While we’re on the subject of raising patent standards, the Commissioner has also introduced new rules for divisional applications.
IPNow and Patentology explore what it all means for those of you filing patent applications.
Patents and ‘abusive’ divisionals Read More »
IP Australia (for present purposes, the Commissioner of Patents) has been exploring ways to improve the quality of patents by, amongst other things, raising the threshold of inventiveness. (Consultation Paper, November 2009 (pdf) see section 1.2ff).
One might have thought that this would require legislative reform given the extremely strict approach to common general knowledge and, for that matter, s 7(3) taken in Australia.
Perhaps because the election so indecisively intervened, however, and professedly because the submissions agreed, IP Australia now appears to believe it can resolve our problems by simply adopting a new approach at the examination stage, so that legislation is no longer required. As from 1 August 2010, therefore, IP Australia has amended its approach to examining applications:
Patentology points out the way the Courts have been approaching this may not sit too well with the Commissioner’s idea.
Now, it is true that the majority in Alphapharm did say:
[52] …. Thirdly, in a case such as the present, the relevant question was that posed in the first part of the passage. Were the experiments “part of” that inventive step claimed in the Patent or were they “of a routine character” to be tried “as a matter of course”? If the latter be attributable to the hypothetical addressee of the Patent, such a finding would support a holding of obviousness.
[53] That way of approaching the matter has an affinity with the reformulation of the “Cripps question” by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd[57]. This Court had been referred to Olin in the argument in Wellcome Foundation[58]. Graham J had posed the question[59]:
“Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the ‘2’ position in place of the -C1 atom in chlorpromazine or in any other body which, apart from the -CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?” (emphasis added)
That approach should be accepted.
The first thing to note about this proposition is that it is introduced by “thirdly”. There are a few hurdles to get over before one gets to the reformulated Cripps question.
One of the hurdles, recognised in the Commissioner’s Official Notice, is that one first has to be able to posit that the patent is attempting to propose a solution to some identified or identifiable problem. In the Lockwood (No. 2), however, the High Court made it very plain at [63] – [65] that may not always be appropriate.
Another hurdle expressed by the majority in Alphapharm were repeated doubts that “obvious to try” could be applied, if at all, to anything other than a simple step from the prior art to the claimed invention rather than, as in that case, a combination patent. In such cases, the majority rejected the approach of more recent English cases in favour of US cases such as In re O’Farrell
The admonition that ‘obvious to try’ is not the standard under §103 has been directed mainly at two kinds of error. In some cases, what would have been ‘obvious to try’ would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful. … In others, what was ‘obvious to try’ was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.
More generally, one may wonder how well the Commissioner’s attempt to use administrative procedural reform to obviate perceived deficiencies in the High Court’s interpretation of the legal meaning of the terms used in the Act will work. Given what the High Court has repeatedly said “common general knowledge” means and the limitations written into s 7(3), how would a Court on appeal deal with the Commissioner’s rejection of a patent application on the Commissioner’s new approach?
As the High Court itself made plain in Alphapharm, the divergence between Australian law and UK and for that matter US law lies in the prior art that may be used to found an attack on obvousiousness. Thus
in [43]:
…. The holding for which Minnesota Mining is celebrated is the rejection, as inapplicable to the terms of the 1952 Act, of the reasoning in certain English decisions. This might have permitted the basing of an argument of obviousness upon prior publicly available publications, without evidence that they had become part of the common general knowledge at the priority date. ….
and in [44]:
…. obviousness was not determined by asking whether a diligent searcher might have selected the elements of the claimed invention by taking pieces from those prior publications and putting them together…
and in [49]:
The result in Britain of the shift in grundnorm is exemplified in the observation by Laddie J[53] that the skilled worker (identified in s 3 of the 1977 UK Act):
“is assumed to have read and understood all the available prior art”. (High Court’s emphasis)
The treatment of the point by Aickin J in Minnesota Mining, as indicated above, expressly rejected any assumption as to what in such a way may be expected of and attributed to the hypothetical addressee. ….
If that is the foundation of the problem, it seems very hard to see how anything but a legislative solution will suffice for, as the High Court also made very plain, it is the function of the legislature to set (and if thought appropriate) change the parameters.
Official Notice (with link to Manual)
Obvious to try (typos corrected) Read More »
Mr Law has a patent, Australian Patent No. 784051 titled “Conveyor Belt Cleaner”. For some reason, the renewal fees were not paid and the patent became a “ceased patent” (presumably). Almost 2 years later, he applied for an extension of time (I’m guessing here and here) and paid the renewal fees and his patent became a “restored patent“. So, Mr Law’s patent wasn’t on the register between 27 September 2007 and 26 October 2009.
From 1 September 2008, Razer started selling products which it appears fell within the claims of Mr Law’s (at that time ceased) patent. It would appear it did so at the behest and encouragement of someone glorying in the name of TuffStuff. After Mr Law’s patent was restored, Razer kept on selling.
Mr Law sues for infringement. (Mr Law doesn’t sue for infringements committed during the period while his patent was a ceased patent – see s 223(10).) Razer then applied to the Commissioner for a licence to exploit the patent (and an extension of time to make the application).
Mr Law applied for an interlocutory injunction to stop Razer continuing to sell. Razer applied for a stay of the proceeding pending the outcome of its application for a licence. Bennett J refused the stay and granted the injunctions –
The interesting thing is why Razer was not likely to get a licence: Razer did not satisfy the jurisdictional requirement under s 223(9).
Under s 223(9) the licence is (potentially) available to someone who exploits the patent (or took definite steps … to exploit the patent) as a result of the patentee’s failure to pay the renewal fees (do a relevant act) or the ceasing of the patent.
The problem for Razer was that it had a patent search conducted before it embarked on its enterprise. Unfortunately, the search criteria did not reveal the patent (even in its “ceased” state). This seems to have been largely because the search criteria included searching for patents owned (or in respect of which an interest was registered0 by Mr Law’s company, ESS. ESS, however, was only a licensee and the interest as a licensee had not been registered. (Little digression for the technically minded amongst us down this garden path).
Her Honour noted:
[21] A search using the appropriate parameters would have revealed both active and ceased patents. It is apparent that, because the search terms did not include “Law” or the title of the Patent and ESS was not a registered licensee, the search failed to reveal the Patent.
[22] It is not in dispute that Razer was unaware of the existence of the Patent or its ceased status when it entered into the agreement and subsequently took the steps to manufacture and sell the infringing products. Razer relied on the result of the searches of the Register, the statements made by officers of TuffStuff to the effect that ‘there are no patent issues associated with the product’ and warranties in the agreement. It is also not in dispute that TuffStuff was not aware of the existence of the Patent at the time of entering into the agreement. (her Honour’s emphasis)
In other words, with TuffStuff’s assurances and the results of the patent search Razer thought there were no patents because there had never been (at least Mr Law’s) patent. It didn’t embark on this enterprise because it thought Mr Law had abandoned (let lapse) his patent.
Also, Razer did not monitor the Official Journal, so it did not discover the advertising of Mr Law’s application for an extension of time to restore his patent and (consequently) it did not oppose his application for an extension.
Then, the hammer was dropped: Razer was not protected from infringement by being unaware that the Patent had ceased.
[27] Section 223(9) of the Act is not designed to protect a person who by happenstance takes steps to exploit a patent during a period in which it is ceased. It cannot be that a person who manufactures and sells products within the scope of the claims of a patent can be protected simply because that person is lucky enough to have commenced those steps while that patent was not in force through an error or omission of the patentee. There must be a link between the fact that the particular patent has ceased and reliance upon that fact by the person seeking to obtain the protection. Regulation 22.21 of the Regulations does not specifically refer to that necessary link but the regulation can rise no higher than the subsection to which it refers and for which it is prescribed.
At this point, I am rather glad I am not a patent searcher.
Law v Razer Industries Pty Limited [2010] FCA 1058
Restored patents and licences to exploit Read More »
Patent Baristas has a guest post from Bill Bennett at Pizzeys on the Deputy Commissioner’s rejection of a patent application for (as described by the Deputy Commissioner):
“a method for commercialising inventions that includes the step of applying for patent protection. The specification indicates that the method is intended to facilitate the uptake of commercialisation of inventions taking into account the restricted timeframe to file for intellectual property rights and the effect of automatic patent publication. The latter is a reference to the practice in most jurisdictions of publishing patent applications 18 months after their earliest priority date.”
Claim 1 reproduced in the Deputy Commissioner’s decision reads:
At the risk of seeming glib and/or flip, one might think this was a checklist for the commercialisation of “an invention”, where one of the items on the checklist includes applying for patent protection, and using a calendaring system to generate reminders so you don’t miss a deadline.
Wonder what business managers and patent managers have been using Excel, Outlook and any number of computerised database for until now?
Any how, Mr Bennett’s blog, focusing on the “electronically fillable” and “computer-implemented” wording in the claim, contends that the Deputy Commissioner has reinterpreted Grant (you remember: the asset protection method (formerly known as a trust) in light of the US Supreme Court’s ruling in Bilski so that the production of a physical effect will lead to a “manner of manufacture” only where the effect is:
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”.
Invention Pathways Pty Ltd [2010] APO 10
A new approach to business method patents Down Under? Read More »
Prof. Joel Bernstein from UWA and Ben Gurion University and Todd Shand, a partner at Wrays, will be giving a free seminar for IPRIA, IPTA and Knowledge Commercialisation Australia on:
The Importance of Patents:
IP Litigation in the Pharmaceutical Industry
in
Flyer here; online registration here.
Not specifically pharma related, but Professor Robert Merges and Pamela Samuelson have been posting a three part series reporting on the results of their survey of entrepreneurs Patenting by Entrepreneurs: The Berkeley Patent Survey: Part I, Part II and Part III.
Patents: IP Litigation in the Pharma Industry talk and Patenting by Entrepreneurs survey Read More »
The Court of General Instance (formerly (?) the EU’s CFI) has upheld the European Commission’s ruling that AstraZeneca abused its dominant position in the market by practices designed to block or delay generic drugs competing with Losec from entering the market.
The abusive practices were:
The result of the second practice was to delay entry on to the market of competing generic products as they could not use the abridged marketing approval process.
The Court did reduce, however, the fine from Euros 60 million to Euros 52.5 million.
The case concerned patents for omeprazole, the patent protection for which has generated some controversy in Australia.
Like the EU, Australian law does provide for supplementary protection certificates and there is the potential for abridged marketing approval processes for generics (pdf – e.g). Art. 82 of the Treaty also has some resemblance to s 46 of the TPA and, while we might think that the EU has a fairly idiosyncratic approach to determining market power, the Hoffman-La Roche ruling relied on by the Court of General Instance has been referred to with approval by the High Court in Australia.
Case T?321/05 AstraZeneca AB v Commission
which has been conveniently summarised by Linklaters and Gibson Dunn.
Now, we might think this is an application of the peculiar EU approach to
Misusing a patentee’s market power Read More »
Ben McEniery from QUT has kindly provided an update on the completion of the Peer-to-patent Australia pilot:
Peer-to-patent Australia Read More »
Delnorth had successfully opposed the grant of a standard patent to Dura-post for the latter’s flexible roadside posts (Patent App. No. ) on the grounds that it lacked inventive step.
Dura-post appealed to the Federal Court.
Delnorth decided not to continue with its opposition on appeal. (By this time, it had already lost this one (on the innovation patent) and was in liquidation.)
The Federal Court directed that the appeal be allowed and Dura-post’s application proceed to grant.
Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (Administrator Appointed) [2010] FCA 465
The practice point here is that the parties were able to go along to Court armed with a letter from the Commissioner indicating she did not intend to appear on the appeal. Contrast the (interlocutory) outcome in Sherman, where the Commissioner wished to fight on.
What happens when an opponent stops opposing Read More »
Patent Baristas look at rule changes introduced by IP Australia to stop patent applicants circumventing the $100 surcharge for each claim in a patent in excess of 20 claims.
Read on here with links to IP Australia’s announcement.
Apparently, IP Australia plans that the new arrangements come into force on 1 August 2010. Wonder whether the CoreEconomy guys will be publishing articles about distorting the market for excessive claiming? Still, is it just me, or do Australian applications seem to have more claims in them than the US counterparts?
Fee surcharge for more than 20 claims Read More »
Tom Cordiner (from the Victorian Bar and a registered patent attorney) and Beth Webster (from IPRIA) are giving a seminar for IPRIA and IPTA on Raising the Inventive Step: A Look at the Issues:
Brisbane on 18 May 2010
Sydney on 19 May 2010
Melbourne on 21 May 2010
The seminars are free and if you are subject to the continuing education requirements of the Professional Standards Board, the Queensland, Victorian or NSW Bars or the Law Society of NSW garner you one “point”.
Details and registration via here.
Inventive step standard Read More »
