Welcome
Many of us have been living and working with a heightened sense of
uncertainty for the past two years. Uncertainty can however offer a chance at a
different outcome, possibly turning around an initially unfavourable position.

In this edition of Inspire, Jacqueline
Leong analyses the successful
appeal in Allergan v Self Care. While
the Full Court agreed with the
finding that consumers would not
confuse Self Care’s sign PROTOX
with Allergan’s BOTOX mark, that
was not the end of the story. The
commonalities between the signs
and the goods on which they were
used, gave rise to a likelihood that
consumers would be confused
as to whether the products were
from the same source, and a
finding of deceptive similarity.

The appellants were also
successful in overturning the first
instance decision in Hardingham
v RP Data resulting in a finding
of copyright infringement.

Alexis Keating discusses the
challenges of seeking to rely on
implied terms which led to a finding
that certain uses of copyright
works had not been authorised
and were therefore infringing.

In Cytec v Nalco, the patent office
decision to reject a ground of
opposition based on lack of support
was overturned by the Federal
Court, which found that the technical
contribution made by the invention
did not extend to all of the subject
matter covered by the claims.

As Danielle Burns explains, seeking
broad patent protection based
on a relatively narrow disclosure
in a specification is becoming
increasingly challenging in Australia.

Inspire December 2021
2 Adrian Crooks, Principal
BEng(Civil)(Hons) LLB LLM FIPTA
adrian.crooks@pof.com.au 2021: Living with COVID
We are nearing the end of yet another strange
and unprecedented year. COVID-19 continues
to impact all of us, from how people work to
how we conduct our daily lives. We continue
to manage the evolving situation and monitor
closely how COVID-19 is affecting our
communities, our team and our clients.

We are immensely proud of
the resilience, flexibility, and
professionalism of our team, which
has stayed focused on delivering
outstanding service to our clients.

While some Australian research
institutions remain financially
constrained, in general the
Australian innovation sector has
remained healthy during 2021.

Increasing business confidence
around the world has resulted in
strong growth in IP rights filings
from many of our international
clients most notably in the
telecommunications, IT, medical
devices, pharmaceuticals and
biotechnology sectors.

Also in this edition, Annabella
Newton looks at how patent
term extensions can be impacted
if the claims cover more than
one pharmaceutical substance
and we hear from the Australian
Battery Society on the significance
of an upcoming International
Meeting on Lithium Batteries.

Australia has been able to keep
community transmission of
COVID-19 very low during much of
the pandemic, but it has come at
the cost of extensive lockdowns
and state border closures. As our
vaccination rate now climbs to be
one of the highest in the world,
our society is finally opening up.

We are planning to move to a hybrid
model in the new year that lets
everyone split their time between
the home and office. Our goal is
to deliver the benefits of work-life
balance for our people, while still
providing the in-office interaction
and collaboration with workmates
and clients that is so important.

Our thoughts and best wishes go
out to our colleagues and friends
around the world as we all learn
to live with COVID-19. We remain
focused on helping to support your
business goals, and on ensuring
that we continue to have a talented
team and efficient systems to
deliver great outcomes for you.

We look forward to working
with everyone next year and
we wish you a safe festive
season and a happy new year.

Our offices will close at 3pm (AEDT)
on Friday 24 December 2021. We
will reopen with a limited number
of staff on Tuesday 4 January
2022, prior to a full reopening
on Monday 10 January 2022.

Ross McFarlane | Managing Principal
BEng(Elec)(Hons) FIPTA
ross.mcfarlane@pof.com.au



Are your claims supported
by your technical
contribution to the art?
The Federal Court of Australia in Cytec v Nalco 1 overturned a decision
by the Commissioner of Patents and confirmed that the Australian support
provisions require:
> an assessment of the technical contribution to the art disclosed
by the specification; and
> that the monopoly claimed be justified by that technical contribution.

The technology in issue related
to scale formation in alumina
factories. The ‘Bayer’ process is the
primary process by which alumina
is extracted from bauxite ore, and
is used to produce nearly all of the
world’s alumina supply. A major
problem during the process is
formation of sodium aluminosilicate
scale in process pipes, vessels, and
equipment. The patent application
was directed to methods for
reducing scale during the Bayer
process, involving use of certain
silane based small molecules.

Claim 1 recites:
“A method for the reduction of
aluminosilicate containing scale
in a Bayer process comprising the
step of: adding to the Bayer process
stream an aluminosilicate scale
inhibiting amount of a composition
comprising at least one small
molecule selected from…..”
The judge construed the claim,
owing to use of the term “at least
one”, as covering methods where
a composition comprising one or
a mixture of two or more silane
based small molecules is used
to reduce scale in the Bayer
process. In particular, the claims
covered use of a single silane
based small molecule.

The technical contribution
and lack of support
It was argued that the technical
contribution to the art disclosed by
the specification was the synthesis
of a reaction product mixture
by reacting an amine, an amine-
reactive silane compound and an
amine reactive hydrophobe to form
a mixture of silane-based small
molecules for reducing scale in the
Bayer process.

The judge considered that the
technical contribution did not extend
to use of a composition comprising
a single silane based small molecule –
there was no supporting disclosure of
the synthesis of any such composition
or any supporting disclosure of
isolating a single small molecule
from the complex reaction product
mixtures. And as such, the claims
were considered to lack support.

Impact for the patentee
It is not uncommon when seeking
patent protection to try and obtain
coverage for not only your lead
product, but variations of it so that
you have broad scope to continue
to develop your product or to keep
competitors out of the field.

However, it is becoming increasingly
difficult in Australia to claim such
variations, and the inclusion of
experimental data in the specification
is becoming more important to
support broad product protection.

It is important that the application
include data demonstrating that all
products claimed have the same
surprising, advantageous effect
or function that forms the essential
crux of any technical contribution
argument. At the very least, the
data should make it plausible
that the effect is shared across
the products claimed. Further,
the disclosure should teach the
skilled addressee how to obtain
all of the products claimed.

It is not uncommon
when seeking patent
protection to try and
obtain coverage for not
only your lead product,
but variations of it...

1 C ytec Industries Inc. v Nalco
Company [2021] FCA 970
Inspire December 2021
Background 3
Dr Danielle Burns | Principal
BSc(Hons) Phd MIPLaw
danielle.burns@pof.com.au