IP SPOTLIGHT 8 MAR 21

IP SPOTLIGHT NEWS FROM AUSTRALIA

8 March 2021

IP AUSTRALIA’S COVID-19 RELIEF MEASURES TO END SOON

In response to the COVID-19 pandemic, IP Australia created a mechanism for users of the Australian intellectual property (IP) system who had been adversely affected by the pandemic to apply for an extension of time with a simple online declaration and without paying any official fee, with the extension then effectively being granted automatically. This extension mechanism – called the “streamlined” extension – required significant effort by IP Australia to create and implement, both from an administrative perspective as well as from a technical (IT) perspective. Yet this was

impacts of the COVID-19 pandemic when determining whether to grant any extensions applied for. However, a written declaration explaining why the person cannot comply with a due date will be required in the usual manner, and extension fees will again be payable. On 31 March IP Australia will also discontinue its trade marks support and assistance service for businesses affected by the pandemic. Updates from IP Australia are available online. Those regarding streamlined EOT measures can be found here, and and trade marks support service updates can be found here . Wrays considers that IP Australia can be proud of its efforts to support individuals and businesses using the IP system in Australia during this terrible pandemic.

achieved within a matter of weeks and has since provided users of the IP system in Australia with much-needed support many thousands of times during the difficulties of the past year. In view of the fact that individuals and businesses alike have since had time to adapt to the “new normal” that the pandemic has left us, and given that Australia has decided only to continue to provide the streamlined extensions of time until 31 March 2021 and that, subject to any developments in the pandemic, it will then be appropriate for the streamlined process to end. After 31 March 2021, extensions of time for users of the Australian IP system who are impacted by the COVID-19 pandemic will still be available on a case-by-case basis. The Commissioner of Patents and the Registrar of Trade Marks and Designs will consider the vaccines are now starting to be distributed around the world, IP

PHILIP GEHRIG Principal

NEW ASSOCIATION LAUNCHED Life Sciences WA Inc www. l ifescienceswa.com.au

On Thursday 25th February 2021, a new Association, Life Sciences WA Inc, was launched in Western Australia. This not- for-profit association seeks to bring together those involved in the Life Sciences sector in Western Australia. Details of the association can be found at www.lifescienceswa.com.au. Life Sciences WA Inc has been created to provide a collective representation for the Western Australian life sciences ecosystem. Created by and for WA life sciences professionals, the association will ensure WA life sciences feature prominently at a local, national and international level. The association will provide and promote a unique identity that is Western Australian life sciences, hopefully, to match the extraordinary contribution that WA life sciences make to Australian science and all sciences around the world.

Life Sciences WA Inc has five key goals:

As a starting point, Life Sciences WA Inc provides a platform for:

Promote Western Australia’s Life Sciences sector as innovative, experienced and internationally competitive

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– Creating a symbiotic environment for students, academia and industry to network and connect. – Establishing a unified and collective community with the ability to communicate unique problems or opportunities for WA. – Providing a stable platform of regular events to promote networking and a sense of place to those within students, academia and industry.

Provide members with the network, market intelligence and services to accelerate and commercialise their business opportunities

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The committee looks forward to working with all stakeholders of Western Australia’s Life Sciences

Foster a culture of collaboration and innovation within the Western Australian Life Sciences community

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industry. We encourage you to connect with us so that we can work together to explore opportunities and showcase Western Australia as a world-class life

Attract investment and talent to Western Australia’s Life Sciences businesses

sciences hub that delivers global economic prosperity, health and environmental benefit. Details of our committee and the association can be found at www.lifescienceswa.com.au

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Play a leading role in helping to shape the direction of the industry in Western Australia and influence public policy

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GARY COX Chairman & Principal

The establishment of this not-for-profit association is not without careful thought for the impact on existing membership based groups. Life Sciences WA is locally focused and, in that respect, seeks to work with national life science organisations to help promote the life sciences industry in Western Australia.

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I n the recent Federal Court decision of Axent v Compusign [2020] FCA 1373, Axent Holdings Pty Ltd’s (Axent) patent for variable speed limit signs (VSLS) was found both invalid and not infringed by Computing Australia Pty Ltd, Computing Systems Pty Ltd (together, Compusign) and Hi-Lux Technical Services Pty Ltd (Hi- Lux). In addition to the usual non-infringement and validity arguments, the decision covered a number of defences raised by Compusign and Hi-

ROADBLOCK FOR AXENT’S VARIABLE SPEED LIMIT SIGNAGE TECHNOLOGY

BACKGROUND Axent was the patentee of a patent for VSLSs (Patent). The claims related to VSLSs incorporating white LEDs forming the number representing the speed limit, and an annulus made up of concentric circles of red LED lights surrounding the number. The signs displayed a varied speed limit by changing the number displayed and flashing some (but not all) of the red rings to alert motorists to the altered speed limit and conditions. At least one of the red rings remained constant (i.e. did not flash) to comply with regulatory requirements for speed signs. The VSLS was capable of changing the display in response to an external sensor (such as wind or light sensor). Compusign and Hi-Lux both supplied VSLSs which Axent alleged infringed the Patent. CONSTRUCT ION Axent argued that the claims were directed to a product, limited by the result. Axent submitted that the features would be taken if a VSLS was capable of being used in the manner set out in the claims. Compusign and Hi-Lux argued that they were method claims because some of the features most naturally described how the product is to be used, as opposed to a functional limitation of the product. Justice Kenny concluded that the claims were product claims limited by the result because the features were in substance a “description of the physical characteristics” of the claimed product. However, Justice Kenny rejected Axent’s submissions that the claims covered signs that were merely capable of achieving such results as that would be overly broad, and could cover products

that were not and were never intended to be used as a speed limit sign (e.g. an electronic traffic sign with a fully controllable matrix display, even if its operation had nothing to do with the invention of the Patent). CLAR I TY Compusign and Hi-Lux argued that the terms “normal speed limit”, “input criterion” and “change in conditions” were unclear on the basis that they had no fixed meaning, but Justin Kenny considered that the person skilled in the art would be able to construe these features based on the information in the specification I NFR I NGEMENT Both Hi-Lux and Compusign supplied or intended to supply various types of VSLS which were capable of exhibiting the features of the claims. Axent alleged that this constituted both direct and indirect infringement of the claims. However, Justice Kenny found that these signs were not configured to meet all of the features of the claims, and the fact that they were merely capable of doing so was not sufficient. The fact that the relevant results could be achieved if the operator made the appropriate selections did not establish that, when the VSLS was in use, the features of the VSLS were necessarily such as to fulfil the functional limitations or achieve the results required by the claims. Justice Kenny found the claims not infringed. Axent also asserted an omnibus claim, which was defined “by reference to the examples”, but because there were no actual examples in the patent (only preferred embodiments), there could be no infringement.

Lux, including innocent infringement, crown use provisions, and prior use.

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I NVAL I D I TY Novelty

Inventive Step

Justice Kenny accepted Compusign’s submissions. The VicRoads specification provided that VSLSs must have a partially flashing annulus and which was distributed to potential suppliers but did not indicate any constraint (such as a Patent) on the capacity of a third party supplier to supply such a sign, which a supplier would have reasonably expected to be included. Axent had failed to pay the renewal fees for the Patent by the deadline, and also failed to pay within the 6 month grace period which followed, resulting in the lapse of the Patent. Axent subsequently applied for (and was granted) an extension of time to pay the renewal fee. Justice Kenny decided that infringement could not be asserted between the initial renewal deadline (rather than from the conclusion of the grace period as contended by Axent), and the reinstatement of the patent 11 months later. Hi-Lux and Compusign argued that they could rely on the defence of prior use as they were preparing to make and supply their respective VSLSs before the priority date of the Patent. Justice Kenny confirmed that the prior use defence as it applied at the relevant date was very restrictive in its scope. The infringer needed to show that they had “taken definite steps” to “make a product or use a process” to avail themselves of the defence. This did not extend to all acts that constituted exploitation (e.g. sale/supply of products) but only making. Hi-Lux and Compusign relied on evidence that they had responded to an expression of interest or provided quotations to make the products, had produced some prototypes that showed their general capabilities of to make that sort of product and had received drawings for VSLS that had a partially flashing annulus. Justice Kenny considered that such steps were short of the “definite steps” required for actually making the product. The authorities indicated that the making of prototypes with a view to further development was not enough, and such preparations needed to reach the form of a final product. Lapse of Patent Prior Use

Axent also asserted an omnibus claim, which was defined “by reference to the examples”, but because there were no actual examples in the patent (only preferred embodiments), there could be no infringement. DEFENCES In light of this finding on infringement, it was not necessary to provide judgement on the defences raised, however, the court still provided some guidelines which are worthy of discussion here. Justice Kenny considered that each of the government agencies to which Hi-Lux supplied its VSLSs were authorities of the State, as each of these authorities was impressed with the stamp of government. However, Justice Kenny did not consider that Hi-Lux had been “authorised in writing” by any of these authorities. Hi-Lux relied on the contracts it had with the agencies for supplying the signs for demonstrating written authorisation. Justice Kenny concluded that while the written authority did not need to specifically identify the patent, the contract needed to require Hi-Lux to supply a VSLS in accordance with the invention. Because the contract left open the possibility for Hi-Lux to supply VSLSs that met the Crown’s requirements without infringing the invention, this did not constitute written authorisation. Justice Kenny also noted that there was a question as to whether the exploitation of the Patent was “necessary” for the provision of the authorities’ services as required by section 163, as non-infringing speed signs could also have been deployed. Crown Use Defence Hi-Lux sought to rely on the Crown use defence. A court may refuse to award damages if, at the date of infringement, the infringing party was not aware and had no reason to believe that a patent existed for the invention. Compusign argued that it was not aware of the Patent until receiving a letter of demand from Axent, and it had no reason to believe that there was a Patent because it was not mentioned in any of the road authorities’ specifications relating to VSLS. Innocent Infringement

For a document to be relevant to the assessment of inventive step, it must be “reasonably expected to have ascertained, understood and regarded as relevant” . Justice Kenny considered that there was no evidence that the September 2001 Specification was information that the skilled person could be reasonably expected to have ascertained because there was no evidence that they would have undertaken to source copies of VicRoads specifications as a matter of course. However, all claims of the Patent were found to lack an inventive step in light of the common general knowledge (CGK). Axent argued that only signs with a separate flashing light (rather than a partially flashing annulus) as conspicuity feature were part of the CGK. However, the evidence demonstrated that a flashing annulus was among the many options for a conspicuity feature that was part of the CGK. Therefore, the invention as claimed did not overcome a difficulty or cross a barrier as is required to establish an inventive step, because the feature was known and there was no real evidence that it was more effective than a separate flashing light. Justice Kenny rejected Hi-Lux and Compusign’s submissions that Axent was not entitled to the invention on the basis that the VicRoads employee to whom the concept of a partially flashing annulus was first demonstrated was a co-inventor. Justice Kenny also decided that Compusign and Hi-Lux did not discharge their burden of proof with respect to the lack of the best method ground. CONCLUS ION This lengthy decision canvasses a number of patent law issues, but in particular provides useful direction in respect of some less-frequently discussed aspects of patent law, including the crown use defence, prior use defence, innocent infringement and the grace period (as it applied in October 2002). The decision also provides lessons in drafting, as clear language must be used in the claims if the intention of the patentee is to encompass that have the “capability” produce the desired result. Entitlement and Best Method

The priority date of the Patent was October 2002.

Before filing the patent, Axent had demonstrated the idea of a VSLS with a partially flashing annulus to a VicRoads employee. Once it was confirmed that such signs would meet regulatory requirements, a specification was published (“September 2001 Specification”) in October 2001 that described such VSLSs. Axent argued that the September 2001 Specification should be excluded from the prior art base because: – the invention was made publicly available without Axent’s consent as it had disclosed its invention confidentially to VicRoads during the demonstration, the September 2001 Specification was published in breach of that duty of confidence, and the Patent was filed within 12 months of the publication of the September 2001 Specification (s 24(1)(b)), and – the information was provided by Axent to the State and the publication of the September 2001 Specification was derived from information provided to the State (s 24(2)) Justice Kenny rejected Axent’s submissions. The evidence showed Axent did not take issue with the inclusion of the relevant information in the September 2001 Specification and made no attempt to notify VicRoads that it considered the information was confidential after it was published. Therefore section 24(1)(b) was not established. Section 24(2) also did not have a “reach through effect”, and only protected disclosures from the patentee (or authorised person) to the State/Commonwealth, and not to subsequent disclosures made by the State/Commonwealth to third parties. Justice Kenny, therefore, considered the September 2001 Specification formed part of the prior art base for novelty as there was no evidence to suggest that recipients of the September 2001 Specification were not free to use that information as they pleased. Justice Kenny considered that the independent claims and some dependent claims were not novel in light of the September 2001 Specification.

BINHDU HOLAVANAHALLI Associate

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WRAYS’ TRADE MARK TEAM ELEVATED TO SILVER

RANKING IN THE 2021 EDITION OF WTR1000

We are thrilled to announce that Wrays’ Trade Marks team have once again been recognised in the World Trademark Review 1000: The World’s Leading Trademark Professionals.

The WTR 1000 research directory, which focuses exclusively on trademark practices and practitioners, has firmly established itself as the definitive ‘go-to’ resource for those seeking world-class legal trademark expertise.

Rising from a bronze position in the rankings to silver, the team also received commentary reflecting on the quality of their work and client relationships:

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After growing its IP practice for a century, independent IP firm Wrays has become one of the largest of its kind in Australia. Clients rely on the team “for honest and open dialogues, as well as timely action upon instruction”. Head of the trademarks team Jennifer McEwan “offers clear and detailed advice on trademark issues. She has proven to be a formidable and successful attorney, acting with patience, care and foresight.” Experienced in both contentious and non-contentious matters, Marie Wong’s expertise attracts influential names in the pharmaceutical, wine, construction and fashion industries.

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Wrays congratulate Principal and Practice Group Leader, Jennifer McEwan and her team for their outstanding achievement. We would also like to take this opportunity to thank our clients for their ongoing support of the firm’s growing and evolving strength in the trade marks field.

ROB PIERCE Chief Executive Officer

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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 into 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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