IPTA DECEMBER 2007

ContentsNotice - Academy of Education 2

Notice - Candidate Results 3

Report - Case Law 4 - 5

Report - Visit to China 6

Notices - Meeting with IP 7 - 12

Australia Executive

Oddfellow 13 - 15

Notices to members 16

Advertisements 17 - 21

So ends another year of changes. It seems to have

been a busy year with changes to the Patents

and Trade Marks Acts, changes in hand for the

regulatory regime for patent and trade mark

attorneys and incorporation of patent and trade

mark attorney firms. IP Australia has a number of

projects in train which promise to make next year

equally challenging. These include changes to the

PCT and Singapore Treaties, a number of Free

Trade Agreements, the Patent Prosecution Highway

and the INTA/IP Australia Trade Marks Regatta.

All of these mean that we need to get a

good rest over the Christmas break.

I wish all of our readers a very

relaxing Christmas and strength to

face another year.

Alun Thomas

Editor

From the editor’s desk

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Academy of EducationNotice to Students

2008 Academy Subjects

Please find attached application forms for the Drafting and Interpretation & Validity courses for 2008. In addition to the tutorial sessions, each course also requires the completion of assignment work.

Dates are as follows:

Drafting19 to 22 February 2008 (held in Melbourne)

19 to 22 August 2008 (held in Sydney)

Interpretation & Validity25 to 28 February 2008 (held in Melbourne)

25 to 28 August 2008 (held in Sydney)

Venues:Melbourne Australian Institute of Management

181 Fitzroy Street, St Kilda

Sydney Australian Institute of Management

215 Pacific Highway, North Sydney

Please note the closing date of applications is 11th January, 2008.

Advice on the Patents System course will be forwarded at a later date.

Yours sincerely,

Graham Cowin

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CANDIDATES WHO HAVE COMPLETED ALL PATENT ATTORNEY TOPICS IN 2007(nb: those known as at 12 December)

MELBOURNESimone Calleja Griffith Hack

Tony Davis F B Rice

John Landells Allens Arthur Robinson

Kristy McCamley Davies Collison Cave

Daniel McKinley Phillips Ormonde & Fitzpatrick

Sam Mickan Davies Collison Cave

Michael Pernat Morcom Pernat

Lachlan Wilson Watermark

SYDNEYNimish Gupta Watermark

David Lee F B Rice & Co

Lachlan Mullane Hodgkinson McInnes Patents

Mark O’Mally Griffith Hack

Leanne Oitmaa Watermark

Lisa-Anne Parker URS Australia

Adrian Richards Halfords

Susan Stopford Watermark

Michael Zammit Shelston IP

QUEENSLANDAmanda Lim Wynnes

PERTHCarol Kane Watermark

Ashley Dickson Watermark

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Brother Industries Ltd and Anor v Dynamic Supplies Pty Ltd [2007] FCA 1490 Federal Court of Australia, Tamberlin J, 26 September 2007

Trade marks – consent – Section 123 of the Trade Marks Act 1995

The Applicants instituted proceedings against the Respondent alleging misleading and deceptive conduct and infringement of its various trade marks comprising the word “BROTHER”.

The Respondent had imported printed cartridges with the words “BROTHER” printed on the packaging. The products were in copy packaging but were “genuine” printer cartridges which the Respondent alleged it had sourced from the Applicants’ related company in the United States.

The primary issue determined by the Court was the application of the defence under Section 123 of the Trade Marks Act. In finding infringement, the Court found that, as a matter of fact, the Respondent had not shown that it sourced the cartridges, either directly or indirectly, from the Applicants. The Court also stated that, in any event, the fact that the cartridges were sourced from the related company did not itself imply consent for the purposes of Section 123.

In formulating injunctive orders, the Court awarded a confined injunction which prohibited the sale of the printer cartridges in question, as opposed to all printer cartridges bearing the relevant trade mark. See the decision on scope of injunctive orders at [2007] FCA 1694 (9 November 2007).

Occupational and Medical Innovations Ltd v Retractable Technologies Inc [2007] FCA 1364 Federal Court of Australia, Dowsett J, 30 August 2007

Unjustified threats of patent infringement – Section 128 Patents Act 1990

The Applicant alleged that the Respondent had made unjustified threats of patent infringement. The proceedings focused on correspondence from the Respondent’s solicitors alleged to constitute such threats.

A threat may be by direct words or implication where it coveys to a reasonable person that the author (or their client) intends to bring proceedings. The Court stated that to succeed in an action for groundless threats “..the aggrieved party, .... must first establish the making of a threat.... the threat must be made in Australia, in that it must be received in Australia and relate to an Australian patent .....”

The Court observed that where a solicitor who indicates an intention to advise a client to commence proceedings such a statement of itself does not constitute a groundless threat. Notwithstanding this, the Court construed the remaining correspondence and found one of two letters sent contained a threat of infringement proceedings. The burden then shifted to the Respondent to show that such threats were justified and in the absence of evidence to the contrary, the Court determined the threat was unjustified.

The Court then considered the appropriate remedy and in the circumstances made a declaration that there had been unjustified threats. In circumstances where the Respondent had ceased the correspondence in question, the Court declined to grant an injunction preventing the Respondent from making further threats.

repo

rt Recent Case LawI

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Unilin Beecher BV v Huili Building Materials Pty Ltd (No 2) [2007] FCA 1615 Federal Court of Australia, Dowsett J, 24 October 2007

Patent infringement – account of profits – evidence of sales – innocent infringement

The Applicant alleged infringement of its patent and received summary judgment disposing of the question of infringement. It then sought an account of profits and the Court was asked to consider an appropriate monetary award.

The evidence presented showed that the Respondents had made significant profits by virtue of the infringements. The profits made by each Respondent were determined and the appropriate sum awarded against them individually. On the Respondents’ argument to reduce the amount payable, the Court declined to deduct any of the Respondents’ general overheads from the monetary award because no evidence was provided to show those overheads has been incurred.

The Respondents also argued that the monetary award should be reduced because they were “innocent infringers” pursuant to Section 123 of the Patents Act 1990. The Court found that there was no evidence to support this assertion. Further, the Court held that, in any event, the manner in which the Respondents had conducted the proceeding would not have led the Court to exercise its discretion under this section.

report

I Ian Horak is a barrister at the Victorian Bar. He is also a Patent and Trade Marks Attorney and member of the Institute. Thecases are those that should be of interest to practitioners. The full text of each of these decisions may be found on the AustLII case law database at www.austlii.edu.au

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Visit to ChinaMembers of IPTA recently visited All China Patent Agents Association in Beijing.

Pictured are Mr An, Deputy Director of Membership Dept ACPAA, David Griffith, Vice President IPTA, Mr Ma, President ACPAA., Tony Ward, President IPTA , Ms Li, Secretary General ACPAA

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Information from IP Australia’s meeting with IPTA ExecutiveProfessional Standards Board for Patent and Trade Marks Attorneys - UPDATE

1. New members on the Professional Standards Board Patent and Trade Marks Attorneys. The Minister for Industry Tourism and Resources recently appointed 5 new members to the Professional Standards Board. The new members are Ms Karen Sinclair (Watermark Melbourne), Dr Mark Horsburgh (Fisher Adams Kelly Brisbane), Prof. Jill McKeough (Dean UTS Law School Sydney), Ms Anne Makrigiorgos (Griffith Hack Melbourne), and Ms Margaret Brown (Minters Brisbane). The Chair of the Board, Prof. Carrick Martin, as well as Mr John King were reappointed to the Board for a second term. Ms Julie balance (Baldwins Auckland) and Mr David Webber (Davies Collison Cave Melbourne), were not up for reappointment at this time and together with Dr Ian Heath, the ex-officio member, complete the 10 member Board.

2. Changes to the attorney regulatory and disciplinary regime. Drafting of amendments to the Patents Regulations 1991 and the Trade Marks Regulations 1995 has now been commenced by the Office of Legislative Drafting. These amendments will effect major changes to the regulatory and discipline regimes for patent and trade marks attorneys. Changes include the introduction of compulsory continuing professional education; tighter pre-registration employment requirements and revised discipline procedures. It is anticipated that these changes will take effect in 2008 with July 1 2008 being the likely commencement date. Information on the changes will be provided by the Board Chair and Secretary at information sessions planned in most states in early 2008. (Brisbane has already been covered).

3. Incorporation of patent and/or trade mark attorney practices and introduction of compulsory professional indemnity insurance. A consultation paper has been released in October in relation to the incorporation of attorney practices and is available on the IP Australia and PSB web-sites. The consultation period concluded on 30 November. The paper also includes the issue of possible introduction of compulsory professional indemnity insurance.

Enforcement Issues

TM Enforcement

• ACIP in the review of trade mark enforcement recommended penalties under the Trade Marks Act be reviewed to ensure they are an effective deterrent to trade mark infringement and counterfeiting. The Government in December 2005 accepted this recommendation.

• The Copyright Act was amended early in 2007 to increase the penalties and offences for copyright infringement and counterfeiting, and introduced a three tier scheme including summary, indictable and strict liability offences. Exemplary damages were also introduced.

• IP Australia is currently considering the penalties under the Trade Marks Act and the possibility of introducing a similar regime to that in copyright. Exemplary damages will also be considered.

• IP Australia plans to undertake public consultation on trade mark enforcement early in 2008.

TM border control• Also from the trade marks enforcement review by ACIP, the Government agreed to:

o enabling Customs to disclose information to help identify the source of goods, and

o consider allowing Customs to seize similar or closely related goods.

• IP Australia and Customs are currently considering these issues.

• In addition to these, Customs, Attorney General’s Department and IP Australia have commenced discussion on possible further measures for strengthening border control.

• It is not possible at this stage to give details of these further measures, but once finalised, it is anticipated that public consultation on these will commence in early 2008.

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Anti-Counterfeiting Trade Agreement• Japan, Switzerland, the EC and the US have proposed development of a new plurilateral treaty - Anti-

Counterfeiting Trade Agreement (ACTA) - to strengthen IP enforcement to combat counterfeiting and piracy.

• The ACTA is at a very early stage, with a second round of technical discussions scheduled for early December 2007. No date has been set for formal negotiations, although this is likely to occur in early 2008. There is no draft text as yet.

• With the Australian Government in caretaker period, Australia has asked not to be named as a participant by proponents of the proposed ACTA.

• DFAT has begun domestic stakeholder consultations about the ACTA proposal, releasing a discussion paper on 13 November 2007 with submissions requested by 3 December 2007.

• With the Australian Government in caretaker period, Australia has asked not to be named as a participant by proponents of the proposed ACTA.

• DFAT has begun domestic stakeholder consultations about the ACTA proposal, releasing a discussion paper on 13 November 2007 with submissions requested by 3 December 2007.

Treaty Actions 2007

IP Australia currently has the following treaty actions underway.

International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty

Extension of Current Agreement

The current agreement expires on 31 December 2007. IP Australia and the International Bureau have agreed on an Agreement which extends the current agreement until 31 December 2008 or the date on which our treaty processes have been concluded whichever is earlier.

This Extension Agreement was tabled in Parliament and the Joint Standing Committee on Treaties (JSCOT) issued a positive report. Following the requisite sitting days Executive Council approval was granted. This extension Agreement was signed in Geneva by DG Dr. Ian Heath and the WIPO Director General Dr. Kamil Idris during the WIPO General Assemblies (24 September-3 October 2007). It will then come into force on 1 January 2008.

New 2008-2017 ISA/IPEA Agreement

As mentioned previously, once the draft agreement for the next 10 years is in order, IP Australia will consult with IPTA and other interest groups as part of Australia’s domestic treaty processes.

Singapore Treaty on the Law of Trademarks, the Patent Law Treaty and formal acceptance of several other WIPO treaties.

As discussed at the last IPTA meeting, the Australian Government is considering joining the Singapore Treaty on the Law of Trademarks (Singapore Treaty) and the Patent Law Treaty (PLT) and formally accepting amendments designed to streamline the administration provisions of several other WIPO treaties.

Following stakeholder consultations in June 2007, documents recommending ratification to the Singapore Treaty on the Law of Trademarks (Singapore Treaty), accession to the Patent Law Treaty (PLT) and notifying formal acceptance of amendments to several other WIPO treaties designed to streamline administration provisions, were tabled in Parliament on 15 August 2007 for the first two and 11 September 2007 for the WIPO amendments.

As Parliament is now in Caretaker mode, no progress will be made on these treaty actions and we will need to re-table the documents after Parliament recommences.

FREE TRADE AGREEMENTS (FTAs) - UPDATE

Background:

IP Australia is continuing negotiations on FTAs with China, Malaysia, the ASEAN, New Zealand and Japan as well as working towards negotiations on FTAs with the Gulf Cooperation Council (GCC) and Chile.

Progress:

• China – tenth round – 22-26 October in Canberra. At China’s request, talks on IP did not go ahead.

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Treaty Actions 2007 cont...• Malaysia - Departure of key Malaysian negotiating personnel saw the postponement of the scheduled March

2007 negotiating session. An inter-sessional meeting took place in October with another envisaged for early 2008, in anticipation for a full round by mid-2008.

• ASEAN/NZ – IP Australia attended the 10th round of the AANZFTA Trade Negotiations in Perth in late July 2007. IP experts from seven of the ASEAN countries attended. There was good in-depth discussion of the joint Australia-NZ text.

• ASEAN/NZ - The 11th meeting took place in Kuala Lumpur in September. ASEAN did not engage on intellectual property issues in this round. Next meeting scheduled for 10-14 December 2007 in Siem Reap, Cambodia.

• Japan – second round of negotiations was held in Tokyo 6-10 August. Talks on IP were positive and constructive.

• Japan - third round of talks took place in Canberra in early November. Negotiations on IP continue to be constructive.

• GCC - The first round of negotiations was held in Australia 31 July-1st August. An agreement to include an IP chapter was reached.

• GCC - Second round of negotiations held in Riyadh, 20-22 November.

• Chile – The first substantive round was held in Canberra 7-9 August. The round built on preliminary meetings early in the year. Preliminary discussions on IP occurred. IP continued to be discussed in the second round, Santiago, Oct 8-12.

• Indonesia Australia FTA Feasibility Study - Prime Minister Howard and his Indonesian counterpart, President Yudhoyono, announced in July that a joint feasibility study would be undertaken into the merits of a free trade agreement (FTA) between Australia and Indonesia.

Consultations and submissions: • IP Australia is still keen to receive comments especially in regard to the registration process and enforcement

of IP rights in countries with which Australia is currently seeking closer trade relationships.

China Advocacy program: • The segment of IP Australia’s website devoted to providing information on protecting IP in China has been

further developed with an additional factsheet and case studies.

• The program is now looking to target specific sectors of interest for Australian business in the China market to encourage such businesses to develop IP strategies,

Patent Prosecution Highway

Background:

IP Australia has been invited to enter into a pilot of the Patent Prosecution Highway (PPH) with the United States Patent and Trademark Office (USPTO). The PPH will allow patent applicants who have received an examination report by either IP Australia or the USPTO to request expedited examination of a corresponding patent application filed in the other country.

The aim of the pilot initiative is to test applicant demand for the PPH for speeding up examination of patent applications and to quantify the quality and efficiency gains to be expected.

The PPH is a work sharing initiative borne out of the Trilateral Offices, and primarily developed by the Japan Patent Office (JPO) and USPTO. The JPO describes the aim of the PPH is to help “..applicants acquire foreign patents more easily and quickly, while reducing the examination workload and improving the quality of examination by enabling patent offices to make use of the results of prior-art searches and examination results of other national patent offices.”

The pilot will build upon bilateral PPH pilot programs between:

• Japanese Patent Office (JPO) and USPTO (July 2006);

• JPO and Korean Intellectual Property Office (April 2007);

• JPO and UK Intellectual Property Office (UKIPO) (July 2007); and

• UKIPO and USPTO (September 2007).

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Patent Prosecution Highway cont...The participation in the pilot is an outstanding opportunity for IP Australia to pursue our strategic vision of One Application, One Search, One Examination.

Proposed requirements - IP Australia office of second filing/examination:

There are four requirements for requesting expedited examination under the PPH pilot at IP Australia. These are:

1) • the AU application validly claims priority under the Paris Convention from one or more the corresponding US applications;

• the AU application is a PCT application which has entered the national phase and validly claims priority from one or more US applications; or

• the AU application is a divisional of an application originally filed in AU which validly claims priority from one ore more US applications.

2) At least one corresponding US application has one or more claims that are determined to be allowable/patentable by the USPTO.

3) All claims in the AU application for expedited examination under the PPH must sufficiently correspond or be amended to sufficiently correspond to one or more of those claims indicated as allowable/patentable by the USPTO or be claims that are dependent on and fall within the scope of such a claim. Claims shall be considered to sufficiently correspond where the claims are of the same or similar scope.

4) Examination has been requested but not yet commenced – i.e. a first report has not yet issued.

Proposed documents required for requesting that examination be expedited examination under the PPH pilot at IP Australia are:

• Request for examination or modified examination (if not already requested);

• Request for examination to be expedited under the PPH program;

• A copy of all US office actions on the corresponding USPTO application(s) or a request that IP Australia obtain the documents required from USPTO;

• A copy of the claims found to be patentable by the USPTO or a request that IP Australia obtain the documents required from USPTO; and

• A completed claim correspondence table showing the relationship between the claims of the AU application and the claims found to be patentable by the USPTO. Claims shall be considered to sufficiently correspond where the claims are of the same or similar scope.

Proposed requirements - USPTO office of second filing/examination:

These are expected to be similar to above for IP Australia office of second filing. In addition:

• The applicant may notify IP Australia that they intend to participate in the PPH pilot with the USPTO; and

• IP Australia will then forward, on demand or if requested by the applicant, the required documents electronically to the USPTO.

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USPTO initiative

BackgroundAn agreement was signed in January 2007 between IP Australia and the USPTO whereby it was agreed that IP Australia would perform international searches under the PCT on behalf of the USPTO on a fee for service basis. We started receiving cases in March 2007. The searches are distributed amongst the electrical, medical, pharmaceutical, chemical and biotechnology fields. It was agreed that the number of cases provided by the USPTO could vary on a month by month basis but could increase up to 120 cases per month over the life of the agreement. The work is being reviewed by the USPTO to assess compliance against agreed quality standards.

Progress to date

Up to the end of November 2007, a total of 390 search requests have been sent to IP Australia. At the beginning of November, 155 of these had already been accepted. During this time a number of issues have arisen. Some of these have been resolved but a number of practice differences are still the subject of ongoing discussion. These include:

• Searching broad claims, for example Markush and genetic sequence type claims in the chemical/biotechnology areas and the extent to which the search is restricted

• Extent of evidence required for well known features in dependent claims, for example whether it is necessary to provide documentary evidence or merely assert that a feature is common general knowledge

• Combining documents for inventive step purposes and the extent of information given to explain the motivation to combine the documents

A video conference was held on 30 November 2007 to further progress these issues.

WIPO Group B+ Outcomes

Background:

In light of the failure of the Standing Committee on the Law of Patents (SCP) to achieve progress on substantive patent law harmonisation, the informal grouping of industrialised nations at WIPO, together with member states of the European Patent Convention (collectively known as Group B+), has since 2005 been meeting in an attempt to achieve a consensus on what has become known as the “reduced package” of issues. In 2006 the Chair of the working group on harmonisation made a proposal which included:

• Adoption of the first to file principle

• Grace period for earlier publication 12 month before the priority date with third party rights and no declaration requirement

• PCT applications form part of the “secret prior art” from their filing date

Efforts to achieve agreement this basis failed in 2006 and informal discussions continued in 2007. Significantly in April 2007 17 EPC member states presented a position paper to the EPO Committee on Patent Law setting out a “bottom line” including, among others, the elements listed above but also mandatory 18 month publication.

Update

The plenary of Group B+ met during the WIPO General Assemblies in September and considered a report on the status of negotiations. This meeting was chaired by Dr Heath.

While there was agreement that significant progress had been made, 18 month publication remains a major sticking point being considered essential to any agreement by Germany, France and others while unacceptable to the US.

Some concerns also remain in Europe concerning the grace period with the UK in particular pushed for additional transparency measures including possibly the option for a third party to request confirmation that a disclosure is graced.

No agreement was therefore possible and discussions will continue in 2008.

Separately the WIPO General Assembly adopted as the work plan for the establishment and discussion of a report on issues relating to the international patent system “considering the needs and interests of all member states”.

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IP Australia’s Legislative Program• IP Australia will be seeking to have a Bill, amending the Patents, Trade Marks and Designs Acts, presented for

consideration by the Parliament in the middle of next year.

• It is proposed that this Bill would include:

o completing legislative implementation of outstanding Government responses to a number of ACIP reports and others,

o addressing some of the high priority issues for Government eg. trade mark enforcement issues,

o incorporation of the attorney practices,

o aspects of the New Patents Model, and

o other miscellaneous aspects of IP legislation

• It is proposed to release an exposure draft of the Bill before it is presented.

INTA/IP Australia Trade Marks Regatta – Asia Pacific, and Senior Trade Marks Officials’ Forum, Sydney 2008Last year, IP Australia developed the concept of a trade mark focussed “conference week” to be held in Australia. IP Australia approached International trademarks Association (INTA) with this concept and INTA will host its first regional conference, INTA/IP AUSTRALIA TRADE MARKS REGATTA - ASIA PACIFIC, at Sheraton on the Park Hotel in Sydney on 11-12 March, 2008. The Regatta will be immediately followed (at the same venue) by the SENIOR TRADE MARK OFFICIALS’ FORUM hosted by IP Australia on 13-14 March.

IP Australia and INTA have worked together to develop a program for the Regatta that we believe will be of interest to Government officials as well as trade mark owners and professionals, making this a somewhat unique opportunity. The first session of the Regatta includes presentations from four different Government perspectives on the future of trade marks and tensions in the system. The conference will include a range of interesting sessions, with a particular focus on trade mark issues in the Asia Pacific Region. A number of the sessions will also feature a Government perspective. The Conference program also features opportunities for roundtable discussion on a wide variety of topics.

Speakers for the first session (government session) of the Regatta are:

• Lynne Beresford, Commissioner for Trademarks, U.S. Patent and Trademark Office;

• Wubbo de Boer, President, Office for Harmonization in the Internal Market; (OHIM)

• Woon Yin Liew, Director General, Intellectual Property Office of Singapore; and

• Stephen Selby, Director of Intellectual Property (Hong Kong ) and chair of the Intellectual Property Experts Group (IPEG) of the Asia Pacific Economic Forum(APEC).

This session will be moderated by Janice Luck of DLA Phillips Fox (Australia).

The details of the INTA/IP AUSTRALIA TRADE MARKS REGATTA - ASIA PACIFIC, including the full program are available at the INTA website at www.inta.org.

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Dübendorf, 16 November 2007

Dearest enemy...

There’s a curious symmetry about my last employment and my current one. MBT (as it then was) and SIKA (as it still is) were respectively the biggest and second biggest construction chemical firms in the world, and they were less than a kilometre apart in Zürich. Givaudan is the world’s biggest flavour and fragrance company, and Firmenich is either second or third biggest, and they sit a couple of kilometres apart in Vernier and Meyrin, suburbs of Geneva (the third or second, IFF, is in the USA). They coexist very amicably, try to one-up each other’s chemistry, quite happily buy the results of the other’s one-upmanship, and rarely get into conflicts. Recently they were even the joint recipients of a trophy awarded by the city of Geneva for their contributions to the local economy. There was an award ceremony in which both strutted their stuff and all present received a male fragrance (from Givaudan) and a female fragrance (from Firmenich) in a special presentation box.

Recently, we came very close to opposing a patent of Firmenich’s, because we thought it would unreasonably hinder our perfumers in the normal course of their work. So I prepared a statement of opposition – and then contacted my opposite number in Firmenich and said, hey, Maria, we both need this the way we both need coronary thrombosis, what can we do? It turned out that Firmenich’s interpretation of its own patent (one accepted by the EPO during examination) was drastically narrower than ours, so narrow that it presented no problems for us. Firmenich affirmed that this was its definitive interpretation, so the need for an opposition was avoided.

I took the opportunity to go down to Geneva to meet this opposite number. Dr. Maria Del Lurdes Salvaterra-Garcia is, as you’d somehow expect, Portuguese, not a country particularly renowned in the greater patent scheme of things. Maria had come into patents from the academic world, having been at the University of Geneva and having then joined the now-vanished Geneva firm of Pierre Ardin et Cie in Geneva, where I also once worked briefly, 10 years before her. (Back in 1975, when the PCT and the EPO were glimmering on the horizon, one of the possibilities was that Geneva would house a major examining function, so Doug Freckleton, then ICI Australia’s attorney, selected a Geneva firm, rather than a Bern or Zürich firm, hence my venture there). Unsurprisingly, we are both driven mad by unreasonable demands from large clients (which shall naturally remain nameless). Given EU and Swiss anti-competition laws, there’s no way we can or should actively collaborate, but it’s always useful to be able to have a chat about things generally and settle potentially contentious matters amicably. And it’s good to know that the person on the other end is a solid professional.

I took the opportunity when in Geneva, to wander those couple of kilometres down the road to the appropriately-named Chemin de la Parfumerie in Vernier, to visit my boss, so that we could refresh our memories as to what each other looks like. We rarely meet. He’s the company’s Head of Legal, but happily leaves all the patent work to us and never interferes – great arrangement! We in our turn seek to ensure that he always smells of roses when patent matters come up at Board level, so it all works out rather well. In any case, it’s always a pleasure to visit the Vernier site, which is both HQ and major fragrance manufacturing facility. It sits in the Rhône valley, just downriver from Geneva and it’s beautifully landscaped with mature and well-tended trees and shrubs and pretty flower beds. All production sites should look like this. It was looking its very best on a beautiful clear day. It was so clear that, when you stood at Geneva station and looked down the rue du Mont-Blanc, which leads down to the lake, there, at the end of the street, was Mont Blanc, gleaming white in the distance. Often wondered where the street name came from.

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Vive la France! Late in the evening (CET) on 9th October, something extraordinary happened – the French Senate ratified the London Agreement. So, after years of wrangling, the way to reduce EPO translation fees is now open. As you’ll know, one of the big killers of the European system is the cost of translation – it’s a major factor in ensuring that a European patent can never be as cheap as a US patent, and is therefore a major consideration when it’s time to validate a European patent. At present, validation means a translation in all cases where the language of the proceedings is not an official language of the desired country (except in those havens of patent desirability Luxembourg and Monaco). With the arrival of the London Agreement, any signatory country having one of the EPO’s official languages (English, French and German) as a national language will not need to translate the document, only provide translations of the claims in the other two official languages (already a part of the Rule 51(4) acceptance procedure). Signatories that don’t have one of these languages as official language have to designate one of the three official languages as their language for the purposes of European patent validation, with only a translation of the claims into the official language being necessary.

Of course, everyone knows what the favoured language will be, and many EPC members opposed the London Agreement, on the ground that it would make English the de facto commercial language across Europe. Spain has been a particularly big opponent, arguing (correctly) that more people in the world speak Spanish than speak French (true, but all those Latin American countries, not to mention Spain itself, are hardly powerhouses of innovation). However, now that the three big players are on board, the London Agreement will go ahead. So, end of translations for France, Germany, UK, Swizzieland and the Netherlands. Denmark and Sweden have ratified, but have yet to deposit their instruments of ratification, and Iceland, Latvia and Slovenia ratified the Agreement as part of their accession to the EPC. We await the rest.

This may help resuscitate that most celebrated corpse, the Community Patent, a single patent covering the whole of Europe, complete with centralised infringement/validity hearings. Another major bugbear of the European system is that validity and infringement are considered under national law, and the different national interpretations can mean that European patents in different countries can have entirely different scopes. The most notorious case is the Improver Remington case (“Epilady”), where the UK High Court and the German Bundespatentgericht (Federal Patent Court) came to diametrically opposite conclusions on the same facts, thus making a complete mockery of the idea of a European patent. A special division of the European Court of Justice has been mooted. However, this subject is as controversial as the language question. Hopefully it won’t take quite so long to solve.

So, we’ll get the new patent attorney we need to bring Quest in-house. Even better, he was my predecessor in this job, so he knows the business well. John and I have been part of an odd double act since he worked in my Group in Sandoz in Basel in the early 1990s. After the formation of Novartis, there was a physical parting of the ways, as I went to MBT, but we continued to help each other out. He set up the Givaudan Patent Department (with my help from the sidelines in MBT), and when he moved back to Pharma, I took his Givaudan job. The particular pharma business turned very sour indeed for him, and so we took the opportunity to invite him back. He’s a top guy and I’m looking forward to it.

In September, I was back in Belfast for the first time in years. US humorist Bill Bryson said that there were three things you can never do - you can’t beat the phone company, you can’t make a waiter see you until he’s ready to see you and you can’t go home again. Mind you, he did the last-named (and the result was the very funny “Notes from a Big Country”). But I can’t. People are great, and I love listening to the wonderful butchery of the English language performed by the Norn Ironers (“Hey, Mammy, what’s them’uns there doin’? “Hey, Mammy, what’s thon thonder?” “Ach, yer a quare geg!”). But the longer the time passes, the more foreign I feel in this, the city of my birth and youth. Having left and played in the Big League, there’s no going back.

The war is over, but the bitterness lingers on – and given recent history, this isn’t surprising. The murals on the Shankill Road remain defiantly Protestant/Unionist/pro-British. A hilarious new one celebrates the Queen Mother – it has the old girl looking distinctly wrinkly and slightly cross-eyed. 2006 was the 90th anniversary of the Battle of the Somme, so there are a few celebrating (if that’s the word) the original Ulster Volunteer Force, a force set up in the advance of the Irish Home Rule Bill to fight the British to remain British (that’s an Irish one). In 1914, the UVF joined up en masse, and as the 36th (Ulster) Division, walked into a wall of German machine gun fire on that first of July 1916. The murals seek to make the connection with the latter-day UVF, basically a Loyalist murder gang.

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Still, things have improved. If anyone had told me some years ago that Gerry Adams and “Big Ian” Paisley would one day sit not only in the same room but also at the same table within a few feet of each other, I would have regarded them as candidates for the nearest padded cell. But it happened, and for all the other things that Phoney Blair got wrong, he got that one brilliantly right and it will always stand to his credit.

It has had a dramatic effect on Northern Ireland real estate prices, which are climbing at a faster rate than those anywhere else in the UK (admittedly from a very low level). My mother nearly had a heart attack when a house down the street in poorer condition than hers went for £160,000 (ours cost £3,400 in 1967). That’s what I call a return on long-term investment! Or, as my brother put it, “The mammy’s living in a gold mine!” Even better, Northern Irish housing is regarded as below EU standard, so it’s relatively easy to get a grant to improve them. Recently my mother had a new kitchen put in and the kitchen reroofed. It cost £9,000, the Government produced £7,200 of that and we paid the rest. “Your inheritance is looking good!” said my mother. I can wait.

Winter has come early this year to Swizzieland, much to Mrs. McStea’s horror. Of course, the fact that it comes at all is a horror, but this is MUCH too early for her. By mid-November, many of the Alpine passes were blocked to traffic. The ski resort owners are rubbing their hands in glee at the prospect (they hope) of a bumper season. In addition, the Lötschberg base tunnel recently officially opened for business. This allows more rapid transit times from northern Switzerland to the resorts of Valais (places such as Zermatt and Saas-Fe), and things are looking especially good there.

I find it a shame that we patent attorneys have no patron saint. In the great lists to be found in http://www.catholic-forum.com/saints/patron00.htm#r

we do not feature. Now lawyers and attorneys at law are well covered, by no less than six saints, Catherine of Alexandria, Genesius, Ivo of Kermartin, Mark the Evangelist , Raymond of Penyafort and Thomas More. I guess they need all the help that they can get. I also find that Melbourne has a patron saint, but Sydney hasn’t, which may (or may not) explain something. Melbourne’s saint? Good ol’ Patrick. Patrick’s a versatile guy, he’s patron saint of the archdiocese of Adelaide. against ophidiophobia; against snakes; archdiocese of Armagh, Ireland; diocese of Auckland, diocese of Ballarat; archdiocese of Boston, Massachusetts; diocese of Burlington, Vermont; archdiocese of Cape Town, South Africa; diocese of Dromore, Ireland; engineers; diocese of Erie, Pennsylvania; excluded people; fear of snakes; diocese of Fort Worth, Texas; diocese of Harrisburg, Pennsylvania; Ireland; diocese of Kilmore, Ireland; Loiza, Puerto Rico; archdiocese of Melbourne, diocese of Mymensingh, Bangladesh; archdiocese of New York; Nigeria; diocese of Norwich, Connecticut; ophidiophobics; diocese of Poona, India; diocese of Port Elizabeth, South Africa; diocese of Portland, Maine; diocese of Sacramento, California and snake bites.

I guess all that’ll keep him out of mischief.

I looked for a patron saint of research; there wasn’t one, although the chemical industry has Cosmas and Damian, whoever they were. Presumably it was this lack that led the American Chemical Society some years ago, presumably at some well-lubricated function, to look for one. After some deliberation, the chosen one was none other than Don Alonso de Guzmán El Bueno, 7th Duke of Medina Sidonia, commander of the Spanish Armada, the last serious attempt to invade England. Why? Elizabethan propaganda notwithstanding, the noble Duke was a devout Christian and a brave and gallant commander. Moreover, and in complete contrast to devout Christians in high places these days, he was also a very honest man. When asked how he thought the expedition would go, he said something along the following lines: the English ships are faster and more manoeuvrable than ours, the English cannon outrange ours, and nobody can handle ships in the Channel as well as the English. BUT – he continued - the English are vile heretics, whereas we are under the protection of Holy Mother Church. Therefore, we are setting sail in the expectation of a miracle. And as this summarises exactly what researchers do, Don Alonso was the perfect candidate. Something for the next Annual Conference earnestly to deliberate upon? In the meantime, in modern business-speak, I’ll leverage my nationality to try to persuade Patrick to stretch himself a wee bit more to cover us.

And with that I wish my readers, all half-a-dozen of you, a merry Christmas and a happy, prosperous and successful 2008.

IPTAno

tice

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IPTA NOTICES TO MEMBERS VIA EMAIL 19/09/06 to 06/12/07Date To Subject

19-Sep-07 Executive Change at IP Australia

20-Sep-07 IPTA Newsletter - September edition

24-Sep-07 Relocation of IPTA Secretariat

26-Sep-07 INTA/IP Australia Conference - Sydney - March 2008

27-Sep-07 REMINDER: Call for nominations for election to auDA board

09-Oct-07 auDA releases remaining geographic names in com.au andnet.au

10-Oct-07 Firm Contacts IPTA Fellows Brochure - November Edition

17-Oct-07 VINIP - Mornington Peninsula 21-25 November 2007

17-Oct-07 IPTA/NZIPA 2008 Joint Conference - Flyer

17-Oct-07 Consultation Paper - the preferred incorporation model for patent and trade mark attorneys

17-Oct-07 auDA EGM - outcome of formal complaint investigation

18-Oct-07 VINIP - Mornington Peninsula 21-25 November 2007

22-Oct-07 Important Changes to Search Result Disclosure Regime

29-Oct-07 IPTA Essay Competition Reminder

05-Nov-07 Dr Ian Heath

07-Nov-07 IPTA Staff

12-Nov-07 IP Australia-IPONZ Comparative Examination Project

12-Nov-07 IP Australia What’s New Subscriber List

13-Nov-07 Announcement re Dr Heath

15-Nov-07 Sydney Fellows & Ordinary Members Sydney Xmas Lunch reminder

19-Nov-07 auDA releases draft strategic plan for comment

22-Nov-07 Short Courses in Searching ATMOSS Database

28-Nov-07 Office vs Attorney Sports

03-Dec-07 Student & Ordinary Members IPTA Academy 2008

03-Dec-07 auDA Media Release

06-Dec-07 IPTA/NZIPA 2008 Joint Conference

IPTA Advertisements

Patent Attorney (Biotechnology) - Brisbane

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Patent Attorney (Materials Scientist/Chemical Engineer/Process Engineer) - Melbourne

To apply please forward your application and resume to Gabrielle Eskdale, National HR & Office Services Manager, via e-mail at recruitment@davies.com.au. Mail can be sent to GPO Box 4387, Melbourne 3001Australia. If you would like to discuss this role further, please contact Gabrielle Eskdale on +61 3 9254 2777.

Please visit our website at www.davies.com.au for further information about our firm and the careers being offered.

Davies Collison Cave is Australia’s leading firm of patent and trade mark attorneys. Our material science team has a large and diverse client base and we are now recruiting for a qualified patent attorney to join the team in our Melbourne office. This is an opportunity to develop your expertise by working with and learning from highly experienced practitioners.

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