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DEC

2021

Pipers Bulletin 2021-11

Contents, General, Patents, Trade Marks

  1. General (Go to Patents or Trade Marks)

Kiribati

Kiribati Set to Become Member of Paris Convention

On the 5th November 2021 Kiribati deposited its instrument of accession to the Paris Convention, meaning the Paris Convention will enter into force for Kiribati on 5th February 2022.

From the 5th February 2022 Kiribati nationals will be able to make use of the priority rights provided for in the Paris Convention by making an originating application in another member country of the Paris Convention. Currently nationals of Kiribati can only make such use of the Paris Convention if they are domiciled in or have a real and effective industrial or commercial establishment in another member country of the Paris Convention.

However, in the absence of other legislative changes, Kiribati’s joining of the Paris Convention will have no practical effect for obtaining patent, trade mark or design protection in Kiribati as such protection can only be obtained by way of the re-registration of a valid patent, trade mark or design in the United Kingdom.

Re-registration of a UK patent or an EP(UK) patent in Kiribati needs to be applied for within 3-years of the issuance date and will expire when the corresponding UK or EP(UK) patent expires. Re-registration of a UK trade mark in Kiribati can be made at any time that the UK trade mark is in force and expires when the UK trade mark is cancelled or is due for renewal. Renewal of the trade mark in Kiribati requires proof that the UK trade mark has been renewed. Kiribati only allows re-registration of UK registrations covering goods classes as service marks are not recognised in Kiribati. Where the UK registration covers multiple classes separate applications need to be made for each class in which protection is sought in Kiribati. Kiribati had allowed EU trade marks to be re-registered, but now that the UK has left the EU it is unlikely that this will be allowed. UK designs automatically extend to Kiribati.

United Kingdom

UKIPO Consults Further on AI and Copyright and Patent Inventorship

The UK Intellectual Property Office (UKIPO) has issued a second consultation on artificial intelligence and intellectual property, this time focussing on what changes are required for copyright and patents laws in order to facilitate the UK being a leader in AI research, development and implementation.

The earlier consultation sought views on how AI impacts on and is affected by all facets of IP. While potential issues in relation to trade marks, designs and trade secrets were raised during the consultation process it was considered that there is no urgent need for change as the law in these areas continues to be fit for purpose. However, it was acknowledged that the impact of the developing use of AI on those areas and the extent to which those areas constrain the development of AI should be monitored. A more detailed review of copyright and patent law, though, is considered to be more pertinent and pressing in view of the issues identified through the earlier consultation.

Along with most other forms of IP, copyright and patent rights are conditional incentives based mechanisms designed to encourage the creation and disclosure of original, inventive or distinctive works or ideas. However, there are notable respects in which the creation of copyright or patentable subject matter by or through the use of AI is not incentivised or is hindered by the current law. For instance AI is very data intensive and its outputs can be affected if copyright works are excluded from its inputs. Doubts about the ability to name AI as an inventor or co-inventor can create doubts about how to validly apply for a patent when an invention is created by or with AI.

The current consultation focuses on the following three specific areas:

1. Copyright protection for computer-generated works without a human author. These are currently protected in the UK for 50 years. But should they be protected at all and if so, how should they be protected?

2. Licensing or exceptions to copyright for text and data mining, which is often significant in AI use and development.

3. Patent protection for AI-devised inventions. Should we protect them, and if so, how should they be protected?

Further focus is provided by specifying that to be implemented any proposed changes should:

1. Encourage innovation in AI technology and promote its use for the public good;

2. Preserve the central role of intellectual property in promoting human creativity and innovation;

3. Be based on the best available economic evidence.

Computer-Generated Works

The UK is one of only several countries, including New Zealand and Hong Kong, that provide copyright protection for computer-generated works. Some argue that computers do not need to be incentivised to create new content and that the existence of such protection creates costs for third parties. Given that computer-generated works have a shorter period of protection than human authored works some also argue that it encourages false attribution of a computer-generated work as being authored by a human, although the UK Fraud Act 2006 is considered to adequately discourage such claims.

There are three broad options for copyright in computer-generated works: (i) make no change; (ii) remove protection for such works; and (iii) replace the current right with a right having reduced scope and duration. To justify the status quo option it would need to be shown that the generation of new AI works is encouraged. The removal of protection would not affect human authored works created with the assistance of AI. To justify the removal option it would need to be shown that copyright protection is not necessary to incentivise the production of computer-generated works or that unreasonable costs are created for third parties. To justify a new right it would need to be shown that the generation of new AI works is encouraged if there is a shorter term of protection and scope of rights.

Text and Data Mining

Currently there is a conditional exception that allows for the use of copyright material for non-commercial text and data mining research purposes. Research shows that this is being used as intended, although may benefit from updated guidance. Other options are to: improve the licencing environment through the provision of model licences or codes of practice; extending the exception to include lawfully accessed commercial uses with attempts at contractual override being unenforceable; and whether or not to allow rights holders to opt-out particular works or collections of works.

Inventorship for Patents

As recently confirmed by the Court of Appeal (although possibly subject to an appeal to the Supreme Court) the UK restricts patent inventorship to natural persons and limits claims to inventorship to the actual devisors of the invention. This status quo option allows patents to be granted where AI has been used as a tool by a human inventor, but not if AI is named as the or a devisor of the invention. Other than the status quo the other options for consideration are:

  • to widen the definition of inventor to include the humans responsible for the AI system that devises an invention. This could allow the people with the following responsibilities to be considered inventors: programming the AI, configuring the AI, operating the AI, selecting input data such as training data for the AI or recognising applications of the output of the AI.
  • allowing AI to be named as the or an inventor by either specifically allowing AI to be an inventor or by removing the requirement that the inventor is a human. Until other jurisdictions also allowed this obtaining patent protection in other jurisdictions would be problematic.
  • allowing protection for AI devised inventions through a new right with a shorter term that may either have a stricter test for obviousness or no test for obviousness.

  1. Patents (Go to Contents or General or Trade Marks)

Australia

Full Court Reverses Patentability After Prioritizing Computer Implementation Question

In Commissioner of Patents v Aristocrat Technologies Australia [2021] FCAFC 202 the Full Court of the Federal Court of Australia (FCAFC) effectively set aside the trial Judge’s finding of patentability although remitted the case back to the Federal Court to determine any residual issues in light of its guidance.

When Aristocrat sought to certify four of its innovation patents relating to electronic gaming machines (EGMs) it received adverse patentability reports finding no manner of manufacture. The alleged inventive contributions to the EGMs centred on rules of operation when a feature game is triggered from within a base game that encouraged prolonged wagering. The examiner found the alleged contributions merely amount to game rules or abstract ideas with no improvement in the operation of the EGM. Following a hearing a Delegate upheld the objections, finding there to be no patentable subject matter as the alleged technical contributions either amounted to games or game rules or are mere presentation of information, neither of which qualifies as a manner of manufacture.

As earlier discussed Aristocrat was successful in its Federal Court appeal of the Delegate’s decision. The Judge held that the invention is not for a mere scheme or plan, rather it is to a mechanism that combines hardware and software to realise an EGM that functions in particular ways, thereby producing practical and useful results. The Judge considered that the Delegate fell into error by characterising the inventive concept at too high a level of abstraction, and that this could be avoided by asking whether the claim is for a mere scheme at all as this is more likely to take into account all of its specific limitations. The Judge also noted that if a gaming machine could produce the same functions without the use of software that it would qualify as patentable subject matter and so the use of software should not turn it into unpatentable subject matter.

The Commissioner of Patents sought leave from the FCAFC to appeal the Judge’s decision, which the FCAFC granted on the basis that the Judge had misapplied precedent.

The FCAFC first noted that physical embodiments of abstract ideas which have practical applications can qualify as patentable subject matter, but the patent will not extend to the abstract idea. After determining that the core features of the claimed invention is merely implemented on a computer and do not pertain to the development of computer technology, the FCAFC asked whether the other integers transform the claim into patentable subject matter.

Before answering that though the FCAFC criticised the Judge’s two-step approach to the patentability inquiry, which first asked whether the claim is for a mere business method or abstract idea and secondly, if so, whether there was invention in the manner of its implementation on a computer. By deferring consideration of computer implementation to the second step and by not proceeding to the second step on account answering the first step in the negative, the FCAFC found that the Judge did not address the question of whether the invention is a computer implemented invention. The FCAFC noted that not asking that question does not matter in cases that involve no more than the implementation of a method on a computer or where the invention is no more than a business method or abstract idea. However, where the claim includes a physical object that contains or is a computer and where there is an open question as to whether or not what is claimed is a computer implemented invention, by not asking the question at the first step it is possible to fall into error. The FCAFC also considered addressing the question of computer implementation at the first step accords with the need to first characterise the claimed invention.

Consequently, the FCAFC proposed the following two-step approach as being more appropriate:

(a) Is the invention claimed a computer-implemented invention?

(b) If so, can the invention claimed broadly be described as an advance in computer technology?

The FCAFC answered the first step in the affirmative after finding the EGM of claim 1 to be a computer with the feature game integers of claim 1 showing the invention claimed to be a computer implemented invention. In answering the second step in the negative the FCAFC found that claim 1 pertains only to the use of a computer as it is silent on what computer technology is used to effect the computer implementation. While sub-claims involve changes in the reel structure and configurable symbols, they were held to at best represent advances in gaming technology rather than computer technology.

The FCAFC also noted that a computer’s only purpose is to give effect to the abstract ideas embodied in the code. Such implementation of an abstract idea on a computer therefore requires something more, such as advances in computer technology, in order to be granted a monopoly.

New Zealand

IPONZ Patents Examination Manual Practices Updated

IPONZ has updated its Patents Examination Manual practices by introducing sections on restoration and extensions of time in exceptional circumstances and amended its practice on claim overlap between parent and divisionals following recent Assistant Commissioner decisions.

Restoration Guidance

The guidance on restoration of patents or patent applications that became lapsed, abandoned or void due to failure to meet a deadline requires that the failure was unintentional, that the request is made within 12 months or if not was made without undue delay. The restoration application needs to be supported by a detailed statement on the circumstances leading to the failure and if relevant why the delay was not undue and supporting evidence in the form of a statutory declaration or affidavit. The statutory declarations or affidavits need to be from the person or persons most relevantly connected to the circumstances for the failure and those declarations must be consistent and plausible. Along with the payment of restoration fees, any outstanding fees need to be paid.

While missing a deadline can be construed as unintentional in the sense that it goes against the motivation to obtain or maintain a patent that is not sufficient. It needs to be unintentional in the sense of being accidental or inadvertent, and not on account of a change of mind or back-door attempt at obtaining an extension of time.

If awareness of the omission occurred more than 12 months after the due date undue delay is assessed in relation to when the patentee discovered or reasonably ought to have discovered that omission, within the context of status information being readily available online.

If an unrecorded assignment occurred before or after the lapse (etc) date, or if an assignment was recorded after the lapse date, then only the assignor can request restoration. If the assignment was recorded before the lapse date, then only the assignee can request restoration.

Where a prima facie case for restoration is established it will be published for opposition purposes and any person can oppose on the basis that the failure to meet the deadline was not unintentional or if relevant that there was undue delay. If a patent is restored, then it will be subject to the condition that a party who availed themselves of the invention or took definite steps towards so availing themselves during its period of lapse will be protected or compensated.

Extensions of Time in Exceptional Circumstances

The guidance on extensions of time in exceptional circumstances confirms that it is discretionary, subject to some exclusions and is only available where extension options under other regulation have been exhausted. A request for an extension of time on the basis of exceptional circumstances is not precluded by the time limit having already expired or the prior grant of such a request. The Commissioner also has the ability to proactively grant such extensions despite no application being made, with IPONZ’s allowing extensions during the early stages of the COVID-19 pandemic given as an example. Exceptional circumstances need to be unusual or out of the common run.

The request should specify the amount of extension required, exceptional circumstances leading to the need for an extension of time and be supported by evidence in the form of statutory declarations or affidavits.

Claim Overlap Between Parent and Divisional

The guidance on claim overlap between parent and divisional was updated to take into account two recent Assistant Commissioner decisions, namely: Oracle International Corporation [2021] NZIPOPAT 5 and Ganymed Pharmaceuticals GmbH [2021] NZIPOPAT 6.

Oracle clarified that ‘substantially the same’ means ‘essentially the same’, ‘the same but for minor unimportant details’, and/or ‘not substantially different’”. Having regard to the plain meaning of the words, the claims of the respective applications must be ‘for substantially the same matter' to trigger regulation 82.

Following Ganymed, a parent-divisional overlap objection may be overcome by:

  • Providing a persuasive objection response, or
  • Amendment of the pending application, or
  • Amendment of the accepted application or granted patent, or
  • Withdrawal of the accepted application, or surrender of the granted patent.

PCT

Forthcoming PCT Fee Changes for Australia and New Zealand

Effective from 1st January 2022 the International Filing fees will change for Australia and New Zealand. The table below gives the changes in the equivalent amounts in AUD and NZD: (PCT Newsletter; 2021/11)

PCT Intl Filing Fees

Intl Filing Fee

Fee per sheet over 30

PCT-EASY Reduction

(Varies according to electronic format)

Current Fee (AUD)

2,019

23

304 – 455

Fee from 01/01/2022

1,970

22

296 – 444

Current Fee (NZD)

2,025

23

305 – 457

Fee from 01/01/2022

2,060

23

310 – 465


Effective from 1st January 2022 the NZD equivalent amount for an International Search carried out by IP Australia, the EPO, KIPO and the USPTO will change as indicated below. (PCT Newsletter; 2021/11)

ISA (Currency = NZD)

Intl Search Fee (Current)

Intl Search Fee (01/01/2022)

IP Australia

2,379

2300

EPO

2,942

2,961

KIPO

1,561

1,450

USPTO (Large Entity)

3,076

3,126

USPTO (Small Entity)

1,538

1,563

USPTO (Micro Entity)

769

782

Effective from 1st January 2022 the Handling fee for an International Examination carried out by IP Australia, the EPO, KIPO and the USPTO will change as indicated below. (PCT Newsletter; 2021/11)

IPEA (Currency)

IPEA Handling Fee (Current)

IPEA Handling Fee (1/01/2022)

IP Australia (AUD)

304

296

EPO (EUR)

185

186

KIPO (KRW)

253,000

256,000

USPTO (USD)

218

216

On the 10th November 2021 Jamaica (JM) deposited its instrument of accession for the PCT, which will enter into force for Jamaica on 10th February 2022.

  1. Trade Marks (Go to Contents or General or Patents)

Australia

New .au Domain Name Extension Launching in 2022

Australia’s .au Domain Administration (auDA) organisation has announced the introduction of .au as a new top-level domain, which will be available from 24th March 2022.

Currently Australian top-level domain names have an extra abbreviated descriptor in front of the country code, such as: .com.au or .net.au or edu.au or org.au or .gov.au. In addition to allowing for an extra top-level domain, the .au domain will allow for shorter and more memorable online names. As with the existing domains, the .au domains will also be subject to the stricter Australian presence criteria.

Starting on 24th March 2022 there will be a 6-month priority allocation period in which holders of existing Australian domain names will have the first right to apply for their second-level domain name with the .au top-level domain. Where there is more than one such eligible priority applicant allotment will be determined by the priority allocation process. This first involves categorizing such applicants as priority category 1 if the current domain licence was created on or before 4th February 2018, or priority category 2 for those created after that date. Priority category 1 will have priority over priority category 2. If there are multiple priority category 1 applicants, then allocation will be determined by negotiations between those parties, with the domain name remaining reserved and subject to renewal by all interested parties until only one applicant remains. If there are only multiple priority category 2 applicants, then allocation will be determined by which current domain licence was created earlier.

About the Firm

Pipers IP
Address 1st Floor, Imagetext House, 3 Owens Road, Epsom, Auckland 1023, New Zealand
Tel 64-9-919 9450
Fax 64-9-919 9454
Email patents@piperpat.com
Link www.piperpat.com

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