Patents

Gene patents

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The Commonwealth Senate’s Community Affairs committee tabled its report into the patenting of genes towards the end of last month.

After commenting on the still continuing cases (in both the USA and here), the Committee noted:

The Committee will continue to monitor these important international and national legal developments, and notes that these cases may bring greater clarity to the application of the invention-discovery distinction to isolated genetic materials. As part of its watching brief on this area, the Committee may wish to revisit this issue if the area remains problematic following the outcomes of these cases.

The, after referring to the private members bill (see below), the Committee recommended:

The Committee believes that the introduction of the Bill to the Senate will provide a further, and much-needed, opportunity for the arguments and questions around the impacts and effectiveness of an express prohibition on gene patents to be considered. The Committee is of the view that a Senate inquiry into the Bill should be undertaken, with a focus on the specific terms of the proposed amendments and the implications of their implementation for human health and other potentially affected fields of innovation. The Committee notes that its inquiry into gene patents has served a valuable purpose in bringing the issue of gene patenting to the light of public interest and attention, and provides a sound basis on which a targeted inquiry into the Bill can build. Accordingly, Recommendation 3 of the report requests that the Senate refer the Bill to a relevant Senate Committee for inquiry and report.

Then, there are a bundle of recommendations:

  • increase the threshold requirements of patentability (improve patent quality);
  • reduce the scope of patent claims;
  • reinforce mechanisms and policies by which governments can and should intervene with the rights of patent holders; and
  • assist judicial interpretation of the Act and establish an external accountability and quality control mechanism for the patent system.

Recommendation 9 appears directed at the Lockwood No 1 ruling:

5.175    The Committee recommends that the Patents Act 1990 be amended to introduce descriptive support requirements, including that the whole scope of the claimed invention be enabled and that the description provide sufficient information to allow the skilled addressee to perform the invention without undue experimentation.

Recommendation 16 called for the establishment of a patent audit committee.

Patentology commented here.

In the same week, Senators Heffernan, Coonan, Stewart and Xenophon and introduced their private members’ bill, Patent Amendment (Human Genes and Biological Materials) Bill 2010, which (according to the Parliamentary bills summary) is intended prevent the patenting of biological materials which are identical or substantially identical to materials as they exist in nature.

As Patentology reports here, it has been referred to the Senate’s Legal and Constitutional Affairs Committee for inquiry. Your comments are requested by 25 February 2011 and the Committee is scheduled to report by 16 June 2011.

In a different environment, the US Justice Department, perhaps surprisingly, filed an amicus brief in the Myriad appeal supporting the District Court’s conclusion that the patent was invalid.

Gene patents Read More »

Upholding a patent opposition on appeal

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Adrian Crooks, at IPnow, provides his summary of Besanko J’s ruling in Aspirating IP v Vision Systems [2010] FCA 1061.

Upholding a patent opposition on appeal Read More »

Restored patents and licences to exploit

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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 –

[31] Mr Law has a presently enforceable right by reason of the valid and existing Patent to exploit the invention and to prevent others from doing so without a licence. A stay until the licence application is determined necessarily interferes with Mr Law’s rights under the Patent. On the facts as agreed between the parties and as led in respect of the two notices of motion, Razer is not a person to whom s 223(9) of the Act and reg 22.21 of the Regulations applies. That being the case, Razer’s likelihood of success in obtaining a licence from the Commissioner is such that it is not appropriate, in my view, to stay the proceedings, let alone for the substantial length of time that would be necessary for the Commissioner to determine the licence application under the Act.

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

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Peer-to-patent Australia

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Ben McEniery from QUT has kindly provided an update on the completion of the Peer-to-patent Australia pilot:

The peer review phase of the inaugural Peer-to-Patent Australia pilot project is now complete. For those of you not familiar with the project, Peer-to-Patent Australia (www.peertopatent.org.au) is a web-based initiative aimed at supporting patent examination and improving the quality of issued patents in Australia. This is a joint project of the Queensland University of Technology (QUT) and IP Australia that was launched in December 2009. The project’s chief investigators are Professor Brian Fitzgerald and Ben McEniery.
The project is designed to prevent the grant of patents that do not satisfy the statutory requirements of novelty and inventiveness. It aims to achieve this goal by allowing members of the public to put forward prior art references to be considered by IP Australia’s patent examiners during patent examination. The object of the pilot is to test whether an open community of reviewers can uncover relevant prior art that might not otherwise be found by the patent office during a routine examination.
In all, 31 pending patent applications were reviewed by the community of peer reviewers during the six-month peer review phase. During that time, the community generated 106 prior art references in response to those applications. These prior art references will now be forwarded to IP Australia to be considered by the patent office in examination.
Peer-to-Patent Australia has now entered a six-month evaluation phase. During this phase, both IP Australia and QUT will evaluate the pilot’s success. The results of the pilot will be published in an anniversary report, which will be made available under a Creative Commons licence on the project website in December 2010. Any prior art submission applied in examination will be recognised in the ‘Prior Artist Awards’ section of the Peer-to-Patent Australia web site as information comes to hand.

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What happens when an opponent stops opposing

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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.

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Fee surcharge for more than 20 claims

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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?

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Inventive step standard

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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.

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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.

The grace period and “reasonable trial” Read More »

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)

Gene patents invalid in USA Read More »

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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