19 November 2009
I have recently received a number of inquiries regarding patent protection for web applications. Unfortunately most have already made their web sites public. Those with a "dangerous" level of understanding believed that it was safe to do so because details of the software were not made available. Those with an even more dangerous level of understanding believed that they could make use of the grace period.
Section 18 of our Patents Act governs "secret use". In short, an invention is patentable if, inter alia, it has not been secretly used in the patent area before the first application for a patent covering the invention is filed.
But what is "secret use"? Azuko Pty Ltd v Old Digger Pty Ltd  FCA 1079 contains an excellent discussion on the meaning of "use". In Heerey J's opinion, the term "use" refers to the exercise of any of the rights which would be conferred by a patent for the invention in question. Section 13(1) of the Act does use the word "exploit". But his honour said that the choice of "exploit" instead of "use" would hold little weight if the meaning was otherwise clear. As he set out: "The definition of "exploit" in the present Act is not exhaustive; it "includes" the matters specified. In the case of a product, those matters amount to twenty different alternatives, one of which is "use".
Heerey J. made reference to the Sargent Committee Report (1931) in which it is set out that the prior secret user "... should invalidate any patent subsequently granted, since patentees might otherwise postpone indefinitely the communication of their inventions to the public, and might in practice obtain a monopoly not only for the ordinary period of 16 years under the Statute but also for any prior period during which they had contrived to retain the secret of their inventions."
The "monopoly" referred to is the monopoly to enjoy the exclusive rights which a patent confers. There is a natural symmetry between what patentees can do with the invention after grant and what they could do secretly before grant, were it not for the doctrine of prior secret use.
It follows that the simple question to be asked is: "If I had a patent on my web-based application and someone else was doing what I was doing, would there be an infringement of my patent rights?". If the answer is yes, then there is "secret use" of the application. This is supported by Lord Diplock's use of a reverse infringement test in In R v Patents Appeal Tribunal, Ex parte Beecham Group Ltd  AC 646.
Where use has been public it may be possible to assert that the use has been by way of "reasonable technical trial and experiment". Such use would not invalidate a patent granted for the invention, provided the application is filed within 12 months of the use. However, in the case of a web application, the use is not in public and this proviso does not apply to "secret use".
It appears that Heerey J would have been prepared to accept that use without a "taint of commerciality" would not be "secret use". So, if the web application was made available in such a way that it did not invite commerce, use of the application might not be secret use. For example, if the web application was made available via a public website to team members for use with a password, that would more than likely not be secret use.
The grace period
In terms of section 24(1)(a) and regulation 2.2(1A) of the Act, any public use of the invention is not to be regarded for the purposes of assessing the validity of a patent provided a patent application for the invention is filed within 12 months of such use.
Clearly, "secret use" does not attract the provisions of the grace period because it's not "public".
A final word
The cost of filing patent applications for web-based applications can be very high. So it is understandable that an application needs to be tested before a patent application is filed. But it is critical that all beta testing of an application be carried out "in house" or via password-protected websites if patent protection is being sought. Any establishment of a website that offers a commercial transaction before the patent application is filed would destroy the validity of a patent granted on that application.
06 November 2009
Case - Wilkshire v Registrar of Trade Marks  FCA 1222.
I felt compelled to report this case because I often have to convince prospective clients of the dangers of self representation. This case shows what can go wrong with self-representation in an adversarial matter. Legal details and the need to check emotions at the door are often overlooked without proper representation.
This case dealt with two motions. One was an application for summary judgement against Wilkshire on his application to have Bombala Council's trade mark cancelled. The other was for Wilkshire's proceedings to be dismissed.
The court was satisfied that summary judgement should be given against Wilkshire.
I'm neither a lawyer nor a barrister, so this post focuses on the trade mark issues.
Wilkshire is the owner of a trade mark for education; providing of training; entertainment, sporting and cultural activities for people who are interested in fossicking for gold being services in class 41. The trade mark includes a platypus and has a registration date of 30 March 2001. In 2003, Bombala Council applied for registration of its mark in class 35 for tourism promotions and advertising. Wilkshire opposed the application by Notice of Opposition on 18 July 2003. He made a declaration alleging that a number of people giving evidence for the Council had colluded and fabricated evidence. Australian National Geographic had opposed registration of similar mark by the Council back in 1995. That dispute was settled and Nat Geo redesigned the Council's logo and assigned it to Council on 28 April 1997. This was disputed by Wilkshire.
In 2006, Wilkshire's opposition was dismissed and costs were ordered against him. The court noted that the Delegate found that the services performed by Wilkshire were not "the same kind of thing" as those for which Council sought registration. At that stage, the Act had not yet been amended to introduce the opposition ground of an application being made in bad faith. Wilkshire appealed to the Federal Court. In the appeal he raised lack of impartiality and collusion. Negotiations ensued. Council's solicitors made an offer of settlement. Wilkshire agreed to the terms. That appeal resulted in orders dismissing the appeal, ordering costs of $30 000 against Wilkshire. The Court then noted the undertakings made by Wilkshire. Those undertakings were not to interfere with Council's application to register its trade mark and not to threaten the Council with any form of action (shortened).
Two days before the consent orders, Wilkshire filed five new trade mark applications. These were very similar to the trade mark referenced above. The Council opposed the registrations. The Delegate refused to register the trade marks citing bad faith (the ground had by then been introduced). He observed that Wilkshire had previously recognised the trade marks as the property of another. In the meantime, Wilkshire had commenced proceedings to have Council's registered trade mark cancelled. Wilkshire's supporting affidavit was filled with allegations of lack of impartiality and collusion. It even raised possible corruption by extortion or bribery on the part of the Delegate.
Section 88 of the Trade Marks Act governs rectification of the register. Appositely, section 88(1)(a) sets out that rectification can be cancellation of a registration. Section 88(2) sets out that the application may be made on a number of grounds it enumerates and on no other grounds. Unfortunately for Wilkshire, his framing of the application did not include any of the grounds set out in Section 88(2). One of the grounds is that a registration can be cancelled on any of the grounds on which its registration could have been opposed. Wilkshire had attempted to rely on the bad faith provisions. At the time when the Council's application was accepted for registration, the bad faith ground was not available. As a result, it was a simple matter for the court to give a summary judgement against Wilkshire.
Clearly Wilkshire was highly emotional throughout the case. The Court made a number of pointed references to his allegations, hinting at their lack of verity. With proper counsel, Wilkshire could have avoided significant cost orders and possibly the wasted effort and emotion associated with legal proceedings. As far as the details of the case are concerned, it would have been readily apparent to legal counsel that the ground for cancellation was not available.
26 October 2009
11 October 2009
08 October 2009
A registered trade mark does not expire provided renewal fees are paid every 10 years. However, if you stop using the trade mark as a trade mark it can be removed. Such non-use can occur in respect of some or all of the goods or services in respect of which the trade mark is registered. For removal, that non-use has to be for a continuous period of 3 years terminating on a date 1 month before the date of application for removal.
The mechanism for removal makes it relatively easy for the applicant for removal. All that is required is the lodgement of the necessary application and the official fee. The onus then falls on the owner of the registered trade mark to prove use within the relevant 3 year period.
In Shen v Gwei Ting International Fashion Corporation  FCA 1131, it was emphasised that even a single instance of use during the three period is sufficient. However, the use must be in "good faith". That phrase has a well understood meaning in this context in that the use must be real, as opposed to token, use in a commercial sense.
28 September 2009
I have recently been involved in the prosecution of a Chinese patent application. The complete specification was prepared in Australia a number of years ago and has found itself translated and in the Chinese patent office. The Chinese patent examiner has rejected the application. According to him, the broad description in claim 1 reads on to the prior art. The specification only has the broad terminology and a specific example. I tried to amend the claim to introduce a feature that is narrower than the broad terminology, but broader than the words used for the specific example. I don't want to use the specific example, because client would have a unacceptably narrow scope of protection. This tactic can work in Australia, the US and even Europe provided the terminology chosen is clearly a generic of the specific example. Not so in China, though. The examiner wants to force me to choose the specific example. So I'm looking at the possibility of a divisional application. Any tips would be appreciated!
My colleagues in Europe advise me that I have to be very careful with amendments and divisional applications in their jurisdiction, as there is a strict policy against adding new material. Apparently, even the use of different words describing effectively the same thing can land you in trouble.
The problem is that here in Australia the patent office is very flexible when it comes to amendments and divisional applications. So its easy for us to develop bad habits. I've developed the hopefully good habit of using varying terminology in the specifications I prepare. One has to be careful not to be confusing though, because you could end up with a patent having validity problems. The technique I use is to incorporate as many generics and "sub-generics" as possible in the specification. For example, I might use the phrase "the planks are fastened together with a connector in the form of a threaded connector such as a coach bolt". So, I end up with three different terms for the same thing without losing clarity. If I need to amend in China I can amend from "connector" to "threaded connector" without having to end up with "coach bolt" which could be too narrow. Also, I try to put that terminology in the description of the drawings as opposed to the summary, because some jurisdictions don't regard the summary as part of the description.
Hopefully I can work something out with the Chinese examiner...
24 September 2009
I recently requested re-examination of a granted patent. This is a procedure governed by section 97(2) of the Patents Act. That section allows you to request IP Australia to re-examine a patent that has been granted in the hope that the patent is either revoked or the patentee is forced to make amendments that narrow the scope of protection afforded by the patent. The request needs to be based on documents published before the priority date of the patent in question. The procedure is ex-parte. That means that once you've lodged the request, your involvement is terminated.
The process sounds good in theory. And in this particular case, the invention defined in the patent was clearly anticipated by at least one of the documents that was submitted. The examiner (a senior examiner, no less) initially reported that the patent should be revoked. The patentee, rightfully, always has a chance to respond. In this case, extensive argument was set out by the patent attorney. In what was a triumph of verbosity over legality, the examiner buckled and agreed that the broadest claim defined a patentable invention in light of the submitted documents.
No-one wants to go to court. However, one has to question a system in which examiners are clearly out-gunned by patent attorneys. If you're ever threatened with patent infringement and you have access to information that clearly invalidates the patent, it may very well be better to call the other side's bluff. In this particular case, an outcome has been delayed unnecessarily for almost a year.
Cold comfort for the allegedly infringing party, but this is exactly why clever people register their intellectual property.
15 September 2009
My advice was to keep it simple. Protect the words first, you can worry about the rest later. It's important to remember that a plain word registered trade mark will protect your reputation as it grows by word of mouth. Logos and images are only visual and cannot be conveyed by word of mouth. Also, use of logos and images together with the word may only serve to dilute your message - read this article: http://www.beagar.com.au/Brand%20Name%20Selection%20Notes.htm.
Give me a call or drop me a note if you want to hear more about a simple, straightforward approach to trade mark registration.
14 September 2009
12 September 2009
02 September 2009
11 August 2009
Much of this case is outside of my expertise because it deals with rules regarding civil court procedure. But it's another indication of the problems that result when parties don't agree upfront on what the invention is and who owns it, including any improvements.
There is a tendency amongst practitioners to have their clients sign a Deed of Assignment that identifies an invention by its title. As far as I am concerned, such practice is dangerous and should be avoided. A proper Deed of Assignment should at least define the invention in an Annexure and can even include drawings. The agreement should also, where possible, set out what should happen with developments and improvements. For example, there could be supplementary agreements drawn up as improvements to inventions are developed.
Managing the ownership of IP should be regarded as a dynamic task and one that must be reviewed and audited on a regular basis. Otherwise the parties could look forward to five years in the court system, as has happened in this case.
29 July 2009
IP Australia has just announced that it has released an IP training package for small business. I have not yet seen the training package. According to a media release, the training package is "nationally accredited". It consists of eight units which cover "all aspects" of IP such as managing IP to grow business, protecting business identity and protecting new inventions. The package is funded by IP Australia and is "aimed at giving small businesses the skills to compete in today's knowledge-based economy".
This initiative is to be commended. In my view, small businesses in Australia are woefully underinformed when it comes to properly exploiting their intellectual capital. I will see if I can get a copy of the package to study it in more depth.
21 July 2009
15 July 2009
The Delegate of the Commissioner of Patents
This case is part of an ongoing dispute between the two parties in which Aristocrat has been attempting to push through an amendment to its patent number 684195.
Once a patent has been accepted, as is the case here, there are 2 conditions which must be met in order for an amendment to be allowable. First, an amendment is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed. Second, an amendment is not allowable if as a result of the amendment, a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment or the specification would not comply with certain inherent requirements.
In order to assess compliance, it is necessary to carry out an interpretation of the claims. An important rule is that the specification must be read from the point of view of a person skilled in the relevant art. Unfortunately for Aristocrat, no evidence was led as to who the appropriate skilled person would be, what background knowledge he or she may have, etc. It followed that the delegate simply reverted to the "plain, ordinary" meaning of the words. This is important, because a person skilled in the art may have taken the view that certain facts were a given thus broadening the interpretation of the amended claims allowing them to fall within the scope of the claims prior to amendment.
In any event, the Delegate correctly followed the rule that an interpretation of the claims must be in the context of the specification as a whole. In this case, he found that an amendment that altered a square array to an array with an unequal number of rows and columns, resulted in the claims falling outside the scope of the claims prior to amendment. The specification as a whole, according to the Delegate, indicated that the square array was what was claimed prior to the amendment.
It is important to remember that interpretation is not an academic analysis by a practitioner. Rather, the practitioner must first ascertain the nominal skilled person. Then he or she must stand in the shoes of that person.
14 July 2009
13 July 2009
Emmett, Bennett & Jagot JJ
This case was an appeal from a single judge of the Federal Court whose judgement was reported in my post of 19 March 2009.
The relevant dates are as follows:
October 2004 disclosure of "travel pack" destroys the novelty of the invention.
May 2005 - Parent standard application ("complete application") filed disclosing, but not claiming the travel pack.
November 2006 - Divisional patent application ("complete application") filed claiming the travel pack.
Mont Adventure failed to defend a cross claim for invalidity on the basis that a complete application for the invention was filed within 12 months of the disclosure, making use of Australia's grace period.
The question to be determined was whether the filing date of the complete application was a) the filing date of the standard patent application; or b) the filing date of the divisional patent application?
The single judge held that it was the filing date of the divisional.
This case has generated a lot of interest. So much so that the Institute of Patent and Trade Mark Attorneys (IPTA) intervened.
The decision of the single judge was overturned.
According to the Patent Regulations, if a specification is a complete specification filed in respect of a divisional application and a relevant claim of the divisional is "fairly based" on matter disclosed in the specification of the parent application, the priority date of that claim is the date that would have been the priority date of that claim had it been included in the specification of the parent application. However, there is no requirement for a divisional application to be "fairly based" on the parent application. The only requirement is that the invention claimed in the divisional be "disclosed" in the specification of the parent application.
According to Phoenix, the legislators intended to deprive a divisional application of the benefit of the grace period to ensure that the divisional application does not have the benefit of the grace period in respect of a claim that is not "fairly based" on matter disclosed in the parent specification even though it is "disclosed" in the parent.
However, Emmett J said that it was more likely that the legislators assumed that there was no distinction in substance between the concept of an invention "disclosed" in the specification of a parent and a claim for an invention being fairly based on matter disclosed in the specification of the parent. Furthermore, "the phrase "the filing date of the complete application" must be construed in the context of all the provisions of the 1990 Act and the Regulations, so as to give a harmonious result achieving the apparent goal of the provisions. To construe the phrase as referring to the Parent Application and not to the Divisional Application achieves that result."
I empathise with the comment that "the drafting of the Regulations is not a model of clarity". Indeed, the same can be said of the whole Act.
In Bennett J's opinion, the "overriding purpose of the Act and Regulations", including the amendments to the Regulations in 2002 (introducing the grace period), is to maintain the system whereby a divisional application "travels with" its parent.
The relevant legislation indicates that the intention was to give divisional applications the same protection as the parent application in the same circumstances.
Clause 2.2(1A) of the Regulations, which governs the circumstances under which the grace period is activated, forms part of a broader statutory scheme. It should be construed in context so that it is consistent with the language and purpose of all of the provisions of the Patents Act and Regulations. Citing Project Blue Sky v Australian Broadcasting Authority  HCA 28, the statutory provisions are intended to give effect to harmonious goals.
The construction put forward by Phoenix results in a situation which would be prima facie inconsistent with the treatment of divisional applications in all other parts of the Act and Regulations.
Jagot J pointed out that the 12 months used for the establishment of a priority date and the 12 months used for the grace period are congruent.
Phoenix had argued that the legislators had used the word "disclose" to link a divisional and a parent, and the words "fairly based" to impart a priority date to the divisional, this allowing a different interpretation for priority date requirements and grace period requirements. However, as cited in ICI chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) FCR 214, "it would be a rare case indeed where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification (and vice versa)."
The explanatory statement for the 2002 amending regulations that introduced the grace period sets out that: "Item 8 of Schedule 1 inserts some new provisions into regulation 2.3. These new provisions ensure that divisional applications filed under sections 79B or 79C of the Act are encompassed by circumstances prescribed for subsection 24(1) of the Act." This would indicate that the draftsperson had divisional applications in mind for the purpose of those amendments. It is unlikely that the amendments were intended to treat divisional applications inconsistently with the balance of the Act and Regulations.
It is fortunate that sanity has prevailed. For us practitioners it is somewhat of a relief not to have to worry about another deadline. Hopefully, some attention will be paid to the pressing need to clarify the Act and Regulations, not only in respect of grace period.
02 July 2009
Judges: Kenny, Stone & Perram JJ
Handed down on 30 June 2009
This case was an appeal from a single judge (Gyles, J) of the Federal Court who upheld infringement claims made by Delnorth against Dura-post. Dura-post had challenged the validity of the patents on grounds that they lacked inventive step. For some background information on innovation patents, click here. You will find a link to a flowchart for details on the procedure.
The decision of the lower court is available here. A number of issues were raised in that case, but the interpretation of innovative step generated the most excitement, since this was the first case dealing with that characteristic of enforceable innovation patents. To recap, the innovation in question was a flexible support which could be used as a traffic delineator. To that end, it was of a single flexible sheet of spring steel, having a curved face. It could be driven into the ground with a concave side of the sheet facing traffic. Thus, when struck by a vehicle, the support could be bent to accommodate the vehicle and then could spring back into a vertical orientation.
The court emphasised that testing for innovative step is completely different to testing for inventive step, the requirement for a valid standard patent. The exercise requires a determination of the novel features of the invention. Then, if any of the novel features makes a substantial contribution to the working of the invention the innovative step requirement is met.
In this case, the court had a number of prior art documents against which the invention was tested. For example, the court held that the innovative step was met when the prior art considered was a plastic post. The innovation step was met when the prior art considered was a support post of fibre reinforced synthetic material. The same applied for a multi-laminated post.
It should be pointed out that there were a number of other features that the single judge believed made a contribution to the working of the invention. These included a barb, a tapered end and ribs.
The critical issue in the appeal was whether or not the single judge erred in interpreting the meaning of "innovative step". It is probably worth repeating the wording of subsection 7(4):
"For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention."
The kinds of information set out in subsection (5) are information made public in a single document or act and information made public in 2 or more related documents or acts if the relationship between the documents or acts is such that a skilled person would treat them as a single source of that information.
As to be expected from our Patents Act, the need to refer to three different parts of the Act to find out what the various words of section 7(4) mean really complicates issues. Please feel free to drop me an email at email@example.com for clarification.
Dura-Post submitted that a person skilled in the relevant field and in light of the common general knowledge would have considered the selection of the single sheet of spring steel to be of peripheral value and not contributing to the "working of the invention". As to that phrase, Dura-Post submitted that the single judge had not performed proper evaluation of what it meant.
It appears that Dura-Post made a common error. It based its position on an incorrect interpretation of "invention" in section 7(4) in that it is intended to refer to an "advance in the art" as identified by reference to common general knowledge. Such an interpretation would be at odds with the rest of the Patents Act, in particular, section 18 in which it is clear the invention is that which is defined by the claims. In other words, once you have defined the invention, then you go on to investigate whether or not it complies with the various requirements of the Act.
As set out by Kenny & Stone JJ, section 7(4) requires a comparison to be made between the invention as claimed in each claim with the prescribed information. That comparison is to be made from the perspective of a person skilled in the art.
Kenny & Stone JJ rejected Dura-Post's submission that the phrase "working of the invention" meant, in effect, "the way that the advance in the art is implemented". The Act sets out no such requirement.
The innovative step requirement was woven into our Patents Act against the background of Griffin v Isaacs (1938) 1B IPR 619. In that case, Dixon J. set out that: "Where variations from a device previously published consist in matters which make no substantial contribution to the working of a thing...and the merit if any of the two things, considered as inventions, is the same, it is, I think, impossible to treat the differences as giving novelty."At the time of that case, our novelty requirements were somewhat broader than they are now and the legislature found the manner in which "novelty" was defined in those days useful to apply to innovation patents.
In that case, Dixon J had in mind the waistband on a pair of trousers. Their honours said that the drafter of section 7(4) had simply used Dixon's language and substituted "invention" for "thing".
As someone who has to labour through our Patents Act to earn a living, I acknowledge Peram J.'s comment that section 7(4) is "cumbersome". This case is largely another side effect of our turgid Patents Act.
That aside, I think that this case is a good lesson in interpretation. We need to look to the claims first and foremost to define the invention. Any consideration of prior art before defining the invention can be dangerous.
23 June 2009
Court: Federal (Victoria)
Date: 2 June 2009
VIP commenced proceedings with an application claiming to be the registered owner of an Australian patent and claiming that B.M.W had infringed the patent. B.M.W denied infringement and sought an order that the patent be revoked on the grounds that the invention lacked novelty and inventive step. VIP denied that the patent was invalid.
B.M.W applied for an order that the Commissioner of Patents be directed to re-examine the complete specification of the patent. VIP opposed that order.
By way of background, the re-examination provisions were introduced in the hope of utilising expertise in the patent office to decide appropriate questions and reduce the costs of court proceedings. Where court proceedings are not pending, the Commissioner can revoke the patent if the patentee fails to overcome an adverse report resulting from the re-examination. However, where court proceedings are pending, as was the case here, the Commissioner can only provide a report which may be of assistance to the parties. Ultimately, however, it would be up to the court to determine the validity of the patent.
B.M.W. argued that the questions of novelty and inventive step would require expertise in the relevant technological art, which the Commissioner (but not a judge) might be said to have. Thus, B.M.W.submitted that the Commissioner might exercise this technical skill without the need for evidence from expert witnesses, and that re-examination before the Commissioner was conducive to economy. B.M.W further undertook that it would not challenge the Commissioner's report. VIP declined to give that undertaking. Indeed, VIP argued that the report would be of limited value and even if relied upon by the court would not preclude or obviate the need for evidence on the issues of novelty or inventiveness. In fact, according to VIP, the Commissioner's report would be likely to raise the issues for debate and resolution would not be apt to resolve the remaining claims of invalidity and infringement.
Kenny agreed with VIP on the basis that the Commissioner's report after re-examination is not binding on the court. Indeed, the provision of the report would not relieve the court of the task of deciding issues of novelty and lack of inventive step by reference to the inadmissible evidence. If the Commissioner's report were unfavourable to VIP, VIP would want to put on evidence and dispute the report.
Kenny did take into account that it did not seem that the trial would be particularly lengthy or complex.
It is unfortunate that the option of using the Commissioner was not taken up. However, the Act does not provide the Commissioner with any teeth, so the court's decision was to be expected. If lengthy and inaccurate judgements are to be avoided, the technical expertise of the Commissioner should be used and enforced, where appropriate.
14 June 2009
The Case - Memcor Australia Pty Ltd v G.E. Betzdearborn Canada Company  FCA 508.
In my post of 19 March 2009, I presented some basic information concerning the interpretation of the filing date of a divisional patent application.
In this case, GE had filed a divisional application which Memcor opposed on a number of grounds including that the invention defined by the divisional application was not disclosed in the parent application on which the divisional was based (Section 79B(1) of the Patents Act). If that was the case, then the validity of any patent granted on the divisional would be questionable since it would be tested as of the date of filing the divisional as opposed to the earlier filing date of the parent.
The Commissioner of Patents had previously found against Memcor's opposition and this case was an appeal from that decision.
It followed that the question to be tried was whether or not the divisional was an application for a patent for an invention falling within the scope of the claims of the parent application.
Issues of claim construction
In the parent, one of the claims that was considered started with the preamble: "A microfiltration membrane device, for withdrawing permeate substantially continuously from...". The relevant claim in the divisional application read as follows: "A microfiltration membrane device for withdrawing permeate from a multicomponent substrate, said membrane device including a multiplicity of...".
According to Memcor, the claim of the parent application was limited to a microfiltration device in use. In particular, Memcor said that the device of the parent application withdraws permeate "substantially continuously" when the fibres are in a particular condition, which was described in the relevant claim. By contrast, the divisional application covered a microfiltration device not in use, that is, "on the shelf".
In the arguments, GE referred to a useful summary by the Full Court in Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd  FCAFC 178. In that case, it was held that "Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification. If a claim is clear and unambiguous it is not to be varied, qualified or made obscure by statements found in other parts of the document."
A number of other rules of construction are also set out in paragraph 45 of the judgement, which are useful.
Claims that include the word "for" have raised difficulties in the past. However, these days it is well accepted that "for" should be regarded as equivalent to "suitable for". In other words, the relevant invention would not be limited to cover only while "in use". In any event, in this case, the court held that the natural and ordinary meaning of the sentence in question was to define the invention as a device suitable for a purpose rather than as a device only when used for that purpose.
It remains important for practitioners to ensure that claims are clear and unambiguous. One way of achieving this would be to make sure that clients understand the scope of protection defined by the claims, rather than relying on the rather patronising approach of not explaining clearly to clients the implications of claim wording.
04 May 2009
The requestor (Abnoos) requested that a patent application filed in the name of CSR proceed in his name. The request was based on a claim by Mr. Abnoos that he conceived the invention defined in the patent application and so should have been named as the sole inventor. Mr. Abnoos submitted evidence that supported his claim that his date of conception was November 2005. CSR did not dispute this claim. However, it argued that an inventor in its employ conceived the invention before this date, that is in October 2005.
Section 32 of the Patents Act provides that, if a dispute arises between any two or more interested parties, the Commissioner may make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the interested parties or for regulating the manner in which it is to proceed, as the case requires. Section 36(1) provides for a person to apply to the Commissioner for a declaration that some other person is to be granted the patent. Section 15(1) provides that a patent for an invention only be granted to a person who is the inventor.
On 16 March 2008 I posted on Polwood Pty Ltd v Foxworth Pty Ltd  FCAFC, so I won't go into too much detail about the determination of Inventorship. In short, a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the final concept of the invention. The concept of the invention is determined not by the way the invention is defined in the claims but rather on a reading of the entire specification and claims and a distillation of that material into the inventive concept.
Various meeting notes were tendered in evidence. These did little to help CSR's arguments because they did not specifically attest to an offering of the invention by the representative put forward by CSR. Given that CSR did not dispute the claim by Mr. Abnoos that he conceived the invention in November 2005, it would have been all over for CSR save for an AutoCAD file tended in evidence by CSR. The file was created on 18 October 2005 and was a drawing encompassed by the invention. The delegate held that it was sufficient evidence that the representative of CSR authored the invention as opposed to Mr. Abnoos.
It is important not to lose sight of the fact that electronic files can be tendered in evidence during proceedings. The electronic age brings with it the added burden for practitioners to keep careful track of all information regardless of whether or not it is reduced into a tangible form.
04 April 2009
19 March 2009
October 2004 - novelty destroying disclosure of "travel pack"
May 2005 - parent standard patent application ("complete application") filed disclosing but not claiming the travel pack
November 2006 - divisional patent application ("complete application") filed claiming the travel pack.
The applicant in the infringement action attempted to defend a cross claim for invalidity on the basis that a complete application for the invention was filed within 12 months of the disclosure, making use of Australia's grace period.
Question to be determined
Is "the filing date of the complete application":
a) the filing date of the standard patent application; or
b) the filing date of the divisional patent application?
The filing date of the divisional application
The relevant wording of the statute dealing with the possibility of filing a patent application in the 12 month grace period is: "...but only if a patent application for the invention is made within the prescribed period". This refers to the divisional patent application.
The regulations dealing with the grace period deal specifically with divisional applications. That dealing would be superfluous if it was not intended that the divisional be the "patent application for which the invention is made".
That the statute is poorly drafted goes without saying.
It is important to realise that a divisional application is not a "cure all". Often, when prosecution fails, practitioners file a divisional in an attempt to retain patent rights. Divisional applications for innovation patents are also often filed for early enforcement. Be careful if the parent was filed in the grace period.
Hopefully, the Act will be amended.
04 March 2009
28 February 2009
Unfortunately, as far as the US is concerned, the case of in re Bilski has created a fair amount of confusion regarding the protection of software products. The case has, however, finally put the possibilty of getting business methods protected in the US to rest, which is a relief.
There is plenty of reading material available out there, but I'll try to simplify it a little.
The court in Bilski said that in order for a process to be patentable, it must be tied to a particular machine or it must result in the transformation of an article. This is called the "machine or transformation" test and has been developed over a number of cases in the US. Us patent attorneys have always relied on the argument that a software product is tied to a computer. However, a number of decisions handed down by the Board of Patent Appeals and Interferences (BPAI), have questioned that reliance. Apparently, a computer is not a particular machine, but rather a general purpose device. In my view that's rubbish. But the result is that applicants are presently having difficulties getting US patents for software products that don't relate specifically to physical objects. For example, a software product that covers a way of maniputing and generating financial values might not cut the mustard as far as the US patent examiners are concerned.
By the way, the BPAI is a board that has been set up to review adverse decisions by patent examiners.
How does that effect us here in Australia? Well, at the moment, we can still rely on the fact that a computer is a machine, although we do it in a different way (see the relevant label). However, it won't be long before our examiners start getting the same attitude. That's a combination of IPAustralia's propensity to look to the US for guidance and to its small obsession with that old pie in the sky, harmonisation.
18 February 2009
First up was Prof Peter Andrews, Queensland Chief Scientist. He had some hard-hitting comments to make. These included the need for a cultural change, particularly in the universities with their penchant for publishing as opposed to protecting. Australia apparently only has half as many patents per capita compared to be remaining OECD countries.
One of the gripes he had was with the government continually stopping and starting investment programmes. An example of this is the stopping and starting of the Commercial Ready program. I have felt that in my practice, with potential clients not being able to go forward because that particular program was dropped. There is such a morass of governement schemes out there that my clients often have to pay some consultant a fortune to figure it all out.
Also, it appears that venture capital generally dries up far too soon and the start-up company is forced to go IPO. In the US, the situation is significantly different way of venture capital funding is repeated during a number of cycles, generally until the company becomes a viable concern.
He pointed out three things that we need to deal with:
1. We need to increase investment in innovation, this includes superannuation funds and other private investment bodies in addition to the government.
2. We need to take the lead and increase investment as soon as possible.
3. Government and other investment bodies cannot afford to stop investing. This is a 10 to 20 year programme, not a short-term thing.
And then it was Prof Bronwyn Hall's turn. This exuberant speaker dropped one or two nuggets. These included the fact that from 1985 to 2000 all growth in the filing of patent applications at the USPTO was due to patent applications in the ICT sector. There has actually been a drop off in the filing of patent applications for pharmaceuticals.
Prof Alfonso Gambardella had an interesting speech, if you live in Europe. It's probably not worth going into much detail. However, it may interest some people to know that more than two thirds of the patent applications filed at the European patent office belong to "big" firms.
The talk was very statistical. I'm always sceptical of statistics. It usually only takes one faulty assumption and the whole house of cards comes tumbling down. However, economists, like the professor, need statistics otherwise there wouldn't really be much to say.
Apparently, most inventors are motivated by the need to increase the performance of the firm, to achieve a sense of satisfaction that comes with knowing that something is possible, prestige, money and career opportunity, in that order.
Oh, apparently the average value of a granted European patent is €6000. Of course, that's completely meaningless because, in my experience, most applicants don't expect to be "average". Furthermore, provided they have been correctly advised, they are aware of the risk-return principle.
This would appear to fall in line with the next meaningless statistic in which it was found that the average applicant believes that his or her patent is worth €300,000.
Associate Prof Beth Webster from IPRIA titled her presentation "What's Happened to Australian Inventors?". A very good question indeed, considering our performance here in Australia.
Apparently there is an annual average growth rate of 4% in the filing of patent applications by companies. The value is -1.3% for individuals and 3.2% for public research. The top subject matter categories are "mechanical engineering" and "other".
Rowan Gilmore of AIC spent a good portion of his allotted time plugging AIC. Given that the vast majority of the attendees would never make use of AIC, this was probably wasted time. In any event, he generated five thoughts:
1.Filing a patent application is never a condition for success.
2. There are horror stories when patents don't exist.
3. There are horror stories even when patents exist.
4. Brand equity should be built through trade marks and trade secrets.
5. Intellectual capital and the capability to execute is just as important as any other factor.
Mr Karl Rodrigues, the investment portfolio manager for the CSIRO had a number of good points to make. The following requirements should be met for successful commercialisation:
1. A problem.
2. A good team for execution.
3. Working capital.
4. Opportunity and luck.
5. Innovation - Creativity, Cool, Science, Art.
6. Cash Is king. Get cash flow as soon as possible.
7. Venture capitalists assume that 9/10 ventures will fail and therefore look for a tenfold return on investment.
Glenn Wightwick from IBM was up next. As some of you might know, IBM has the largest patent portfolio in the world.
This portfolio gives IBM a significant advantage when negotiating with other parties. It also gives them a voice in IP reform. According to the speaker, IBM is filing an increasing number of technical disclosures. The reason for doing so is simply to evidence that they are the authors/inventors of various technical developments. This is considered an effective way of heading off potential patent infringement lawsuits.
Apparently IBM is filing applications for about one third of what it invents.
The next speaker was Malcolm McBratney from McCullough Robertson solicitors here in Brisbane. I found his presentation useful in that it pointed out a number of common mistakes made by innovators. These are:
1.Failure to investigate whether or not there is freedom to operate.
2.Premature disclosure or publication.
3.Not securing intellectual property from contractors.
4.Not conducting a thorough intellectual property due diligence.
5.Failure to take into account joint ownership of intellectual property.
6.Not registering a trademark.
7.Not obtaining appropriate warranties and indemnities in relation to licensed intellectual property.
8.Not documenting intra-group licenses.
9.Non-compliance with the franchising code of conduct.
10.Not complying with the Privacy Act 1988.
Doctor Mark Rogers from Oxford University discussed statistics he had generated in connection with small businesses in the UK and their use of intellectual property, in particular patents.
In one study, he documented 7638 small firms that had technology that could have been patented. In general, 60% of these firms survived. However, 83% of those firms that obtained a patent protection survived. Furthermore, he found that patentee firms had between 0.5 and 12.5% higher average growth rate than similar firms.
Doctor Paul Jensen, a senior research fellow from the University of Melbourne carried out a survey of 108 inventors sourced from the University. Of those, 50% received funding from the public sector and 20% through private funding. When attempting to commercialise the inventions, in 22% of the cases, no one looked at a contract, in 44% of the cases only one person looked at a contract and in only 9.6% of the cases two parties looked at a contract.
Doctor Dean Moss, who is the general manager of life sciences at Uniquest Pty Ltd discussed some issues relating to licenses. He spoke about some characteristics which should be present in an appropriate licensee. These included "financially sound" and "motivated". He also mentioned that it is important that when dealing With a potential licensee company, that the most appropriate person in the company be selected as a point of contact.
What followed supposed to be a case study discussion concerning the development of a new software product for managing real estate. However, it degenerated somewhat when Bronwyn made it known that her son had developed such a product. Initially, the panel questioned the use of patents. However, after some haggling with the crowd, they conceded that it would be a place for patents particularly when it came to raising funds.
I find this particularly frustrating because these people sitting on the panel are those that are often the first point of contact for inventors. If they are telling developers of software products not to pursue patents, I think they are doing those developers a disservice, particularly when it comes to raising funds in the United States.
There was some discussion of Bilski, but not at a very deep level, mainly because the panel were not directly involved with patents, in a legal sense.
Overall, the seminar was partially useful. However, I think that there is an over-emphasis on statistics. Given that each invention is, by definition, unique, it is simply pointless to apply statistics, unless for general interest.