Patents

The grace period and “reasonable trial”

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Mack Innovations lodged a provision patent application for a “cable pulling apparatus for helicopters” on 12 August 2005. The complete application for a standard patent was lodged on 14 August 2006 and a standard patent was subsequently granted (yes, 12 and 13 August 2006 fell on the weekend).

Apparently, Mack Innovations had begun testing parts and subsequently a prototype of the device in public around March 2005; i.e., about 5 months before the provisional application was lodged.

Rotorco, having been sued for infringement, tried to argue that  Mack Innovations’ own actions in March 2005 had rendered the patent “not novel”; contending that the grace period did not apply because the complete application was filed more than 12 months after first public use.

The problem for Rotorco was that its summary judgment application was based on reg. 2.2(2)(d), not 2.2(1A). Reg. 2.2(1A) provides for a grace period where there was a publication or use “within 12 months before the filing date of the complete application”. On the other hand, reg. 2.2(2)(d) applies where:

(d)    the working in public of the invention within the period of 12 months before the priority date of a claim for the invention:
(i)    for the purposes of reasonable trial; and
(ii)    if, because of the nature of the invention, it is reasonably necessary for the working to be in public.

and Tamberlin J, albeit in dicta, had already ruled that filing the provisional application on which the patent was based within the 12 months grace period was sufficient for reliance on this provision.

One might add that, given the difference in wording between reg. 2.2(1A) and 2.2.(2)(d), this conclusion seems consistent with the Full Court’s decision in Mont Adventure Equipment (admittedly dealing with the application of the grace period in the context of a divisional application).

Mack Innovations (Australia) Pty Limited & Anor v Rotorco Pty Limited & Anor [2010] QSC 138 (McMurdo J)

As this was an application for summary judgment, I am not sure whether that means it still remains to be resolved whether or not Mack Innovations’ use was in fact reasonable trial which it was reasonably necessary to conduct in public.

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TRIPs protocol: Australian implementation consultation

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IP Australia has issued a consultation paper on implementing the TRIPS protocol.

The TRIPS protocol is the modification (or is that clarification?) of TRIPS obligations to improve the availability of “crisis” pharmaceuticals in least developed and developing countries. From the discussion paper:

The TRIPS Protocol seeks to address this problem by amending the TRIPS Agreement to permit WTO members to issue compulsory licences to produce patented pharmaceutical products for export to least-developed and developing countries. The main features of the Protocol are:
• Licences may only be issued for products of the pharmaceutical sector needed to address public health concerns.
• Countries eligible to import pharmaceuticals under the system comprise any least-developed WTO country or any other WTO country that has notified the TRIPS Council.
• Importing countries are obliged to provide the TRIPS Council with details such as the names and quantities of the products needed and whether they need to issue a compulsory licence in their own country.
• Exporting countries are obliged to notify the TRIPS Council of a range of details and ensure that importing countries have done the same.
• Both importers and exporters must have in place anti-diversion measures to ensure the products produced under the system reach the intended market and are not re-exported.

Read the paper here (pdf).

Submissions due by 4 June 2010.

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Gene patents invalid in USA

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District Court Judge Robert Sweet has ruled that Myriad’s patents for the BRCA1 and 2 isolated gene sequences are invalid on the grounds that isolation of the “pure” form of the gene is insufficient to confer patentability.

The New York Times has a lengthy report.

Patently-O summarises, with a link to the 152 page judgment. Prof. Crouch goes on to note that the reasoning effectively invalidate almost all gene patents but expresses the view that the Federal Circuit will reverse, setting up the matter for the US Supreme Court.

These are the patents which sparked controversy in Australia in 2008 and 2009 as a result of which the Senate is now holding an inquiry, currently due to report by 17 June 2010. The ALRC had earlier in 2004 recommended that patents should continue to be available for genetic material.

Association for Molecular Pathology and ACLU v. USPTO and Myriad (S.D.N.Y. 2010) (Judge Sweet)

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Amazon’s 1-click in the Euro-space

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Following this week’s developments in the USA, Amazon’s “1-click” patent is also in the news in Europe.

The EPO’s Board of Appeal has confirmed a finding of invalidity, on grounds of obviousness, for the original claims, but has remitted the heavily amended version of the claims for reconsideration.

IP:Jur has the report.

Lid dip: PriorSmart

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Amazon’s 1-click patent survives re-examination

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Patently-O reports that Amazon’s 1-click patent has survived re-examination in the USA before the USPTO.

It would appear that the application was amended to tie the claims to use of a shopping cart:

The approved-of amendment adds the seeming trivial limitation that the one-click system operates as part of a “shopping cart model.” …. Because most retail eCommerce sites still use the shopping cart model, the added limitation appears to have no practical impact on the patent scope.

One of the (more intelligible) comments claimed that re-examination before the USPTO did not extend to consideration of obviousness issues.

Amazon’s counterpart patent application in Australia, No 762175, is under opposition by Telstra.

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Peer to patent Down Under

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The pilot project being run be QUT, with support from New York University Law School and IP Australia is nearing the end of its first phase: there are a number of applications open for review until 9 March 2010.

According to IP Australia

The pilot has made a successful start, following its launch in December 2009. The community of reviewers has identified 27 prior art references and contributed 57 comments in the first eight weeks of operation.

A second round of applications will be posted on the website at the conclusion of the first phase and IP Australia is now calling for nominations for potential candidates for review.

For more details and to register as a commenter, click here.

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2010 FRANCIS GURRY Lecture

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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.

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IP Australia more 2nd round consultations

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IP Australia has issued a second consultation paper – with draft drafting instructions:

  • Flexible Search and Examination
  • Streamlining the Patent Process

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.

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Peer to patent Down Under

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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 (www.peertopatent.org.au). 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:
– converting a decimal number to a binary representation based on processor size;
– detecting behavioural patterns related to the financial health of a business entity;
– an arrangement where a customer enters into an agreement with a lender to share equity in real estate property;
– efficient cooling of server farms;
– refining mobile device search results using location modifiers;
– integrating browsing histories with media playlists on a media playback device;
– interactive specification of context-sensitive service level agreements;
– controlling a network of trains; and
– gaming machine systems and methods.
Those wishing to review participating patent applications can register at: www.peertopatent.org.au.

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:

  • converting a decimal number to a binary representation based on processor size;
  • detecting behavioural patterns related to the financial health of a business entity;
  • an arrangement where a customer enters into an agreement with a lender to share equity in real estate property;
  • efficient cooling of server farms;
  • refining mobile device search results using location modifiers;
  • integrating browsing histories with media playlists on a media playback device;
  • interactive specification of context-sensitive service level agreements;
  • controlling a network of trains; and
  • gaming machine systems and methods.

Those wishing to review participating patent applications can read more and register here.

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The patent was valid, but not infringed

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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

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