23 May 2008

Owners of the Most U.S. Patents

The Intellectual Property Owners Association has just released its annual report listing the organizations that received the most U.S. Patents in 2007.

Here are the top 10:
  1. IBM - 3,127
  2. Samsung - 2,723
  3. Canon - 2,047
  4. Matsushita Electric - 1,972
  5. Intel - 1,864
  6. Toshiba - 1,734
  7. Microsoft - 1,662
  8. Micron Technology - 1,484
  9. Hewlett Packard - 1,470
  10. Sony Corp. - 1,454

07 May 2008

Drafting Software Patent Specifications

Most jurisdictions offer some sort of protection to software inventions. However, how you approach the preparation of software patents will vary somewhat from jurisdiction to jurisdiction.

In later posts, I will discuss how the different countries deal with software. In this post, I will start having a look at some basic rules for preparing claims for software patent specifications for Australia and the United States. This is a blog, so I'm going to choose random topics re drafting software patent specifications as I please. Eventually, there should be enough tagged together to achieve coherence.

Also, please remember that this is just a distillation of my experience. If you decide to follow this advice, I accept no responsibility if your application is rejected by the USPTO, or your multi-million dollar licence deal falls through.

There are a number of aspects of a software invention that you should look at protecting in the claims.

Some of these are:
  1. A method that is carried out by a computational device that executes the software.
  2. A system that uses the software product.
  3. A software product per se.
  4. A medium on which the software product is stored.
  5. A computational device when programmed with the software product.
There could easily be more.

Why? Particularly in the US, it's useful to have as many independent claims as possible. That's because they have an illogical way of interpreting claims. It's called the "prosecution history estoppel" doctrine. In short, a US Court can take into account the actions of a patent applicant during prosecution to limit the scope of the claims. So, if a patentee decides to amend a claim during the application procedure, the court can estop the patentee from asserting any rights based on that claim that are broader than a literal interpretation of that claim.

If there are a number of independent claims, it may be possible to avoid having to amend one of more of them. Since the independent claims are the broadest, the patentee may be saved from having to give up valuable patent real estate.

Of course, another reason is that it allows the patentee more grounds to sue for infringement.

I will continue on this in a further post.

02 May 2008

Patents are Liquid Assets

Peter Zura's 271 Patent Blog reports that Ocean Tomo has recently announced that an Intellectual Property auction held on 2 April 2008 had cumulative sales totalling $19,629,500. So much for the recession!

One of the lots - an IP portfolio related to the processing of digital data in bit streams, sold for $6,600,000.

There were three other transactions in the seven-figure range relating to computer systems and software, information management and data systems, and location based services and logistics.

The Intellectual Asset Management Blog said that organizations are willing to pay top dollar when they come across assets they want to get their hands on. For example RIM (Research in Motion) last week announced that it had spent over $300 million on acquiring intangible assets in the 4th quarter of its financial year.

Patent brokerage, IPotential, raised $104 million for clients in 29 transactions.

Have a look at this excellent "on the scene" report from the Ocean Tomo auction. It's a stab in the heart for the anti-software patent lobby, which pleases me!

29 April 2008

University Lacks Entitlement

On 17 April 2008, the Federal Court handed down University of Western Australia v Gray (No 20) [2008] FCA 498.

It's a turgid case of 1,618 paragraphs. So that means I haven't read it all yet.

In short, the Court said: "Absent an agreement to the contrary, rights in relation to inventions made by academic staff in the course of research and whether or not they are using university resources, will ordinarily belong to the academic staff as the inventors under the 1990 Act. The position is different if staff have a contractual duty to try to produce inventions. But a duty to research does not carry with it a duty to invent."

That's just the sort of anachronistic thinking the infuriates me. Surely carrying out research includes inventing? I'm thinking that anyone doing research at UCLA (for example) would consider that there was an implied duty to invent. What's the research for then? Fun?

Hopefully this case will be appealed.

It's effect will probably not be that dramatic. Most universities involved in productive research have proper contracts in place dealing with IP.

I will make an attempt to get to grips with the Court's reasoning. Something might even be posted...

22 April 2008

Federal Court Recaps Claim Interpretation

The matter of Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCA 314 was handed down by the Federal Court of Australia on 11 March 2008.

There is some useful material on how the claims of a patent should be interpreted. The case can be downloaded from the above link. Have a look at paragraphs 40 to 45.

Spender J. cited Hely J. in Flexible Steel Lacing Co v Beltreco Ltd (2001) 49 IPR 331:
  • As a general rule, the terms of a specification should be accorded their ordinary English meaning.
  • Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning.
  • However, the construction of the specification is for the court, not for the expert witness. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.
The term "mounted on" is used often by us practitioners. In short, the court held that A is "mounted on" B even though there is an intervening component interposed between A & B. Of course, that conclusion was reached in the light of the above rules.

If a reading of the specification indicates that A should always be directly mounted on B, then it might be necessary to limit the interpretation of "A mounted on B" to direct mounting.

So, if you're looking for broad protection, make sure that the language of the specification does not indicate that it is essential for A to be mounted directly on B.

17 April 2008

World Intellectual Property Day

It pleases me to see that Australia is promoting World IP Day on 26 April 2008. Here is Senator Carr's media release.

I particularly liked this statement: "IP can develop into a significant business asset which often is worth more to a business than all the tangible assets such as factories and machinery combined." But it's a concern to me that such a small proportion of Australian patent applications are actually owned by Australians. In fact, in 2006, only 15% of Australian patent applications were filed by locals.

We regularly hear how manufacturing companies in Australia are taking their operations offshore. At least the clever people are staying here. But if this carries on, we'll only have our minerals to sell. I hope that the Minister's message reaches all those clever business leaders out there.

As Senator Carr says:

"On this day when IP and innovation is being celebrated across the world, let’s be proud of what Australia has contributed to the global pool of innovation, but let’s also look forward.

"I urge all Australians to think about this country and how we can do things better via innovation – remember, every new product started as someone’s good idea."

I would add to this by saying that registered IP, such as patents are an effective way of securing our future, regardless of the demand for our mineral wealth. With the statistics on International Patent Applications described in my post of 15 February 2008, we could find that future vulnerable.

12 April 2008

Missed your National Phase Deadline?

Most proceedings under our Patents Act are extendible after the deadline has passed.

The failure to meet the national phase deadline must be either the result of:
  • An "error or omission" by the agent or the applicant/patentee.
  • Circumstances beyond the control of the applicant/patentee.

Some examples of errors or omissions presented in extension of time applications are:

  • Failure to make a diary entry.
  • A date error in connection with the deadline.
  • A misunderstanding of instructions.
  • Failure to seek instructions from applicant/patentee.
  • Failure by applicant/patentee to provide instructions.

The circumstance provision is essentially a "force majeure" provision. Delays by post and courier constitute the major source of extensions under this category. Anticipation of a Court judgement has been held to be a circumstance beyond a person's control. However, lack of funds is not considered to be a circumstance beyond a person's control.

Drop me an email if you've missed a deadline. Just remember, you need to apply as soon as you realize the deadline is missed. An undue delay could be grounds for a refusal. You can file the evidence in support of the application later on.

Australia Climbs on to the Patent Prosecution Highway

Not too long ago, the Australian Patent Office (IP Australia) decided to lend our cousins in the USPTO a hand. That was to help with the backlog there, which I'm sure all us professionals have felt.

That's not to say there wasn't a backlog here. But let's not get into that now...

Anyway, the help is in the form of our Examiners getting involved in the USPTO examination process.

That's had an interesting side-effect in the form of an adoption of a trial of the patent prosecution highway program between IP Australia and the USPTO. Information from the USPTO is available here: http://www.uspto.gov/web/patents/pph/pph_ipau.html. Information from IP Australia is available here: http://www.ipaustralia.gov.au/patents/international/pph_uspto.shtml.

The trial starts on April 14 this year and will be similar to the PPH that is currently in place between the US, Canada, Japan, Korea and the United Kingdom.

All the information about this process is readily available at both the above links. But to summarize:

Where the USPTO is the office of first filing and the US Application contains claims that the USPTO considers allowable, then the applicant can request accelerated examination at IP Australia of the corresponding application. Likewise, where IP Australia is the office of first filing and considers claims to be allowable, the applicant can petition to make the US application special. This sounds like a helpful attempt to ease the interminable delays at both offices. Hopefully, it will be a roaring success.

Any comments about the success of the other PPH's run between the USPTO and other countries?

03 April 2008

Wising up in the Clever Country

I'm delighted to announce that my business partner and I have just finalized a White Paper on intellectual property for businesses in Australia.

Sadly, most Australian business owners could be better managers of their intangible assets. It's a concern that 85% of Australian patent applications originate overseas (source: IP Australia). It would appear that leaders of innovative companies are in danger of giving our future away!

The White Paper includes:
  • Numerous case studies illustrating the use and misuse of IP.
  • Guidelines to implementation of an intellectual asset management program.
  • How to identify hostile competitor IP positioning before it causes financial loss.
  • IP checklist before launching a new product or brand.
  • How to stop employees leaving with critical IP assets.
Email me at beagar@enb.com.au if you would like a copy of the White Paper.

16 March 2008

Successful Multilateral Patents Seminar - Apologies

Sadly, I've had to cancel my trip to the US.

However, the article I prepared for my presentation is available here.

The article describes how to speed up or delay patent protection in Australia. I've also explained how an applicant can enforce patent rights while a patent application is pending.

Full Federal Court Decides Joint Inventorship

An inventor is entitled to the grant of a patent. That is, unless there is some obligation, such as an agreement to assign rights or employment. But how can you tell whether more than one person should be considered an inventor?

This question arose in Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC. In this case, the patent application described two aspects of the invention. The first was a method and a process for producing plant growth media. The second was an apparatus for producing the plant growth media.

In this case, Polwood appealed against a finding by the Federal Court that Foxworth (through obligated inventors) was the inventor of the apparatus. Foxworth did not pursue a finding that it was entitled to the method/process aspect. But Polwood maintained that because it was entitled to the "inventive concept", it was also entitled to the apparatus, to the exclusion of Foxworth. Polwood recognised that Foxworth first constructed the apparatus, but said that was no more than an implementation of the completed and final Polwood concept.

Their honours stated that the entitlement to the grant of a patent as the inventor is not determined by quantitative contribution. In other words, the role of joint inventors does not have to be equal. The issue is whether the contribution was to the invention. The invention can be determined from the particular patent specification, including the claims.

In JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68, Crennan J said that rights in an invention are determined by objectively assessing contributions to the invention rather than assessing the inventiveness of respective contributions. Her honour said that if the final concept of the invention would not have come about without a particular person's involvement, then that person has entitlement to the invention.

It appeared that the heart of the dispute in this matter was how the court should determine the invention. Their honours noted that the patent application described the apparatus as an aspect of the invention. The evidence revealed that Polwood played no part in the design and construction of the apparatus, which was found to be "an invention" of Foxworth. Foxworth had therefore contributed inventively. Thus, their honours were not satisfied that Polwood was solely entitled to the grant of the patent.

Lessons

Before you can indentify the inventors, you need to define the invention. Once that's been done, the following question should be asked of all who contributed: "Would that invention have come about without x's contribution?" If the answer is no, x is an inventor. Clearly, defining the invention is the tricky part, as this case illustrates.

Because defining the invention is difficult, patent applicants should identify all people who contributed in some way. Then, to be safe, even if you think that contributors did not exercise any inventive faculties, have them sign a Deed of Assignment anyway.

Practitioners should be asking for details of everyone who was involved during the conception and reduction to practice of an invention and then making sure that they all signs Deeds of Assignment.

05 March 2008

Seminar - Successful Multilateral Patents

A seminar entitled "Successful Multilateral Patents" is to be held in Washington, DC on 7 April 2008. I had the privilege of participating in a similar event in San Francisco last year.

If you deal with patent specifications from multiple jurisdictions, it promises to be a very useful seminar. I am grateful to be sharing a podium with such an esteemed panel. As soon as it's ready, I will post a link to the written material.

Hopefully, I will see some of my readers there!

01 March 2008

International Patent Applications 2007 - Australia Lags

In my last post, I was complaining about our poor showing as a country of origin for International Patent Applications in 2006. I've managed to dig out the 2007 report now and at least we're not in minus territory anymore. But our position is not fantastic. Here is the relevant link. It makes for interesting reading.

As with 2006, Korea and China were the big movers. China has now moved into 7th position and Korea into 4th. Australia is at 13th position.

The Economist published a table of International Patent Applications per billion dollars (US) of GDP. Relating the number of International Applications to GDP gives an indication of a country's ability to generate ideas. The Economist acknowledges that it's a crude indicator. But I take heart in the fact that such a report was generated. It gives support to my call for government to encourage the filing of patent applications as part of its innovation strategy.

Israel is at the top of the list. Australia is eleventh, immediately after France, which follows the US. South Korea is up there again at fifth. China is still quite low down at fourteenth. At its rate of growth of 38% as opposed to our 2.6%, it won't be long before it's jockeying with Korea for top spot.

If anyone still doubts the need for patent applications, they're out of step. To quote the 2007 report: "Growth rates in the filing of PCT applications have been particularly dynamic over the last nine years. It took 18 years from the beginning of PCT operations in 1978 to reach 250,000 total applications, but only four years to double that figure (500,000), and another four to double it again (1,000,000)."

15 February 2008

Fiddling? Australian-sourced International Patent Applications Down in 2006

It was with some concern that I read the Patent Co-operation Treaty (PCT) review of 2006. It can be viewed here.

For us practitioners, it is financially heartening to see the ongoing growth in the number of PCT applications being filed every year throughout the world. The reason is that each International Patent Application can eventually be converted into an Australian patent application.

However, for innovative Australian companies, the view is not that rosy.

Indeed, as can be seen on page 3 of the review, our growth was a dismal minus 0.3% in 2006. That's in stark contrast to Korea with plus 26.6% and China with plus 56.5%.

When a company files an International Patent Application, it has the option, some 18 months later, to extend the application to any member of the PCT. This is already happening and is noticeable in my practice. So, by not keeping up, Australian companies are losing out on the option to carve out a piece of Intellectual Property real estate in their own country.

According to a recent review released by the government, it is committed to building a strong national innovation system. I can only hope that commitment extends to rejuvenating an interest in patent applications. We are great importers of manufactured goods from countries like Korea and China with ore being perhaps our only significant export.

Locally-sourced foreign patent applications are an excellent way of exporting our valuable assets without damage to the environment.

Let's not fiddle while our Intellectual Property resources are wasted.