A combination of three known active pharmaceutical ingredients (APIs) called levodopa, carbidopa and entacapone, and methods of producing that combination and tablets comprising it used in the treatment of Parkinson’s disease.
Drafting tip: Court referred to a paragraph in the specification that referred to "comprises". This was used in the construction of the claims.
Skilled addressee - a legal construct whose appreciation must draw upon expertise in more than one field, discipline or art. That will reflect the likely reality that the claimed invention will have involved an inter-disciplinary team of various skilled persons. The legal standard for the degree of expertise that the skilled addressee will bring to the problem at hand, in light of the common general knowledge, is, again, an objective one of a non-inventive skilled worker in the field: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd .
External fair basis (note that the new Act makes this less relevant now)
Internal fair basis ( " )
Novelty - Some really good basic principles.
Interpretation of various words and phrases.
"Adapted to" means "Capable of". Be careful of functional phrases like this. Check utility.
"Highly qualified experts, even if they have a capacity for original research, should not on that basis be disqualified from assisting the Court".
Definition of a skilled addressee.
Use of expert evidence in determining validity issues.
Hindsight and Common General Knowledge.
Meaning of obvious - "very plain".
The need to lead evidence that prior art "would have been reasonably able to have been ascertained, understood and regarded as relevant in Australia by a person skilled in the art when seeking a solution to the problem the invention seeks to overcome."
Utility - to be established by evidence. Some good case law here. Read the section entitled "Expert Evidence".
Clarity - use of imprecise terms. Skilled address must be able to resolve ambiguity.
The Supreme Court, in the case now known as "Alice" (http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf), set out that advances in non-technological disciplines such as business, law or the social sciences, simply do not count. Any claims that are directed to an entrepreneurial objective, such as a method for increasing revenue, minimising economic risks or structuring commercial transactions, as opposed to a technological method, would not be patent eligible.
You will see from the above link that the USPTO has provided a large number of different examples, both of eligible and ineligible subject matter. It has become practice to review each of those examples and attempt to provide or find analogies between the eligible cases and the invention that is under examination and has been rejected. That said, a golden thread that appears to run through the examples is that any form of economic practice, no matter how complex, or how beneficial to society, is simply rejected because the relevant claim defines an invention that attempts an entrepreneurial outcome as opposed to a technological outcome.
Also, no matter how complicated the economic practice is, it is generally carried out by "generic" computers performing "generic" processes or functions. That would stand to reason, otherwise the commercial model may be flawed. In other words, there is usually no improvement in the operation of the computer or some other aspect that would take the invention beyond what is referred to as an "abstract idea". For example, one may design algorithms that improve the operation of a processor. A processor, so improved, would more than likely be patent eligible. However, designing an algorithm that can be executed by a standard, "generic" processor would more than likely not be the designing of eligible subject matter, particularly if that algorithm were designed to achieve some form of economic outcome, as opposed to a technological one.
It follows that, for rejected applications, the task that we face is to extract some material from the specification that describes some technological advance.
One path out of this morass could be the filing of a continuation-in-part application based on the rejected application. The purpose of doing so would be to rewrite the patent specification in such a way as to emphasise, and seek protection for, the technological aspects of the invention, as opposed to the economic aspects.
Such technological aspects might include the generation of material in a technical manner. For example, one invention that was held to be patent eligible described the generation of a hybrid or composite webpage using information from two other webpages (DDR Holdings LLC v Hotels.com - http://caselaw.findlaw.com/us-federal-circuit/1685815.html). This was deemed to be primarily technical as opposed to economic. In this case, I understand that the resultant composite webpage was actually intended to be used in financial transactions. However, the way that the patent specification was prepared provided basis for a claim directed to the technical achievement of obtaining the composite webpage. In other words, this invention was not regarded as an "abstract idea". Another invention that was held to be patent eligible involved the transformation of data, using encryption.
One of the benefits of preparing and filing a continuation-in-part application is that the specification can be somewhat amplified, although to a limited extent. This can be done by way of clarification. Also, if certain technical aspects are not yet in the public domain, then those aspects can be introduced and built into the claims in the specification. However, in order for the claims to retain the earliest priority date, the claims would have to find basis in the specification as originally filed. That said, the further material added into the continuation-in-part application may very well provide the examiner with the idea that the claims are directed to something more than just an algorithm that achieves an economic outcome when executed by generic computers acting in a generic manner. The reason for this is that the claims are interpreted in light of the specification, not in light of the parent application, even though they take their priority from the earlier application.
Another benefit of the continuation-in-part application is that the application could be directed or allocated to a different art unit. For example, it could be allocated to an art unit that deals with electronics/software as opposed to e-commerce. I believe that this would help significantly. This would require that the application be prepared with a title and an abstract that do not hint at all to economic practices.
A possible example of such new material would be the generation of a tangible product, such as a web page or electronic report, that was more than simply the display of data. Another example might be the generation of a complex database in a dynamic manner, where we introduce material related to the building of the database that is specific to your product and is not merely a "plug-on" which would be regarded as generic.
A potential risk with this is that it may open up further fields of searching for the examiner. This may raise the risk of "inventive step" objections.
Another issue with this approach is that it extends the prosecution process significantly. This may be disappointing if you were hoping for a resolution sooner rather than later. However, there is a chance that, with further time, the USPTO may become a little more accepting of such applications.
Unfortunately, the preparation and filing of a continuation-in part application is, as far as costs are concerned, are similar to the filing of a fresh application. In this case, there would be further costs associated with actually preparing the patent specification that is to form the basis of the continuation-in-part application.
Remember that in Europe, it is possible to use what could be regarded as ambiguous terms in claims. For example, words such as "optionally" and "or" can be used to reduce the number of claims to 15 or below.
This is the first in a series of posts concerning grace periods around the world. Australia is a good place to start.
But first of all, let's consider what is meant by "grace period". This is not the convention period governed by the Paris Convention. I see that confusion often. Rather, it is a period of grace for a public disclosure made by the inventor(s) before filing the first patent application covering the invention. Usually, such a disclosure would result in the invention no longer complying with our novelty and inventive step requirements. More here in connection with those requirements.
In Australia, that grace period is 12 months. However, there are some important considerations:
The patent application must be accompanied by a complete specification. This means that it will be necessary to file either a standard or an innovation patent application. International applications are regarded as standard patent application, so the filing of an international application can also be effective.
A third party who takes definite steps to exploit the invention before the application is filed has a defence to an infringement proceeding brought once the patent is granted.
You should never rely on the grace period, unless you have no choice. The grace period does not apply in most other countries. The public disclosure will prevent you from obtaining valid patent rights in those countries.
In this matter, the delegate of the Commissioner of patents dismissed multiple grounds of opposition. He did so, requiring further and better particulars for the ground of novelty raised with regards to the allegations of prior use.
Of interest here are the principles that were set down by the delegate, citing various cases and the Federal Court rules.
An opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed. An opposition may be dismissed if it is considered to have no reasonable prospects of success.
In determining whether or not there is a real prospect of success, consideration is given as to whether there is a real rather than fanciful issue to be decided. The onus will initially be on the applicant to show that the opposition has no reasonable prospects of success, but the onus may shift to the opponent to explain its case if a real issue is not self-evident. This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established.
A dismissal will generally be inappropriate where expert evidence is required to determine an issue. However, this does not preclude dismissal of an opposition where there is a clear deficiency in the case to be argued, such as a technical divergence of a citation and the application or where an opposition involves issues of construction and expert evidence is not necessary to clarify technical terms or other matters that are in doubt.
Evidence of an “ambivalent character” will generally be sufficient to establish a reasonable prospect of success. However, if the evidence is only one-way, or can clearly lead only to a single conclusion, then a proceeding may be dismissed. If no particulars have been provided in relation to a ground of opposition then it may be considered to have no reasonable prospects of success.
Care must be taken not to cause an injustice to a party by dismissing an opposition.
The following points regarding the nature of the particulars are also useful:
for documents, the relevance of the reference to the ground together with page and line references to direct the reader to the specific part of the document that is to be relied on. Also, where patent documents have been published in more than one version, then the version being relied on should be identified and if reference is made to patent family members then material facts relevant to the family member should also be clearly identified;
for common general knowledge, a brief description of the alleged common general knowledge and identification of the person skilled in the art including brief details of any material facts needed to establish a prima facie case;
for manner of manufacture, a brief description of the particular type of manner of manufacture, eg. a mere mixture of known ingredients, together with brief details of material facts to establish a prima facie case;
for matters such as prior knowledge, sale, prior use, a brief description of their relevance to the ground together with a brief details of the material facts to support a prima facie case, for example, (a) the date and place of any use, (b) the person or persons to whom the invention was allegedly disclosed or sold;
for trade marks or trade names, a brief description of the nature of the material together with a description of its relevance to the opponent's case. Of themselves, references to trade marks or trade names are meaningless particulars; it is quite possible for the constituents of a product to be changed and for the product to continue to be sold under the same trade mark or trade name;
for section 40 matters, a brief description of the specific subject matter causing section 40 not to be satisfied, a clear statement of the specific statutory requirement and the identification of the deficient part of the specification (by reference to page and line and/or claim numbers).
1. A method of managing the operation of a game which includes a game environment, and is programmed to control a gaming action for at least one of a plurality of users, said managing method using a programmed computer to effect the following steps:
a) tracking the activity of the at least one user in the course of the gaming action;
b) permitting the at least one user to create an account for receiving a consideration of the at least one user, the at least one user having a set of demographics;
c) determining the eligibility of the at least one user to purchase at least one of a plurality of game objects, said eligibility determining comprises the following sub steps:
i) permitting the at least one user to select the at least one game object,
ii) setting the purchase price of the at least one game object, and
iii) comparing the account balance of the at least one user's consideration with the set price of the at least one game object and, determining if the balance of the user's consideration is not less than the set price, determining the at least one user to be eligible to purchase the at least one game object;
d) displaying in the game environment a purchase price of the at least one game object;
e) presenting to the at least one user an offer to purchase the game object dependent upon a group of game parameters comprising the tracked activity of the at least one gaming action of the at least one user and, the one game environment or the one set of demographics of the least one user
f) permitting the at least one user to purchase the at least one game object at the set purchase price without interrupting the gaming action of the at least one user; and
g) supplying the at least one purchased game object to the at least one user without interrupting the gaming action of the at least one user and incorporating the game object into the game.
Notable is the court's statement that "the specification suggests the method may be performed with or without a computer,...". Also neither "the claim nor the specification provides any details on the "programmed computer" or how implementation of the method steps by means of a computer would differ substantively from non-computer practice."
Gametek did try to make something of the 12 steps in the above claim. However, the court held that "these twelve steps are nothing more than a teased-out version of the basic steps of any commercial transaction: a
seller offers an item for sale to an interested and able buyer, the buyer accepts that offer, and the seller then provides the item in exchange for valuable consideration." While the practice of these steps might be facilitated by use of a computer, a computer is not necessary. The court cited CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), in which it was held that“methods which can be performed manually, or which are the equivalent of human mental work, are unpatentable abstract ideas”.
The Machine-or-Transformation test was also applied. In short a "claim in meaningfully limited if it requires a particular machine implementing a process or a particular transformation of matter". To cite the famous Bilski decision: "When assessing computer implemented claims, while the mere reference to a general purpose computer will not save a method claim from being deemed too abstract to be patent eligible, the fact that a claim is limited by a tie to a computer is an important indication of patent eligibility.”
Gametek contended that the processes in the claim cannot be, and never were, performed by a human absent a computer. But Gametek offered no explanation of "why these seemingly obvious steps have never been and could never be performed by a computer.
The court concluded that the claims were unpatentable.
The message here is clear. You are going to have problems in the United States (and probably in Australia as well) if your invention does not depend on the operation of some form of data processing apparatus. You need to be sure to provide your patent attorney with plenty of technical information to support an argument that a some form of machine plays an important and significant role in the exercise of your invention,
This judgement has some interesting snippets. It is useful to read as a lesson in claim construction. Some well-known rules are emphasized.
A practice note for litigators is set out in paragraphs 125 to 127.
This case reinforces the principle that the claims must always be interpreted in light of the specification read as whole. See for example paragraphs 144 to 152. Four very useful points of claim construction are set out in paragraph 175.
Here's an example (paragraph 201): "In my view, the skilled addressee would understand the description of the invention to relate to the measurement of loads or forces at the suspension, and would apply that understanding to his or her reading of claim 1. In cross-examination Dr Blanksby gave evidence which indicates that he approached the claim in precisely this way, that is to say, having read the Specification as a whole, he formed the view that it was “not the intention of the patent” to measure loads or forces at the tyre/road interface. I think Dr Blanksby’s reading of the claim is fully borne out by the description of the invention in the Specification."
Humans are fallible. Nowhere is this more so than in a government department. Bearing this in mind, you need to think very carefully before making the significant financial commitment that is required when entering national phase.
When filing and prosecuting an international application in Australia, you should bear in mind that the application is examined by an Australian examiner. The examiner represents the International Search Authority but is not actually a member of WIPO sitting in Geneva or The Hague. As such, the search is carried out to Australian standards. It is a terrible thing to generalise. And I am sure that most Australian examiners are competent. But my understanding is that the examiners are directed to work under certain constraints. For example, an examiner cannot simply follow his or her nose and keep digging up relevant prior art. The search fee component of the international filing fees is a healthy $2200, so you would think that the search results would be adequate. However, more often than not either a European, Japanese or US examiner finds prior art not uncovered by the Australian examiner. This can be devastating.
Let's consider national phase in 4 or 5 countries. That's between $20K and $30K, depending on various factors. What would you pay for some assurance that the first report issuing out of one of those countries does not blow your entire portfolio out of the water? Even 20 percent is $4000 minimum. You could have a very useful search carried out for that amount. It would not be unreasonable to consider more, particularly for more national phase countries.
You should note that an adverse examination report in one country can be just as relevant in all the other countries. It happens regularly that a Japanese report, which is usually delayed, ends up making a big hole in a portfolio. In other words, you could spend literally tens of thousands of dollars before finding out that it is not, after all, possible to achieve patent protection in most countries.
So, searching must remain on top of your list of priorities. You may have searched before filing the provisional patent application. But you should still not assume that all is well. Searches are usually carried out to a budget. The more you spend, the more thorough the search.
In this hearing, the Commissioner's Delegate decided that it was against the public interest to grant an extension where "it had been almost a year since the initiation of settlement negotiations, and that it appeared there had been a decision not to bother collecting evidence because of the settlement negotiations." The Delegate further supported this on the basis that the evidence did not suggest that there was a "serious opposition".
On the other hand, both parties were in favour of the extension. The balance of the considerations lay against allowing the extension of time. A short period of one week was allowed for filing any evidence readily available.
"A locating mechanism for a pair of reflector sheets from which the reflector of a doubly arched luminaire is assembled, said mechanism comprising at least one mushroom-shaped stud on one of said sheets and a corresponding keyhole shaped aperture on the other of said sheets, said stud comprising a stalk and a cap and said aperture comprising a main opening and a smaller extension wherein each said stud and aperture are dimensioned so that said cap can pass through said main opening but not said extension and said stalk can be retained in said extension with a friction fit."
Problem solution approach appears to be discussed?
Attributes of nominal "person skilled in the art"
Good short review of "inventive step" and meaning of "obvious" - List of cases
This case illustrates the types of prior art information available for determining "innovative step" for innovation patents and "inventive step" for patents. In some case the difference can mean that a standard patent can be found valid while its counterpart innovation patent is found invalid.
Assessment of prior art information must be made in the shoes of the skilled addressee. That is, "the person skilled in the relevant art in the light of the common general knowledge".
The recent Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) has allowed greater leeway for combining 2 or more pieces of prior art information for testing inventive step - see this post on my website. However, the previous test is applicable in this case and will remain so for all patents with an effective date earlier than 15 April 2013. The previous test requires that the skilled person be reasonably expected to have ascertained, understood, regarded as relevant and combined the 2 or more pieces.
For innovative step, the assessment of prior art information includes determining whether or not prior art information made "publicly available in 2 or more related documents or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information." This provision has not changed.
As you can see, it is conceivable that the test for combining documents can be stricter for standard patents than for innovation patents.
In this case, however, the court held that the evidence did not justify a finding that a skilled person would reasonably expected to have ascertained, understood, regarded as relevant and combined the 2 patents. The evidence made no reference to the 2 patents. The court held that even "if they were known to him, they do not appear to have been perceived by him as relevant to the issues to which his affidavit was directed."
This matter appears to indicate that it is not enough to show that the skilled person would have carried out patent searches. Rather, it should show that the skilled person would carry out searches published in a particular period for the purpose of solving the problem to which the patent is directed.
I have recently received a number of enquiries from inventors looking for patent protection to cover an app. Theoretically, there is no reason, at least in Australia and the US, that you should not be able to cover your app with a patent application. However, there are practical and legal implications that could result in you throwing good money after bad.
In this post, I am considering Australia and the US only.
An app is a software product and so does fall within the category of products that can be covered by a patent. But what does your app actually do? As a general rule, if you're just receiving information, re-arranging it and then presenting it, then it might be difficult to convince an examiner or a court that your invention is "proper subject matter" for a patent. But proper subject matter aside, you need to bear in mind that changing information and not structure or the manner in which that information is manipulated could result in the invention falling foul of the "novelty" and "inventive" step requirements. That's because you can't get patent protection for information per se.
How clever is your app? A patent examiner or a court is more likely to favour an invention in which the mobile device is used to perform some relatively complex or clever algorithms. So, for example, if your app is a directory-type app, it is less likely to attract patent protection than an app that is capable of predicting stock price changes using heuristic algorithms.
Then there's the timing. It could take up to 4 to 5 years from the date of our first meeting before you achieve patent protection. Some apps have been around for that long and are proving to be very successful. Others tend to fizzle out after a few years, even if they have generated significant cash flow during that time. While it is possible to put competitors on notice once a patent application is published, it might be difficult to obtain a damages award for the period that the patent application was pending. Of course, many investors will require that you file a patent application. But if that's not your model, then you do need to bear the time factor in mind.
How will you enforce the patent, if and when it is granted? A patent application must set out a full disclosure of the invention and how it is to be enabled. However, an infringer does not have the same obligation. The app may be of the type that would indicate clear infringement just from executing the copy. But there may be cases in which you simply cannot determine whether or not your invention is being copied, even though you are losing market share.
And never forget the cost. It can be very expensive to have a patent application prepared and filed for a software product. Not only that, but the cost of prosecuting the application through to grant of a patent can also be extremely costly. This is a function of the difficulty in writing software patent specifications. It is also a function of the fact that there seems to be a large amount of prior art out there which is difficult to filter and analyse. While the examiners are improving, it can be difficult to convey an understanding of the invention to an examiner.
So, at the end of the day, think carefully before going down this route. As a general rule, unless you have a good budget or keen investors and a product that is relatively sophisticated from an algorithmic point of view, the journey will more than likely be harrowing.
I still have clients thinking that there's no point in filing Chinese patent applications. This perception is fast becoming outdated. China is continually improving its patent systems. Given that the life of a patent is 20 years, it is imperative that you consider filing in China.
Utility models are particularly popular amongst Chinese filers. They can be very useful for relatively simple mechanical devices.
I will try to write more about this rapidly evolving jurisdiction. In the meantime, don't forget to make China part of your IP Strategy.