15 July 2009

Aristocrat's Amendment Disallowed

Case - IGT v Aristocrat Technologies, Inc. [2009] APO 11.

The Delegate of the Commissioner of Patents

Background
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.

The Law
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.

The decision
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.

Conclusion
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.

No comments:

Post a Comment