26 April 2015

How International Treaties Help Inventors With Patent Strategy

GlobeThere is no such thing as a ‘world patent’.  As matters currently stand – and as I expect them to remain beyond the term of my natural life – there is no country on Earth that is willing to completely forego the right to determine what qualifies for a patent monopoly within its borders, or the right to collect ongoing fees to maintain this privilege.

So, anybody wishing to obtain patent protection in multiple markets will necessarily need to pursue some form of application in each corresponding jurisdiction.  With every country having its own patent laws (and this is true even in places, such as Europe, where some form of regional process is available), obtaining all of these patents can certainly become a complex, time-consuming, and expensive procedure.

Fortunately, however, over the years a majority of countries have got together to establish some basic standards, agreements and conventions that provide at least some certainty and simplification for inventors and companies seeking protection for their inventions in multiple jurisdictions.  In this article I want to talk briefly about the three I regard as being the most significant:
  1. the Paris Convention for the Protection of Industrial Property, which ensures that all members will recognise the priority of an application filed in another member country for at least 12 months;
  2. the Patent Cooperation Treaty (PCT), which creates a central mechanism for filing an ‘international application’ that can delay the costs and complexity of individual national/regional filings for at least 18 months longer than would otherwise be possible; and
  3. the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which sets minimum standards for patentability, guarantees non-discriminatory treatment of applicants and applications, and sets limits on the scope of national laws to exclude specific subject matter from patent-eligibility.
Knowing a little about these three international agreements is a good start on developing an international patenting strategy, although I would always recommend that you ultimately seek the assistance of somebody who works within these systems all the time, and is familiar with their many detailed benefits, and pitfalls.

20 April 2015

What’s ‘Provisional’ About Provisional Applications?

HourglassLast week I wrote about one of the benefits of filing a provisional patent application – the ability, in most cases, to mark corresponding products or services as ‘patent pending’ or equivalent.  I have been thinking, however, that there is a bit more to be said about provisional applications.

Provisional applications are, in my experience, not very well understood among the general community.  For example, there remains a pervasive belief that a provisional application is something that can be prepared and filed quickly, casually and cheaply, and that this will provide all the protection needed for the first 12 months.  This may once have been true, in a somewhat limited sense, but it is certainly not the case in Australia any more.  It has, in any event, never been true for applicants who wish to pursue patent rights in foreign jurisdictions based on an initial provisional filing in Australia.

In fact, it is generally best to treat provisional filing with the same gravity as any other patent application process.  What, then, is the benefit of provisional applications?  And should you be filing them?

07 April 2015

Provisional Patent Pending?

WIPOne of the most common questions asked by any applicant or inventor after a new provisional application has been filed is: ‘can I now say “patent pending” about my product/service?’

You might think that the answer to this would be straightforward.  Ultimately, the client just wants a ‘yes’ or ‘no’ answer.  Indeed, most patent attorneys will answer ‘yes’ without hesitation.  The main thing – we will tell our clients – is not to represent that you actually have a patent when all that you actually have is an application.

But is it really so simple?

I was given pause recently when someone asked this very question of IP Australia (@IPAustralia) on Twitter.  The answer that came back (across four Tweets that I have here concatenated into a single reply) was this:

A standard patent can only be enforced once it is granted. ‘Patent pending’ is used by some applicants to indicate they have lodged a patent application which has not been granted. A provisional patent is not a patent application per se and won’t result in a granted patent and hence saying 'patent pending' for a provisional application would be misleading.

I cannot say that I agree with this, and in particular I do not think there is anything misleading in using the phrase ‘patent pending’ while there is any form of application on-foot that has the potential to lead ultimately to granted patent rights.  However, there are laws that apply to the representations made in relation to patents and applications, and applicants do need to be careful about the claims they make with regard to patent rights.

The topic is therefore worthy of some closer investigation.

03 April 2015

Patenting Perpetual Motion

Perpetuum MobileYou cannot build a ‘perpetual motion machine’.  The fundamental principle underlying practical perpetual motion (were it to exist) is the production of endless motion without any external source of energy, and despite the practical realities of resistance (e.g. friction) and other sources of energy loss.  In other words, perpetual motion cannot be achieved unless a device is able to produce more energy than it consumes.

Any arrangement purporting to achieve such a result – whether mechanical, electrical, chemical, thermal or otherwise – violates one or both of the first and second laws of thermodynamics.  Physicists, engineers and mathematicians have a very large number of practical and theoretical reasons to be enormously confident that breaking these laws is an impossibility.

If you do not accept the truth of the statements in the above paragraphs, then this may not be the article you are looking for.  You can go about your business – move along!

The issue I want to examine here is not whether you can build a perpetual motion machine (to reiterate – no), but whether you can get a patent for one.  You might think that it should not be possible to secure patent rights over something that violates fundamental laws of physics, and therefore cannot possibly work.  However, such patents have been issued in the past.  During the last two decades the Australian Patent Office has actually granted at least two patents where the nature of the ‘invention’ was advertised in the title – Australian patent no. 671694, ‘Perpetual motion turbine and compressor set’ and no. 687320, ‘Perpetual motion devices (energy producing devices)’.

More generally, applications directed to alleged perpetual motion machines are sufficiently common that the International Patent Classification (IPC) even includes subclasses F03G 7/10 and F03G 17/04 specifically assigned to ‘perpetua mobilia’.  A total of 16 standard patents have been granted in Australia since 1990 for inventions classified in these subclasses.  A number of applications in these subclasses are currently pending.

In short, therefore, it has certainly been possible, in the past at least, to obtain a patent for an alleged perpetual motion machine.  In the following, I shall explain why this was so, and why it may no longer be the case since the passage of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

29 March 2015

Minding Your (Claim) Language: What ‘Means For’ Means

Swear BubbleA common idiom employed in patent claims is to define an element of the invention in terms of its function.  For example, a claim might recite an apparatus including a part ‘A’, and part ‘B’, and ‘means for fastening the part A to the part B’. 

The purpose – under Australian law – of this so-called ‘means-plus-function’ language is to define the invention as broadly as possible.  The patent specification might describe a number of different mechanisms for joining the two parts, e.g. nails, screws, and rivets. 

But there may be other ways to achieve the necessary connection, some of which the inventor has failed to think of, some of which might be unknown to the inventor, and some of which might not even have been developed at the time of filing the application.  By using broad, functional, language to define the fastening mechanism, the inventor gains the benefit of capturing all of these alternatives within the scope of the claim.

However, as a Full Bench of the Federal Court of Australian recently reminded everyone, there is a price to be paid, and a risk that is taken, through such broad claiming.  In Garford Pty Ltd v DYWIDAG Systems International Pty Ltd [2015] FCAFC 6, the court confirmed that ‘[a] claim to an apparatus for a particular purpose is a claim to an apparatus that is suitable for that purpose …. To establish infringement of such a claim it is not necessary for the patentee to establish that the apparatus is intended to be used for that purpose. The patentee need only show that the apparatus is suitable for that purpose’ (emphasis added).

Of course, what is true when assessing infringement after the date of the patent is also true when assessing novelty and inventive step based on information published before the priority date of the patent.  And, unfortunately for the patentee, Garford, the Full Court disagreed with the primary judge, and found that the prior art disclosed an element of Garford’s patent claims expressed in means-plus-function form, namely ‘a feed means [suitable] for supplying a multi-strand cable from a rotatable supply reel’ (at [124]).

There is nothing new in this, from a legal perspective.  It has long been established in Australian law that, when used in a patent claim, the word ‘for’ means only ‘suitable for’ and not, for example, specifically ‘adapted’ or ‘configured’ for the function.  It is, however, a handy reminder that claiming broadly is a double-edged sword.

But this decision also got me thinking about the implications for applicants operating in multiple jurisdictions, because the way in which means-plus-function language is treated is not the same everywhere.  The scope of claims using this format may be quite different, for example, in the US when compared with Australia, which has implications for both infringement and validity.  And while means-plus-function claiming is unobjectionable in itself in Australia, a European examiner might refuse to allow a claim in this form if it is able to be expressed in more concrete terms.