23 October 2016

If the Patent Office is Correct, Google’s Seminal ‘PageRank’ Invention Would Be Unpatentable in Australia

SearchOn 4 September 1998 a company was founded in order to commercialise some ideas that were being developed by two PhD students at Stanford University.  The most important of those original ideas had resulted in the filing of a US provisional patent application on 10 January 1997, in the name of one of those two PhD students.  This was followed by a non-provisional application, filed on 9 January 1998, which went on to become US patent no. 6,285,999.  Ownership of the patent remained with Stanford, which licensed it exclusively to the students’ company in exchange for 1.8 million shares. 

In 2005, those shares were sold for US$336 million.

Today, a few hundred million dollars is small change to those former PhD students, and the company that they founded.  The inventor on the original patent application was Lawrence (‘Larry’) Page, and his fellow student/founder was Sergei Brin.  The invention was a computer-implemented method for determining the ‘importance’ of web pages, for ranking purposes, which became known as PageRank (a play on the inventor’s name, and the purpose of the invention).  And the little company they started was, of course, Google, Inc.

While the original PageRank application has spawned a number of further US patents, it was never filed anywhere else in the world.  There was therefore never any possibility of an Australian patent being granted.  It is nonetheless concerning that, if a recent decision by a Delegate of the Commissioner of Patents, Amadeus S.A.S [2016] APO 71, is correct, the invention that helped launch one of the biggest companies the world has ever seen would be ineligible for patenting in Australia.

13 October 2016

How a Little More Empathy, And a Little Less Ideology, Would Not Go Astray at Techrights

AngryLast week I wrote about quitting my job.  To say that I have been dumbfounded by the response would be an understatement. The article has been shared hundreds of times on LinkedIn, where it has also generated dozens of comments in addition to those contributed below the post itself.  I have received private messages, via phone, email, LinkedIn and Twitter, from all over the world.  I have endeavoured to respond to each and every one, even if it is only with a ‘thank you’, or a click of the ‘like’ icon, but the truth is that I have lost track.

So, firstly, a public ‘thank you’ to everyone, for your support, encouragement and thoughtful responses.

There is, however, one message that I have been receiving over and over again from IP lawyers and patent attorneys – particularly, but not exclusively, those working in the Australian profession – which is that my comments on the stresses of the job, the yoke of billable hours, the deadlines, the weight of bearing responsibility for protecting and preserving clients’ rights, and so forth, have resonated far and wide. As one correspondent wrote to me, I have (apparently) ‘generated quite a stir in the profession.’

If this is right, and if it is at all indicative of conditions across the profession, then I have only one reaction: WTF, people?!  Can it really be the case that dozens – if not hundreds – of people around Australia, and possibly thousands – if not tens of thousands – worldwide, are all suffering in silence in a job that breeds stress, anxiety and depression, largely through mechanisms that they themselves choose to perpetuate?  You would think that this might be something we would talk about, but apparently quite the opposite is the case.  More than one message I have received commented on the ongoing loss of collegiality in the profession as one cause of stress and disillusionment.  Sadly, having witnessed examples of aggressive professional behaviour first-hand, I can well believe this to be true.

Assuming this problem is real, I am not equipped to solve it, nor do I intend to try.  But before moving on to the topic adverted in the title of this article, there are just two things I want to say to all of the people who wrote to me about this issue, and the many more whom, I assume, have remained silent:
  1. please try to support and take care of each other – you are all in the same boat; and
  2. to anybody who needs help, please do not be afraid to seek it out, whether that be by talking to trusted colleagues, friends, family, or contacting any of the organisations that exist for this purpose (e.g., in Australia, beyondblue or Lifeline) – there is no shame in doing something that may make you happier and more productive, and possibly even save your relationships or your life.
OK, so having highlighted the need for some empathy and goodwill I can now move on to the main topic of this article – a person who apparently suffers from a deficit of both, Dr Roy Schestowitz.   Dr Schestowitz is a publisher, editor and author at the site techrights.org, where last week he chose to grossly misrepresent me and my article about my reasons for resigning in order serve his particularly strident form of anti-software-patent propaganda. 

01 October 2016

So I Quit My Job. Here’s Why.

ExitI quit my job at Watermark.  As of Friday, 7 October 2016, I will no longer be working as a patent attorney, at least for the immediately foreseeable future.  I have no new job to go to, and I genuinely have no idea what I am going to do next.  The first step will be to take a break, maybe do a little networking, and think about where I would like to go with my career. 

The decision to take this leap into the unknown has been surprisingly thrilling and liberating.  People keep telling me that I look like a weight has been lifted from my shoulders!  I recognise now that the main things that had been holding me back for some time were, firstly, concern for the clients I have worked with over many years (unquestionably a good reason) and, secondly, fear, particularly of the possible financial consequences (which I have come to realise was a pretty bad reason – indeed, little more than a poor excuse).

I have endeavoured to inform clients personally of my decision, and to assure them all that they remain in good hands with Watermark.  I joined Watermark when I entered the profession, and I stayed for nearly 14 years, which is far and away the longest I have worked for any one employer.  If I became good at my job, much of the credit must go to the many experienced, talented and supportive colleagues I worked with over the years.  That team is still there, and will continue to be there, for all of the firm’s clients, even as individual staff members come and go.

However, if you are a client who, for whatever reason, I have not contacted, and this is how you are finding out – I sincerely apologise!  It has just not been possible to contact personally every client I have worked with over the years and there will, inevitably, be some who will only discover that I am gone the next time (should there be one) they try to get in touch.

I am not off to work for another firm of patent and trade marks attorneys, nor do I have any plans to set up my own patent attorney practice.  For most practical purposes, therefore, I am ceasing work as a patent attorney, at least insofar as the title is conventionally applied to a provider of patent application drafting, filing, prosecution, challenging (e.g. opposition), validity, infringement and related services.  This is not to say that I will not maintain my Australian registration, or that I will never again engage in any of these tasks.  But... who knows?

So, why have I made this decision?

18 September 2016

Does Australia Have a (US-Style) Two-Step Test for Patent-Eligibility?

Two StepsIn its Mayo/Myriad/Alice series of cases, the US Supreme Court has established a two-step test in order to determine whether a claimed invention defines patent-eligible subject matter or not.  In the first step, the claims are examined to determine whether they are ‘directed to’ a patent-ineligible concept, i.e. an abstract idea, law of nature or natural phenomenon.  If not, then the subject matter of the invention is eligible for patenting.  Otherwise, the analysis proceeds to step two, in which the claims are further analysed to determine whether or not they comprise some additional element, or combination of elements, that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’

In contentious cases the focus has generally fallen upon the second step of the analysis.  This is not surprising, considering that the reason these cases are contentious in the first place is because they are typically those in which the claims appear on their face to encompass ineligible subject matter, e.g. abstract ideas in the case of computer-implemented inventions such as in Alice, or natural phenomena such as the isolated DNA in Myriad or the presence of metabolites in blood samples in Mayo.  It might be said in such cases that ‘the vibe’ of the claim is that it looks like it might be ineligible, and that it is therefore necessary to proceed to step two in order to determine whether or not this initial impression is correct.

However, two recent decisions of the US Court of Appeals for the Federal Circuit (CAFC) confirm that the first step of the Mayo/Myriad/Alice framework is not merely a formality, but must be given proper consideration.  Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016) [PDF, 605kB] concerned software-implemented methods and systems operating on a new and more efficient database format.  The court found at the first step of the Alice analysis that the claims were not directed to an abstract idea, on the basis that ‘[s]oftware can make non-abstract improvements to computer technology just as hardware improvements can’ and that it is ‘relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea’.  In McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016) [PDF, 341kB] the court found that claims directed to generating automated lip-synchronization and associated facial expressions for 3D animated characters (e.g. in video games) were, similarly, not abstract, and patent-eligible at the first step of the test.

It should not come as any great surprise that the first step of the Alice framework actually has some teeth.  The test is supposed to apply to patent claims in all fields of technology, and clearly there are very many patents and applications that relate to wholly uncontentious subject matter for which patent-eligibility is barely a consideration.  In all such cases, the claims are effectively passing at the first step of the test.  The surprise, for many, is that the CAFC has finally started to recognise and apply this reality in relation to computer-implemented inventions.

This raises the question of whether there is an analogous process that takes place in Australia.  As a practical matter, I believe that there is, however it has not been explicitly set out by the courts, and it remains an unacknowledged aspect of examining patent claims for eligibility.  This is unfortunate, because the existence of an implicit step in the eligibility analysis is an obstacle to consistency and objectivity in the assessment of patent claims.

11 September 2016

Recombinant DNA Technology and Extensions of Patent Term – ‘Swiss-Style’ Claims Continue to Confuse

Swiss-style climb!A recent decision by the Administrative Appeals Tribunal of Australia has addressed the question of whether a patent directed to a second or subsequent medical use of a known pharmaceutical substance can be eligible for an extension of term, in the particular case that the substance is produced using recombinant DNA technology: AbbVie Biotechnology Ltd Commissioner of Patents [2016] AATA 682 (‘AATA decision’).  In deciding that so-called ‘Swiss-style claims’ can support an extension of term (assuming that all other requirements are satisfied), the AATA has reversed the finding of a Delegate of the Commissioner of Patents that such patents are not eligible for term extensions: AbbVie Biotechnology Ltd [2015] APO 45.  (Never fear if you are unfamiliar with the meaning of the terms ‘recombinant DNA technology’ and/or ‘Swiss-style claims’ – I explain further below.)

In Australia, the normal maximum term of a patent, i.e. 20 years from its original filing date, can be extended by up to five years in the case of certain pharmaceutical products, to compensate for the time that is typically required to complete trials and obtain the regulatory approvals necessary to actually commence marketing of a commercial drug.  For an original medical use of a substance, the availability and duration of any extension of term depends upon when a product including the substance is first listed on the Australian Register of Therapeutic Goods (ARTG).  Generally, extensions are available only for patents covering the pharmaceutical substances themselves – patents on methods of making or using the substances are not extendible.  The one exception to this rule relates to the use of recombinant DNA technology in the production of a pharmaceutical substance.

AbbVie Biotechnology Ltd (‘AbbVie’) owns a number of Australian patents relating to a pharmaceutical substance known as adalimumab, which is produced by a process of recombinant DNA technology.  This drug is marketed under the name HUMIRA, and is supplied in the form of an injectable solution for the treatment of a number of diseases.  It was originally approved, and listed on the ARTG on 10 December 2003, for treatment of rheumatoid arthritis.  It was subsequently demonstrated to be effective for the treatment of rheumatoid spondylitis, Crohn’s disease and ulcerative colitis, and these additional indications were added to the ARTG on 10 August 2006, 29 June 2007 and 23 July 2013 respectively.  AbbVie has patents covering these further medical uses of HUMIRA, each of which includes ‘Swiss-style’ claims.

AbbVie applied to the Australian Patent Office to extend the terms of its three further medical use patents.  The Delegate determined that they were not eligible for extensions of term, even if the extension applications had been filed in time (which he found they were not, because the applications should have been based upon the original 2003 listing on the ARTG, not the 2006, 2007 and 213 listings).  On appeal, the AATA reversed the first aspect of the Delegate’s findings, deciding (wrongly, in my view) that Swiss-style claims can form the basis for an extension of patent term.

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