In her recent decision in Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138 (Caporaso v Mercato), the Honourable Justice Charlesworth of the Federal Court of Australia has demonstrated how Australian courts approach the use of non-English words as trade marks in Australia.
Suppose you have an invention and disclose it in a slide show to an audience attending a conference. Can this slide show be considered a printed publication to prevent the invention from being novel and patented? Are there protective measures that can be taken to prevent the slide show from being considered a printed publication? The answer is YES!
To obtain a U.S. patent, one of the conditions for patentability is that the invention be novel under 35 U.S.C. Section 102. Under 35 U.S.C. Section 102, a person is entitled to a patent unless the claimed invention was described in a printed publication, or otherwise available to the public before the effective filing date of the claimed invention. However, the invention has to be sufficiently publicly available to be considered a “printed publication” and prevent patentability as not being novel.
The Court of Appeals for the Federal Circuit has previously interpreted the phrase “printed publication” as:
… to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was “published.”.
In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988))
Can the slide show be considered a printed publication? The determination of whether the slide show can be considered a “printed publication” under Section 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding the disclosure to members of the public. In re Cronyn, 890 F.2d at 1161.
In a recent case before the United States Court of Appeals for the Federal Circuit (“CAFC”), In re Kloppfenstein, 380 F.3d 1345 (Fed. Cir. 2004), the CAFC held that a slide show was made sufficiently publicly accessible to count as a “printed publication”. The Kloppfenstein case involved a printed fourteen-slide presentation on an invention involving cereal chemistry (“Liu reference”) at a meeting of the American Association of Cereal Chemists (“AACC”) that was displayed continuously for two and a half days, and, in the same year, was put on display for less than a day at the Agriculture Experiment Station (“AES”) at Kansas State University. The USPTO determined that the Liu reference was a “printed publication” for determining patentability and this was also the issue on appeal to the CAFC.
In Kloppfenstein, the CAFC held that public accessibility is the key factor as to whether a prior art reference will be considered a printed publication for the purposes of Section 102(b). However, the court found that distribution and indexing are not the only factors to be considered in a Section 102(b) “printed publication” inquiry. Since the Liu reference was neither distributed nor indexed, the court considered other factors in determining whether the Liu reference was sufficiently publicly accessible to be considered a printed publication, which included the length and time the Liu reference was displayed, the expertise of the audience, the reasonable expectations that the material would not be copied, and ease of which the material displayed could have been copied. The court found that the slide show was shown to a wide variety of viewers in the audience and many of them possessed ordinary skill in the art of cereal chemistry and agriculture, while the slide show was prominently displayed for days at AACC and the AES.
As a result of the above findings, the CAFC focused on the factors of whether there was a reasonable expectation that the information in the Liu reference displayed to the audience would not be copied and the ease of which it could be copied. The court found that there was no reasonable expectation that the information would not be copied. In addition, the court found that eight of the fourteen slides only recited what was already known and the remaining slides of the novel information presented could have been copied by a member of the audience. Thus, the court concluded that the Liu reference was sufficiently publicly accessible to be considered a printed publication under Section 102(b)
The Kloppfenstein case illustrates that a slide show can be considered sufficiently publicly accessible to count as a “printed publication” to deny patentability under Section 102 as not being novel. However, in that case, the court stated that protective measures can be considered that create a reasonable expectation that the displayed information would not be copied. For example, protective measures may include license agreements, non-disclosure agreements, anti-copying software, or a disclaimer informing the audience that no copying of the information will be allowed or acceptable.
Therefore, if you have an invention to be shown in a slide show to an audience, you need to take protective measures to create a reasonable expectation that the invention will not be copied to prevent the slide show from being considered a printed publication and prevent patentability. While it may be difficult to get members in an audience to sign a non-disclosure agreement, you should at least have a disclaimer on the slide show informing them that no copying of the information will be allowed. If this protective measure is taken, your chances that the slide show is not considered a printed publication will increase. Thus, there are protective measures that can be taken to minimize the slide show from being considered a printed publication and prevent the invention from being novel and patented.
As discussed in my short article of July 10, 2024, important changes to the Canadian Trademark Regulations have been proposed. The changes have not yet come into effect and are still subject to change. The consultation period closed on July 8, 2024. In future articles, I will discuss comments that are being debated and next steps in the implementation process.
One set of changes is directed at improving the efficiency of the trademark dispute resolution process. Another set of changes enables the Registrar to inactivate official marks.
On June 8, 2024, proposed amendments to Canada’s Trademarks Regulations were published in the Canada Gazette. The public consultation period is open until July 8, 2024, and comments will be posted on the Canada Gazette website following the end of the consultation period.
A coming-into-force date has not yet been set but the Canadian Intellectual Property Office indicates that sufficient time will be provided to ease the transition.
The first plaintiff, a company, was established in 1989. Its sole partners were:
Each partner had a 25% stake in the company. The company’s purpose was to exploit the film (R), the filming of which was completed in 1983. Based on the above agreements, the first plaintiff claimed to be the beneficiary of all kinds of IP rights and the right to exploit the film by 70%, while the Hellenic Film Center was the beneficiary of the remaining 30%.
The World Intellectual Property Organization announced on May 24, 2024, a treaty on intellectual property, genetic resources, and associated traditional knowledge that was twenty-five years in the making. As WIPO’s press release noted, “[n]egotiations for this Treaty began at WIPO in 2001, initiated in 1999 with a proposal by Colombia, where discussions were notable for their inclusion of Indigenous Peoples as well as local communities.” Because the treaty has importance in and of itself for the subject matter it covers, we will describe its substance. But because it also provides an example of process and structure that could help address concerns over the ownership of works created by deploying artificial intelligence (especially when coupled with an understanding of the history of laws governing US plant patents), we will also look at its evolution to help us think outside the box that some have worked themselves into on artificial intelligence works questions. Plus, I had not focused a piece on a treaty since 2016 (when I wrote about the TRIPS treaty on geographic indicators) and 2015 (when I wrote about the Trans-Pacific Partnership on trade secrets), so I seemed overdue.
With the rise in the use of artificial intelligence (AI) in all forms, the question is becoming more present than ever – who owns the intellectual property in a work created with the use of AI?
In Australia, there is currently no law specific to the ownership of intellectual property created in computer-generated works, whether that be art, music drafting documents, or other written works.
Title? Typo? Cryptic code? Equation?
Really it is a combination of three of the four. In other words, it is not a typo (You can look elsewhere in this piece for those).
One key to understanding the reference above is the mathematical logic symbol ├, which is known as the “’turnstile’…because of its resemblance to a typical turnstile if viewed from above. It is also referred to as tee.” It is meant to mean “yields” or “entails,” and here the familiar initials “IP” are used to the right of the turnstile with question marks as an indication of “intellectual property” (that “umbrella term for a set of intangible assets or assets that are not physical in nature”) and the questions it raises. The “IP” to the left of the turnstile is not tautological—it stands for “interesting politics,” leaving the tail of the title to be a logic language shorthand for “Interesting Politics Yield Intellectual Property Questions.”
The United States is among the minority of large economies in the world without a comprehensive national privacy law. In the absence of such a law, numerous states are filling the void with a complex assortment of often inconsistent privacy laws.
However, unexpected legislative developments in the U.S. House of Representatives will potentially resolve the challenges raised by the current patchwork of conflicting state laws. On April 7, 2024, House members announced a draft bill for the American Privacy Rights Act (APRA). The bill still has many hurdles to overcome and may ultimately share the same fate as prior failed attempts at a federal privacy law. But if enacted, the APRA would upend the U.S. privacy landscape.
In 2023, the Federal Court of Canada released its decision in Energizer Brands, LLC and Energizer Canada Inc. v. Gillette Company (2023 FC 804). The decision clarifies some of the laws applicable to comparative advertising in this country and should guide the conduct of parties that engage in this form of commercial activity.
Energizer sued Duracell over a sticker advertising campaign that claimed that Duracell’s batteries lasted longer than their Energizer equivalents. The Duracell advertisements referred to Energizer both directly and indirectly with phrases such as “the bunny brand” or “the next leading competitive brand”.
