19 November 2017

Sweet! Patent Office Finds Specification ‘Clear Enough and Complete Enough’ to Support Full Scope of Polypeptide Claims

Completing the puzzleThe Intellectual Property Laws Amendment (Raising the Bar) Act 2012 raised the standard of disclosure in a patent specification, requiring that it be ‘clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’: Patents Act 1990, section 40(2)(a).  This change from the old ‘fair basis’ provision was intended to align Australian patent law with that of the UK and Europe, requiring the disclosure to be commensurate with the scope of the claims, i.e. that the description should be sufficient to enable the skilled person to perform the invention across the full width of the claims.

So far, there has been no judicial consideration of this new enablement requirement, and until recently there was just one Patent Office decision, CSR Building Products Limited v United States Gypsum Company [2015] APO 72, in which the Hearing Officer found that claims directed to light-weight, fire-resistant gypsum panels did not meet the required standard.  In particular, the panels were claimed in terms of their properties – core density, core hardness, Thermal Insulation Index, and fire resistance – however it was found that the specification did not provide a sufficient disclosure of how to achieve those properties, other than by manufacturing and testing samples.  In this particular case, there were a number of process and starting material parameters that could be varied, but no guidance in the specification on how to adjust these parameters to achieve the claimed properties with reasonable certitude.  (For more information on the CSR decision, see Disclosure and Support in Australian Patent Specifications: Raised Bar Trips Applicant in Opposition.)

As of 14 November 2017, however, we now have a second decision from the Patent Office on the ‘clear enough and complete enough’ requirement, this time in favour of the patent applicant: Evolva SA [2017] APO 57.  In this case, the claims relate to ‘methods and materials for enzymatic synthesis of mogroside compounds, and in particular to glycosylating mogrol using Uridine-5’-diphospho dependent glucosyltransferases (UGTs).’  While that might make sense to  biotechnologist, for the rest of us the invention basically covers methods of making compounds similar to those that are naturally-occurring in the fruit of the vine siraitia grosvenorii (luo han guo or monk fruit), which is native to China and Thailand.  The extract of this fruit is 300 times sweeter than sugar, and thus can be used as a low calorie sweetener.

Evolva’s claimed method involves using an enzyme (polypeptide) to catalyse a reaction resulting in the desired mogroside compounds.  Effective polypeptides are defined in the patent specification in terms of five amino acid sequence listings.  However, the claims are not limited to these sequences, but are drafted to encompass polypeptides ‘having at least 90% sequence identity’ to the sequences set out in the listings.  The examiner had objected that the specification did not provide a ‘principle of general application’ which would enable the invention across its full scope, and that the skilled person would therefore need to produce and test every polypeptide having up to a 10% difference from the listed sequences in order to determine which would work, and which would not.  Therefore – the examiner concluded – the claims were not enabled across their full scope, and the ‘clear enough and complete enough’ requirement of section 40(2)(a) was not satisfied.

While this case might seem, at first blush, to be analogous with the CSR decision, the Hearing Officer here reached the opposite conclusion, overruled the examiner’s objections, and directed that the application proceed to acceptance.  The case demonstrates how the question of what constitutes an enabling disclosure is very much specific to the technology at issue, and to the skills and abilities of the person skilled in the art.  It also provides useful further guidance, in the absence of any judicial consideration as yet, on how the Patent Office will approach application of the ‘enablement’ requirement in section 40(2)(a) of the Patents Act 1990.

12 November 2017

Compelling Applicants to Identify ‘Technical Features’ of Inventions Claimed in Australian Patent Applications

Technical featuresAs I have reported previously, a consultation process in currently underway in relation to a number of recommendations accepted by the Australian Government following the Productivity Commission’s Report on its Inquiry into Australia’s Intellectual Property Arrangements (‘PC Report’)IP Australia has issued a number of consultation papers, and written submissions from interested stakeholders are due by this Friday, 17 November 2017.

The primary concern of the economists making up the PC committee that conducted the IP inquiry, with regard to patents in particular, is that rights are granted too readily in Australia, resulting in an excessive number of ‘low-value’ patents being granted.  When the PC economists refer to ‘low-value’, what they mean is that the innovations protected by the patents have low social or additional value.  The Report explains these characteristics in the following terms (see pages 200-1 of the Report):
  1. innovations are of greater social value where they result in new goods, services, or production methods that improve the allocation of society’s limited resources, particularly where those innovations advance human knowledge and create knowledge spillovers into other areas of the economy;
  2. innovations are additional where they would not have been developed or commercialised (or development would have been delayed) absent patent protection – noting that (at least according to some economic theories of the patent system) patents for innovations that are not ‘additional’ impose net costs on the community even if the innovation is socially valuable.
As a result of these concerns, the PC wants Australian patents to be harder to obtain (or, in the case of innovation patents, impossible to obtain).  The primary mechanism proposed by the PC for achieving this objective is to raise the standard of inventive step, possibly by imposing conditions that are unique among the world’s patent systems, such that the requirements in Australia are at least as high as, and preferably higher than, those existing in other jurisdictions.

To this end, the PC has recommended that applicants for patents in Australia should have to identify the technical features of the invention in the patent claims.  It has conceived of this as a new obligation, over and above existing legal requirements for patent claims in Australia, having a goal of improving the information available to examiners for identifying relevant prior art and assessing inventive step.  Furthermore, the PC believes – and IP Australia appears to have accepted – that this is an existing additional requirement under European patent law, and that it will impose a minimal burden upon most applicants.

In my view, however, the PC’s proposal is fundamentally misconceived.  In saying this, I mean no disrespect to the Commissioners.  They were handed an impossible task by the Government – given just 12 months to understand, review, and recommend reforms to Australia’s IP arrangements across the whole gamut of relevant rights, including patents, copyright, trade marks, registered designs, plant breeder’s rights, and circuit layout rights.  Consider, however, that after focussing primarily on patent law and practice continuously for over 15 years of my working life, I still find inventive step to be a difficult and constantly shifting topic.  When looked at from this perspective, the PC did a remarkable job.  But it would be wrong to think that all of its pronouncements are authoritative and beyond reproach.

IP Australia has offered three alternative proposals for implementing the PC’s recommendation, one of which requires change to substantive legal requirements for patent validity, while the other two would primarily involve changes in examination practice.  Unfortunately, because the recommendation itself is flawed, I do not consider any of these proposals to be acceptable.  Legislative change would create uncertainty and have possible unintended consequences, whereas changes in practice without the backing of legislation would be liable to challenge as being inconsistent with existing law.

05 November 2017

New Online Register Exposes IP Australia’s Policy Concerns

Online engagementA few weeks ago, following the release of the Government’s response to the Productivity Commission inquiry into Australia’s intellectual property arrangements, IP Australia published a beta version of its ‘policy issues register’ online.  Publication of the register is an initiative by IP Australia under the Open Government National Action Plan, and is intended to enhance public participation in government decision-making.

While many interested stakeholders in the Australian IP system would be aware of active enquiries, consultations, and legislative reform – such as the ongoing consultations into various matters, including raising the standard of inventive step under the Australian patent law, and on the proposed draft Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill and Regulations 2017 – up until now there has been little insight available into other issues and concerns that may have been occupying the policy wonks at IP Australia.

This is changed by the new online register, which is a list of issues that IP Australia is considering or working on for policy action or legislative amendment.  The issues may relate to any of the IP rights administered by IP Australia, i.e. patents, trade marks, designs and plant breeder’s rights (but, notably, not copyright, which falls within the responsibilities of the Department of Communications and the Arts). 

Issues listed in the register may come to the attention of IP Australia as a result of:
  1. government priorities;
  2. recommendations from IP related reviews;
  3. stakeholder suggestions;
  4. international developments; or
  5. internal proposals.
The current beta release of the online policy issues register will run until 16 March 2018, after which IP Australia plans to conduct a review in response to any input from the public.  In the meantime, it is possible to provide feedback on each individual issue via an accompanying form, to submit new policy issues for consideration, and to submit comments on the beta policy issues register itself.

Below, I highlight just a few of the patent-related areas in which IP Australia’s ongoing policy concerns are revealed by the online register.

29 October 2017

The Impending Extinction of the Australian Innovation Patent

Last ThylacineThe photograph accompanying this article is of ‘Benjamin’, the last known thylacine (commonly known as the Tasmanian tiger), which died in captivity in the Hobart zoo, most likely as a result of neglect, on 7 September 1936.  Benjamin had been captured in 1933, three years after the last thylacine known to have been shot in the wild was killed by a farmer.  Indeed, a major contributor to the thylacine’s extinction was its inconvenience to farmers.  As the largest carnivorous marsupial of modern times, the thylacine was blamed for the slaughter of livestock, and between 1888 and 1909 the Tasmanian government paid £1 per head for dead adult animals and ten shillings for pups – which was a lot of money at the time.

The innovation patent is another unique Australian creature that is about to become extinct at the hand of government policy.  Unfortunately for the innovation patent, it has become a great inconvenience to economists, within IP Australia and at the Productivity Commission, who believe that the system, and in particular the low threshold for the innovative step, contributes to low value patents, which they blame for the imposition of unacceptable costs on the community.  IP Australia has now published draft legislation and rules (the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill and Regulations 2017) including measures to implement aspects of the Government’s response to the Productivity Commission’s inquiry into Australia’s Intellectual Property arrangements.  These measures include the abolition of the innovation patent which will, if the draft legislation becomes law in its current form, go out like the thylacine, not with a bang but a whimper, dwindling slowly away over eight years after the last shot has been fired against it. 

Of course I am aware that the extinction of an entire species is a tragedy of criminal proportions, and that comparison with the mere repeal of a second-tier patent system is hyperbole of the highest order.  But I am using this rhetorical device to highlight the analogous manner in which government policy is driven in each case by a single perspective on the problem at hand.  Both the thylacine bounty and the abolition of the innovation patent are the result of governments acting on input provided by particular interest groups, i.e. farmers and economists respectively.  Just as the 19th century was a different time, when there would have been little public interest in, or opposition to, the culling of a unique native animal to protect farmers’ livelihoods (and the food supply), there is today very little interest from the broader community in challenging economists’ views on what is best for Australia’s innovation and intellectual property systems.

Economic modelling has become one of the primary drivers of so-called evidence-based policy-making, despite the fact that very few people (including most, if not all, politicians) could claim to understand the economists’ models, assumptions, or the statistical methods used to produce their ‘evidence’.  In fact, economic models rarely make reliable predictions, even when they fit past data well.  Just this past week, the deputy governor of the Reserve Bank of Australia has conceded that the Bank can only ever predict even the most basic economic indicators within a wide margin of error and that, ‘not surprisingly, forecast misses are more common than not’.  If the country’s top central bankers cannot predict headline figures like economic output and inflation with any precision, what prospects do economists have of predicting the long-term impact of different options within the Australian patent system on national innovation and productivity?

Sadly, we will never know if there was a solution better than ‘termination with extreme prejudice’ to the problems posed by either the thylacine or the innovation patent.  But, once we accept that the innovation patent must and will die, IP Australia’s current proposal seems like a soft option.  I say that if we are going to abolish the innovation patent, it should be done as swiftly and decisively as possible!

22 October 2017

Patent Applicants Are the Most Prolific Patent Opponents

Arm WrestleA few weeks back I looked at the geographical origins of participants in Australia’s patent opposition system, finding that Australian residents are overwhelmingly the most likely to oppose patents, and proportionately the most likely applicants to be opposed (although, numerically, US-originating applications are opposed slightly more often).  Under the current Australian law, anyone can oppose the grant of a standard patent, or the certification of an innovation patent, for any reason, although it is reasonable to suppose that most oppositions are filed by companies or individuals with concerns about prospective infringement.  It is, of course, perfectly possible to infringe somebody else’s patent without having had any prior involvement with the patent system.  There is certainly no requirement to have any patents or applications of your own in order to be at risk of infringement, or to have reason to wish to oppose a competitor’s application or patent.

Nonetheless, from analysing data available in the 2017 edition of IP Australia’s IP Government Open Data (IPGOD) set, I have found that one thing that the vast majority of patent opponents have in common is that they are also the owners of their own patents and/or applications.  Of 1,234 oppositions to standard patents (under section 59 of the Patents Act 1990) and to innovation patents (under section 101M) between 2004 and 2016, an overwhelming 82% were filed by entities (which I shall call ‘applicant-opponents’) that also filed at least one patent application during this period. 

Furthermore, while applicant-opponents made up only 0.33% of all patent applicants, they were collectively responsible for filing 6.6% of all Australian patent applications between 2004 and 2016.  The top 30 patent filers over this time includes 10 applicant-opponents. 

In one respect, this is not a surprising discovery.  Parties that are engaged with the patent system in one aspect (e.g. as patent applicants) are presumably more likely to be engaged in  range of other aspects, such as searching of patent registers and databases, monitoring their competitors’ patenting activities, identifying and watching applications that may present an infringement concern, and opposing in cases where it is deemed to be worthwhile in order to mitigate risk or curb overly-expansive patent claims.

On the other hand, as I have already noted anybody can become an infringer, whether wittingly or unwittingly.  It is therefore a little disturbing that the opposition data indicates that parties without patents or applications of their own appear to take little interest in the risks potentially presented by their competitors’ patent applications.

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