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)."