Archive for July, 2011

Tobacco Plain Packaging Bill 2011

Thursday, July 14th, 2011

Last month Phillip Morris announced it plans to sue Australia over the proposed plain packaging legislation for tobacco products.

The Tobacco Plain Packaging Bill 2011 was introduced into Parliament on 6 July and, following its 1st and 2nd Readings, has been referred to the House of Representatives’ Standing Committee for Health and Ageing. The Bill was also introduced with the Trade Marks Amendment (Tobacco Plain Packaging) Bill 2011.

The Tobacco Plain Packaging Bill and the EM can be downloaded from here.

The Trade Marks Amendment … Bill and its EM from here.

The House Committee has requested submissions on the Bill by 22 July 2011.

The Committee’s Media Alert.

 

A business method patent (not yet)

Tuesday, July 12th, 2011

RPL applied for an innovation patent of a method entitled ‘Method and System for Automated Collection of Evidence of Skills and Knowledge’.

The applied for innovation relates to a method for people to obtain recognition for their prior learning. Apparently, there are some 35,000 qualifications and 34,000 units in the vocational educational and training sector in Australia. Hence it can be difficult for people to identify a particular qualification which they have qualified for as there is no single point of access to the system. The applied for innovation claimed methods for using technology, particularly the internet, to automate the process of identifying relevant criteria and applying for the relevant recognition.

Claim 1 claimed:

1. A method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard, including the steps of:

  • a computer retrieving via the Internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
  • the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
  • an assessment server presenting the automatically-generated questions via the Internet to a computer of an individual requiring assessment; and
  • receiving from the individual via said individual’s computer a series of responses to the automatically generated questions, the responses including evidence of the individual’s skills, knowledge and/or experience in relation to each of the elements of competency and performance criteria,
  • wherein at least one said response includes the individual specifying one or more files stored on the individual’s computer, which are transferred to the assessment server.
Myall opposed alleging lack of novelty based on prior use. The applicant didn’t even need to file evidence to defend this allegation which failed on the evidence submitted by the opponent.
However, it appears that the delegate hearing the opposition raised the objection that the innovation claimed was not a manner of manufacture (see [62]).
The delegate noted (at [45]) that the Full Federal Court’s decision in Grant had qualified NRDC so that a manner of manufacture required
‘an artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect’
and
A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required.
This had been further explained by the Deputy Commissioner in Invention Pathways:
I do not take [Grant] to suggest that patentability is merely determined on the presence of a physical effect. Rather it clearly must be an effect of such substance or quality that the method considered as a whole is “proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies”.
Accordingly, the Deputy Commissioner considered:
… the “concrete effect or phenomenon or manifestation or transformation” referred to must be one that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way. Consequently while the step of building a house involves a concrete physical effect it is peripheral to the method of acquiring a house and indeed could hardly be said to characterise the subject matter of the method such that it is considered an artificially created state of affairs. I consider the same to apply to a business scheme implemented in some part by computer and do not believe the patentability of such a method can arise solely from the fact that, in a general sense, it is implemented in or with the assistance of a computer or utilises some part a computer or other physical device in a incidental way.
In this case, the delegate considered at [54]:
54. It is clear that the claim relates to gathering information where the internet is used for transmitting and receiving data, and a computer is used for data retrieval, processing, presentation and storage of information in a well known manner. The process of automatically generating questions based on assessable criteria, as stated in the description, includes applying a question template into which the text of the relevant assessable criteria may be merged. In a simple form, a question may be generated from the criteria by prepending the text such as ‘How can you show evidence that’.
and so found at [55]:
55. The claimed invention defines a method for gathering information where the data retrieval, processing and storage of information appear to have no physical effect other than that would arise in the computer with standard software in conventional use. Furthermore, there is no substantial effect or transformation in generating the questions by concatenating text matters. While the internet and the computer facilitate the operation of the claimed method by retrieving, generating and conveying information, they are not central to the purpose of the claimed invention. [So unlike the loyalty card in Welcome-Catuity], the claimed invention simply monopolises a scheme where the internet and the computer are used for mere convenience for operating the scheme.
Accordingly, the delegate rejected the application in that form. However, at [59], the delegate considered there could nonetheless be patentable subject matter:
the description of the opposed patent contemplates generating the questions automatically based upon the identification of particular keywords within the assessable criteria, and upon additional contextual information obtained from Evidence Guides, Range Statements and Employability Skills associated with Qualifications and Units of Competency without requiring human intervention.
and so allowed 60 days for amendments to be brought in (the delegate also flagged a potential fair basing problem for the proposed amendment).
Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48 (link to be provided when available)
Lid dip: Patentology

				

Streamlining patent applications

Tuesday, July 5th, 2011

Back in February, the Prime Ministers of Australia and New Zealand issued a statement about harmonising IP laws (and procedures) between their countries.

Today, the Minister for Innovation, Industry and Science and the New Zealand Commerce Minister issued a further statement “revealing” that:

  1. there will be a single application process for seeking patents in both countries from 2013; and
  2. a single examination of the application for both countries will be introduced from 2014.
The two countries’ patent laws will continue to be different but, when these steps are introduced, there will be an integrated application and examination process to get a patent in both countries.
According to the Australian Minister:
The savings in professional costs alone could be as high as $2,000 to $5,000 per invention — money that should and will stay in the pocket of the innovator.
Not entirely clear from the information released officially how things have progressed since February. Press Release here; Fact Sheet there (pdf).

Scope of disclosure in an innovation patent

Monday, July 4th, 2011

Patentology has a nice summary of the innovation patentee’s successful appeal in Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2011] FCAFC 83.

One point: it seems like the disclosure in the body of the specification supporting the broadest claim was at a level of generality similar to that upheld by the High Court in the first round of Lockwood. Wonder how that will hold up for future application under the (proposed) Raising the Bar legislation?

Secondly, the (now) infringer’s best line of defence (apart from invalidity) seems to have turned on trying to argue (now unsuccessfully) that incorporating additional integers in the accused gutting machine to those specified in the claim. Bennett J gave it short shrift.