Patent Troll Struck Down

Here's a story from Wired that readers might find interesting. The anti-software patent crowd will probably be cooing with delight, not to mention those suffering from troll-paranoia. Of course, that's not to say that there is anything wrong with the decision. I am sure a Texas Jury would have no problems interpreting a software patent...

But the reason that this article captured my attention was that it so clearly illustrates how inaccurate public perception can be. The article is entitled "Texas Jury Strikes Down Patent Troll's Claim to Own the Interactive Web". But one of the independent claims defining the invention reads as follows:

 A method for running an application program in a computer network environment, comprising:

 providing at least one client workstation and one network server coupled to said network environment, wherein said network environment is a distributed hypermedia environment;

executing, at said client workstation, a browser application, that parses a first distributed hypermedia document to identify text formats included in said distributed hypermedia document and for responding to predetermined text formats to initiate processing specified by said text formats; utilizing said browser to display, on said client workstation, at least a portion of a first hypermedia document received over said network from said server, wherein the portion of said first hypermedia document is displayed within a first browser-controlled window on said client workstation, wherein said first distributed hypermedia document includes an embed text format, located at a first location in said first distributed hypermedia document, that specifies the location of at least a portion of an object external to the first distributed hypermedia document, wherein said object has type information associated with it utilized by said browser to identify and locate an executable application external to the first distributed hypermedia document, and wherein said embed text format is parsed by said browser to automatically invoke said executable application to execute on said client workstation in order to display said object and enable interactive processing of said object within a display area created at said first location within the portion of said first distributed hypermedia document being displayed in said first browser-controlled window.

Interesting how Wired appears to think that the above passage is the same as providing an Interactive Web. If only patent practice were that simple. Perhaps I'm being pedantic or even silly, but people reading Wired are voters and voters drive decisions.

Also, the diagram used by Wired (see above) is actually a diagram of the prior art. That means that it does not actually form part of the invention and is just provided by way of background. So for Wired to hint that the diagram represents the cover that Eolas was trying to achieve, then hopefully it is doing so out of ignorance. Anything else would be dishonest.

There's a lot of hullabaloo about patent trolls. Frankly, I don't get it. Improve the examination process and half the battle is won.

OK, rant over. My main point is that the interpretation of patents is highly complex and to reduce the above claim into two words is disingenuous at best. I won't even start with juries... 

File the Patent Application as Soon as Possible

Here's an interesting article from the excellent LoTempio Law Blog.  This post explains how Facebook got lucky in a case where it was found that its software infringed a patent. Fortunately for Facebook, that patent was found to be invalid because of disclosures made before the patent application was filed.

Interestingly, the case shows that the engine running Facebook is someone else's invention. Also interesting are the questions raised by the author concerning Zuckerberg's conduct at the time when he supposedly "invented" Facebook. All very intriguing...

Given the present value of Facebook, the failure to file early was a huge mistake on the part of the patentee.

Big Bash Out for a Duck

The other day I was busy attempting to fight off the ravages of old age by moving some weights around in my garage. I enjoy listening to "Hot Tomato", a popular local radio station when I do this kind of thing.

My ears pricked up when I heard one of the presenters complain, jokingly, about the branding used by the "Big Bash League", a cricket tournament between various clubs around Australia. The presenter felt that not much thought had been given to the team names. I must agree. Let's see what we have.

"Adelaide Strikers" - not even a scintilla of imagination.
" Brisbane Heat" - sounds like a police show.
"Hobart Hurricanes" - what starts with "H"?
"Melbourne Renegades" - this is cricket...not some revived glam rock band...
"Melbourne Stars" - Ooh, that must have been difficult...

Australia is a vast land full of exciting words and imagery. And this is what they come up with?  Sad, really...

Effexor Patent Denied Priority Date

Case


Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132

Lesson:

Applicants should always ensure that the specification currently on file tracks developments. For example, when it becomes clear that a preferred formulation is no longer specifically described, action should be taken immediately so as not to lose the ability to protect that formulation. Failure to do so could result in the public release of the formulation before an amendment or a divisional is filed, leading to disastrous consequences, such as the inability to enforce the patent.

Apple Loses Bid to Extend Ban on Samsung Galaxy Tablet

Some news from Business Week: http://www.businessweek.com/news/2011-12-08/apple-loses-bid-to-extend-samsung-galaxy-tab-ban-in-australia.html

It appears that the Galaxy will be available just in time for Christmas.

Patent Filings Still on the Increase in the U.S.

Here is an interesting article from the Lo Tempio blog.

It appears that in spite of of all the doom and gloom, there have been a record number of patent applications filed for the United States 2011 fiscal year. If you have the time, the "Performance and Accountability Report" would make interesting reading.

Clearly, even if times are tough, failure to file a patent application can have detrimental consequences in two or three years' time. The reason is simply that both here and in the United States, it can take 2 to 3 years before a patent is actually granted. If the economy has picked up by then and you have failed to file a patent application two or three years earlier, you could be missing out on the gravy train. I suspect this is why the number of applications per year is still climbing in the US and particularly in China.

Samsung v Apple - Injunction Overturned but Orders Stayed

As the struggle continues, the Federal Court has overturned the injunction by Apple against Samsung. However, it appears that the Galaxy might not hit the stores by Christmas. Apple's legal counsel has managed to get the orders stayed until 4 PM on Friday pending an appeal to the High Court.

Here's a good article on this: http://www.zdnet.com.au/galaxy-tab-ban-overturned-in-australia-339327063.htm?fb_ref=fb

China - The Awakening Patent Power

This is an interesting article on how serious China is about patents. The time for being suspicious and patronising is over.

China awakening patent power

Patent Myths - Changing the Invention

One of the patent myths I hear regularly is what I like to call the 10% rule. It's often couched as follows: "My mate told me that it's pointless to get a patent because someone just needs to change it by 10% and they can get around the patent". Attempting to keep all traces of condescension out of my voice, I ask earnestly: "If I gave you a pair of scissors, how would you change it by 10%?"

The marginally better remark I hear is: "I've heard that there's no point in getting a patent because someone just has to change it a little bit and they can get around the patent". This remark is marginally better because there are many patents out there which define a patent so narrowly that a small variation will be sufficient to avoid infringement.

Australian Designs - Absolute Novelty

Here's an interesting article from Gilbert & Tobin.

We often have to give both patent and design registration advice to clients. It's important to remember that there is no grace period for filing an application to register a design in Australia. So applicants must either file in the first instance while the design is still confidential or make use of the 6 month convention period as provided in the Paris Convention.

At the end of the day, the rule remains: keep it secret until you have had a discussion with your patent attorney.

Here is some more information on the registration of designs - http://beagar.com.au/Registered%20Designs.htm

Home-based Business Advice

Here's an interesting and useful article for all of you that are contemplating working from home. It's a challenge, but I can certainly recommend it, since I am one of the lucky ones that do work from home.

Why in an IP blog? Well, many of my clients do have home-based businesses. Also, many looking to file patent or trade mark applications need to find ways of keeping their overheads down. Working from home is definitely one way of doing that.

It's written from a US perspective, but it remains highly appropriate for us here in Australia

http://www.allbusiness.com/running-home-based-business/16640691-1.html

Raising the Patent Bar - Part II (The Innovation Patent)

In my post of 28 July 2011, I discussed some aspects of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011.

In this post, I will have a look at how it's going to effect our innovation patent system. Also, the Advisory Council on Intellectual Property (ACIP) has recently released an issues paper which discusses some concerns with our innovation patent system with a view to initiating a discussion as to whether or not it should be reviewed.

Computer Implemented Purchase of Domain Names - Not Patentable

Here's another decision where "computer implementation" does not provide the necessary subject matter -

In short, it is simply not enough that a computer is used. The nature of the invention must be such that it is practically necessary to make use of a computer. In this case, I think that further technical information should have been supplied as to how the method was automated and what advantages those provided over and above carrying out the steps manually. On the other hand, having briefly read the specification, there is clearly an argument to me made that computer implementation is necessary.

There is invention in automation, of course, so I believe that the Commissioner and our courts need to be wary of simply relying on the fact that a computer-implemented invention can be carried out manually since that may me saying that automating an otherwise manual operation is not proper subject matter.

Computer Implemented Insurance Plan - Not Patentable

Discovery Holdings Limited [2011] APO 56


"From reading the specification as a whole the alleged invention lies within the method of managing a life insurance plan. The steps involved in this process are mere actions to be taken by legal entities as elements in a business scheme and as such, no concrete, tangible, physical or observable effect is produced as a result of the implementation of the claimed method. Therefore the method is not a manner of manufacture." - The Delegate


I couldn't have said it better.

8 Reasons Why Pirating Hurts Everyone

I realise that this is not strictly speaking associated with the registration of IP. But it is related and very relevant.
http://www.internetserviceproviders.org/blog/2011/8-reasons-why-pirating-hurts-everyone/.

Worth a read.

Alignment of US and International Patent Practice

The Leahy-Smith America Invents Act (AIA), H.R. 1249, was passed by the U.S. House of Representatives on June 23, 2011, and by the U.S. Senate on September 8, 2011. The bill now goes to President Obama to be signed into law. http://www.uspto.gov/patents/init_events/aia_implementation.jsp

One of the most important provisions of this Act is that it introduces a "first-to-file" system as opposed to the "first-to-invent" system that is currently in place. This will bring the US system into line with the "first-to-file" system used in Australia. While it has its detractors, I welcome this change because, to some extent, it saves my clients having to adopt a different set of rules for the US. In the complex world of patent practice, any such alignment is to be welcomed.

Here's the wiki on the difference between the two systems: http://en.wikipedia.org/wiki/First_to_file_and_first_to_invent

Tilting at Windmills?

A meeting I had the other day prompted me to write this post. My prospective client was a bright young man who appeared to have done quite a bit of research himself. His source was the IP Australia website. There's no doubt that IP Australia's website is extremely useful, both for practitioners and inventors.

But let us go back to the principles of our Patents Act. As you will see, there are clearly two sides to the patent system. One side is the government, represented by IP Australia. The other side is the Applicant, being that person or organisation attempting to acquire a granted patent.

Why this need for two sides? It's important to understand the answer. The patent system is based on a quid pro quo. The government will give the inventor/s the right to exclude all other Australians from exploiting the invention for the life of the patent. In return, the inventor/s must give sufficient information to the public so that, when the patent expires, the public can exploit the invention. The instrument for enabling this quid pro quo is the patent specification.

It is the role of IP Australia to investigate whether or not the government should enter into the quid pro quo. It is not the role of IP Australia to enable the quid pro quo. In other words, IP Australia is not obligated to act in favour of the inventor/s. On the contrary, IP Australia's role is simply that of a proposed party to an agreement. The fact that IP Australia ostensibly encourages the filing of patent applications is contrary to the spirit of the Patents Act, even though it is admirable.

So you need to bear in mind that dealing with IP Australia yourself is akin to entering into an agreement with another party without professional assistance. Of course, this sounds like a plug for the profession and perhaps you have reason to be jaundiced. But please at least phone around and do some homework before dismissing the option of consulting a patent attorney.

A Rough Guide to Patent Searching

I often meet prospective clients that have a simple, but clever concept.  It is invariably mechanical and he or she is not sufficiently cashed up to add the cost of a professional search to patent application costs, product development costs, marketing costs, etc. However, a search is mandatory, in my opinion.

So, what to do? Well, it is possible to carry out your own search, quite effectively.  There are a number of free patent searching websites. I describe a few below. The list is not exhaustive and you should do your own investigations as well.

Patent Prosecution Highway - Update

A number of countries have entered into bilateral agreements in an attempt to speed up patent prosecution. This is an excellent initiative and one that I support wholeheartedly.

WIPO has some news about this system in its latest newsletter: http://www.wipo.int/pct/en/filing/pct_pph.html.

Seafood Innovations enforces innovation patents

Case:  Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2011] FCAFC 83

Construction

The fish stunning machine covered by the patents had a fish stunning device, a fish guide and a trigger. The fish is moved in one direction from an entrance to an exit.

Relevantly, one of the claims set out: "the fish guide includes a floor being pivotally mounted between a first position and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit".

The Bass devices included a pivotally mounted floor which moves from the first position to the second position. But they also included a cheek plate and a top plate.  So the three devices acted together as a sphincter  to allow the fish to pass unidirectionally.  Bass contended that the devices did not infringe the claim because it was not the floor alone that allowed the fish to pass.

A common sense construction was adopted. There was evidence from a skilled addressee that the Bass devices and the apparatus of the claims of the first innovation patent operated in the same way and that there is no practical difference in terms of the purpose of the apparatus in this context. 

Fair Basis

Bass pointed out that the pivotally moveable floor was the only description of the fish guide in the specification.  The description stated that the fish guide “comprises” (in the sense of consists of) the floor. Bass said that that made the pivotally moveable floor an essential integer of the invention which must, therefore, be included in the claims. On the other hand, Seafood Innovations said that the description of such a fish guide is but one embodiment of the apparatus broadly described, without any such limitation.

Bass followed the incorrect approach of seeking to isolate essential integers from the body of the specification in understanding the claimed invention.  As held in Lockwood Security v Doric Products [2004] HCA 58, a narrow embodiment of a broad claim does not render the claim invalid for lack of fair basis.

Lessons

Perhaps the most important message to come out of this decision is the reference to "common sense".  It is always necessary to adopt a common sense construction.  In order to do so, we always need to refer back to the skilled addressee and how he/she might read the document.