Because I felt like it

DABUS “over there”

Judge Brinkema, sitting as a District Court Judge in the Eastern District of Virginia, has upheld the USPTO’s rejection of Thaler’s DABUS applications on the basis that DABUS cannot be an inventor under the US Act.

In the United States, Dr Thaler has two patent applications – US Application Serial Nos 16/524,350 and 16/534,532. In both, DABUS was the nominated inventor and Dr Thaler claims entitlement on the basis of assignment.

As you will no doubt recall, DABUS is a “creativity machine” or artificial intelligence.

To highlight the ludicrousnessfictional nature of the universe we are operating in, Dr Thaler as the owner of DABUS executed the assignment to himself:

In view of the fact that the sole inventor is a Creativity Machine, with no legal personality or capability to execute said agreement, and in view of the fact that the assignee is the owner of said Creativity Machine, this Assignment is considered enforceable without an explicit execution by the inventor. Rather, the owner of DABUS, the Creativity Machine, is signing this Assignment on its behalf.

When the America Invents Act was passed, amongst other things it inserted a definition of “inventor” into the Act so that 35 USC §100(f) provides:

(f) The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

Perhaps (with respect) unsurprisingly, Judge Brinkema ruled that “individual” meant a natural person.

In doing so, her Honour was fortified by the natural or ordinary meaning of the word. Contextually, there were also other references in the Act where Congress had used the term “individual” in reference to the inventor. (For example, §115(a)(1) and (b)(2).)

In addition, the Supreme Court had construed the term “individual” in the Torture Victim Protection Act as referring to a “natural person”. And several Federal Circuit decisions had declared that “inventors must be natural persons” albeit not in the context of the meaning of §100(f).

Judge Brinkema then explained that Dr Thaler “having neither facts nor law to support his argument” contends that policy considerations and the general purpose of the Constitution’s Patent Clause required the statute to be interpreted to permit AIs to be inventors:

Allowing patents for AI-Generated Inventions will result in more innovation. It will incentivize the development of AI capable of producing patentable output by making that output more valuable …. Patents also incentivize commercialization and disclosure of information, and this incentive applies with equal force to a human and an AI-Generated Invention. By contrast, denying patent protection for AI-Generated Inventions threatens to undermine the patent system by failing to encourage the production of socially valuable inventions.

Patent law also protects the moral rights of human inventors and listing an AI as an inventor where appropriate would protect these human rights …. [I]t will discourage individuals from listing themselves as inventors without having contributed to an invention’s conception merely because their name is needed to obtain a patent. Allowing a person to be listed as an inventor for an AI-Generated Invention would not be unfair to an AI, which has no interest in being acknowledged, but allowing people to take credit for work they have not done would devalue human inventorship.

Judge Brinkema considered that binding rulings of the Supreme Court and the Federal Circuit repeatedly held that policy arguments could not override a statute’s plain language. Her Honour also pointed out that, when Congress passed the America Invents Act, AIs were in existence and it was aware of them. Moreover, the USPTO’s own consultations had not exposed any strong support for AIs to be inventors.

Ruling against Thaler, Judge Brinkema concluded:

As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.

What does this mean for Australia?

Plainly, the American context is not directly applicable to Australia since, as Beach J pointed out at [118], our Act does not have a definition of “inventor”. So, there is much greater scope for policy arguments to operate.

In that connection, the USPTO report cited by Judge Brinkema can be found here.

Ordinarily, I would be on the side of progress: the NRDC view of the world rather than D’Arcy v Myriad. Our courts, of course, must fit within the D’Arcy v Myriad world view unless Parliament were to bestir itself.

Apart from South Africa (which I understand does not undertake substantive examination of patent applications), Dr Thaler’s applications have been rejected on the ground that an AI is not an inventor by the UKIPO and EPO as well as in the USA. Government policy, which appears to have aligned with the Productivity Commission‘s argument that Australia as an intellectual property importing nation should not be out of step with the international environment, would suggest that an AI should not qualify as an inventor. Can we really afford to keep repeating the mistake made in the 3M case? However, an appeal is pending in the EPO. Maybe there will be an appeal in the USA too but the Federal Circuit’s prior indications do not augur well for the success of that.

It is also difficult to comprehend why, if as our Courts have ruled, that authors for copyright purposes must be humans, the same does not apply to inventors. Of course, our law now explicitly recognises moral rights as part of an author’s rights and there is no corresponding provision under Australian patent law. But both types of rights are justified by the same rationales – natural law or Lockean theory of property and, even, the so-called utilitarian theory.

I guess we shall see.

Thaler v Hirshfield ED VA, 2 September 2021 1:20-cv-903 (LMB/TCB)

Lid dip, Prof. Dennis Crouch at Patently-O.

Dr Francis Gurry

You may have already received notification about this but, just in case, this year’s Francis Gurry lecture will involve a “conversation” with Dr Gurry himself.

Following his recent retirement as Director General of the World Intellectual Property Organisation – or WIPO to you and me, Dr Gurry “will reflect on his 35 years of work within the United Nation’s multilateral system – and what the future holds for IP.”

The talk will be streamed online on 25 November 2020 – 6:00pm AEST. Times in other jurisdictions and registration here. Registration is free.

Tobacco Plain Packaging Laws Upheld by WTO Appellate Body

The WTO’s Appellate Body has dismissed the appeals by Honduras and the Dominican Republic against Australia’s tobacco plain packaging laws (TPP measures).

In summary, the Appellate Body upheld the Dispute Panel’s findings that:

  • the TPP measures were not more restrictive than necessary to fulfil a legitimate objective within the meaning of art. 2.2 of the TBT Agreement
  • the TPP measures were not inconsistent with art. 16.1 of the TRIPS Agreement; and
  • the TPP measures were not inconsistent with art. 20 of the TRIPS Agreement.

(Strictly speaking, the Appellate Body found that Honduras and Dominican Republic did not demonstrate the TPP measures were inconsistent with the relevant obligations.)

Cuba and Indonesia did not proceed with appeals against the Panel decisions rejecting their complaints. Ukraine’s complaint never proceeded to a Panel hearing.

Report and Addendum

Just the findings and conclusions (in pdf format)

Summary of key findings (DS435 – Honduras) and (DS441 – Dominican Republic).

Yellow tops and labels

It’s not exactly front page news, but over at news.com.au they have a short video explaining the battle between Kraft and Bega over who can market peanut butter in that yellow get-up. This follows news that Kraft has applied for special leave to appeal the dismissal of its complaint.

A Current Affair also has a go with a lot more flag waving and some gruesome finger dipping.

If you’re looking for the more formal legal analysis, the Full court decision is here.

So far, the moral of the story is that an unregistered trade mark is not property in its own right. Such a “thing” can be assigned only as part of the transfer of the goodwill of a business as a going concern. If you are going to sell your business, or its assets, but you don’t want to the purchaser to use an unregistered name, or get-up, after the sale, you will need to impose appropriate contractual restraints.

Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65 (special leave application pending)

auDRP: .com.au and .net.au allocation rules

auDA is in the process of reviewing the rules for name allocation in the .com.au and .net.au spaces.

According to the Explanatory Guide the significant areas of the proposed changes include:

(1) eligibility rules for the .au namespace (these include allowing registration of second level domain names – i.e., not requiring registration in .com.au or .net.au); 

(2) changes to the use of the State and Territory namespaces to include Peak State and Territory bodies; 

(3) the use of internationalised domain names in the .au namespace; 

(4) the omission of the Domain Monetisation test for com.au and net.au namespaces; 

(5) a new prohibition on sub-leasing, renting or otherwise allowing another party to use a licence, except where the Person is a related body corporate; 

(6) a public interest test to deal with government requests; and 

(7) a new suspension power to provide a more proportionate response to non-compliance with the Licencing Rules. 

A roadshow concludes with a public workshop in Brisbane today.

A draft of the proposed rules for allocation can be found here and a statement of Key Consultation Issues here.

The Consultation page with further documents can be found here.

As part of that review, it is undertaking a survey to gauge community / stakeholder views.

You can take the survey here.

Trade Mark 2,000,000

IP Australia has published details of Trade Mark No. 2,000,000:

Trade Mark No. 2000000

I am not sure whether the sequence has been unbroken right from Trade Mark No. 1. Even so, the meter has ticked over and it is definitely a milestone of sorts.

It does seem a little strange, in these days of tobacco plain packaging laws, that someone is pursuing a trade mark registration for a new brand, but it does also extend to smoker’s articles and e-cigs.

By way of interest, Trade Mark No. 1,000,000 was filed by Anchor Foods on 23 April 2004.

That is, it took almost 100 years to get to the 1,000,000 mark; but it took only 15 years for the next million.

I wonder whether “Northern Lights” will achieve the same degree of notoriety as the equally colourful “Golden Lights“.

Lid dip: Dave Stewart

ps. Trade Mark No 1 is still there and, all right, it was only filed on 2 July 1906 so strictly speaking it took just under 98 years to clock up 1 million.

A designs case – spare parts

Burley J has handed down our first case dealing with the “spare parts” defence in the Designs Act 2003.

At 709 paragraphs, any considered analysis will have to wait for another day (or days). In the meantime, here are his Honour’s conclusions:

707. In these reasons, I conclude that GMGTO has failed to establish the bulk of its claim for design infringement. Despite extensive forensic examination of the business of SSS, it has not established infringement in respect of the importation, keeping for sale or offering for sale of the impugned SSS products in respect of any of the SSS respondent companies. In its claim for infringement by selling, GMGTO has established infringement in respect of 4 representative transactions made by SSS Sydney, 2 representative transactions entered into by SSS Melbourne (but only in part in relation to Transaction 17) and 2 representative transactions entered into by SSS Queensland. The parties must now, on the basis of these reasons, attempt to agree on a formula by which the balance of the transactions the subject of GMGTO’s claim might be resolved. They should also confer and attempt to agree to directions to bring these proceedings to a close. 


708. I have concluded that SSS has substantially failed to establish its case on the cross-claim. It has established that there were unjustified threats insofar as they relate to designs that were never certified, which involves the threats made to Panel House, Carparts and Torq. SSS has also established an unjustified threat in relation to copyright infringement in the case of Holmart. I will hear submissions from the parties as to the appropriate relief to grant, if any.

GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd [2019] FCA 97

GSK’s extended release paracetamol patent 2

In addition to dismissing GSK’s appeal against the construction of “basket” (noted here), the Full Court also dismissed Apotex’ cross-appeals on fair basis and best method.

Fair basis

Apotex and Generic Partners also lost their appeals against the trial judge’s ruling that GSK’s patent was fairly based and there had been no failure to disclose the best method.

On fair basis, the claims were consistent with the consistory clauses, but Apotex argued the body of the specification showed that the invention was narrower than the broad consistory clauses. This appears to have been an attempt to read the claims down to two specific formulations discussed in the specification, Formulations C and D.

A key point was whether the trial judge had impermissibly taken into account information in an FDA report to ascertain if the claims travelled beyond the disclosure in the specification. Apotex argued this was excluded by the High Court’s decision in the first Lockwood decision, where it had said at [48]:

If all that is essential in assessing a fair basing objection is recourse to the contents of the specification, there is no call, for example, for an examination (except on construction questions) of common general knowledge (which is essential when considering an objection based on want of an inventive step), or of prior art (which is essential when considering novelty (s 7(1))) …

The Full Court, however, rejected this attack; concluding that the information in the FDA Report (which was common general knowledge) informed how the skilled addressee would understand the claims. At [166], the Full Court said:

What is critical to the pharmacokinetic behaviour of the many formulations within the claims is the dissolution profile (or release rate) of the formulation. The primary judge accepted that the FDA Report recognised that a variation of ±10% percentage points in the release rate was acceptable to the FDA even where no IVIVC had been established. This provides evidentiary support for the finding that the skilled addressee would know that various formulations within the claims apart from Formulations C and D were likely to have similar pharmacokinetic properties. This also provides a complete answer to Apotex’s argument that the skilled addressee (equipped with the common general knowledge) would approach the Patent with an understanding that there would be no reason to think that other formulations within the claims would have a similar pharmacokinetic profile to Formulations C and D in the absence of any established IVIVC.

The Full Court also rejected Apotex’ argument that a claim could not be fairly based unless the specification explained why the claims worked. Making it clear that they were dealing only with the position before the Raising the Bar Act reforms, the Full Court said at [170]:

Of course, it is important to note that s 40(2)(a) requires that the complete specification “describe the invention fully”. A complete specification may still “describe the invention fully” without explaining why the invention works. After all, the inventor, who presumably believes that the invention described works, may not understand why it works. But this does not prevent him or her from obtaining patent protection for the invention.

Best method

For best method, the argument built on the Servier ruling to argue there had been a failure to disclose the best method because the specification did not disclose the particular grade or viscosity of the high viscosity HPMC or the granulation end points used to make Formulations C and D.

At [192], the Full Court accepted that there could be a failure of best method if information was withheld even though it could be ascertained by routine experiment. The Full Court rejected the best method attack, however, finding that the information omitted was inessential manufacturing and production information. According to the Full Court at [201]:

It does not follow merely because the patent applicant uses a particular manufacturing process or a particular excipient in formulating its commercial embodiment that it will form part of the best method. The patent applicant may have adopted a particular process, or used a particular excipient, for reasons that are associated with its own particular circumstances rather than because it believes that they reflect the best method. The best method known to the patent applicant may be one that allows for the optimisation of a formulation by the skilled addressee rather than one that adheres to one specific formulation that the patent applicant seeks to commercialise.

Those preparing specifications might want, first, to note the reservation that the Full Court was not dealing with the “new” post-Raising the Bar regime. Secondly, [192] appears to carry with it the warning that, if one leaves something out, one does so at one’s own peril.

 

 

Feedspot’s Top 25 Australian Law blogs

Honoured to be included in Feedspot’s Top 25 Australian law blogs and websites for Australian lawyers.

No 1 is Melbourne Uni’s Opinions on High which is a “must read” for following developments in the High Court.

K & L Gates’ IP Law Watch, which includes posts about Australian law as well as the USA, the UK and EU comes in at No. 10.

There are also two competition / consumer law blogs which I should check out.