Section 11(1) of the Designs Act, 2000, grants copyright protection to a design for a period of ten years from the date of registration. However, if priority is claimed then the registration period is calculated as being ten years from the priority date. Further, as per Section 11(2) of the Designs Act, 2000, a design may be renewed once for an additional period of 5 years anytime within the initial ten-year period of registration

When a trademark is used to a point where the consumers begin to associate it to a particular product rather than its source, then the trademark is said to have become genericized or undergone Trademark Genericide, wherein it becomes the common descriptive name of a certain product and the trademark owner no longer has the exclusive right over the use of the said trademark. Some examples of popular trademarks that have become genericized over time are ‘Cellophane’ tape, ‘Escalator’, ‘Thermos’, and ‘Aspirin’ among so many others.

In Metso Outotec Corporation v. the Registrar of Trade Marks, appeals were preferred before the Bombay High Court from orders passed by the Registrar of Trade Marks in respect of trademark applications for the word mark SISUPER and device mark SISUPER bearing application nos. 4433306 and 4435364 respectively (IR Nos. 1513304 and 1512932). After a perusal of the facts of the case, the Court set aside and quashed the decisions of the Senior Examiner of Trade Marks refusing the mark “SISUPER”.

The Delhi High Court on April 5, 2021 dismissed two applications filed by Britannia Industries against ITC Ltd for alleged trademark infringement and passing off by the latter.

In both the US and the UK, patent offices have refused to allow applications filed by Dr Stephen Thaler to proceed, on the basis that the named inventor – an ‘AI’ machine dubbed DABUS – is not a human being.  In the first article in this series I looked at the US approach to the role of the inventor in patent law and practice, and at the recent decision of Judge Leonie M Brinkema in the United States District Court for the Eastern District of Virginia (‘EDVA’) upholding the USPTO’s decision.  In the second, I discussed the split decision of the Court of Appeal of England and Wales, which upheld (by a 2-1 majority) the decisions of the UK Intellectual Property Office (UKIPO) and the High Court.

In Australia, the Patent Office also refused to allow a corresponding application by Dr Thaler to proceed.  In contrast to the US and the UK, however, that decision was overturned by Justice Beach in the Federal Court.  The Commissioner of Patents has now appealed that ruling to a Full Bench of the Court (case no. VID496/2021).  In this article, I will be looking at the potential implications of the recent US and UK decision for the conduct and outcome of the appeal in Australia.

It should be said at the outset that the US law is very different to that of Australia, and it is therefore unlikely that anything in Judge Brinkema’s legal reasoning will be influential upon the Full Court.  It has also become apparent through the UK High Court and Court of Appeal decisions that while the UK law shares some similarities with the corresponding provisions of the Australian Patents Act 1990, there are also some significant differences.  Even so, there are aspects of the reasoning of Lord Justice Arnold in the Court of Appeal that the Australian appeals court may consider persuasive, and that could therefore influence the outcome here.

There are two key questions likely to be addressed in the appeal, both of which also arose in the UK, although only the first received substantive attention in the US.  These are:

1. Can DABUS, as an ‘AI’ machine and not a human being, validly be named as an inventor on a patent application?
2. Can Dr Thaler, not being (at his own insistence) the inventor, establish a proper legal basis for entitlement to the grant of patents on inventions said to be generated by DABUS?

I shall look at each of these questions in turn.

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Did you grow up with “Monica’s Friends”? Founded over 60 years ago, Mauricio de Sousa Productions has become one of Brazil’s most successful comic book and animation publishers. What role has intellectual property played in this success?

Under the USA’s Post Registration Audit Program, a declaration of use must be filed between the fifth and sixth year of the validity of the registration of the trademark. So, the Applicant has the burden of proof to show proper usage of the mark for all the goods and services provided under the relevant classes. However, India being a common law country and a first-to-use jurisdiction, one would assume that the use of a trademark would be of prime importance and would consequently, be a requirement that is constantly monitored. However, the use of a trademark is rarely monitored subsequent to its registration. In fact, it is of little to no consideration as there is no system or database to monitor the post registration audit of trademarks in India. Under current practices, the Registry itself does not undertake suo motu cancellations of unused trademarks, so it theoretically possible for a mark to be registered indefinitely without ever having been used in commerce.

In the case of Hindustan Unilever Ltd v. An Opposing Party, the Bombay High Court called out the practice of seeking separate reliefs of injunction for passing off and infringement when pleadings were presented in respect of matters of trademark infringement.

Over 1,000 Australian innovation patent applications were filed in July – an all-time record, ahead of 768 applications in June and 692 in May.  Between 2010 and early 2020, there were typically between 100 and 200 innovation patent applications filed each month.  But with the system set to close to new applications from 26 August 2021, filings have surged over the past year, with over 600 applications every month since October 2020 (with the exception of February 2021, when ‘only’ 482 applications were filed).  China remains the most prevalent country of origin for these applications, accounting for nearly 45% of new innovation patent filings in July.  However applications received from India have grown significantly since June 2020, with Indian applicants filing a third of applications in July.  Applications by Australian applicants have increased modestly over the past couple of months, rising to 175 in July.  Applicants from other jurisdictions seem (so far) nonplussed by the imminent demise of the innovation patent system, with no apparent recent surge in filing numbers.

It is well-known that the motivation for Chinese applicants seeking Australian innovation patents – which are subject only to a formalities examination before being granted – is to obtain government incentive payments without the delay and expense associated with substantive examination.  While these subsidy schemes are supposed to be coming to an end, clearly there are still sufficient incentives available for Chinese entities to keep filing for as long as it remains possible to do so.  It is less clear why innovation patents have recently become so popular with Indian applicants, however I have noted that many of the applications appear to be filed in the names of academic or research institutes, and/or individuals or teams including people with academic titles.  I therefore suspect that being an inventor or applicant on a granted patent may have benefits for people pursuing academic or research careers in India.

In any event, it is clear that the vast majority of innovation patent applications are currently being filed by non-resident applicants for reasons that have nothing to do with any genuine desire to obtain or commercialise intellectual property rights in Australia, and few are filed by the Australia small and medium enterprises (SMEs) that the system was intended to benefit.  Surging demand for innovation patents in the lead-up to the system being closed to new applications is overwhelmingly being driven by Chinese and Indian applicants, with Australian residents showing relatively little interest in taking advantage of the final opportunity to file new innovation patent applications.

Of course, genuine users of the patent system – including Australian applicants – are continuing to file standard applications and international (PCT) applications, and these may be converted to innovation patents in the future, or form the basis for divisional innovation patent applications, where the filing date is earlier than 26 August 2021.  While these types of applications have been a minority in the past, they will necessarily become the only sources of ‘new’ innovation patents as the system is phased out over the coming eight years.

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In the part one of this article we discussed about the general understanding of AI divided as ANI and AGI, ANI’s adoption and influence in the copyright law, and complexities arising out of the adoption of ANI while generating copyrightable works. Further, let us understand the intricacies involved in the examination of ANI. What could happen if ANI generated works are granted copyright protection, and other complexities that could arise if ANI is left unsupervised.

Trade secrets are a common and practical way for business to maintain a competitive advantage. Recent improvements in trade secret laws around the world have created more opportunities for SMEs to increase enterprise value and prevent loss of data assets by using them. Find out more.

Julian Crump, President of the International Federation of Intellectual Property Attorneys (FICPI), discusses how IP protection can benefit smaller businesses.