Patents

Recent microblog (twitter) posts

Following in the footsteps of Marty Schwimmer and Dennis Kennedy, I shall try a weekly post aggregating selected IP “tweets”. If you’re keen on greater currency, my tweets also show up as they’re made in a side bar on the website.

  • RT @priorsmart: RT @ernestgrumbles Is the Fed. Circuit pro-patent? Maybe Not http://bit.ly/Kd9gR (empirical study of decisions)
  • RT @dhowell: RT @entlawupdate How the RealDVD ruling could reshape copyright law http://bit.ly/2sud8B
  • RT @dhowell: Kaleidescape loses; DVD copying falls again (@sandocnet; h/t @HScottLeviant) http://ff.im/-6wPw7
  • RT @DuetsBlog: Branding strategy To Google or Not to Google http://ow.ly/jGvG
  • Working up a theme here? RT @asilverstein: The risks of modernizing a trademark http://bit.ly/h3FkN
  • Patently-O analyses Bilski’s Patent Application http://ff.im/-6tlCF
  • Patry is back: Moral Panics and the Copyright Wars: Are There Any Lessons in the P2P Trials? http://ff.im/-6rp7B
  • AmeriKat looks at the briefs in the Catcher in the Rye appeal http://ff.im/-6roVs
  • RT @priorsmart: RT @ernestgrumbles Is the Fed. Circuit pro-patent? Maybe Not http://bit.ly/Kd9gR (empirical study of decisions)

Let me know if you think this is a worthwhile exercise or not.

If you’re a twitterer, you can find me at @wrothnie

Recent microblog (twitter) posts Read More »

What’s the priority date for a divisional patent?

Mont has an innovation patent for a travel pack.

It sued Phoenix for infringing the innovation patent; Phoenix  counter-claimed for invalidity on the grounds of Mont’s own use commencing in October 2004.

Patents Act 1990 s 24 (read with Reg. 2.2(1A)) provides a patentee with a grace period: protecting the patentee against attacks on grounds of lack of novelty or inventive step/innovative step by reason of the patentee’s own authorised use or disclosure within the 12 months prior to “the filing date of the complete specification”.

The background was as follows:

In October 2004, it had started offering travel packs made according to the invention for sale.

In May 2005, it filed a complete application (with a complete specification) for a standard patent.

In November 2006, however, it filed a complete application (and of course a complete specification) for an innovation patent as a divisional application from the earlier standard application and this application matured into the innovation patent.

The trial judge had found that the “grace period” had to be calculated from the date of filing the complete specification for the divisional application, not the parent.

The Full Court has now allowed an appeal ruling that “the complete specification” referred to in reg. 2.2(1A) in the case of a divisional application is the complete specification for the parent.

Jagot J (with whom Emmett J agreed) explained the rationale:

76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.
77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.

76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.

77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.

Similarly Bennett J said [49]:

49 The scheme of the Act provides that, where the invention of the divisional was disclosed in the parent, the publication or use of the invention within 12 months before the filing date of the parent must be disregarded for the purposes of assessing the novelty and inventive/innovative step of each of the parent and the divisional, provided that a patent application for the invention is filed within the prescribed period. This applies where the divisional is of a parent standard patent or a parent innovation patent. Where the invention of the divisional was disclosed in the parent, the words “the complete application” in reg 2.2(1A) refer to the parent application and not to the divisional application.

Jagot J also provided a detailed rebuttal of Phoenix’ contentions.

Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84

ps: IPTA was granted leave to intervene (and while advocating the view that the Full Court adopted, was ordered to pay any additional costs incurred by the parties as a result of the intervention).

pps:a patentee who needs to rely on a grace period to preserve the validity of the patent in Australia may well still lose the patent outside Australia where the grace period does not apply

What’s the priority date for a divisional patent? Read More »

Upcoming copyright and patent talks

Ben Fitzpatrick will be giving his highly regarded annual update of patents for IPSANZ on 16 July at 12.15 at the RACV Club in Melbourne.

Details will be available here (in due course).

After talking in Melbourne on 3 August, Dr Gurry will be delivering a speech at the National Press Club in Canberra on 4 August and then

on 6 August, the keynote speech at the Reimagining copyright for the 21st century in Canberra at the National Gallery. In what promises to be an exciting conference, there will also be papers by:

  • Professor Brad Sherman: Key developments in the last 40 years of copyright
    that shape our thinking about the future
    * Professor Sam Ricketson: Copyright and functional products
    * Sophie Goddard SC: Development of copyright by the courts
    * Dr Matthew Rimmer: The role of fair use in creative freedom
    * Associate Professor Melissa de Zwart:The role of copyright in innovation
  • Professor Brad Sherman: Key developments in the last 40 years of copyright that shape our thinking about the future
  • Professor Sam Ricketson: Copyright and functional products
  • Sophie Goddard SC: Development of copyright by the courts
  • Dr Matthew Rimmer: The role of fair use in creative freedom
  • Associate Professor Melissa de Zwart:The role of copyright in innovation

More details from here.

Finally, details about the biennal Copyright Society Symposium on 14 and 15 October 2009 in Sydney are up here.

Upcoming copyright and patent talks Read More »

US patent instructions

A committee comprised of judges and attorneys has published the National Patent Jury Instructions.

As its name suggests, a set of model instructions for juries in the USA for patent actions.

Apart from when your client might be litigating in lawyer paradise, you never know, you might find some useful ideas – bearing in mind that their law and our law are not exactly the same!

Download from here. Lid dip Patently-O.

US patent instructions Read More »

Patent and Trade Mark procedures in the Office

IP Australia has released 3 further consultation papers on “IP Rights Reforms”:

  • resolving divisional applications faster
  • resolving patent oppositions faster
  • resolving trade mark oppositions faster

Submissions are sought by 17 August 2009.

Download the papers (pdf or .doc) from here.

There are also links to the earlier papers on ‘Getting the Balance Right’ and ‘Exemptions to Patent Infringement’.

Patent and Trade Mark procedures in the Office Read More »

Re-examining a patent

VIP Plastic Packaging is suing BMW Plastics for infringing the former’s standard patent for a “Variable-length dip tube for a fluid transfer container”.

BMW Plastics denies infringement and has counter-claimed for invalidity.

Now, Kenny J has refused BMW Plastics’ attempt to get an order to have the Commissioner re-examine VIP Plastic Packaging’s patent.

Section 97 provides for re-examination of a standard “patent” in 3 situations:

  1. following acceptance, but prior to grant;
  2. following grant (when no other relevant proceedings are on foot in the Court); or
  3. following a direction from the Court in the course of relevant proceedings.

In the first situation, the Commissioner can refuse to grant the patent following re-examination. In the second, the Commissioner can revoke. In the third, the Commissioner just prepares a report which (presumably) forms part of the evidence before the Court.

As reported by her Honour, BMW Plastics’ thinking was that the Commissioner could provide the benefit of technical expertise which the Court might otherwise not have and there might be a costs saving. To this end, it was prepared to undertake not to contest the findings of the Commissioner’s report. VIP Plastic Packaging refused to reciprocate and, rather heroically, BMW Plastics contended that Court should order VIP Plastic Packaging to be bound too.

Kenny J was (with respect) justifiably sceptical about the costs savings that might flow:

I doubt that the provision of a report by the Commissioner after re-examination would reduce the cost of this proceeding and expedite its determination. First, the Commissioner’s report after re-examination is not binding on the Court. In the absence of an undertaking of the kind sought by B.M.W. Plastics from VIP Plastic, the provision of a report under s 100 will not necessarily relieve the Court of the task of deciding the issues of novelty and lack of inventive step by reference to the admissible evidence. If the Commissioner’s report were unfavourable to VIP Plastic, it would desire to put on evidence and dispute the report. There may be additional issues for the Court to determine if it receives such a report. Further, both parties said that, regardless of the lack of novelty and inventive step grounds, there will be a need for evidence, including expert evidence, to be adduced before the Court on various other issues. In the circumstances, I am not persuaded that re-examination by the Commissioner would be most expeditious or reduce costs.

(my underlining)

VIP Plastic Packaging Pty Ltd v BMW Plastics Pty Ltd [2009] FCA 593

Re-examining a patent Read More »

Patents, pharmaceuticals and exports

I’m not quite sure why, but the blogosphere is increasingly chattering again about relaxing the rules against infringing a patent by making the protected product (esp. a pharmaceutical) for export:

IP’s What’s Up reviews the TRIPS status including the DOHA declaration and its rather tentative take up.

Patents, pharmaceuticals and exports Read More »

Patent destruction policy

In Australia (since the famous McCabe v BAT case (overturned on appeal), of course, we know them as “document retention” policies.

In the US, a Federal District Court judge has ruled that Rambus cannot enforce a patent relating to DRAM technology as a result of its policy, implemented in 1998, of destroying documents where the court held Rambus should have known litigation was likely.

A different judge, in the District of Northern California, apparently took the opposite view.

An appeal has been foreshadowed.

Read further here.

Lid dip: Peter Clarke.

Patent destruction policy Read More »

Patent case management

Patent case management Read More »

PCT survey

IP Australia calls on all Australian users of the PCT to complete WIPO’s online survey:

Australian users of the Patent Cooperation Treaty (PCT) can make their views known by participating in a survey being run by the World Intellectual Property Organization (WIPO), the body that administers the PCT. The comprehensive survey covers all aspects of the PCT from electronic filing to search and examination.

Follow the links from here.

PCT survey Read More »