02 October 2011

Raising the Patent Bar - Part II (The Innovation Patent)

In my post of 28 July 2011, I discussed some aspects of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011.

In this post, I will have a look at how it's going to effect our innovation patent system. Also, the Advisory Council on Intellectual Property (ACIP) has recently released an issues paper which discusses some concerns with our innovation patent system with a view to initiating a discussion as to whether or not it should be reviewed.

For those of you who are not familiar with the innovation patent system, please click here to see my posts on  innovation patents.

I have extolled the virtues of the innovation patent system as an effective weapon for patentees. I won't go into that again. Here's an article concerning the manner in which this system can be exploited to strengthen a patentee's position. Apparently this is causing some concern amongst the authorities because the ease of grant and certification may be contrary to the spirit of the "Raising the Bar" Bill. Indeed, if it is the authorities' intention that the bar be raised, then having a system that requires an innovative step instead of an inventive step would certainly be contrary to that spirit.

What is the Bill attempting to achieve?

The Bill does address this to some extent. Some of the proposals set out in the Bill are as follows

1. Including "usefulness" as a ground for examination

2. Expanding the grounds for revocation to include:
    a) lack of full description and claims not defining the invention
    b) lack of clarity, succinctness and claims fully supported by the specification
    c) lack of manner of manufacture (improper subject matter)
    d) lack of usefulness

3. Removing the limitation that the common general knowledge for the purposes of assessing inventive step is restricted to common general knowledge in Australia

4. Permitting the consideration of information made publicly available through doing of an act when assessing innovative step

5. Applying a "balance of probabilities" type test to considerations by the Commissioner when deciding to certify or revoke a granted innovation patent. This means that the benefit of the doubt will not necessarily be given to the patentee so the Commissioner only needs to be satisfied, on a balance of probabilities, that the patent is invalid in order to revoke the innovation patent.

6. Making entitlement a ground for examination, re-examination, revocation and opposition.

7. Permitting the Commissioner to undo a decision to issue a certification of examination if the Commissioner should not have made the decision and it is reasonable to undo the decision, taking into account all of the circumstances.

The tall poppy syndrome?

Apparently some concern has been raised because some parties are using the innovation patent system to protect higher level inventions - tut-tut. Well, the innovation patent system only provides 8 years of protection so that could be regarded as the quid pro quo. Also, once certified, a third party can oppose the certification, avoiding action in the Federal Court.

Then again, what is a "high level" invention and what is a "low level" invention? This terminology appears a bit disingenuous to me.

There is also some concern that the innovation patent can be certified at any time during its life. This apparently could lead to uncertainty. However, the Act does make provision for third party requests for examination, so I'm not sure that this is such a big deal.

One major disadvantage for a defendant is the fact that, while a parent application for a standard patent is pending, the applicant can file as many divisional applications for innovation patents as it likes. This could result in the defendant having to defend against allegation of multiple infringement. Perhaps one way for the authorities to address this would be to work on shortening the prosecution process for standard patents. They've been trying to do that for years, though, so I won't be holding my breath. It would seem inequitable to me that if an applicant has identified an invention he or she cannot take steps to protect it. I am not sure why applicants should be prejudiced further by the tardiness of IP Australia when it comes to examination. I think that the ability to file any number of divisionals while the application is pending is a fair trade-off for the snail-like pace of prosecution.

Perhaps the biggest problem for the defendant is that it is very difficult to revoke a certified innovation patent because of the innovative step requirement that sets a much higher bar for the defendant than the inventive step requirement. However, in my experience, applicants that use the innovation patent system for high level inventions do so because they want patent protection quickly. All too often, the pace of standard patent prosecution just can't keep up with technology and applicants are frustrated.

The elephant in the room

One of the biggest dangers with the innovation patent system is the fact that the patent is published at such an early stage in the process.

This is not too much of an issue when a divisional is filed or when the innovation patent application is based on a provisional for example. But when filing in the first instance, it is critical to bear in mind that an innovation patent application can proceed to grant in as little as a month. It is published at the time of grant. This publication makes the invention available to anyone in the world with an Internet connection.

Usually, an application is only published 18 months after the earliest filing date. In Australia, that's usually the provisional patent application. Also, publication only occurs if a further application based on the provisional application is filed. This allows an applicant the opportunity to withdraw the provisional and refile, gaining another 12 months since the invention will still comply with the novelty requirement of the Act. That's provided the applicant hasn't actually made a disclosure of the invention before the date of refiling. This option would not be available if the first application was for an innovation patent.

The early publication can also have implications for software patents where developers usually like to delay release of the technical details of the invention - here's the post.

At the moment, the United States has a provision which sets out that it is still possible to obtain valid patent protection if the invention is published less than 12 months before the date of filing the US application. However, it has another provision that set outs that a patent will be granted on an application provided a patent has not been granted for the invention on an application filed more than 12 months before the date of the US application. This means that where the first application is an innovation patent, the 12 months grace period cannot run from the date on which the innovation patent is granted and published and must run from the date of filing the innovation patent application. This is significant, because without an innovation patent, an applicant could conceivably still file in the US within a 12 month period after the publication of the patent application in Australia, 18 months after the earliest filing date.

In my view, the IP Australia website should have bold warnings about early publication posted on the innovation patent page. But see this post in connection with the relationship between the applicant and IP Australia.





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