of trade marks disputes over coffee products provides important learnings for businesses looking to register trade marks for consumer goods and services. Gavin Adkins, Jacqueline Simpkin and Aimee Foster discuss three decisions involving Energy Beverages and Cantarella Bros.

Background

Energy Beverages LLC (Energy Beverages) is the owner of a number of registered trade marks for its energy drinks, including the word marks “MOTHER”, “MOTHER LOADED ICED COFFEE”, and “MOTHERLAND” (the Mother Marks). The trade marks were registered in respect of goods including energy drinks, coffee and milk-based beverages as well as chocolate, ice cream and tea.

In 2017, Cantarella Bros Pty Ltd (Cantarella) applied to register “MOTHERSKY” for various coffee products and related services in support of a new line of roasted and pre-ground coffee beans. This resulted in the following decisions:

Similar goods

Energy Beverages opposed the MOTHERSKY registration arguing that it is deceptively similar to one or more of the Mother Marks pursuant to section 44 of the Trade Marks Act 1995 (Cth).

Cantarella applied for the MOTHERSKY registration in respect of class 30 goods, including coffee, coffee beans and chocolate. The MOTHER and MOTHERLAND marks are registered in class 32 for beverages including energy drinks, soft drinks, and fruit drinks. Justice Halley distinguished this class of goods from coffee, coffee beans and chocolate by the manner in which customers perceive and shop for those products. In particular, his Honour considered that MOTHERSKY products are either displayed by baristas in cafes or available for purchase in the tea and coffee aisle of a supermarket. Energy drinks are purchased through different channels, and are available in the soft drink aisle or fridges of a supermarket or convenience store along with other to ready to drink beverages. Justice Halley emphasised the customer experience with the MOTHERSKY goods would be very different, and would commonly occur within a café or restaurant environment.

His Honour also considered that the distinct manufacturing processes involved in the production of pure coffee products, specifically roasting and grinding, have no parallels with ready to drink beverages like energy drinks. His Honour held that the categories could not be considered “similar goods” as there was no significant overlap in the marketing, trade channels or sales of coffee and energy drinks.

The MOTHER LOADED ICED COFFEE registration and the MOTHERSKY application both apply to goods in class 30, including coffee and chocolate products. Justice Halley considered that only goods sold under the MOTHER LOADED ICED COFFEE mark could be at risk of being confused by consumers if the marks were deceptively similar.

Likely to deceive or cause confusion

Energy Beverages sought to rely on its extensive reputation in the Mother Marks to argue that there is a real danger that consumers would be confused as to the origin of Cantarella’s MOTHERSKY products. Justice Halley confined Energy Beverages’ reputation to energy drinks only. It did not extend to other beverage types. His Honour considered that the customer’s association between energy drinks and the word MOTHER was further limited by the stylised gothic font, and not the word alone. The recollection of the stylised MOTHER device, and the fundamentally different markets of the two brands lead Halley J to find that there was no tangible threat of deception. 

In any event, his Honour did not consider that MOTHERSKY was deceptively similar to any of the Mother Marks. The MOTHERSKY mark exists in the abstract; it conveys a vastly different meaning from the ordinary word MOTHER. Justice Halley noted that MOTHERLAND has a pre-existing meaning and is not an imaginative word like MOTHERSKY. There is a memorable difference between the ideas conveyed by the marks. Further, the visual differences of the extra letters between MOTHER and MOTHERSKY prevent confusion in the imperfect recollection of consumers.

His Honour considered that the phonetic differences between the impression left by each of the MOTHER LOADED ICED COFFEE and the MOTHERSKY marks were significant aural dissimilarities. The inclusion of MOTHER as one of four components of MOTHER LOADED ICED COFFEE mark does not negate from the visual dissimilarity of a four-word phrase compared with a standalone word, MOTHERSKY. Justice Halley was not satisfied that there was an overarching resemblance between the marks giving rise to deceptive similarity.

Non-use defence

Energy Beverages challenged the Registrar’s decision to remove the MOTHERLAND and MOTHER LOADED ICED COFFEE marks from the Register. Energy Beverages had registered MOTHER LOADED ICED COFFEE more than ten years prior and failed to prove any actual use or intention to use the mark in that period. Rather, the company relied on its desire to preserve its ability to innovate into surrounding beverage markets but was unable to couple this desire with any evidence of preparatory steps in the relevant period. From this, his Honour inferred that Energy Beverages lacked a good faith intention to use the mark at the time of filing. 

Energy Beverages clearly used its MOTHERLAND mark in a promotional campaign in 2010. A video of the advertisement is available on YouTube and two users commented in the relevant period (see here). Energy Beverages argued that this was evidence of use of its trade mark. His Honour was not satisfied that a retired promotion that had been inadvertently left online could constitute use as there was no active or purposeful commercial engagement or promotion of this trade mark.  His Honour also held that the MOTHERLAND mark was not used as a trade mark in the commercial; the emphasis was on the stylised MOTHER device, which was the most distinctive constituent of the mark. The non-use findings were maintained with reference to the Registrar’s overarching obligation to clear the Register of unused marks.

Use of MOTHER logo in MOTHERLAND mark in the YouTube video

Lessons learned

Companies may choose to register trade marks for goods and services that are not currently used for a variety of reasons. However, this decision acts as a warning that:

  • merely seeking to preserve an opportunity to innovate in the future does not amount to a genuine intention to use a trade mark; and
  • use as a trade mark is not established solely through evidence that an old advertisement remains available online.

Energy Beverages has nonetheless lodged an application for leave to further appeal the decision to the Full Court of the Federal Court and we will provide a further update if the position changes.

From 24 March 2022 it will be possible to register domain names with .au as the extension. In this article, Simon Gapes discusses the release, how a .au domain can be secured, and what happens when two competing parties want the same domain.  

Up until now, it has been necessary to use a “third-level” .au domain name such as “.com.au”, “.net.au” or “.org.au”.  The impending release of .au domain names on 24 March 2022 will allow for use of shorter and sharper domain names and website addresses, which will be especially helpful for website users accessing websites on mobile phones.    

For example, Griffith Hack will be able to register and use the domain name griffithhack.au as well as (or instead of) griffithhack.com or griffithhack.com.au 

.au domain names will be available for registration through a “Priority Allocation Process”, by which .au domain names are reserved for registration by owners of existing third-level .au domain names for six months. From 24 March 2022 to 20 September 2022, owners of existing com.au, net.au, org.au, asn.au, id.au, gov.au and edu.au domain names have priority to register the exact matching .au domain names.  For instance, Griffith Hack can register griffithhack.au, as we are already the owner of griffithhack.com.au.  From 21 September 2022, .au domain names are available for registration on a first-in first-served basis. 

.au domain names which do not match existing third-level .au domain names are immediately available for registration on a first-in first-served basis. 

How can a .au domain name be secured?

In order to own a .au domain name, the owner must satisfy the “Australian presence” requirements which apply existing domain names such as .com.au.  Australian presence requirements can be satisfied by a number of factors, including the owner being an Australian citizen, the owner being an Australian company or the owner holding an Australian trade mark application or registration for a trade mark which matches the domain name.     

Disputes over .au domain name ownership

Where two parties are eligible to hold a .au domain name, for instance if one party holds a com.au domain name and the other party holds the matching net.au domain name, then priority is given to the owner of a domain name registered before 4 February 2018 (when the release of .au domain names was first announced).

If multiple parties hold domain names dating from before 4 February 2018, then the parties must negotiate between themselves who will be allocated the .au domain name.  Where there are multiple applicants who hold matching third-level domain names dating from after 4 February 2018, then the .au domain name will be allocated to the applicant who first registered their third-level domain name.

Owners of third-level domain names registered before 4 February 2018 have priority over owners of third-level domain names registered after this date.

Need help?

If Griffith Hack can assist with registration of your .au domain name, please get in touch with us.

Important changes to Australia’s Designs Act 2003 have now come into effect – so what do designers need to be aware of? Anthony Selleck sets out what you need to know about the changed landscape for registered designs in Australia.

Overview

Recently enacted[1] changes to the Designs Act 2003 came into force on 10 March 2022. Applications for registered design protection filed on or after this date are governed by the amended Act.

The key changes implemented by the amending legislation relate to:

  • a grace period;
  • a prior use defence;
  • protection for “innocent infringement”; and
  • reforms to the application procedure.

Grace Period

A 12-month grace period now applies to registered design applications filed on or after 10 March 2022. Using the grace period, registered design applicants can, to a certain extent, recover from a self-publication of the design the subject of the application. In this regard, the grace period operates to remove a publication or use of a design from the design’s prior art base, so long as the publication or use occurred:

  • on or after 10 March 2022; and
  • no more than 12 months before the design’s priority date.

The grace period only applies to a registered owner’s own publication or use of the design, or a publication or use made by a predecessor-in-title of the registered owner, or by a person who created the design (if that person is not the registered owner or a predecessor-in-title). Like the grace period for patent applications in Australia, the designs grace period does not provide an applicant with an earlier priority date.

Importantly, the grace period does not operate to disregard a publication of a design by a foreign designs office. In practice, this means that the grace period cannot be used as a filing strategy where a Convention priority deadline is missed and the application is published by the foreign designs office before the Australian application is filed. In these circumstances, an applicant would need to establish grounds for an extension of time in which to file the Convention application in Australia, such as a genuine error or omission on the part of the applicant or their attorney.

It is also worth noting that the grace period is subject to the new prior use defence (discussed below).

Despite its limitations, a grace period is a welcome addition to registered designs law in Australia, bringing it into line with the grace period already provided to patent applicants. The grace period should also provide clarity and increased filing options to both local and overseas applicants who inadvertently disclose their designs before filing for design protection.

Prior Use Defence

Alleged infringers of a registered design with a priority date on or after 10 March 2022 can, in certain circumstances, avail themselves of a “prior use” defence.

In particular, a design owner who relied on the grace period to secure registration of the design, cannot enforce the registration against an alleged infringer who began using the design (or a comparable design) in the period between the design owner’s disclosure of the design and the filing of the design application.

The prior use defence is a very important limitation on the grace period. To avoid third parties potentially obtaining rights to use a registered design, design owners are advised to file for protection before disclosing the design, or as soon as possible after the design is disclosed.

Innocent Infringement

For designs that become registered on or after 10 March 2022, Australian courts have discretion to refuse or reduce damages, or refuse an account of profits, for infringements occurring before the design was registered. The provisions aim to provide relief to an “innocent” infringer who infringes a design in the period after an application is filed, but before the design itself is publicly available on the Register of Designs.

To take advantage of the provisions, the “innocent” infringer must satisfy the court that they were not aware, and could not reasonably have been expected to be aware, that a design application had been filed. Conversely, it is advisable for applicants of pending design applications to publicise that an application has been filed (such as by marking relevant products with the application number), so as to reduce the likelihood of the defence applying.

Application Procedure Reforms

The Designs Act 2003 brought in a system of defensive publication, under which a person could publish a design (and thus prevent others from obtaining rights in the design) without seeking registration of the design.

As this option was sparsely used, the publication regime has been abolished from 10 March 2022 onwards, leaving only the option to seek registration of a design. Under the old regime, there was a requirement to request either publication or registration of the design within 6 months of the priority date. However, with the abolition of defensive publication, it is no longer necessary to specifically request registration. Instead, designs filed on or after 10 March 2022 will automatically proceed to a formalities check 6 months after the priority date of the application.

If desired, Applicants can file a request for the design application to proceed to formalities examination (and typically registration) before the end of the 6 month period. This may be advisable in certain circumstances, such as to reduce the risk of innocent infringement occurring before the design is registered.

Our Designs Team

Please contact our Designs team if you require assistance in formulating design filing strategies for the Australian, New Zealand and overseas markets.


Footnotes

[1] Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth)

Female biotech founders took centre-stage at AusBiotech 2021 with the leaders of some of Australia’s most innovative start-ups coming together to discuss their experiences in the commercial scientific world.

Chaired by Griffith Hack director and principal Karen Sinclair, the Female Founders of Biotech panel featured Sam Cobb of Currus Biologics, Lynette Walter of NavBit, and Elisa Mokany and Alison Todd of SpeeDx  – all who co-founded their respective companies. The candid discussion provided illuminating views on what it takes to start a biotech company, how to be a leader while surrounding yourself with the best people, and what they think the future holds for innovation in Australia.

About the panel

Sam Cobb is the founding CEO of Currus Biologics, commercialising its next generation CAR-T cell therapy from early research and development at the Peter MacCallum Cancer Centre. Previously, she was the founding CEO of AdAlta and applied for that first CEO position with encouragement from the Chair.

Lynette Walter is CEO and co-founder of surgical technology innovator and manufacturer Navbit. She believes the ability to create and maintain a company is an innate feature in those with the requisite passion, motivation and self-belief. She and her co-founders knew they had both a good idea and the right talent to take their product to market and persevered to achieve their success.

Elisa Mokany and Alison Todd are co-founders of molecular diagnostic company SpeeDx. Their innovative background was nurtured at Johnson & Johnson Research (JJR) and provided a strong foundation to start their own company, together with assistance from Cicada Innovations.

Mokany and Todd were passionate about what they invented and had support from their former Managing Director to branch out into SpeeDx. JJR encouraged their plan and assisted them by assigning rights to the IP and funding venture capital for the new entity. Todd acknowledged the risks involved but believes perseverance was key to making forward progress – founders must face problems that arise; solutions are found when you deal with problems head on and do not shy from them.

Founders don’t have to be CEO

Contrary to the other panel members, neither Mokany nor Todd are CEO of SpeeDx, rather they hold the positions of Chief Technology Officer and Chief Scientific Officer, respectively. Prudently, Todd remarked that not every founder is the perfect CEO. She embraces her capabilities as a scientist and inventor and has worked on assembling a team of experts, each with their own relevant skill set.

Similarly, Mokany noted that the first five years of SpeeDx was all science: developing assays, collaboration, and licensing technology. She understood her expertise in product development and, like Todd, lacked the desire to play the part of CEO and “sell”. They both have confidence in the experience, knowledge and skills of their appointed CEO and note that their C-suite is united in their decision making.

These founders are not made to feel like they lack clout, rather they focus on the aspects of the company for which they have a passion and take responsibility.

Getting started and making early in-roads

For those waiting to take the leap, the panel agreed that it is necessary in a start-up to continue to put one foot in front of the other. On the job learning is a constant process, and the important thing is to get started and keep going. Recognise your strengths and crucially, surround yourself with those that have other expertise that is needed, including the right mentors and advisors.

Cobb noted that a CEO must see the big picture and get on with making it happen. She also noted the importance of having IP: you need to know that your idea is worth funding. Competitive analysis provides excellent information.

Walter emphasised the importance of resilience and also preparing and educating yourself but not waiting for perfection: ask questions, get to work and be bold and open-minded; understand that there are many different ways to get to the end goal.

Surround yourself with experts and leaders

On the topic of advisers and those you choose to provide the expertise your start-up needs, all panel members agreed that the members of your board need to be the right people who can guide and grow your business. Mokany reflected on the importance of seeking legal and IP advice from people with science backgrounds, and who are switched on in the biotechnology fields – it can be unhelpful when service providers do not understand the technology. She noted that IP advisers had even helped drive inventive concepts, emphasising that your advisers should grow with you in your journey.

Todd and Cobb appreciate positivity. They do not want to only hear problems, nor what cannot be done. They seek others who are solution oriented. In addition, Walter believes that experts who think only in the context of their field without understanding how decisions impact your business are of less value. Advisers who are willing to be part of the inner circle are worth their weight in gold.

Building the bridge between research and commercialisation

Something that all speakers acknowledged is the tenuous bridge between research and commercialisation, particularly in Australia. Walter advises working with universities to take IP out of their hands and spin-off with it into another company. Collaboration is essential to successfully enter the market. By the same token, Todd encouraged strong connections between academia and industry and noted an important factor is the mentoring of others – as you yourself seek mentors. She recommends the supervision of students between educational research programs and industry to provide an understanding of commercialisation and would also like to see better training offered to scientists to be the entrepreneurs of the future.

The role of gender

It would be remiss to gather these experts and not discuss gender. No panellist has been caused to feel that their gender has held them back, but all advocate for monitoring and supporting other women in the workplace. They agreed that female founders need the same qualities as any other, such as tenacity, focus, belief and adaptability, and acknowledged that while a gender imbalance exists, gender does not matter. If you back yourself and move forward, you will achieve.

It was noted that women tend not to talk themselves up as much as their male counterparts and likewise do not ask for as much. Funding and capital raising is hard; Cobb’s advice is to tell a story and tell it very well. As CEOs, Cobb and Walter both agreed that you must raise money when you don’t need it, raise more than you need and be aware that it takes longer than expected. Cobb recommended practicing your elevator pitch on your friends: you will need a lot of money that will come from everywhere.

Success takes courage

It was encouraging to hear that these female founders embrace risk and see failure merely as a growth and learning experience. Their courage as innovators and leaders shines through. All speakers agree that Australians need to have this courage to take that leap of faith into new technology and innovation. These leaders embrace the opportunity to support others and look forward to giving back to the biotechnology industry.

Publicly disclosing a new technology, potentially an invention, before a patent application has been filed – whether purposely or accidentally – can jeopardise patent coverage, and consequently commercialisation, of the technology. But there are options available in the event of self-disclosure. Craig Don Paul and Malcolm Lyons explain why all researchers and inventors need to know about grace periods.

A commonly heard story, mainly from those involved in academic commercialisation offices, involves the good-hearted researcher who has created new technology, but has not appreciated that the technology is also an invention, before disclosing the technology publicly.

Although unfortunate from a commercial perspective, this is understandable in universities and research institutes where, as expected for an academic researcher, knowledge is disseminated. Only after some time and consideration does the researcher approach the commercialisation office asking, ‘Is my technology a patentable invention?’ Unfortunately, the researcher’s prior disclosure may have fatal consequences for a patent application covering the technology.

But it’s important to know that there are options available in the event of disclosure, including self-disclosure – namely in the form of grace periods.

What are grace periods?

Across the globe, certain countries make it possible, through the use of grace periods, to file a patent application validly after disclosure of a new technology. Without grace periods, such disclosure would render the technology unpatentable, because it would no longer be novel.

The rules around grace periods vary from country-to-country, both in terms of the time available to file an application after disclosure, and the supporting materials required.

Grace periods can also relate to various types of disclosures, for example, reasonable trial or experimentation, or display at a recognised exhibition. In the table below, however, we limit our consideration to self-disclosures and the availability and requirements of grace periods in some important jurisdictions, including Australia and New Zealand.

JurisdictionPeriodType of applicationRequirementsNotes
Australia12 monthsNon-provisional, including PCTAssert during prosecution
New Zealand12 monthsNon-provisional, including PCTAssert during prosecutionSelf-disclosure on or after on 30 December 2018.
USA12 monthsProvisional or Non-provisional, including PCTAssert during prosecution
Canada12 monthsNon-provisional, including PCTAssert during prosecution
Japan12 monthsNon-provisionalActively apply at filing.
Provide supporting documents*
Self-disclosure on or after 9 December 2017.
Supporting documents to be provided within 30 days of applying.
Malaysia12 monthsNon-provisional, including PCTActively apply at filing.
Provide supporting documents*
Taiwan12 monthsNon-provisionalAssert during prosecutionNot a member of the Patent Co-operation Treaty.
Singapore12 monthsNon-provisional, including PCTActively apply at filing.
Provide supporting documents*
Germany6 monthsUtilityActively apply at filing.
Provide supporting documents*
Supporting documents to be provided within 30 days of applying.
Utility patent has 10-year term and is not available for processes.
United KingdomN/AUK may join Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which requires 12 m grace period, but conflicts with EPC.
EuropeN/A
IndiaN/A
ChinaN/A
Hong KongN/A
* Generally, supporting documents to include date of disclosure, location of disclosure, nature of disclosure, any other statement/ document specifying and evidencing in more detail facts concerning the disclosure, and may be required in the form of a statutory declaration or affidavit


What is self-disclosure?

In this context, a self-disclosure is a disclosure of a technology made by, or with the consent of, a potential patent applicant or patentee, prior to filing a patent application covering the technology. This often occurs via journal publications, including “as accepted”/ pre-print publications, conference proceedings, including oral and poster presentations, clinical trial publications, including mandatory clinical trial registration, marketing, or even promotions for raising capital. In many circumstances, because of the nature of the environment, particularly academic research, consent is implicit rather than explicit.

How to take advantage of grace periods?

To enliven the grace period in a particular jurisdiction, a patent application must be filed in that jurisdiction within a relevant time-period following the self-disclosure (see table above for timings).

Depending on the jurisdiction, the application may be provisional, non-provisional (referred to as “complete” in Australia and New Zealand), including PCT, or an application for a utility patent, which is a lower level patent. Generally, the application must be filed within 6 or 12 months from the date of the disclosure.

Remember, each country has different grace period requirements. A patent attorney can assist with navigation through the complex global patent landscape.

Key takeaways:

  • Even in the event of self-disclosure, researchers can still secure patent coverage of their technology in some countries through the use of grace periods.
  • Grace periods should only be relied on as a last resort. Before any disclosure of new technology, researchers should always submit that technology for review by their commercialisation office. The commercialisation office, together with its patent attorney, will be able to guide the researcher on filing a patent application – and when public disclosure can be made subsequently.
  • If you do not have access to a commercialisation office, please contact Griffith Hack for advice
    • before making any public disclosure of your technology, or
    • immediately if a public disclosure of your technology has been made.

Our patent attorneys will be able to provide you with advice and guidance to ensure the patentability of your technology is not jeopardised.

In a recent decision of the Australian Patent Office,[1] a patent application directed to a membrane for filtering biological products was upheld following opposition.  Attacks made on various grounds failed, with the Delegate considering that the claims could be clearly construed.  The decision also provided useful guidance on ‘parameteritis’ and prior use.

Griffith Hack acted on behalf of the Applicant, Asahi Kasei Medical Co., Ltd. in the proceedings.

Background and Technology

The patent application (AU2015309939) concerns porous membranes which are used to filter and capture virus particles from biological products such as fractionated plasma products and biopharmaceuticals.  The claims of the application were directed to membranes having a particular distribution of pores within the membrane cross-section, which were associated with properties such as efficient filtration and removal of virus, together with reduced spoiling or clogging of the membrane over time.  Pore sizes and their distribution were determined by the use of scanning electron microscopy (SEM).

EMD Millipore Corporation opposed grant of AU2015309939 in 2018.  Following evidence rounds, and a procedural opposition concerning claim amendments which was decided in favour of the Applicant, a hearing was held in November 2021. Various grounds of opposition were pressed, with the main issues relating to claim construction and clarity, best method, and lack of novelty based on prior use of the Opponent’s Viresolve® Pro (VPro) membrane.

Claim construction and clarity

The claims of AU2015309939 were directed to a membrane having a pore structure defined by several parameters which required analysis by SEM, including characterising the membrane in terms of an asymmetric structure (where average pore size changes on moving through the interior of the membrane), coarse and dense layers, and a gradient index determined based on the average pore diameter in adjacent visual fields of the coarse and dense layers.

The Opponent argued that such terms were not clearly defined and that a person skilled in the art would not be able to identify membranes falling within the scope of the invention. However, the Delegate disagreed, understanding the membrane to have a dense layer defined by 1µm increments from the downstream side, the dense layer having a thickness equal to the number of 1µm visual fields that have an average pore diameter of 50 nm or less.  The coarse layer was the adjacent layer having 1µm visual fields with an average pore diameter of more than 50 nm.  Other features in the claims were then also resolved in favour of the Applicant.  In arriving at that conclusion, the Delegate referred to various passages in the description and examples, and was also assisted by expert evidence regarding the meaning of terms in the claims as supported by the specification.[2]

The Opponent also argued that the specification did not sufficiently describe how a sample should be prepared for SEM analysis, nor disclose the exact parameters to be set on the actual microscope. However, the Delegate found that a person skilled in the art would be “well equipped with objectively standard techniques”[3] and “have a common understanding of operating parameters… to create reproduceable and useful images of the scale of the present invention”.[4]

Prior use

The Opponent alleged lack of novelty based on prior use of their own commercially available VPro membrane.[5] However, the Delegate found that the evidence did not establish that the VPro membrane possessed all essential features of the claims. The Opponent used a different method of SEM analysis in their experiments, applying Euclidean distance mapping to determine pore size rather than the perfect circle method described in the specification. They also did not perform appropriate measurements to determine if the VPro membrane fulfilled other parameters in the claims, such as dense layer existence ratios and standard deviation of pore sizes. The Opponent argued that features of the claims were arbitrary parameters (discussed below), but the evidence was not sufficient to establish prior use.

The Applicant also asserted that the Opponent had not adequately established details of the alleged public disclosure, or that its membrane was reproducible by a skilled person.  Ultimately, the Delegate was able to settle the question of novelty without deciding on those points, but overall this decision serves as a reminder that the burden of establishing prior use is significant.  Care needs to be taken when preparing evidence of alleged prior use to address questions including: was there a public disclosure, if so when did it take place, and what exactly was disclosed to the public.

Parameteritis

The Delegate also considered the issue of ‘parameteritis’ when assessing novelty. The term ‘parameteritis’ arose in the decision of Laddie J in Raychem Corp’s Patents [1998] RPC 31 and was described as a:

practice of seeking to repatent the prior art by limiting claims by reference to a series of parameters which were not mentioned in the prior art.[6]

The Opponent relied on this approach, arguing that certain parameters defined in the claims were “arbitrary”, did not achieve a technical effect and should be disregarded. However, the Delegate instead agreed with the Applicant’s position that the parameters defined in the claims combined to provide a technical advantage, could not be considered an “arbitrary convenience”, and were essential to the invention.[7] The Delegate also found that “parameteritis” is not a term found in the Patents Act, and does not represent a separate ground that a claim needs to meet.[8] Whilst at times a feature falling under the label of parameteritis may be inessential for the purposes of a novelty consideration (and only essential claim features need to be taken into account for assessing novelty under Australian practice[9]), in this case the specification made clear that the parameters were essential features.

Best method

A lack of best method attack was also raised, with the Opponent asserting that certain details were not provided in the specification relating to how SEM images of membranes were acquired.  However, the claims were product claims, and the Delegate held that the nature of the invention was not in an improvement in SEM imaging or image processing techniques, but rather was the creation of porous membrane filters with specific physical properties.  The best method enquiry was therefore directed to the creation of membranes, and the evidence did not establish that the applicant was aware of a better membrane product than those provided in the examples.[10]

How we can help you

Griffith Hack are pleased to support our clients on a range of matters from patent prosecution through to contentious matters such as opposition and litigation. We have an integrated team of patent attorneys and lawyers with strong technical and legal capabilities, and are committed to achieving the best possible outcomes for our clients.

If you would like to know more on how Griffith Hack can assist you, please get in touch.




[1] EMD Millipore Corporation v Asahi Kasei Medical Co., Ltd. [2022] APO 6

[2] Ibid, at [46].

[3] Ibid, at [54].

[4] Ibid, at [58].

[5] Ibid, at [117].

[6] Raychem Corp’s Patents [1998] RPC 31 at 37.

[7] Ibid.

[8] Ibid, at [116].

[9] Patent Manual of Practice and Procedure, 2.4.10.

[10] Ibid, at [83].