IP & Technology Newsletter - October 2009

In this edition:

• The Strength of Innovation Patents
• UWA v Gray: It’s Still Black and White (For Now...)
• We Paid For It, Why Don’t We Own It?
• Who’s Your Mother? The Coca-Cola Company v Matthew Shea [2009] ATMO 49
• Patent Prosecution Highway
• Creative Commons Licences
• Set Back To Shape Trade Marks? Guylian & the Chocolate Seahorse
• Google Book Search Project
• Trade Mark Alert Update: Trade Mark Scams

• Does Your Business Need An IP Audit?

The Strength of Innovation Patents

Under Australia’s patent system you can obtain an innovation patent for an invention that does not meet the threshold requirement of inventiveness for a standard patent. The requirements of an innovation patent and a standard patent, differ in that an innovation patent requires that the invention involves an innovative step, whereas a standard patent requires that the invention involves an inventive step when compared with the prior art base as it existed before the priority date of that claim.

Australia’s patent system also makes it possible to obtain both standard patents and innovation patents. It is also possible to file for an innovation patent based on a standard patent and vice versa.

In Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 (the Delnorth case), the Full Federal Court upheld a trial judge’s decision that an innovation patent was not subject to the standard “obviousness” test, but rather a less onerous “innovative step” test. The Full Federal Court confirmed that under the innovation patent system there is no requirement for inventiveness, but rather all that is required is that the invention involve an innovative step. In the Delnorth case, the patentee (Delnorth) had filed a divisional innovation patent for a roadside post from a standard patent and successfully sued Dura-Post for infringement on the innovation patent. In response, Dura-Post alleged that Delnorth’s innovation patent was invalid on the basis that it was obvious, that is, it did not contain an inventive step.

The Full Federal Court agreed with the trial judge’s interpretation of innovative step and confirmed that the test for innovative step is met when the point/s of differentiation between the invention as claimed in the innovation patent and a piece of prior art (even if such point/s of differentiation are only slight), are viewed (through the eyes of a person skilled in the relevant art in the light of common general knowledge), as contributing in a substantial manner to the working of the invention as claimed in the innovation patent. Further, the Court agreed that that a two-step approach should be taken in determining whether there has been an innovative step.

The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in light of common general knowledge and ask whether the invention as claimed only varies from the kinds of information set out in the prior art base in ways that make no “substantial contribution” to the working of the invention. The Court agreed that “substantial” denotes “real” or of “substance”. That is, the focus is on the working of the invention as claimed and not the degree of variation from the information set out in the prior art base. In other words, the variation from the kinds of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step.

The Delnorth case highlights that given the inventive threshold for obtaining innovation patents is lower than that for obtaining standard patents, it follows that an innovation patent can be a stronger patent by virtue of it being more difficult to invalidate for lack of an innovative step.

In addition to the relative ease in obtaining an innovation patent, the other advantage of innovation patents is that “certification” after grant, which involves the process of examination, is not compulsory and only needs to be requested when the patentee needs to enforce the patent (or is forced to certify the patent by a third party). Further, quick action against an infringer, can be taken by filing a divisional innovation patent application whilst a standard patent is still pending. The innovation patent can then be drafted with claims targeted towards the infringer’s device or process, be certified relatively quickly and be more rapidly enforced against the infringer.

These advantages over a standard patent may make an innovation patent an attractive option to those looking to stake a monopoly claim over their invention.

The main disadvantage of an innovation patent is that it only has a maximum term of 8 years, whereas standard patents generally have a term of 20 years. In a field where technology and innovation is rapidly changing, however, 8 years may be more than sufficient to exploit and derive its maximum value for an invention which is likely to be superseded within 8 years.

UWA v Gray: It’s Still Black and White (For Now...)

On 3 September 2009, the Full Federal Court dismissed the University of Western Australia’s (UWA) appeal in its long running and complicated dispute with Dr Bruce Gray.

Implications of the Decision

• The decision is limited to the particular circumstances of the case, and only really has significant application to the relationship between universities and their academic staff.
• It is still a reminder to all businesses that if intellectual property ownership is important to the business then it should expressly deal with ownership and not rely on any implied rights of ownership.
• Universities should re-examine both their employment contracts and the standing of any intellectual property regulations that their employees are expected to comply with.
• Businesses that deal with universities and academics should conduct the necessary due diligence and obtain warranties as to the ownership of any intellectual property the business is investing in.
• Businesses should have a properly thought out and implemented intellectual property policy which is adequately and expressly captured in its employment contracts.

Brief Facts

Dr Gray was employed by UWA to teach, to conduct examinations and to direct and supervise the work in his field, and to undertake research, to organise research and generally to stimulate research among the staff and students. He did not have any express contractual duty to invent

The case concerned inventions that were said to have been made wholly or in part by Dr Gray.

UWA’s claim against Dr Gray was that Dr Gray had obligations to UWA in respect of the inventions by reason of his employment, and as a result, UWA had proprietary rights in respect of the inventions. As Dr Gray had dealt with the inventions as if they were his own, by assigning the rights in the inventions to a third party (Sirtex), UWA commenced proceedings against Dr Gray.

Decision

The decision at first instance dismissed UWA’s claim.

In reaching its decision, the Court at first instance examined in detail Dr Gray’s employment contract, and the nature of his role. The Court’s decision particularly emphasised:

• the absence of any duty to invent (neither express, nor implied in the duty to research);
• Dr Gray’s freedom to publish the results of his research and any invention developed during that research, even if such publication might destroy the patentability of the invention;
• the extent to which Dr Gray was expected to and did solicit funds for the research, including the development of inventions, from sources outside UWA;
• the necessity for Dr Gray to enter into collaborative arrangements with external organisations such as CSIRO.

In dismissing UWA’s appeal, the Full Federal Court agreed with the decision at first instance and highlighted the fact that these types of cases need to be assessed by their particular circumstances, especially where they involve a university and academic staff.

The onus was on UWA to show that Dr Gray’s employment contract was of a class, type or kind by which an implication of ownership by UWA would arise. UWA failed to meet this threshold. The fact that Dr Gray had no duty to invent may of itself have justified the dismissal of UWA’s claim. The distinctiveness of a university such as UWA (as compared to a more typical business), and of the nature of academic employment, were also central considerations.

UWA had also claimed that Dr Gray was in breach of this employment contract by not disclosing his inventions to a “Patents Committee”, in accordance with certain university regulations.

This “Patents Committee” had, however, ceased to exist after 1988. UWA had failed to maintain a mechanism necessary for the performance of obligations that were imposed on its staff by importing the terms of these regulations into their employment contracts. The maintenance of this mechanism was a contingent condition of Dr Gray’s contractual obligations to disclose the inventions under the regulations. As the “Patents Committee” no longer existed, Dr Gray was excused from his performance of this obligation.

Final Thoughts

The decision at first instance was met with great fanfare, and suggestions that it challenged the long standing, legal status quo that an invention developed by an employee in the course of employment belongs to the employer.

In upholding the original decision, it remains to be seen whether this appeal decision is met with similar excitement.

It is this author’s view that this case has done little to change the law, and the decision is largely based upon the particular facts, and the nature of the parties.

The appeal decision went to great lengths to highlight the unique position of both universities and academic staff, and the difference in their employment relationship when compared to that between employers and employees in private sector business entities.

Universities should assume as the starting point for their policy-making that inventions developed by an academic in the course of their research will, subject to an express agreement to the contrary, belong to that academic.

If universities carefully examine, spell-out and administer their intellectual property ownership policies they can minimise the risk of ownership disputes arising.

This will also assist with commercialisation strategies. This case will have put businesses that deal with academic and university inventions on notice to conduct sufficient due diligence to satisfy themselves that they will obtain the rights they are expecting to obtain. They will also expect adequate warranties as to ownership. If the university has an unambiguous intellectual property policy it will be easier to meet any such requirements.

Private sector business entities were distinguished from universities, and are more likely to be able to rely on an implied right of ownership to any inventions created by employees in the course of their employment. The Court did, however, suggest that relying upon an implied right of ownership is not necessarily desirable. The author would support this view. Implied rights are uncertain and a dangerous basis upon which to build a business. It is far less risky to have in place an express policy that sets out the ownership position clearly and extensively.

We Paid For It, Why Don’t We Own It?

An issue we commonly encounter is the mistaken belief that because a business has paid for the development or creation of a deliverable, it automatically owns the intellectual property (IP) in that deliverable.

IP laws can be counter-intuitive in this area and it is important for businesses to be aware of what they will, by law, automatically own and what they will not own (unless further steps are taken).

We have encountered this confusion particularly in the IT field, where companies commonly use contractors to design websites and write software.

The IP ownership position in respect of contractors is very different from that in respect of employees, and businesses need to be aware of these differences.

Copyright

Section 35 of the Copyright Act 1968 is the starting point for determining the ownership of copyright in a literary work such as software. Under section 35(2) the author of a literary work is the owner of any copyright subsisting in the work. Under section 35(6), however, where the literary work is made by the author “in pursuance of the terms of his or her employment” the employer owns any copyright subsisting in the work.

So if the author is not an employee of the company commissioning the software, website etc, but a contractor doing the work for the company (or an employee of the contractor), then the contractor owns the copyright.

There are times when the distinction between an employee and a contractor is clear and we have been able to confidently advise one way or the other as to copyright ownership. At other times, this boundary may be blurred, particularly if the contractor’s duties and benefits mean that it is unclear whether it would be legally regarded as an employee.

We have, at times, had to advise clients that they do not own the copyright that they thought they owned, even though they have paid a contractor to create it. If the agreement with the contractor is silent as to copyright ownership, the commissioning party may merely have an implied, non-exclusive, right to use the deliverable (and exploit the copyright in it) for the purposes for which they commissioned it, and the contractor/consultant may be entitled to license it to other customers, including competitors of the company.

Patents

There is no provision in the Patents Act 1990 that expressly deals with the circumstances in which an employer will be entitled to ownership of any inventions made by their employees.

It is a well-established common law principle, however, that an employer will own any invention created by an employee in the ordinary course of their employment. Whilst there have been various judicial interpretations of the meaning of “in the ordinary course of their employment”, they are beyond the scope of this article. The message that a business should take away, is that an employer should only assume that it will automatically be entitled to an employee’s inventions, if one of the employee’s duties was to invent – to create inventions of relevance to the company’s business. For example, in University of Western Australia v Gray, which is discussed elsewhere in this IPT Newsletter, the duty of a university academic to research was held by the Full Federal Court not to also amount to a duty to invent. For greater certainty, the relevant duty to invent should be expressly spelt out in the employment contract.

The Patents Act also does not expressly address the rights to an invention created by an independent contractor. Common law principles will generally favour the commissioning party, but to minimise the risk of any patent rights remaining with such a contractor, and to assist with proof of ownership when commercialising the IP, an express agreement stating the IP position is recommended.

Designs

The Designs Act 2003 expressly addresses the position of both employees and contractors in respect of registered designs in the employers’ favour.

Under section 13(1), the person who created the design is entitled to be entered on the Register as the registered owner of the design. However, if the designer created the design in the course of employment, or under a contract, with another person, the other person is entitled to be entered on the Register as the registered owner unless the designer and the other person have agreed to the contrary.

Trade Marks

A business may have a trade mark designed by an employee or contractor, but that employee or contractor would be unlikely to have trade mark rights in the mark, as the mark could not be used by the employee or contractor as his or her own trade mark or brand.

However, there would be copyright in the design of any stylised device or logo mark which would need to be assigned to the commissioning company by the contract designer.

What You Should Do

Whilst the nature of the employer/employee relationship will, in respect of IP ownership, generally favour the employer, the position is not as favourable in respect of independent contractors.

In order for businesses to minimise the risk of failing to own IP that they have paid to have created, it is recommended that businesses reach written agreement in respect of such ownership from the outset. This means building the relevant provisions into employment contracts to adequately address the scope of an employee’s role and the ownership of any IP created by that employee in carrying out their role. In addition, any agreement with an independent contractor should expressly deal with the ownership of any IP created by the contractor under the contract.

Dealing with this issue upfront can reduce the risk at a later date of a business discovering that it does not have the IP rights that it thought it had.

Who’s Your Mother? The Coca-Cola Company v Matthew Shea [2009] ATMO 49

On 24 December 2006, Shea applied to register the trade mark NAUGHTY MOTHER in respect of “Non-alcoholic beverages; drinking waters, flavoured waters, mineral and aerated waters; soft drinks, energy drinks and sports drinks; fruit drinks and juices; syrups, concentrates and powders for making beverages including syrups, concentrates and powders for making mineral and aerated waters, soft drinks, energy drinks, sports drinks, fruit drinks and juices” in class 32.

 

Under the TMA, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

Coca-Cola argued that the NAUGHTY MOTHER trade mark included the essential feature “MOTHER” and that in the context of the goods covered by the competing trade marks, “MOTHER” is a highly memorable and distinctive word.

Coca-Cola further submitted that the distinctiveness of its “MOTHER” trade marks was reinforced by the unexpected contradiction introduced by its inclusion of graphic features such as a monster, a Venus fly-trap and thorny flowers, and that Shea’s NAUGHTY MOTHER mark also introduced an unexpected contradiction given that “naughtiness” is the antithesis of the stereotypical kind, loving mother. Accordingly Coca-Cola argued that NAUGHTY MOTHER would be seen as a new, more exciting form of its MOTHER drink.

In refusing to register Shea’s mark, the Hearing Officer held that if allowed to proceed to registration, there was a real, tangible risk of actual confusion in the marketplace in that a number of persons would be caused to wonder whether it might not be the case that NAUGHTY MOTHER and MOTHER drinks originated from the same source.

It is essential when choosing a brand name that you give due thought to other names and marks already out there, and the impression that your proposed name or mark would give consumers.

Patent Prosecution Highway

Last year (in April 2008) IP Australia and the US Patent and Trademark Office (USPTO) entered into a 12 month pilot program known as the Patent Prosecution Highway (PPH) aimed at reducing the time for patent prosecutions. IP Australia and USPTO have now announced that they will extend the program with a view to making the program permanent.

The PPH is a bilateral and bidirectional mechanism designed to significantly accelerate examination of a patent application if examination work has already been conducted, and approval obtained, in another jurisdiction. Under the program, once a claim under an application in Australia has been accepted, applicants are eligible to fast track examination of their corresponding US patent application, or visa versa.

The purpose of the PPH is to reduce duplication of work by allowing one IP office to rely on work completed by the other IP office. Under this framework, the applicant benefits by obtaining corresponding patents in other jurisdictions faster and more efficiently. Additionally, leveraging examination procedures already available in both offices will improve the quality of examinations made and of patents issued.

Not every application is eligible for entry into the program and there are several formal requirements for requesting an accelerated examination under the PPH program. These requirements include:

• at least one corresponding claim has been allowed in Australia or the US;
• the claims in the application are the same or sufficiently similar to the allowed claim;
• a first examination report must not have been issued;
• supporting documents (being copies of the office actions and claims) are provided; and
• a table is provided showing the scope of the claims and any differences between the two applications.

The PPH program is very significant for anyone seeking to have a patent lodged in the US which has been first granted in Australia. Due to the current demand, the time period for the USPTO to examine a new patent application can be 3–4 years. However, provided the original patent application in Australia has been granted, an applicant making an application under the PPH program for examination in the US can expect the USPTO to examine the patent within 12–18 months.

Therefore, in order to fast track a US application based on an original application in Australia, the patent application in Australia should ideally be expedited and grant obtained firstly in Australia, and then the PPH program can be applied. This gives the applicant an early grant of the Australian application which then can lead to an early grant of the corresponding US application – this early prosecution of patents can give an organisation a significant commercial advantage.

Importantly, the US also has PPH programs in place with a number of other jurisdictions including Japan, Europe and the United Kingdom. Therefore, once a US application has been approved, fast tracked applications could also be made in these other jurisdictions on the basis of the US examination.

The US-Australian PPH program extends the creation of a streamlined, cohesive international patent system and is a significant step towards reaching work sharing on a global scale. Furthermore, if the extended US-Australia PPH pilot is deemed to be a success, Australian entry into PPH agreements with other countries is likely to occur.

Creative Commons Licences

Creative Commons (CC) licences are free licences that have been developed to protect the intellectual property rights of creators while facilitating more versatility and flexibility in using copyright works. Inspired by the open-source movement, they provide an alternative to all rights reserved copyright by allowing copyright holders (creators) to share copyright works on certain terms.

CC licences are not designed to operate as an alternative to copyright but to work alongside copyright by offering some of the creator’s rights on certain conditions. Therefore, pursuant to the CC licence, the creator retains copyright but typically allows others to copy and distribute the work provided the creator is properly acknowledged, often on terms that restrict commercial exploitation by the user.

CC licenses are appropriate for creators wanting to share their work with the public while still retaining some rights. This type of arrangement actively encourages the sharing of material and can be very effective for teachers, scholars, scientists, and writers to gain exposure to their work and potentially lead to financial benefit upon recognition.

CC licences can apply to information delivered in any media (although they are not recommended for licensing software as they do not make mention of computer source or object code), and includes text, books, film, photographs and digital or analogue music.

Format of Creative Commons

The most common form of Creative Commons are essentially a set of boilerplate licence agreements that allows the author of the work to license particular rights to any third party under clearly set out conditions. The online system for CC provides creators with a simple method of selecting which specific restrictions, attributes or other rights they wish to grant in relation to their creative work. The relevant licence is then generated and can be produced in three different formats:

• Human Readable format - A simple, plain-language summary of the licence, complete with relevant icons to clearly indicate to other potential users of the work, the conditions upon which the work is licensed and what rights they have under the licence.
• Lawyer- Readable format - A comprehensive set of legal terms and conditions.
• Machine-Readable format - A machine-readable translation of the licence that can be attached to digital works, or digital copies of work. The code is embedded in the digital source, which helps search engines and other applications identify the work by its terms of use.

The relevant licence appropriate to the work, once selected by the creator, is attached to the work in one of the three formats identified above.

Licences

CC licenses are intended to be beneficial to creators by their easy to understand and easy to use licence framework. There are base rights that apply to each work licensed under a CC. Additionally, licenses can be modified by mixing and matching the key licensing terms, which are set out below. This is advantageous to copyright owners as they can simply define the limits of how their work can be used. For example, work may be released solely under an Attribution licence, or an Attribution-Non-Commercial-ShareAlike licence may be employed.

The four main licensing terms are:

• Attribution: others must give credit to the original creator;
• Non-commercial: others may not use the work for commercial purposes;
• No derivative works: others may not alter, transform, or build upon the work; and
• Share Alike: others may alter, transform, or build upon the work, but must distribute the resulting work only under another Share Alike licence.

The effectiveness and widespread use of CC licences can be seen through some well-known examples. Flickr, a Yahoo-operated online photo management and sharing application, directly incorporates CC licensing as an option in its system, hosting a CC licence generator on its site. It has been reported that over 50 million CC ‘link-backs’ have been generated globally and there is an increasing number of content creators in the digital environment that are recognising and using CC licenses.

The same technique of incorporating CC licensing is used by EngageMedia, a website and network for distributing independent and alternative video works. EngageMedia encourages creators who post videos on their site to allow other users visiting the site to download and share video content under CC licences. Similarly, these licenses may be useful for many video producers who want to share their material but have control over the context in which their content is used and distributed.

While the benefits that CC licences provide creators are evident, there are criticisms that have been directed towards CC licenses. In particular, criticisms have included:

• CC may allow for modification, adaption and reuse of films without requiring that performers be paid, consulted or given adequate credit;
• an author who gives a ‘non-commercial’ licence, may have difficulty generating a commercial interest from a publisher, because the ultimate customer to whom the publisher would want to sell to may be able to access that material for free via the existing licence; and
• as licences are irrevocable, where a ‘non-commercial’ licence is granted over material, it may be difficult to subsequently publish the material in order to generate a commercial interest because the ultimate customer may already be able to access the material for free.

While the potential impact of CC licences and the clarification of wording within the licences are factors for users to consider, the flexibility and benefits that CC licenses offers are clearly apparent. If you are considering publishing material on the internet with a view to having it freely used and distributed, licensing your work under CC can be a smart alternative as it actively encourages sharing with permission and attribution.

For more information visit http://www.creativecommons.org.au/.

Set Back To Shape Trade Marks? Guylian & the Chocolate Seahorse

In a recent Federal Court decision, chocolate manufacturer Chocolaterie Guylian N.V. (Guylian) was unsuccessful in its attempt to overturn the May 2007 decision of the Registrar of Trade Marks to refuse registration of its seahorse shape praline chocolate as a trade mark.

Under the Trade Marks Act, a “trade mark” is defined as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. A “sign” is defined as including shapes.

In refusing to grant Guylian’s application for a statutory monopoly over the use of the seahorse shape in relation to praline chocolate, the Court relevantly noted that other chocolatiers had in fact marketed and sold chocolates in the shape of seashells and that, taking account of the likelihood that other traders, acting without improper motive, could legitimately decide to use the seahorse shape, granting monopoly rights would potentially lead to market confusion.

Despite Guylian adducing survey evidence that significant proportion of the survey respondents identifying Guylian when they were shown the seahorse shape, the Court was of the view that such an association on the whole is likely to be referable to more than just the shape itself.

Rather, Guylian’s sale of the sea shell and seahorse shaped chocolates over a long period of time under the banner of the distinctive “Guylian” and “G” trade marks, and the marbled appearance on the surface of the shape, were said to have been likely factors in consumer recognition as opposed to a reliance on the seahorse shape itself. It also did not assist Guylian’s case that out of those respondents who did associate the seahorse shape with a particular brand or manufacturer, almost a quarter believed that the seahorse shape was manufactured by someone other than Guylian.

The Court’s rejection of Guylian’s survey evidence indicates that such evidence is unlikely to be sufficient in and of itself to prove the distinctiveness of a shape as a trade mark, and that particular care needs to be taken when formulating the parameters of the survey. Although such evidence may demonstrate a large degree of public recognition of the shape, what is not proved is that members of the public would rely upon the appearance alone to identify the goods. Accordingly, consumers would recognise the shape but not treat it as a trade mark.

Google Book Search Project

On 4 September 2009, U.S. copyright holders who did not take positive action in relation to a US Court proceedings were deemed to have given their implied consent to Google to publish their works on the internet pursuant to the Google Book Search Project, releasing Google from claims of copyright infringement in the process.

The Google Book Search Project is the result of the out of court settlement reached in October 2008 between the parties to The Authors Guild et al v Google Inc class action. The action was initiated against Google in the United States in 2005 by various authors and publishers in response to Google’s digitisation of copyright works without the explicit permission of the copyright owners.

Google refuted the allegations of copyright infringement, claiming that the digitisation of “snippets” of books constituted “fair use” under U.S. Copyright Law. Nevertheless, after two years of protracted negotiations, the parties reached a settlement.

The Settlement includes any person or entity that owns a U.S. copyright interest in one or more books or inserts in books that were published on or before 5 January 2009. As a result, international authors and publishers will be included in the Class where their books or inserts were published in the United States, or where their resident country has or had at the time of publication, copyright relations with the United States.

Under the terms of the Settlement, copyright holders were given the following options in relation to their copyright works:

• to make a claim to books and inserts before 5 January 2010 to be eligible for cash payments for works digitised on or before 5 May 2009;
• to opt out of the settlement before 4 September 2009; or
• to file an objection or notice of intention to appear at a scheduled Fairness Hearing on or before 4 September 2009.

Copyright interest holders who took no action by the 4 September deadline gave their implied consent to be subject to the terms of the Settlement. Copyright holders who opted out of the Settlement retained the right to take action against Google in the American Court System for alleged copyright infringement.

Pursuant the Settlement terms, Google is able to continue its online publication of copyright works provided that it pays a minimum of US$45 million compensation to copyright holders whose works were digitised by Google without permission prior to 5 May 2009. The minimum amount of compensation payable by Google to each right holder is US$60 for principal works, US$15 for an entire insert, and US$5 for a partial insert.

Under the Settlement, Google must also contribute US$34.5 million towards the establishment and maintenance of a Book Rights Registry which will represent the interests of copyright holders and allow them to search for and claim their works, and to consent or deny Google the right to make specified commercial uses of their works.

The Books Rights Registry is also the vehicle by which copyright owners who consented to the digitisation of their works will receive a proportion of the revenue earned by Google for use of that work. Book prices will be set by the rights holder, and advertising revenue will be divided 63-37between the copyright holder and Google.

The Project is subject to a Fairness Hearing to be held in New York on 7 October 2009. The fate of Copyright laws in the US remains to be seen.

Trade Mark Alert Update: Trade Mark Scams

In our June 2009 IPT Newsletter, we highlighted the fact that owners of trade marks should be wary of unsolicited correspondence.

Shortly afterwards, IP Australia issued an official notice regarding unsolicited correspondence a number of trade mark owners had received from a company known as TMP, Trademark Publisher. The unsolicited correspondence includes a Sydney street address for TMP and requests payment for publication of the trade mark owner's trade mark details in a “TMP Info Register”. Trade marks owners should note that this company is not associated with IP Australia and has accordingly has no official or government authority. The service it offers does not affect official trade mark registration or trade mark rights in Australia or, to the best of our knowledge, any other country.

Should you receive unsolicited correspondence from TMP or any other third party and have any queries as to whether the correspondence is legitimate, please contact DibbsBarker’s Intellectual Property & Technology Team.

Does Your Business Need An IP Audit?

Is your company making the most of its Intellectual Property (IP)? Does your company actually own the rights to the IP it uses?

IP (patents, trade marks, designs, copyright, confidential information, business, company or domain names) is amongst the most often overlooked and untapped group of assets owned by a business. If you are unsure whether your business owns or uses IP, chances are you may require assistance in keeping track of your IP assets.

DibbsBarker offers its clients tailored IP audit solutions, from preliminary overviews to comprehensive and systematic reviews of specific IP.

The aim of an IP audit is to identify all of the IP owned or used by a business and then determine whether the IP is protected, or how best the IP can be protected.

By conducting an audit it is possible to determine:

• the ownership of the IP used in your business;
• status and currency of the IP;
• whether the IP is being adequately protected;
• measures to be implemented to ensure better protection;
• whether the IP is being exploited to its true potential;
• whether IP rights are vulnerable to attack or challenge; and
• special risk factors that influence the long-term value of your IP.

Though IP audits naturally become more of a priority as part of due diligence when a business is being bought or sold, or when a company seeks to enforce or defend its IP rights, IP audits should ideally be seen as an integral aspect of good business practice.

DibbsBarker can assist your company in the establishment of an IP Register that can be a simple, yet effective way to manage your IP assets.

Congratulations Stuart!