Posts Tagged ‘innovation patent’

Innovation patents – further chance to protest

Monday, September 24th, 2012

IP Australia is seeking comments on how the innovation patent system is working.

Since 2001, Australia grants 2 types of patent: the standard patent with a normal term of 20 years and an innovation patent with a term up to 8 years.

Ann innovation patent need show only an innovative step over the prior art to be valid. According to the Full Court in Delnorth, this requires a difference that the person skilled in the art would understand makes a substantialmaterial contribution to how the product / method works. As the Full Court acknowledged, this is nothing like the inventive step requirement for a standard patent.  See also the SNF case.

According to IP Australia’s website:

Since the Delnorth (2009) decision in the Federal Court, relatively obvious minor improvements to inventions have been patentable.  There has been an unusual growth of innovation patent applications for certain technologies. There is some evidence that larger companies might be using the innovation patent system to extend the life of their patents and deliberately targeting competitors.

ACIP is already undertaking a review into the innovation patent system as a whole. The consultation paper for this (IP Australia’s) review explains:

The Advisory Council on Intellectual Property is presently conducting a review of the Innovation Patent system as a whole. In the mid term, this will provide valuable insights and recommendations for improvements.

In the short term, however, there is a pressing need to address emerging risks of the Innovation Patent system being used in ways which would lead to undue costs to consumers and to businesses that compete with owners of Innovation Patents. For example, there is a need to ensure that Innovation Patents do not inappropriately extend the life of pharmaceutical patents and delay the introduction of less expensive generic medicines, leading to increased costs to consumers and an increase in government expenditure through the Pharmaceutical Benefits Scheme.

As a result, the Government proposes to amend the Patents Act 1990 to raise the threshold for inventiveness to the same level as for Standard Patents (Attachment A refers). This approach is consistent with the second tier patent systems operating in countries such as Germany and Japan.

Comments are requested by 25 October 2012.

You can download the consultation paper, Innovation Patents – Raising the Step (sic), via this page.

ACIP reviews innovation patents

Wednesday, August 24th, 2011

On 28 February, the Minister directed ACIP to report on the innovation patent system.

On 17 August, ACIP published an issues paper (pdf) and now seeks your comments by 14 October 2011.

According to the announcement of the issue paper’s release:

In recent years a variety of concerns have been raised about the innovation patent system and whether it is meeting its original objectives. A key concern is that an innovation patent is overly difficult to invalidate and the remedies for infringement are overly generous. Another concern is that innovation patents are being used to obtain a form of quick protection for higher level inventions while a standard patent is being pursued. Also, the innovation patent system has never been reviewed to assess whether it remains effective and appropriate for Australia now and in the future.

Innovation patents (which are not for business schemes) are difficult to invalidate after Dura-Post? The Full Court confirmed that the test of ‘innovative step’ does not involve a sort of obviousness penumbra over common general knowledge. Rather, the patent is innovative unless it can be shown that the difference between the patent and the prior art do not make a substantial contribution to the working of the ‘invention’. This was apparently derived from Griffin v Isaacs. As the trial judge explained with the apparent approval of Kenny and Stone JJ at [70] and [79]:

Be that as it may, the feature of what Dixon J said was the disjunctive nature of the concepts – one was ‘make no substantial contribution to the working of the thing’; the other was ‘involve no ingenuity or inventive step’. The first alternative has been taken by Parliament virtually verbatim from the judgment. The focus is upon working of the invention (as claimed) not to the degree or kind of variation from the kinds of information set out in s 7(5). In other words, the variation from the kinds of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step. … In my view the provenance of the phrase ‘make no substantial contribution to the working of the invention’ indicates that ‘substantial’ in this context means ‘real’ or ‘of substance’ as contrasted with distinctions without a real difference.

Rather than a modified inventive step test, it is a modified novelty test.

The Issues Paper runs to some 28 pages.

Interestingly, just over 11,000 innovation patents have been granted and 1,790 certified.Over 80% are to Australian inventors and around half are to Australian individuals as opposed to corporations (the proportion of certifications falls to 41%). The proportion of Australian grantees vs foreign appears to be falling over time.

1,011 of the grants are divisionals from applications for standard patents. For the first few years, that was about 5% of all divisional applications, but it has been at least 10% since 2006 with a couple of years getting closer to 14%. This leads to concerns that innovation patents are being used to get ‘quick’ rights.

There are also concerns that the pharmaceutical industry is using the system to ‘evergreen’ its patent portfolios.

The questions (although ACIP would like to take this opportunity to provoke discussion generally):

  1. Effectiveness in stimulating innovation
  2. Does Australia need a utility model?
  3. Does it cost too much?
  4. Is the cost of certification dissuading people from seeking certification?
  5. How do (people in) other jurisdictions jurisdictions perceive the innovation patent?
  6. Are there concerns about the uncertainty arising from the delays in getting certification?
  7. Are the current remedies appropriate?
  8. If the available remedies are reduced (e.g. you couldn’t get an injunction) would costs of (getting) an innovation patent be justified?
  9. How do you think the use of divisionals is working (and why did you do it)?

ACIP announcement

Issues paper (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.

What’s the priority date for a divisional patent?

Wednesday, July 8th, 2009

Mont has an innovation patent for a travel pack.

It sued Phoenix for infringing the innovation patent; Phoenix  counter-claimed for invalidity on the grounds of Mont’s own use commencing in October 2004.

Patents Act 1990 s 24 (read with Reg. 2.2(1A)) provides a patentee with a grace period: protecting the patentee against attacks on grounds of lack of novelty or inventive step/innovative step by reason of the patentee’s own authorised use or disclosure within the 12 months prior to “the filing date of the complete specification”.

The background was as follows:

In October 2004, it had started offering travel packs made according to the invention for sale.

In May 2005, it filed a complete application (with a complete specification) for a standard patent.

In November 2006, however, it filed a complete application (and of course a complete specification) for an innovation patent as a divisional application from the earlier standard application and this application matured into the innovation patent.

The trial judge had found that the “grace period” had to be calculated from the date of filing the complete specification for the divisional application, not the parent.

The Full Court has now allowed an appeal ruling that “the complete specification” referred to in reg. 2.2(1A) in the case of a divisional application is the complete specification for the parent.

Jagot J (with whom Emmett J agreed) explained the rationale:

76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.
77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.

76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.

77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.

Similarly Bennett J said [49]:

49 The scheme of the Act provides that, where the invention of the divisional was disclosed in the parent, the publication or use of the invention within 12 months before the filing date of the parent must be disregarded for the purposes of assessing the novelty and inventive/innovative step of each of the parent and the divisional, provided that a patent application for the invention is filed within the prescribed period. This applies where the divisional is of a parent standard patent or a parent innovation patent. Where the invention of the divisional was disclosed in the parent, the words “the complete application” in reg 2.2(1A) refer to the parent application and not to the divisional application.

Jagot J also provided a detailed rebuttal of Phoenix’ contentions.

Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84

ps: IPTA was granted leave to intervene (and while advocating the view that the Full Court adopted, was ordered to pay any additional costs incurred by the parties as a result of the intervention).

pps:a patentee who needs to rely on a grace period to preserve the validity of the patent in Australia may well still lose the patent outside Australia where the grace period does not apply