24 July 2016

Be a USPTO Patent ‘Examiner Ninja’

NinjaIf you have any involvement or interest in the prosecution of US patent applications – particularly in the contested fields of computer-implemented inventions or biotechnology – you will probably be aware that disturbing things are afoot at the US Patent and Trademark Office (USPTO).  Specifically, in the wake of the US Supreme Court’s decisions in the Alice, Mayo and Myriad cases, patent allowance rates have plummeted in examination sections devoted to subject matter that could be regarded as relating to computer-implemented ‘business’ processes, diagnostic methods, and genetic technologies.

In this hostile environment, applicants and their advisers need every tool they can get their hands on to understand what they are up against, and to create the best possible strategies for staying out of – or, if necessary, getting out of – trouble.  And, as in many other fields of endeavour, so-called ‘big data’ is being touted as a possible solution. 

In particular, the contents of the USPTO’s Patent Application Information Retrieval (PAIR) database, which records all information about every patent application making its way through the office procedures, are increasingly accessible to anyone wants to use that data, whether for commercial or non-commercial purposes.  PAIR Bulk Data is now available directly from the USPTO, and includes the information included in the bibliographic (‘application data’), published document and patent term extension data tabs in Public PAIR dating back to 1981.  Additional examination information for many recent applications is available in the USPTO’s Patent Examination Research Dataset (PatEx).  Up until 2015, Google maintained bulk-downloadable USPTO PAIR data sets.

All of this information can be used to obtain and analyse a variety of statistics.  For example, if you are dealing with a ‘difficult’ examiner it is possible to find out whether it is just your case that is problematic, or if the examiner has a history of rejecting a majority of applications he or she has reviewed.  The data might also tell you whether the examiner is more likely to allow an application following an interview and/or whether filing a Notice of Appeal may lead to a more favourable outcome.

Of course, all of the sources I have listed above supply ‘raw’ data, in such exciting formats as CSV, XML and JSON, which is of limited use unless you have the time, and the technical skills, to convert it into a form that is more suitable for analysis.  Fortunately, there are people out there who are already doing this for us all.  Commercial offerings include LexisNexis PatentAdvisor and Juristat, while free services are provided by Examiner Watchdog and Examiner Ninja.  So I am going to provide a quick review of these services, and what they can do for you.

17 July 2016

A Single Trans-Tasman Patent Application and Examination Process? NZ Committee Says ‘No’!

Single EnvelopeA joint Australia-New Zealand proposal for a unified patent application and examination process – once hailed by both governments as a boon for local innovators and a ‘world first’ in patent cooperation – appears likely to be dead-in-the-water, following a scathing report issued last week by the New Zealand Parliament’s Commerce Committee.

The idea behind the proposed single application process (SAP), and single examination process (SEP), was simple – to allow applicants wanting to obtain patents in both Australia and New Zealand to file one common application which would be subject to search and examination by an examiner either at IP Australia or at the Intellectual Property Office of New Zealand (IPONZ).  It was not proposed that the patent laws in the two countries would be merged, but rather that examiners would be trained to apply the laws of both countries, resulting in two separate patents being granted.

Despite various hold-ups (see below for more details), it had appeared that the New Zealand government remained keen on the SAP/SEP proposals, with implementing legislation being included in the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill, which was introduced into parliament on 3 November 2015.  However, this aspect of the legislation has been roundly rejected by the Commerce Committee, which is comprised of members from both sides of politics. 

The majority of the Committee (including members from the governing National Party) concluded that the purported benefits of the SAP and SEP mechanisms either do not exist, or are outweighed by the costs.  The opposition Labour Party Committee members have gone further still, in a separate ‘minority view’, calling the legislation ‘badly drafted’, and a waste of taxpayers’ money, while describing themselves as ‘bemused at the dexterity required by the Government to justify a complete reversal of its original position.’

The New Zealand Parliament is not bound to accept the Commerce Committee’s recommendation that the SAP and SEP provisions be deleted from the legislation when it comes up for further debate.  However, it looks very much as if any remaining supporters of the initiative will find themselves in the minority when the time arrives for a vote to be taken.

At the same time, however, the Commerce Committee has not recommended any substantive changes to provisions intended to introduce a joint Australia-New Zealand regulatory regime for patent attorneys, which will make New Zealand attorneys subject to essentially the same regulations and disciplinary proceedings as already apply to Australian attorneys.

10 July 2016

An Audience with the Productivity Commission on the Patenting of Computer-Implemented Inventions

HearingOn Friday 24 June 2016 I attended a public hearing in Melbourne, conducted by the Productivity Commission in relation to its draft report in its review of ‘Intellectual Property Arrangements’.  I had made a written submission on the draft report, and the purpose of the Commission’s public hearings was to ‘provide participants with the opportunity to elaborate on their submissions, respond to submissions of others, and to discuss issues with Commissioners.’

The focus of my written submission, and the topic of my discussion with the Commissioners, was the chapter of the draft report dealing with ‘Business Methods and Software.’  The single draft recommendation to arise out of that chapter is that ‘the Australian Government should amend section 18 of the Patents Act 1990 (Cth) to explicitly exclude business methods and software from being patentable subject matter.’  I disagree strongly with that recommendation!

My full written submission is available from the Productivity Commission’s web pages relating to the IP review.  (A copy can be downloaded directly – PDF, 120kB.)  Full transcripts of the hearings, which were conducted in Brisbane, Sydney, Canberra and Melbourne, are also now available.

The following is an edited transcript of my appearance.  The Commissioners are Mr Jonathan Coppel (‘JC’) and Ms Karen Chester (‘KC’).  I have cut the length of the transcript by about half, and added some headings to flag the particular topics being discussed.  Other than that I have employed the usual conventions of ellipsis (...) to mark where text has been deleted, and square brackets to indicate paraphrasing.  Comments replacing longer passages are in square brackets and italics.  I have also corrected punctuation, mistranscriptions and typographical errors without providing specific indications (the convention, of course, would be to leave them in place and pepper the text with [sic], which is ugly and distracting).

03 July 2016

Federal Appeals Court Considers ‘Omnibus Claims’

Vintage busThe word ‘omnibus’ derives from the Latin ‘omnis’, meaning ‘all’.  More particularly, the Latin ‘omnibus’ is the plural dative or ablative case of the noun (grammar nerds are getting excited right now), and may therefore be translated as ‘to, for, by, with or from everybody or everything’.  Appropriately, therefore, omnibus is the origin of the same English word referring to a collected edition of multiple works, such as novels.  And our modern word ‘bus’, describing a form of mass transit, is itself a contraction of the word ‘omnibus’, which was used back in the days when such things were still drawn by horses.

To put it bluntly, then, ‘omnibus’ is an old-fashioned word for a variety of old-fashioned things.

One of those things is a type of patent claim, intended to cover all forms of an invention disclosed in a patent application.  The exact form of an omnibus claim varies, but typically goes something like ‘a splendiferous widget substantially as described herein with reference to the accompanying drawings.’  You can see how the patentee of such a claim is trying to hedge her bets, by including the word ‘substantially’.  What even does that mean?  How ‘substantial’ is substantial enough?  How is someone to know whether or not they are infringing such a claim, assuming that they have not copied one of the described embodiments exactly?

It is for precisely this reason that omnibus claims have fallen out of fashion and favour over time.  In most jurisdictions they are no longer permitted (if they ever were), on the grounds that their scope is unclear.  In Australia, they have been banned in new applications as of 15 April 2013 by the Raising the Bar reforms, which added section 40(3A) to the Patents Act 1990, prescribing that a claim ‘must not rely on references to descriptions or drawings unless absolutely necessary to define the invention.’

However, patents and applications that were subject to examination under the former provisions may still validly contain omnibus claims, and so they will continue to be relevant in Australia until at least 2033.  It is therefore significant that a Full Bench of the Federal Court of Australia has recently had a rare opportunity to consider the scope of omnibus claims: GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90 (‘GSK’).

The court’s decision confirms that, in the majority of cases involving consistently-drafted patent specifications, an omnibus claim should be interpreted to have relatively narrow scope, being restricted by the essential features of the invention as described and defined elsewhere in the specification.

26 June 2016

What Will ‘Brexit’ Mean for European Patents?

Brexit VoteOn Thursday 23 June 2016, around 72% of eligible UK voters turned out and decided, by a narrow margin of 52%-48%, to leave the European Union (EU).

This outcome has left the nation deeply divided, along numerous lines.  First, there is a division between England and Wales, which voted to leave, and Scotland and Northern Ireland, which voted to stay.  Then there is a socioeconomic division between the most affluent and highly educated, who are dominant in the South East and who favoured remaining in the EU, and those who feel disenfranchised by the existing system and voted for the UK to reassert its sovereignty. 

I am most concerned, however, about the generational divide.  Pre-election surveys indicated that 57% of Britons aged between 18 and 34 who intended to vote supported remaining in the EU, while that proportion rose to around 75% in voters under the age of 25.  As one 27 year-old reportedly commented, ‘we're the ones who've got to live with it for a long time, but a group of pensioners have managed to make a decision for us.’

Although I would prefer that the UK stay in the EU, I must say that I have some sympathy for those people who feel that Britain has allowed itself to become too subservient to an ‘undemocratic’ pan-European government, if the immediate reaction of the European Commission president, Jean-Claude Juncker is anything to judge by.  Juncker has said that he wants to ‘get started immediately’ on the process of separation which, he says, is ‘not an amicable divorce’.  These are more the words of a petulant child than a committed democrat, who should realise that such a close outcome is hardly a resounding endorsement of the ‘Brexit’ by the British people, and that neither that fractured nation, nor the world at large, will be well-served by rushing into what is likely to be a messy, painful and disruptive process.  There are actual, real people, as well as companies and entire nations, who are shocked, uncertain and in need of reassurance and guidance as to what an EU without the UK ‘means’.  So if this is what passes for ‘leadership’ in the EU, then maybe Britain is better off ‘out’!

But enough of the general socio-political commentary – you came here to read about patents!  So what does all this mean for patents in Europe?  There are actually two separate answers to this question. 

Importantly, for existing patentees of, and applicants for, European patents the first answer is ‘pretty much nothing’, where we are talking about the established European patent system. 

However, the second answer is ‘possibly quite a lot’, where we are talking about the nascent ‘Unitary European Patent’.

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