29 July 2009

IP Australia Offers Training Package

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

A Note on International Applications

I've just added an article on international applications to my website. It discusses some advantages of the system and includes a flowchart. Read it here.

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.

14 July 2009

IPONZ - Statement of Novelty for Designs

IPONZ has issued a notice that only a single copy or instance of a "statement of novelty" is required to accompany an application and representations to register a design. Traditionally, three signed copies were required. I assume that this has to do with their online filing system, which is quite a bit better than Australia's, I might add. http://news.business.govt.nz/news/business/iponz/article/9523

13 July 2009

IP Australia = Australia Post

Australia Post will soon be able to take lodgements. Unfortunately, only central outlets in capital cities will play this role. Sort of defeats the object. Hopefully IP Australia will continue to refine their online filing systems for us enjoying life outside of the "big smoke".

Full Court Interprets "Filing Date" for Grace Period

Case - Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC.

Emmett, Bennett & Jagot JJ

Background

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 Judgement

The decision of the single judge was overturned.

Emmett J

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."

Bennett J

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.

Jagot J

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 [1998] 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.

Conclusion

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

Innovative Step Confirmed

Case - Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC.

Judges: Kenny, Stone & Perram JJ

Handed down on 30 June 2009

Background

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 appeal

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 barry@beagar.com.au 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".

Conclusion

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.