IP SPOTLIGHT 6 APRIL 2020

IP SPOTLIGHT NEWS FROM AUSTRALIA

6 April 2020

WELCOME TO WRAYS - DR MARY TURONEK

refrigerants, shipping logistics and GTL processes. She will also draw on her experience with mining equipment, mineral processing, hydrogen, biofuels and pyrolysis of organic material. Mary has a particular interest in the challenges facing the oil and gas industry to develop sustainable solutions. “I think there will be a trend towards investment and development of alternative sustainable energy technologies such as hydrogen and energy storage as this sector transitions from fossil fuel to a broader spectrum energy sector”. Mary enjoys sharing her passion and knowledge of IP with various industry groups through podcasts, radio and television broadcasts and presenting seminars. She is currently a mentor for postgraduate students in STEM and is a former long-standing committee member and former WA regional chair of the Intellectual Property Society of Australia and New Zealand.

We are pleased to welcome Dr Mary Turonek to our Chemistry, Resources and Oil & Gas Teams.

Mary is well-known for the enthusiasm and energy she brings to the world of IP. “As a patent attorney you have the unique privilege of learning about new technologies and engaging with businesses that value innovation. It’s such a stimulating environment. I meet and work with lots of people who are experts in their field and you never really know what the next invention will be. The prospect of getting the best outcome for clients – persuading a recalcitrant examiner to accept the patent or a win at a hearing - appeals to the competitive side of me”. Mary started her career as a Chemist, completing a PhD in physical and inorganic chemistry before spending 10 years in research in Australia and the United Kingdom. Mary’s IP Oil and Gas practice at Wrays will focus on upstream and downstream technologies, in particular offshore and subsea engineering, natural gas processing, LNG production,

With a PhD in physical and inorganic chemistry, Mary specialises in the oil and gas sector as well as mineral processing, hydrometallurgy, mining

processes and equipment, electrochemistry and battery

technology, water treatment, waste management technologies and general engineering. With such impressive credentials we are thrilled she has joined us at Wrays! With over 20 years experience, Mary adds significant weight to the already- established Perth Chemistry, Resources and Oil and Gas teams. Mary has, in particular, provided IP protection and management for a broad range of Australian and International oil and gas clients as well as start-ups, universities and research organisations.

IP AUSTRALIA UPDATES

WRAYS VIRTUAL MEETINGS

IP Australia is meeting the COVID-19 pandemic with a business as usual response. We present here IP Australia’s response to applications for extension of time, the conduct of hearings and why IP Australia expects business as usual as a consequence of COVID-19.

COVID-19 has impacted everyone’s business in different ways, however, business goes on in our brave new world. Although we have temporarily closed our offices in Sydney, Melbourne, Adelaide and Perth, our team is still fully available through telephone or video conference. We would like you to join us for a series of virtual online meetings about current trending IP topics that may be affecting your business.

Due to the threat of COVID-19, many Patent Offices around the world have implemented the suspension of, or extensions in the time limits, to complete certain actions. Australia is no different. On 19 March 2020, IP Australia (the Australian office of Patents, Trade Marks, Designs, Copyright and Plant Breeders Rights) issued a statement confirming that where an applicant cannot carry out an action within a time due to the COVID-19 outbreak, an extension of time may be available provided standard extension of time conditions are met. Please contact us if you need more information concerning those conditions. IP Australia also stated that requests for waiver or refund of a fee for an extension of time will be considered on a case by case basis.

On 19 March 2020, IP Australia notified clients and practitioners that future opposition hearings will be held by video conference, telephone or written submission. On 30 March 2020, IP Australia issued a statement confirming that it has taken extra precautions to ensure the health and safety of its staff. IP Australia is committed to processing requests and responding to enquiries as during the COVID-19 pandemic. Prior to COVID-19, many Australian Examiners worked from home. As such, IP Australia expects business as usual with minimal disruption.

Wrays recognises that many of its clients and members of the IP community may be experiencing isolation as we all transition into remote working. We understand that regular contact by telephone or video conferencing is vital for a productive and satisfying wellbeing in the present environment. Considering this, Wrays will be making available to all its clients, online virtual meeting sessions about current trending IP topics that may be affecting your businesses. The aim of these sessions is to help, encourage and facilitate communication and discussion amongst our IP community.

We will provide more information about this topic shortly.

GARY COX Chairman & Principal

DONNA MEREDITH Associate

D ue to the threat of COVID-19, many Patent Offices around the world have implemented the suspension of, or extensions in the time limits, to complete certain actions. Although some deadlines to complete an action have been extended, in general, the payment deadlines of annuity/renewal fees remain unchanged.

CORONAVIRUS AND PATENT OFFICES AROUND THE WORLD

NEW ZEALAND PATENT OFF I CE – – If circumstances related to COVID-19 have affected you or are affecting your ability to respond by a deadline, you may request IPONZ for an extension of time to meet that deadline. – – IPONZ will assess extension of time requests on a case-by-case basis. UN I TED STATES PATENT OFF I CE (USPTO) – – There is no mechanism under US patent law to allow for extensions of time to complete an act, however, the USPTO is waiving petition fees in certain situations for customers impacted by the coronavirus. – – No changes to deadlines to complete an action.

We have provided the following information on a selection of Patent Offices in the jurisdictions of Australia, New Zealand, and several of our major trading partners. If you have any specific questions regarding these or any other countries, or you are facing difficulties in providing us with your timely instructions, please contact us to discuss a possible course of action. AUSTRAL I AN PATENT OFF I CE – – Where an applicant cannot carry out an action within time due to the COVID-19 outbreak an extension of time may be available. Requests for extensions of time will need to be made in the normal way, including filing a declaration setting out how the COVID-19 outbreak interfered with responding in time. – – Requests for waiver or refund of the fee for the extension of time will be considered on a case by case basis. CANAD I AN PATENT OFF I CE – – All deadlines falling between 16 March 2020 and 31 March 2020 extended to 1 April 2020. EUROPEAN PATENT OFF I CE (EPO) – – Deadlines expiring on or after 15 March 2020 extended to 17 April 2020. – – Oral proceedings will not be held in the premises of the Boards of Appeal from 16 March 2020 until 17 April 2020. – – All oral proceedings in examination and opposition proceedings scheduled until 17 April 2020 are postponed until further notice unless they have already been confirmed to take place by means of videoconferencing.

OTHER COUNTR I ES Alterations to deadlines are also

applicable in at least Argentina, Brazil, India, Malaysia, Mexico, Peru, Spain, Taiwan and Venezuela. Please contact us if you require detailed information on any of these jurisdictions.

LINDA KENNAUGH Principal

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CONSUMER LAW ACCC RESPONSE TO COVID-19 PANDEMIC

The ACCC has established an internal COVID-19 Taskforce with the aim of educating businesses about their obligations in relation to cancellations, refunds and suspension of services as a result of COVID-19. That taskforce will be paying particular attention to price gouging, will consider affordability issues and consider a range of competition issues to ensure that Australian markets and in particular individuals and businesses comply with Australian competition, fair trading, and consumer protection laws.

On 27 March 2020, the Australian Competition and Consumer Commission (ACCC) released its response to the COVID-19 pandemic. The ACCC regulates competition and fair trade in Australian markets and ensures individuals and businesses comply with Australian competition, fair trading, and The ACCC has reported that many Australian businesses are facing severe disruption and an uncertain future as a result of COVID-19 impacts. Maintaining competition in the long term is one of the ACCC’s core objectives. The ACCC has adjusted the focus of its regulatory activities to account for the impact of COVID-19 on Australian consumers and businesses. The ACCC has established an internal COVID-19 Taskforce which is already communicating directly with businesses to educate them about their obligations in relation to cancellations, refunds and suspension of services as a result of COVID-19. consumer protection laws, and in particular the Competition and Consumer Act 2010.

The ACCC will re-focus its efforts on those priorities of most relevance to competition and consumer issues arising from the impact of COVID-19, including: – – Monitoring price gouging which is of a significant concern at this time. – – Focusing on affordability issues and identifying sectors with excessive pricing. – – Engaging with governments and businesses to potentially authorise coordination between competitors that is ordinarily prohibited, but which is necessary and in the public interest at this time. For example, allowing supermarkets to have a coordinated approach to maintain supply of essential goods. – – Seeking to minimise regulatory burden for the ACCC’s enforcement activities. – – Continuing to consider proposed mergers but recognising timelines may need to be extended. – – Considering exemptions from infrastructure regulation if current obligations become impracticable as a consequence of COVID-19.

CRAIG HUMPHRIS Principal

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ARE THE AUSTRALIAN COURTS STILL OPERATING?

In short – yes. The Federal Court of Australia and the Federal Circuits courts, while remaining shut until 30 June 2020, have put in place plans to ensure that cases are not unduly delayed as a result of the COVID-19 Pandemic.

There are two main Australian Commonwealth courts in which IP matters are heard – the Federal Court and Federal Circuit Court. The Supreme Courts of each State and Territory also have jurisdiction over some IP matters. The High Court hears appeals of IP matters from all of these Courts. All of these Courts are still operating, utilizing electronic means to minimise COVID-19 risk. FEDERAL COURT All listings that require in person attendance listed up to 30 June 2020 have been vacated. The Court has issued “Special Measures in Response to COVID-19 (SMIN-1)”. Apart from the obvious electronic filing and communication measures provided for, some useful points to note include: – – Parties are being asked whether hearings can be conducted on the papers (meaning documents filed by the parties), by telephone or by other remote access technology. The Court has also issued a handy guide to using remote technology for hearings. Encouragingly, Perram J has recently successfully heard a matter using Microsoft Teams. – – The Court will accept the filing of unsworn affidavits on the understanding that, if required, these will later be sworn or affirmed when circumstances allow. FEDERAL CI RCU I T COURT In the IP docket parties are directed to the Court’s COVID-19 notice, which encourages telephone hearings or hearings on the papers where possible. Face to face hearings, where unavoidable, are subject to a special protocol designed to minimise COVID-19 transmission risk. SUPREME COURT OF NSW Unless you have leave from a judge to physically appear in exceptional circumstances, physical appearance is not required in any proceedings. The alternative options to progress your case include: Virtual courtroom appearance by phone or video – the relevant factsheet is here, as well as other audio and visual options – see this page. Disputes between the parties on case management issues in the Commercial List will be dealt with on the papers. H IGH COURT The High Court of Australia will not sit in April, May and June. The question of future sittings will be reviewed in June. The Court will continue to deliver judgments and deal with special leave applications including hearings as necessary at individual registries and will hear any urgent matters that may arise using video conferencing technologies.

TIM FRANCIS Principal

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CONTRACTS COMMERCIAL AGREEMENTS AND COVID-19: FORCE MAJEURE

The recent emergence of COVID-19 may amount to a force majeure event. What does this mean to commercial agreement and performance pursuant to those agreements? In some circumstances the COVID-19 could excuse performance under a contract. The question is when and what is required to suspend rights of performance under a contract.

The recent emergence of COVID-19 may amount to a force majeure event. However, there are no “hard and fast” rules, and contracts will need to be assessed on a case-by-case basis. “Force majeure” is not a standalone legal concept, so if a contract does not include a force majeure clause, there is no general right to excuse non-performance caused by an unforeseen event. A “force majeure” clause usually excuses the parties from contractual obligations and liabilities where their failure to perform is caused by unforeseen events (either natural or human) beyond their control. A “force majeure event” may be defined broadly to include any event beyond the parties’ reasonable control or it may be defined by reference to specific events (common examples include fire, flood, other natural disasters, strikes, government action, and war). As force majeure clauses are the result of commercial agreement between the parties, the events that will trigger the clause, and the effect of the clause (eg. suspension of performance or a right to terminate), are determined on a case-by-case basis, taking into account the wording of the clause and the relevant facts. To determine whether the COVID-19 pandemic will amount to a force majeure event and excuse performance under a contract, the first thing you will need to consider is whether a particular contract includes a force majeure clause, and if it does: (a) whether the COVID-19 pandemic falls within the scope of the clause; and (b) if so, what the consequences are (suspension of performance or a right to terminate the contract).

JUDITH MILLER Commercial National Practice Leader

About Wrays

Wrays is one of the largest independent IP specialist firms in Australia – bringing together the right combination of experts to protect, grow and defend our client’s intellectual property assets locally and globally for 100 years.

And when you combine our passion for achieving the best result with our broad capability across the IP spectrum, it’s our clients who enjoy the benefits. In day-to-day reality, this means bringing the right people in the room every time and working together across disciplines to deliver what’s needed.

It doesn’t stop there. Through our extensive local and global networks, we can connect clients with like-minded experts who deliver supporting services, such as private equity, tax advisors, corporate and employment law, as well as IP specialists around the world servicing other jurisdictions. wrays.com.au

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