01 September 2014

Eagar & Martin Launch

I'm delighted to announce the launch of Eagar & Martin! Please visit my new firm here: www.emip.com.au

22 May 2014

Grace Period - Australia

This is the first in a series of posts concerning grace periods around the world. Australia is a good place to start.

But first of all, let's consider what is meant by "grace period". This is not the convention period governed by the Paris Convention. I see that confusion often. Rather, it is a period of grace for a public disclosure made by the inventor(s) before filing the first patent application covering the invention. Usually, such a disclosure would result in the invention no longer complying with our novelty and inventive step requirements. More here in connection with those requirements.

In Australia, that grace period is 12 months. However, there are some important considerations:

  • The patent application must be accompanied by a complete specification. This means that it will be necessary to file either a standard or an innovation patent application. International applications are regarded as standard patent application, so the filing of an international application can also be effective. 
  • A third party who takes definite steps to exploit the invention before the application is filed has a defence to an infringement proceeding brought once the patent is granted.

You should never rely on the grace period, unless you have no choice. The grace period does not apply in most other countries. The public disclosure will prevent you from obtaining valid patent rights in those countries.

14 May 2014

Particulars for Patent Opposition


In this matter, the delegate of the Commissioner of patents dismissed multiple grounds of opposition. He did so, requiring further and better particulars for the ground of novelty raised with regards to the allegations of prior use.

Of interest here are the principles that were set down by the delegate, citing various cases and the Federal Court rules.

  • An opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed. An opposition may be dismissed if it is considered to have no reasonable prospects of success.
  • In determining whether or not there is a real prospect of success, consideration is given as to whether there is a real rather than fanciful issue to be decided. The onus will initially be on the applicant to show that the opposition has no reasonable prospects of success, but the onus may shift to the opponent to explain its case if a real issue is not self-evident. This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established.
  • A dismissal will generally be inappropriate where expert evidence is required to determine an issue. However, this does not preclude dismissal of an opposition where there is a clear deficiency in the case to be argued, such as a technical divergence of a citation and the application or where an opposition involves issues of construction and expert evidence is not necessary to clarify technical terms or other matters that are in doubt.
  • Evidence of an “ambivalent character” will generally be sufficient to establish a reasonable prospect of success. However, if the evidence is only one-way, or can clearly lead only to a single conclusion, then a proceeding may be dismissed. If no particulars have been provided in relation to a ground of opposition then it may be considered to have no reasonable prospects of success.
  • Care must be taken not to cause an injustice to a party by dismissing an opposition.

The following points regarding the nature of the particulars are also useful:

  • for documents, the relevance of the reference to the ground together with page and line references to direct the reader to the specific part of the document that is to be relied on. Also, where patent documents have been published in more than one version, then the version being relied on should be identified and if reference is made to patent family members then material facts relevant to the family member should also be clearly identified;
  • for common general knowledge, a brief description of the alleged common general knowledge and identification of the person skilled in the art including brief details of any material facts needed to establish a prima facie case;
  • for manner of manufacture, a brief description of the particular type of manner of manufacture, eg. a mere mixture of known ingredients, together with brief details of material facts to establish a prima facie case;
  • for matters such as prior knowledge, sale, prior use, a brief description of their relevance to the ground together with a brief details of the material facts to support a prima facie case, for example, (a) the date and place of any use, (b) the person or persons to whom the invention was allegedly disclosed or sold;
  • for trade marks or trade names, a brief description of the nature of the material together with a description of its relevance to the opponent's case. Of themselves, references to trade marks or trade names are meaningless particulars; it is quite possible for the constituents of a product to be changed and for the product to continue to be sold under the same trade mark or trade name;
  • for section 40 matters, a brief description of the specific subject matter causing section 40 not to be satisfied, a clear statement of the specific statutory requirement and the identification of the deficient part of the specification (by reference to page and line and/or claim numbers).


13 May 2014

Game not Patentable in the United States

I came across the interesting case of Gametek LLC v Zynga, Inc (25 April 2014) recently. This matter was heard in the US District Court, San Francisco Division.

Gametek sued Zynga and some other defendants for the infringement of US Patent 7,076,445.

The relevant claim reads as follows:

1. A method of managing the operation of a game which includes a game environment, and is programmed to control a gaming action for at least one of a plurality of users, said managing method using a programmed computer to effect the following steps:
a) tracking the activity of the at least one user in the course of the gaming action;
b) permitting the at least one user to create an account for receiving a consideration of the at least one user, the at least one user having a set of demographics;
c) determining the eligibility of the at least one user to purchase at least one of a plurality of game objects, said eligibility determining comprises the following sub steps:
i) permitting the at least one user to select the at least one game object,
ii) setting the purchase price of the at least one game object, and
iii) comparing the account balance of the at least one user's consideration with the set price of the at least one game object and, determining if the balance of the user's consideration is not less than the set price, determining the at least one user to be eligible to purchase the at least one game object;
d) displaying in the game environment a purchase price of the at least one game object;
e) presenting to the at least one user an offer to purchase the game object dependent upon a group of game parameters comprising the tracked activity of the at least one gaming action of the at least one user and, the one game environment or the one set of demographics of the least one user
f) permitting the at least one user to purchase the at least one game object at the set purchase price without interrupting the gaming action of the at least one user; and
g) supplying the at least one purchased game object to the at least one user without interrupting the gaming action of the at least one user and incorporating the game object into the game.

Notable is the court's statement that "the specification suggests the method may be performed with or without a computer,...". Also neither "the claim nor the specification provides any details on the "programmed computer" or how implementation of the method steps by means of a computer would differ substantively from non-computer practice."

Gametek did try to make something of the 12 steps in the above claim. However, the court held that "these twelve steps are nothing more than a teased-out version of the basic steps of any commercial transaction:  a
seller offers an item for sale to an interested and able buyer, the buyer accepts that offer, and the seller then provides the item in exchange for valuable consideration." While the practice of these steps might be facilitated by use of a computer, a computer is not necessary. The court cited CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), in which it was held that “methods which can be performed manually, or which are the equivalent of human mental work, are unpatentable abstract ideas”.

The Machine-or-Transformation test was also applied. In short a "claim in meaningfully limited if it requires a particular machine implementing a process or a particular transformation of matter". To cite the famous Bilski decision: "When assessing computer implemented claims, while the mere reference to a general purpose computer will not save a method claim from being deemed too abstract to be patent eligible, the fact that a claim is limited by a tie to a computer is an important indication of patent eligibility.”

Gametek contended that the processes in the claim cannot be, and never were, performed by a human absent a computer. But Gametek offered no explanation of "why these seemingly obvious steps have never been and could never be performed by a computer.

The court concluded that the claims were unpatentable.

The message here is clear. You are going to have problems in the United States (and probably in Australia as well) if your invention does not depend on the operation of some form of data processing apparatus. You need to be sure to provide your patent attorney with plenty of technical information to support an argument that a some form of machine plays an important and significant role in the exercise of your invention,

15 March 2014

Tramanco v BPW - The Claims and Description Connection

Here's your link. And here's a link to the patent in question

This judgement has some interesting snippets. It is useful to read as a lesson in claim construction. Some well-known rules are emphasized.

A practice note for litigators is set out in paragraphs 125 to 127.

This case reinforces the principle that the claims must always be interpreted in light of the specification read as whole. See for example paragraphs 144 to 152. Four very useful points of claim construction are set out in paragraph 175.

Here's an example (paragraph 201): "In my view, the skilled addressee would understand the description of the invention to relate to the measurement of loads or forces at the suspension, and would apply that understanding to his or her reading of claim 1.  In cross-examination Dr Blanksby gave evidence which indicates that he approached the claim in precisely this way, that is to say, having read the Specification as a whole, he formed the view that it was “not the intention of the patent” to measure loads or forces at the tyre/road interface.  I think Dr Blanksby’s reading of the claim is fully borne out by the description of the invention in the Specification."

08 March 2014

International Applications - Don't Rely on the IPRP

Humans are fallible. Nowhere is this more so than in a government department. Bearing this in mind, you need to think very carefully before making the significant financial commitment that is required when entering national phase.

When filing and prosecuting an international application in Australia, you should bear in mind that the application is examined by an Australian examiner. The examiner represents the International Search Authority but is not actually a member of WIPO sitting in Geneva or The Hague. As such, the search is carried out to Australian standards. It is a terrible thing to generalise. And I am sure that most Australian examiners are competent. But my understanding is that the examiners are directed to work under certain constraints. For example, an examiner cannot simply follow his or her nose and keep digging up relevant prior art. The search fee component of the international filing fees is a healthy $2200, so you would think that the search results would be adequate. However, more often than not either a European, Japanese or US examiner finds prior art not uncovered by the Australian examiner. This can be devastating.

Let's consider national phase in 4 or 5 countries. That's between $20K and $30K, depending on various factors. What would you pay for some assurance that the first report issuing out of one of those countries does not blow your entire portfolio out of the water? Even 20 percent is $4000 minimum. You could have a very useful search carried out for that amount. It would not be unreasonable to consider more, particularly for more national phase countries.

You should note that an adverse examination report in one country can be just as relevant in all the other countries. It happens regularly that a Japanese report, which is usually delayed, ends up making a big hole in a portfolio. In other words, you could spend literally tens of thousands of dollars before finding out that it is not, after all, possible to achieve patent protection in most countries.

So, searching must remain on top of your list of priorities. You may have searched before filing the provisional patent application. But you should still not assume that all is well. Searches are usually carried out to a budget. The more you spend, the more thorough the search.

13 February 2014

Public and Private Interests in Extensions

Here's an interesting little matter - Innovia Security Pty Ltd v JDS Uniphase Corporation [2014] APO 5

In this hearing, the Commissioner's Delegate decided that it was against the public interest to grant an extension where "it had been almost a year since the initiation of settlement negotiations, and that it appeared there had been a decision not to bother collecting evidence because of the settlement negotiations." The Delegate further supported this on the basis that the evidence did not suggest that there was a "serious opposition".

On the other hand, both parties were in favour of the extension. The balance of the considerations lay against allowing the extension of time. A short period of one week was allowed for filing any evidence readily available.

11 February 2014

Evidence for Inventive Step

Case: Cronk v Commissioner of Patents [2014] FCA 37

10 February 2014

"A locating mechanism for a pair of reflector sheets from which the reflector of a doubly arched luminaire is assembled, said mechanism comprising at least one mushroom-shaped stud on one of said sheets and a corresponding keyhole shaped aperture on the other of said sheets, said stud comprising a stalk and a cap and said aperture comprising a main opening and a smaller extension wherein each said stud and aperture are dimensioned so that said cap can pass through said main opening but not said extension and said stalk can be retained in said extension with a friction fit."


  1. Problem solution approach appears to be discussed?
  2. Attributes of nominal "person skilled in the art"
  3. Good short review of "inventive step" and meaning of "obvious" - List of cases
  4. "Common general knowledge"
  5. An example of a good expert witness