Alison Brimelow, immediate past President of the European Patent Office, will give the 2nd annual Francis Gurry Lecture on 1 March 2010 at Melbourne Uni.
Her topic: “not Seeing the Wood for the Trees: Is the Patent System still fit for purpose?”
Details and registrations via here.
2010 FRANCIS GURRY Lecture Read More »
IP Australia has issued a second consultation paper – with draft drafting instructions:
As with the first round of the second round, comments are required by 12 Feb 2010.
The new paper and drafting instructions can be found here (pdf).
Links to all the papers, pdf and word, via here.
IP Australia more 2nd round consultations Read More »
Ben McEniery from QUT writes advises that QUT is running a “peer to patent” pilot project modelled on those running through New York Law School and the JPO.
According to Ben:
Following on from the Peer-to-Patent projects run recently out of the New York Law School (NYLS) and the JPO comes Peer-to-Patent Australia. Peer-to-Patent Australia is a joint initiative of the Queensland University of Technology (QUT) and IP Australia that is designed to improve the patent examination process and the quality of issued patents. Peer-to-Patent Australia uses Web 2.0 technology to allow experts within the community to review participating patent applications and bring relevant prior art to the attention of IP Australia’s patent examiners.
The project is based on the successful Peer-to-Patent projects run out of the New York Law School (NYLS) in the United States and is the result of the collaborative efforts between QUT and NYLS. The project will initially run as a six-month pilot that will focus on the rapidly advancing technology areas of business methods and computer software. Up to 40 business method, computer software and related patent applications that have been filed in Australia and which are open for public inspection will each be posted on the Peer-to-Patent Australia website for a 90-day period. During that time, members of community can review those applications, submit prior art references and comment on the relevance of any prior art that has been put forward.
At the end of the review period, Peer-to-Patent Australia will forward the top 10 prior art submissions for each application, as selected by the community of reviewers, to IP Australia for consideration in the examination process. The review process in no way abrogates the responsibility of the patent examiner to assess a patent application. Prior art submitted by Peer-to-Patent Australia is solely designed to assist a patent examiner, who remains the arbiter of whether a patent is to be granted.
There are currently 15 patent applications from seven companies open for review. The participating companies include IBM, Aristocrat Technologies Australia Pty Limited, General Electric Company, Hewlett-Packard, Residex Pty Ltd, Yahoo and CSIRO.
Since the focus of the pilot is on business methods and related applications, there is an interesting array of new ideas and technologies in the applications that are open for review. Those applications include methods, systems and apparatus for:
Those wishing to review participating patent applications can read more and register here.
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Peer to patent Down Under Read More »
Foster J has ruled that Bitech’s patent for an apparatus that simulates log flames or coal fire in electric or gas fired domestic room heaters is valid, but not infringed.
An essential feature of the patent was that the simulated flames resulted from reflected light, however, the alleged infringements used directly projected light, not reflected light and consequently did not infringe.
The novelty attack failed because the relevant prior art did not possess all the features claimed. The attack on obviousness failed because s 7(3) was not available – the complete specification was filed before the 1990 Act came into force and so the Alphapharm rules were all that was relevant.
Of potentially greater interest, if there had been infringement, Foster J would have found the importer and retailer (Bunnings) were engaged in a common design.
Somewhat bizarrely, on of the respondents denied it had imported the allegedly infringing products, but led no evidence on the point. As a result, Foster J has foreshadowed some consequences in costs for putting the applicant to proof on this point.
Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393
The patent was valid, but not infringed Read More »
IP Australia has published a second round of consultation paper (pdf) on its proposals for reform of intellectual property laws and procedures in Australia.
Topics covered include:
Submissions are due by 12 February 2010.
In a move definitely to be encouraged, the proposed drafting instructions have also been published (pdf) for comment.
(Links to the “Word” version as well as the pdf version and the previous round of consultation papers via here.)
Some further papers will be published soon on:
2nd round consultations on IP reform in Australia Read More »
Prof. Ann Monotti and other experts will be talking about what University of Western Australia v Gray means for Universities in
Details and registration here.
Judge Hiroki Morishita will be providing an Introduction to the High Court of Intellectual Property in Japan on 9 November in Melbourne. Details and registration here.
And, if you’ve recovered from Oaks Day, you could find out what difference a patent makes in Melbourne on 6 November.
Selected microblog posts from the past week:
Selected microblog posts (w/e 11/09/09) Read More »
Lundbeck had a patent for citalopram for the treatment of depression, which it marketed in Australia under the name Cipramil
Citalopram is a chiral molecule: it can exist in two isomeric forms; a (+)-enantiomer and a (-)-enantiomer. The two forms have the same chemical structure, but they are mirror images. At its priority date, the relevant skilled addressees would have understood that the compound was a racemate or racemic mix consisting of both the (+)-enantiomer and the (-)-enantiomer.
Subsequently, Lundbeck discovered a way to make the (+)-enantiomer in isolated or pure form and, even better, it was this enantiomer that contributed the therapeutic effect of citalopram. It obtained a further patent, claim 1 of which was for:
1. (+)-1-(3-dimethylaminopropyl)-1-(4’-fluorophenyl)-1,3-dihydroisobenzofuran-5-carbonitrile and non-toxic acid addition salts thereof.
The Full Federal Court by 2-1 (Bennett and Middleton JJ; Emmett J dissenting) has upheld the validity of this claim in the face of the prior patent for citalopram.
If resort could be made to the body of the specification, it was clear that the skilled addressees would have understood that claim was a claim to the enantiomer in its pure, isolated form and not to the product as part of a racemic mix.
Emmett J considered the claim was clear and unambiguous. Accordingly, there was no warrant to resort to the body of the specification. Bennett and Middleton JJ, on the other hand, accepted that the trial judge was entitled to accept evidence about how the skilled addressee would have read the claim. Bennett J approved the approach taken by Dr Barker, as delegate for the Commissioner, in Emory University v Biochem Pharma:
[152] …. He drew a distinction between a reading of the claim in the context of the specification to understand what the claim is talking about (as did Burchett J in International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1991) 33 FCR 218), where the whole thrust of the specification makes a limitation clear, and impermissibly importing a limitation from “mere comments” in the description. ….
Her Honour further explained that the citalopram patent didn’t anticipate the claim:
193 The prior citalopram patent described the racemate. It did not describe the pure or isolated (+)-enantiomer. There is no anticipation unless the disclosure of the racemate was, to the skilled addressee, a disclosure of the (+)-enantiomer. As the primary judge pointed out at [171], the skilled but non-inventive addressee would have understood that (+/-)-citalopram consisted of the (+)-enantiomer and the (–)-enantiomer and would have been able to identify the formulae for the S and R enantiomers but would not have known in the absence of experimentation which was the (+)-enantiomer and which the (–)-enantiomer. As his Honour said, these facts would not point specifically to the independent existence of the enantiomers. They did not disclose an invention which, if performed, would necessarily infringe the Patent.
194 It is the case that the skilled addressee knew that the racemate could be resolved into the enantiomers but there was nothing to tell him or her to do so. Further, the prior citalopram patent was silent as to the means of obtaining the enantiomers and there were different methods available to try to do so. There were no clear and unmistakable directions to obtain the enantiomers. Some of the available methodology may have been successful, other methods may not.
That seems rather to qualify the force of the earlier point. One might even think, with respect, that it limits the patentable subject matter to some particular method of making the purified, isolated (+)-enantiomer, rather than the substance per se.
In contrast to this approach, however, Lundbeck lost its attempt to get the term of the second, escitalopram patent extended pursuant to s 70 of the Patents Act.
The problem for Lundbeck here was that s 70(2) referred to a patent for a pharmaceutical substance per se, but s 70(3) and (5) and s 71 did not. The Full Court found that s 70(2) operated to identify the subject matter of the extension application – the substance per se here being escitalopram.
Because the later sub-sections did not refer to the substance per se, when it came to working out the timing for making the application for an extension of term, the question was (in this case) the date when goods containing the substance (not the substance per se) were first included in the Australian Register of Therapeutic Goods.
Citalopram, of course, contained the (+)-enantiomer and it had been registered in the ARTG. It was first included in the ARTG on 29 December 1997. The application to extend the term of the escitalopram patent was made almost 6 years later – on 22 December 2003.
Section 71(2), however, required the extension application to be made within 6 months of the patent being granted or “the date of commencement of the first inclusion in the [ARTG] of goods that contain … the pharmaceutical substance referred to in s 70(3)” (i.e., within 6 months of the inclusion in the ARTG of citalopram).
The majority also found that claim 5 was invalid for insufficiency. However, Lundbeck did succeed insofar as Alphapharm was found to have infringed claims 1 and 3 of the escitalopram patent, presumably up to the date of expiry of the patent on 13 June 2009.
Patenting racemates and enantiomers Read More »
ACIP’s interim report on Post-Grant Patent Enforcement Strategies is now available on the internet (pdf).
The main recommendation is that:
Proposal 1: That IP Australia establish an IP dispute resolution centre along the lines of WIPO’s Arbitration and Mediation Center, which in the first instance focuses on patent disputes. Funding for the centre should be on a “user pays” basis.
A number of “implementation” recommendations hang off that. For example:
Proposal 2: That IP Australia establish a validity and infringement opinion service (taking into account the needs of SMEs), along similar lines to that provided by the UKIPO, and incorporated within the IP dispute resolution centre.
Proposal 4: That IP Australia establish, within the IP dispute resolution centre, a determinative ADR process in the form of a Patent Tribunal along the following lines:
(a) each Tribunal hearing panel to comprise up to 3 people, integrating legal and technical expertise;
(b) Tribunal hearing panel members to be drawn from the register of experts established under Proposal 3;
(c) patent attorneys to have a right to appear;
(d) the Tribunal to have more streamlined procedures and simplified evidentiary requirements;
(e) the Tribunal to take a pro-active and inquisitorial role;
(f) mechanisms be introduced to encourage parties to comply with the Tribunal’s determinations, and to discourage parties from using the courts instead of the Tribunal where it would be appropriate to do so; and
(g) that the effectiveness of the Patent Tribunal be monitored from its date of establishment.
Also, there should be a power of customs’ seizure (as already exist for copyright and trade marks).
Submissions need to be in by Wednesday 30 September 2009.
Interim Report (pdf); press release (pdf too)
ACIP: Post grant patent enforcement Read More »
Selected microblog posts for week ending 21/8/09 Read More »
