IP Spotlight 9 February 2021

IP SPOTLIGHT NEWS FROM AUSTRALIA

9 February 2021

COVID: PERTH START-UP DEVELOPS INNOVATIVE MASS COVID-19 SCREENING TECHNOLOGY

Western Australian start-up Avicena Systems is behind an innovative COVID testing technology, which has the potential to deliver a rapid, low-cost and large-scale alternative to the current screening system. The state of the art technology has the ability to test 100,000 people a day and provide a result in just half an hour. To put that into perspective, 300 machines could test the entire population of the United States in just 10 days. Unlike the current PCR-based COVID screening systems that are being used around Australia, the Avicena machine relies on advanced genome-based technology and eliminates the need for nasal swabs, by simply using saliva samples. An advantage of the technology is that it can be deployed to remote locations and provide on-site results with the potential for use at concerts, major sporting events and high traffic zones such as airport terminals. Wrays worked alongside Avicena assisting with the provision of patents, registering trade marks and providing commercial advice. The work was a collaborative effort, drawing upon the expertise from the firm’s Life Science, Engineering, Commercial and Trade Mark teams. Wrays’ Chairman Gary Cox commended the Wrays client saying “Congratulations to the whole team from Avicena. This is

another great example of the Western Australian Life Science community producing cutting edge world-class medical technology that has the potential to deliver enormous economic, health and social benefits globally”. Health Minister Roger Cook is a keen supporter of the new technology stating “Western Australia’s ability to screen large groups of people quickly and accurately will be key to our success at managing future COVID-19 outbreaks. The testing would be particularly valuable for screening people without symptoms”. Mr Cook also said “The State Government’s support of this project is in line with its commitment to back local innovation that has the potential to improve the health, wellbeing and prosperity of the WA community”. The machine has already generated significant overseas interest with Hungary, the first country to make a purchase. The Western Australian Life Science community is optimistic that the machine could be a key element in the reopening of borders and life returning to normal.

GARY COX Chairman of Wrays

This requirement will affect not only those seeking to register new domain names, but also existing holders of com.au and net.au names, as eligibility for continuing registration will need to be demonstrated at the time of renewal, come implementation of the new rules from 12 April 2021. This means that, in particular, international traders who do not otherwise have a Australian commercial presence may need to review and revisit their trade mark and domain name strategies and ensure that they have a relevant Australian trade mark to support each domain name which they wish to register or renew. The potential forced divesting of domain registration within this space may also provide discerning traders who have, to date, been prevented from registering their preferred domain name(s) an opportunity to secure these domain names if they are unable to be renewed by their current holders. ORG . AU DOMA I N NAMES FOR NOT- FOR- PROF I T ORGAN I SAT IONS Within the org.au space reserved for not-for-profit entities (NFPs), the new rules will see unincorporated associations which are not on the Register of Charities established by the Australian Charities and Not for Profit Commission (ACNP) no longer eligible to hold a org.au domain name. Instead, these unincorporated associations may need to seek registration within the asn.au space. NFPs wishing to hold onto their org.au domain names may otherwise need to consider incorporating as an association or setting up a non- for-profit company limited by guarantee. That said, changes to allocation rules within the org.au space will broaden the range of names available to be registered by eligible NFPs. LAUNCH OF THE NEW SECOND LEVEL . AU DOMA I NS Shorter “second level” domain names – eg, wrays.au – are likely to become available for registration by Australian internet users by the middle this year. However, due to their expected popularity, and in order to recognise existing holders’ rights within the com.au, net.au and other “third level” namespaces, a priority allocation process will apply to initial registration in the .au namespace. Unlike existing third level domains which have more stringent eligibility and allocation rules, anyone who has an “Australian presence” will be eligible for a second level .au domain name licence once launched. An Australian presence will generally be established by an Australian citizen or entity, or an owner of an Australian trade mark (provided that the domain name

being applied for is an exact match of the words which are subject of the Australian trade mark if the registrant does not otherwise have an Australian presence). Importantly (for those with a direct Australian presence at least), the .au namespace will open up the possibility of registering any available domain name for any purpose, provided that it does not appear on the list of reserved names. However, priority will be provided during a sunrise period (6 months from the date of the .au launch) to existing “third level” domain name holders (eg, for the equivalent .com.au, . net.au, .org.au, .id.au, .gov.au or .edu.au domain name). For example, if you already hold wrays.com.au, you will have priority to register wrays.au – subject to whether other third parties hold an earlier created domain name (eg, wrays.net. au) for the same mark, in which case it may be necessary to contact the other holder(s) to negotiate and/or formulate a strategy to secure the desired domain name. WHAT NOW FOR AUSTRAL I AN DOMA I N NAME HOLDERS? – If you trade online in Australia, but do not otherwise have an Australian presence (via an ACN, ABN or ARBN, for example), you should ensure that you hold or have applied for an Australian trade mark exactly matching the com.au, net.au or .au domain name that you wish to register. – If you are an existing domain name holder and it is not an exact match of your Australian trade mark, you should take steps to ensure that you remain eligible to hold it (eg, by seeking a new Australian Trade Mark or transferring domain ownership to an entity that is eligible to hold it). – If you are an unincorporated association not on the ACNP Register of Charities (eg, a sporting club or other special interest club), you may need to consider applying for the equivalent asn.au domain name and foregoing your org.au domain. Alternatively, you may need to consider another legal structure which would allow you to remain eligible for the org.au domain name. – If you wish to obtain registration within the .au namespace, you should undertake preliminary due diligence to ensure that you will have priority (and eligibility) to apply for your desired .au domain name once launched later this year. Please contact Wrays’ Trade Marks Group if you require any assistance with these matters.

UPCOMING CHANGES IN THE .AU DOMAIN SPACE

12 April 2021 will see new rule changes in the Australian “.au” domain space, with potential to affect holders of existing com.au, net.au and org.au domain names, as well as eligibility to apply for new domain name registrations in this space.

In addition, a new general .au domain is likely to be launched some time later in 2021, with the launch date yet to be determined (but possibly in around July 2021).

Upcoming changes to eligibility criteria for com.au and net.au domains will require domain holders who rely only on an Australian trade mark to establish Australian presence (ie, primarily foreign companies) to ensure that their domain name is an exact match with their Australian trade mark and not simply “closely and substantially connected”, as is acceptable at present. This means, for example, that the owner of an Australian trade mark for WRAYS INTELLECTUAL PROPERTY who does not otherwise have an Australian presence will not be able to register or renew domains for wrays.com.au or wraysip.com.au, but will only be eligible for wraysintellectualproperty.com.au, being an exact match with the words of the trade mark.

COM . AU AND NET. AU DOMA I N NAMES FOR

COMMERCI AL ENTERPR I SES In general, domain names in the com.au and net.au domain space are reserved for individuals or commercial entities trading within Australia. An Australian commercial presence can generally be established by submitting the individual or company’s ABN, ACN or ARBN, or by a foreign company submitting details of its Australian trade mark registration or application as recorded on IP Australia’s database.

MARIE WONG Principal

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OVERLAPPING ISSUES: Evidence on insufficiency can lead to a lack of entitlement claim

SARB’S CASE FOR LEAVE TO AMEND SARB submitted that C’s evidence regarding the work he had done on developing parking stay detection as described in the patents was relevant to supporting its pleas of invalidity on the grounds of insufficiency and lack of best method. In particular, SARB submitted that W was not able to produce a working embodiment of the claimed invention and C performed complex, detailed and innovative work to enable VMS to produce a working embodiment. Besanko J understood SARB’s argument to convey that C’s work involved inventive effort without which VMS could not make the invention work, the work not being described in the specifications. The facts and issues relating to the existing pleas of insufficiency and lack of best method and the facts and issues relevant to the proposed plea of a lack of entitlement appeared to overlap. C’s evidence was relevant to all of these issues. VMS CASE AGA I NST LEAVE TO AMEND VMS argued that the proposed plea for lack of entitlement lacked proper particulars. Further, C’s evidence lacked clarity as to the nature or extent of his contribution (if any) to the invention and the case was such a weak one that the judge could be satisfied that the patents would not be revoked. CONS I DERAT ION I N V I EW OF LAW ON I NVENTORSH I P The issue of inventorship involves two inquiries, settled in the case law: 1. The court must determine the nature of the inventive concept of the patent in issue which raises an issue of construction of the patent specification. 2. The court must analyse whether the alleged inventor or co-inventor made a qualitative contribution that had a material effect on the inventive concept. VMS had submitted that the proposed entitlement evidence was unclear as to the nature of alleged inventor C’s contribution and that SARB’s case was not apparent on the evidence or the proposed plea. VMS further submitted that there was no evidence that C had raised any issue of entitlement previously and pointed to two documents – a Share Subscription Agreement and a Confidential Disclosure Deed both relating to the patented parking detection system – of which the first identified W as the sole inventor and the second provided that C would not assert rights of any nature over confidential information relating to the parking detection system.

Besanko J did not consider the proposed plea of lack of entitlement to be inadequate. The plea was properly particularised and arguable even in view of the substantial evidence of C’s acknowledgement of W as the inventor of the patented invention. The issue was one of fact and law for determination at trial, not at interlocutory hearing. OTHER FACTORS – PREJUD I CE TO VMS AND SARB EXPLANAT ION OF NEED FOR AMENDMENT On prejudice, Besanko J opined that an important matter in favour of granting leave to amend was the factual overlap between the existing pleas of insufficiency and lack of best method and the proposed plea of lack of entitlement. Further, though VMS would need to adjust its planning for the trial, it had not asserted that it could not be ready if leave to add the plea of lack of entitlement was granted. SARB was on less sure ground on its delay in seeking leave to amend but, in the end, this did not outweigh factors in favour of granting leave to amend. CONCLUS ION The case helpfully identifies that a plea of lack of entitlement must identify: – The relevant claim features – here the features of the method, apparatus or system for parking detection. – The claim features invented by the putative inventor(s)/ co-inventor(s) and already named inventor(s). While a Federal Court case, following this guidance will also be helpful in patent opposition cases where a lack of entitlement issue is raised. Further, parties should be aware that evidence on insufficiency or best method issues may raise contentions about inventorship with the issues, in an appropriate case, potentially being considered overlapping.

The foregoing article discusses the recent Australian Federal Court decision reported as Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 6) [2020] FCA 1866. Vehicle Monitoring Systems (VMS) sought relief from SARB Management Group and the City of Melbourne (collectively SARB) for infringement of patents relating to parking overstay detection for which Fraser Welch (W) was named inventor. SARB cross-claimed seeking revocation of the VMS patents on various grounds including insufficiency and lack of disclosure of best method. SARB, having made two previous amendments to its cross- claim, sought leave to amend its cross-claim to raise VMS lack of entitlement to the patents. VMS opposed leave to make this amendment.

RELEVANT FACTORS ON LEAVE TO AMEND CROSS- CLA IM Besanko J outlined three factors going to whether leave to amend should be granted to SARB: 1. The nature of the amendments and their importance to SARB as the cross-claimant. 2. The prejudice to VMS as the cross-respondent if the amendments are allowed. 3. SARB’s explanation for seeking the amendments at this stage in the proceeding. Besanko J considered the proposed lack of entitlement plea, based on the allegation that VMS had not derived title from an alleged inventor: Peter Crowhurst (C) who had given evidence on sub poena. The lack of entitlement plea is reproduced in full in the decision.

RICHARD BADDELEY Principal

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– Each of these UK rights will: • Be recorded on the relevant UK register and have the same legal status as if you had applied directly in the UK, including the right to be assigned, licensed, challenged or renewed separately from the original EUTM/RCD. • Keep the original EUTM/RCD filing date and the original priority or UK seniority dates. – You do not: • Need to do anything if your EUTM/RCD is registered. Your UK right has already been cloned. • Receive a UK registration certificate, but details can be located online and saved (NB: there will be a delay in updating the system to display re-registered international designs). – You DO need to: • within nine months, apply in the UK for protection for EUTMs or designs which are not yet registered. Fees apply. Unregistered Designs – Will continue to be protected in the UK for the remainder of their three-year term. – A supplementary unregistered design (SUD) will become available in UK law. Patents – As the EPO is not an EU agency, leaving the EU does not affect the current European patent system. Existing European patents covering the UK are also unaffected. Supplementary Protection Certificates (SPCs) – SPCs are granted as national rather than EU-wide rights. – Pending SPC applications will be examined under the current framework. Changes affecting SPCs due to the Northern Ireland Protocol – You will need to check whether your marketing authorisation is valid for the whole of the UK, or just Northern Ireland or Great Britain. – An application for an SPC must still be filed with the IPO within six months of your first authorisation.

Parallel trade between the UK and the EEA

IP IN A POST- BREXIT WORLD

– Use of an IP right in the UK may no longer be considered exhausted in the EEA, meaning that exporting IP- protected goods from the UK to the EEA might need the right holder’s consent. – Currently, the reverse does not apply, meaning that parallel imports into the UK from the EEA will be unaffected. – Exporters: We recommend checking to see whether you currently export legitimate, IP-protected goods to the EEA. – IP Holders: We recommend seeking legal advice if your IP- protected goods are parallel exported from the UK to the EEA. – UK’s system of parallel trade is under review, meaning that the IP exhaustion regime for the UK may change in the future. Copyright – International treaties on copyright mean that protection of most UK and EU copyright works (such as books, films and music) will be unaffected. – Certain cross-border copyright arrangements that are unique to EU member states no longer apply to the UK. Geographical Indications

– The existing relationship between trade marks and GIs is maintained.

After years of negotiations and controversy, on 1 January 2021 the Brexit transition period finally ended, and the UK left the European Union.

– European patent attorneys based in the UK continue to be able to represent applicants before the EPO. – Across all IP rights, a UK address for services is required for new applications and requests to start contentious proceedings before the IPO.

DONNA MEREDITH Associate

Below, we break down the new post-Brexit IP landscape (subject to legislative implementation).

CHANGES TO I P R IGHTS Trade marks and Designs

Attorney representation and address for services

– All registered EU trade marks (EUTM) and Community Designs (RCD) were converted to comparable UK rights. This includes international TMs and Designs designating the EU.

– UK legal representatives can continue to represent their clients before the EUIPO in ongoing cases only. – Client with new applications or proceedings at the EU Intellectual Property Office (EUIPO) will require EEA (European Economic Area) representation.

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AN OPPOSITION UPDATE FROM IP AUSTRALIA CCL SECURE PTY LTD V DE LA RUE INTERNATIONAL LIMITED [2020] APO 56

The present case relates to an opposition filed against Australian patent application 2014266991 (the Opposed Application) filed by De La Rue International Limited (the Applicant). The Delegate of the Commissioner of Patents was Mr. Xavier Gisz. The Opponent was CCL Secure Pty Ltd. THE CLA IMED I NVENT ION The invention relates to security documents having optically variable effect generating relief structures on either first and/ or second sides of the document, wherein the optically variable effect generating relief structures are formed using a particular cast-cure process common to both sides of the security documents. LACK OF CLAR I TY The Opponent objected to the term “common cast-cure”, based on: (1) not being a term of the art and (2) meaning actually “commonly used cast-cure process”. In reply, to overcome the objection, the applicant clarified, relying on the term as used in the specification, that the cast-cure process is a single process common (i.e. one and the same) to all relief structures of the security document. LACK OF I NVENT I VE STEP The citation WO2008/031170 provided by the Opponent was thrown out. It did not prove lack of inventive step; however, the Delegate independently raised Australian patent 2010294467 against claim 7. The Delegate reaffirmed that the right question is: was it obvious? - Not whether it was simple or complex to arrive at the invention. Claim 7 was considered inventive because: (1) no evidence was presented that the subject matter of claim 7 could be created using only routine steps and (2) it presents complexity to form optically variable relief structures on both sides of the document in the light of no conventional security document having relief structures on both sides. GROUNDS OF OPPOS I T ION The grounds of opposition were lack of clarity and lack of inventive step.

OUTCOME AND COSTS The opposition was, at least partially, successful because at least claim 7 was considered inventive by the Delegate. The Delegate in the final conclusions of the decision gave the applicant two months from the date of the decision to propose suitable amendments. However, the Delegate considered that the success should be assigned to the Delegate, because the Delegate raised the relevant prior art - Australian patent 2010294467. This resulted in the Delegate not awarding all Costs; instead, only a portion of the costs up to acceptance of particular amendments were awarded. With respect to the potential amendment the applicant could file, a suitable amendment would be to amend all independent claims to incorporate the relevant integer(s) of the claim that has been considered new and inventive for the patent to proceed to grant. In particular, the suitable amendment would consist in including the content of claim 7 into sole independent claim 1. This particular amendment would limit the scope of protection of the patent to a method for manufacturing a security document having a plurality of optically variable generating relief structures on both surfaces of the security document. The applicant has up to 21 February 2021 for proposing to the Delegate a suitable amendment. Upon conducting a patent search at the Australian Patent Office’s patent search facility, it is noted that no filing of an amendment have been published at the date of this article. KEY CONCLUS IONS 1. Always clarify in the description of the invention, a word that has several meanings, to confirm its intended use to remove ambiguities during claim construction. 2. Allowing a Delegate to submit relevant prior art during an opposition is potentially detrimental to the opponent’s cost recovery. 3. In the assessment of inventive step, the correct question is not whether it was simple or complex to arrive at the invention but whether the invention as claimed was obvious.

PETER HILLE Senior Associate

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COVID-19 UPDATE IP AUSTRALIA FURTHER EXTENDS ITS STREAMLINED EXTENSION RELIEF MEASURES UNTIL 28 FEBRUARY 2021

IP Australia is continuing to provide free extensions of time of up to three months until 28 February 2021 if a deadline cannot be met as a result of a disruption caused by the COVID-19 pandemic.

Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time may be available if needed. The Covid-19 relief offered by IP Australia is a streamlined process and no declaratory evidence or fee is required; it is as simple as ticking a box. The relief applies to a variety of processes for patents, trade marks and designs; including deadlines associated with oppositions and hearings processes (such as periods to file evidence), although there are some exceptions. For example: these extensions of time do not apply to deadlines for payment of renewal fees. However, the usual 6-month grace period still applies. For trade marks, an extension is also unavailable for filing a divisional application.

Whether or not IP Australia continues to provide pandemic relief will remain to be seen. However, it is possible that relief will continue where ever mass global disruption persists.

DONNA MEREDITH Associate

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