28 July 2011

Raising the Patent Bar - Part I

In a previous post, I said that I would make some comments on the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011. In this post, I comment on the issues relating to standard patent applications. In a further post, I will continue with some further discussions, time permitting.

In the meantime, it may be useful to read the material available here.

As I work my way through this material, I am realising that an interesting future awaits us patent attorneys. Part of this will be explaining to our clients why our charges have increased. Alternatively, those patent attorneys who tend to "overreach" can possibly justify their invoices.

The proposed changes certainly place a heavy onus on us. Whether or not this is passed on in the way of increased charges awaits to be seen. I can safely say that it would indeed be foolhardy for innovators to attempt to go down the path of self-filing once the Bill is passed.

Also, I find it sad that such rich interpretations of phrases such as "fair basis" handed down by our courts over the years will become largely redundant as we are obliged to turn to guidelines handed down by foreign jurisdictions. Perhaps I'm being romantic, but to me, that's simply un-Australian.

Our profession is not immune from the effects of globalisation. However, I fail to understand why our courts are not permitted to simply and firmly direct interpretation towards the global norm, if such a thing exists.

Furthermore, there appears to be much focus on the law in the US and in Europe. Personally, the massive growth of filings in China and Korea (while ours has remained relatively stagnant - much to my irritation) would tend to indicate that we should perhaps be collaborating with those jurisdictions to a larger extent when developing new law.

Common general knowledge

When testing for inventive step, regard is to be had to the "common general knowledge" as it exists in Australia. The Bill now changes that to the common general knowledge as it exists anywhere in the world. Given globalisation and the widespread use of the Internet for research, this change makes sense.

Inventive step

Presently, prior art for the purposes of assessing inventive step is restricted to that which would be "ascertained, understood and regarded as relevant" by a skilled person. The Bill proposes to amend S7(3) to remove this requirement.

One of the reasons given for this change is that it is out of step with international requirements for inventive step. I would tend to agree with that.

I suspect that this will result in examiners over-applying the provision and going beyond the normal bounds of what would be regarded as analogous prior art. However, apart from the extra cost to applicants, I believe that the final outcome will be a good one. It can only be beneficial to applicants to know that the test applied to their Australian applications is applied with the same rigour to corresponding applications outside Australia.

This does not mean that I agree with necessarily following tests applied in other countries, particularly where those countries can't seem to agree themselves on the nature of the tests. Europe is a case in point.

Usefulness

S18(1)(c) (patents) and S18(1A)(c) (innovation patents) require that an invention be useful. Generally, this means that if the description fails to describe an embodiment that would actually work as stated, the patent is regarded as invalid. However, there is no specific requirement that the specification describes a particular use for the invention. It is sufficient if a skilled reader could make out a preferred embodiment of the invention. For example, if an inventor has discovered a particular algorithm, it is sufficient if the description refers to hardware for effecting that algorithm without necessarily describing how the outcome could be used.

The Bill proposes that it be necessary for the complete specification to describe a "specific, substantial and credible use for the invention". Furthermore, that use must be sufficient to be appreciated by a person skilled in the art.

This will place a further responsibility on the practitioner in that he or she will not be able to rely on speculative use to support a valid patent. Rather, the practitioner must be able to extract a "specific, substantial and credible use" from the inventor. I look forward to analysing the meaning of "specific" and "credible". "Substantial" has already received quite a bit of attention from the courts.

But it appears that support has been drawn from US practice. In fact, the writers explain that the intent is that "specific, substantial and credible be given the same meaning as is currently given by the US courts and the United States Patent and Trademark Office (USPTO)".

In any event, patent systems are based on the quid pro quo that a patent is capable of providing enough information to the public upon expiry of the patent to balance out the benefit of the monopoly afforded by the patent. It seems reasonable to me that, as the commentary relates, "the public is given sufficient information in the specification to understand how the invention is useful and how to put that use into practice."

The provisional specification

At the moment, section 40 (1) simply states that "a provisional must describe the invention". This is a fairly lenient provision. However, since the provisional often provides basis for a priority claim supporting a valuable patent portfolio, it is incumbent upon the practitioner to ensure that the provisional describes the invention as fully as possible, including all embodiments which can reasonably be identified.

The bill requires that "a provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art".

This requirement will provide potential self-filers with even more motivation to consult patent attorneys. On the other hand, some patent attorneys may be justified in charging significantly more for their services, simply because the Act will explicitly require a level of performance not previously required.

Describing the invention fully

The Bill proposes that a patent specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. Again, it appears that this is intended to align our disclosure requirements with those of foreign jurisdictions.

At the moment, s40 (2) (a) sets out that that the complete specification must fully describe the invention.

According to the writers, the case law has clarified the section to some extent. However, they still identify two problems. The first is that a patentee may own a monopoly that extends beyond the knowledge that the patentee has shared with the public. The second is that other innovators do not have enough information to improve on embodiments that have not been disclosed.

In other words, it will be up to us patent attorneys to ensure that all claims are enabled in the specification. While the reasoning is understandable, this is going to place a rather heavy burden on patent attorneys. Personally, I wouldn't be surprised if the average specification length went up by 30% to 50%. Unless patent attorneys are prepared to cut the hourly rate, this is going to add a significant amount to the costs of preparing patent specifications. On the other hand, the pragmatic patent attorneys will simply disclaim responsibility for omitting material not provided by clients.

Fair basis

At the moment, section 40 (3) requires that the claim or claims must be "fairly based" on the matter described in the specification. The Bill proposes that the claims must be supported by matter disclosed in the specification.

The requirement of "fair basis" has a long, chequered and interesting history. Personally, I have never thought that it was an accurate phrase for describing the requirements that have been developed by our courts. Nevertheless, I fail to find fault with the interpretation that has been painstakingly put together by some of our brightest legal minds.

As for the phrase "supported by" it appears that this has been drawn from overseas practice. It is not worth commenting upon, except to say that it is a shame that we will now be turning to foreign cases to interpret our own laws. Particularly so since our courts have spent so much time and effort in developing a decent workable interpretation of the phrase.

Again, patent attorneys will have to change their standard practice letters and also revert to practice guidelines outside of Australia in order to understand the required relationship between the different parts of a patent specification.

Priority date

The current test for determining the priority date of a claim is whether that claim is "fairly based" on what is disclosed in the document identified by the applicant as the priority document.

The Bill proposes that the priority document must disclose the material in the claim in a manner that is clear and complete enough for the invention defined in that claim to be performed by a person skilled in the art. I have already discussed the requirements of "clear and complete enough".

Preliminary search and opinion

The Bill proposes that the Commissioner conducts a "preliminary search and opinion" on a standard complete patent application.

The reasoning behind this is that such a preliminary search and opinion is conducted on international applications. At this stage, applicants filing only in Australia to not have the benefit of an early preliminary search and opinion.

I welcome this procedure. It could be used as a way of assessing an invention before filing an international application. However, it will be interesting to see whether the filing fee remains the same given the extra work load in the patent office.

Examination of standard patents - Useful

The Commissioner will be required to examine and report on whether an invention claimed in an application for a standard patent is useful.

Any preliminary procedure that can anticipate potential issues in litigation, for example, is to be welcomed.

Consideration of prior use during examination

At the moment, "prior use" can only be considered during opposition and court revocation proceedings. It cannot be considered during examination or re-examination.

Again, any preliminary procedure that strengthens a patent is to be welcomed.

Standards of proof

Extensive changes are proposed relating to the standard of proof required to be exercised by the Commissioner during examination, re-examination, and opposition relating to standard patent applications.

Essentially, the Commissioner or Examiner, depending on the procedure, can now refuse patent rights on a balance of probabilities rather than having to be practically certain that the patent is invalid or should not be granted.

The writers support this by commenting that the Commissioner/Examiner carries out extensive searching through sophisticated databases.

Anecdotally, however, I am sceptical. If recent experience shows, many examiners simply scratch around to see how corresponding applications have been examined and then generate an examination report which states, inter alia, that while the practice in (US or Europe typically) is different to that in Australia they nevertheless agree with that examiner's findings.

In spite of this, I do believe that provided the Commissioner or Examiner carries out his or her task in accordance with the standards set by IP Australia, there is no reason why the standard of proof needs to be different to that of a court where the balance of probabilities is applied.

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