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’.

19 June 2016

Attorneys Should Keep Clients Informed – The One Lesson From a Very Odd Disciplinary Proceeding

Speak See Hear No EvilThe Patent and Trade Marks Attorneys Disciplinary Tribunal has issued a decision finding a senior member of the Australian patent attorney profession guilty of ‘unsatisfactory professional conduct’ for failing to inform two clients in a timely manner of problems with patent applications in the United States and India.  Indeed, the attorney in question effectively pleaded guilty to the charges brought against him in this regard.  He was, however, found not to be guilty of more serious charges of ‘professional misconduct’ in relation to the same matters.  (For an explanation of the difference between the two charges, see my earlier article What To Do If You’re Unhappy With An Australian Patent Attorney.)

A copy of the Tribunal’s decision can be found on the website of the Professional Standards Board for Patent and Trade Marks Attorneys, or downloaded directly via this link [PDF, 322kB].  The name of the attorney in question is, of course, revealed in the decision.  However, for reasons that should become apparent, I will not be naming him in this article.  To quote from the Tribunal’s decision, he ‘has in my view already been through enough’ and it would be inappropriate in light of that finding to expose him to potential further embarrassment, along with the additional damage to reputation that may result from having negative information reflected disproportionately in internet search results.

I have, in fact, given very careful thought to whether I should comment of the Tribunal’s decision at all.  In deciding to do so, I have taken into account the fact that disciplinary decisions in relation to the conduct of Australian patent and trade marks are very rare (there have been only seven since the Tribunal was created), and each is therefore significant in what it may teach attorneys and their clients about expected standards of conduct.

In this case, the lesson is a simple one: when things go wrong – and things most definitely do go wrong, from time-to-time – attorneys need to think about how they communicate with their clients, and about keeping them informed of what is happening in relation to their IP rights, even if that may mean delivering potentially alarming news!

13 June 2016

The Effectiveness of ‘Virtual Marking’ of Patented Products in Australia

Patented StampIn many jurisdictions there are advantages to marking patented products to indicate that they are, in fact, patented.  However, the benefits of marking – or the disadvantages of not doing so – can very greatly from country-to-country.  In the United States, for example, the marking statute (35 USC § 287) provides that in the absence of marking, the patentee bears the burden of proving the date upon which an infringer was made aware of the existence of a patent in order to recover any damages for past infringement.

The provisions in the Australian patent law relating to marking are, fortunately, less onerous.  Indeed, in Australia the patentee has an advantage, in the case that products are not marked as being patented, and it is the infringer that must satisfy the court that it lacked relevant awareness of the existence of a patent.

Even so, there are clear benefits in marking products as patented in Australia.

However, marking can create problems of its own.  For example, if a product is patented in multiple countries, and/or is protected by multiple patents, is it practical to mark it with the relevant details of every one of those patents?  What are the rules for marking products while an application is pending, i.e. before a patent is actually granted?  Are there penalties where products continue to be marked after the patent has expired?  These may not be trivial matters, because changing the marking on products themselves – or even only upon the packaging – may involve substantial costs and administrative overheads.

And what about patented methods, e.g. services or manufacturing processes – should these be ‘marked’ in some way?

A solution to many of these problems is so-called ‘virtual marking’, which refers to making patent information available via the Internet and marking the product with the corresponding address.  Such information can, of course, easily be updated without requiring any changes to products, packaging, or other materials.  Express provision was made for virtual marking in the US in the America Invents Act of 2011 (legislation better known for converting the United States from a ‘first-to-invent’ priority system to ‘first-inventor-to-file’).  By way of example, TiVo maintains its patent information at www.tivo.com/legal/patents, and marks its products accordingly.

But what about Australia?  Is virtual marking an effective and useful option here?  I think so, and I will explain why.

29 May 2016

Utility Futility? Usefulness of Inventions and ‘Fatal’ Promises Made in Patent Specifications

InutilityThe Australian Patents Act 1990 requires, in section 18(1)(c) and 18(1A)(c), that an invention must be ‘useful’ in order to be patentable.  This is also commonly known as the requirement for ‘utility’.  Failure to meet this requirement, i.e. inutility, is therefore a ground upon which a patent application may be rejected, or a patent revoked.

A number of ‘rules’ have been developed by the courts over the years for assessing utility.  These were succinctly summarised by Justice Beach in Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 (a decision that was upheld on appeal) in the form of three questions:
  1. What has the patentee promised for the invention as described in the relevant claim?
  2. Is the promise useful?
  3. Has that promise been met?
Furthermore, it has been held that ‘everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility’ (H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [81]).

One aspect of the utility requirement that has perhaps been less consistently addressed is whether, if a patent applicant makes multiple promises for an invention, it is necessary that all of those promises be met by every claim.  For example, suppose a patent is directed to bionic implants promises to create a human cyborg that is better, stronger and faster than the original.  Is a claim for a bionic eye invalid because it only achieves one of these three objectives?

In practice, it is not uncommon for patent specifications – particularly those drafted primarily with the US in mind – to include multiple ‘object’ statements, without a necessary expectation that each and every claim satisfies each and every stated object.  It is a common practice of Australian patent attorneys to amend such statements in order to moderate the promises being made such that, for example, no more than some substantive progress towards achieving at least one of the desired benefits is asserted.

It should, in fact, be the standard practice of all Australian patent attorneys to do this, as a recent Federal Court judgment demonstrates.  In Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588, Justice Jessup found all claims of an opposed patent application to be invalid for lack of utility because none would deliver each and every one of six advantages listed in the specification, notwithstanding that a number of the claims would deliver one or more of those stated advantages.

22 May 2016

Are Patent Attorneys Really to Blame for Overly Broad Claims?

BlameLast week Eric Sutton, who is Senior Patent Counsel at Oracle Corporation, published an open letter to the patent attorney profession on the IP Watchdog blog.  In short, he accused us – and particularly those of us who practise in the ‘software-related arts’ – of filing too many ‘extremely short’ and ‘overly broad’ patent claims.  We should stop doing this, he says, because not only is it bad form, it is costly for our clients, who end up spending more (by perhaps US$10,000) during the examination process and, in the US at least, increasing risk due to prosecution history estoppel.

Apparently Sutton’s superior knowledge of the prior art has placed him in a position to challenge many patent attorneys over the past couple of years, enabling him to inform those attorneys that – in his words – ‘you’re wrong, fix it’ when they have sought to defend their short, broad claims.  In his concluding paragraphs, Sutton calls on his own experience at Oracle to suggest that a particular source of this problem is laziness on the part of the patent attorneys.  ‘Laziness is bad,’ he says, ‘and I am calling you [i.e., the ‘Dear Patent Attorney’ addressed by the article] out on it.’

While Sutton’s piece strikes me as stunningly arrogant in its tone, this is perhaps excusable considering that he works for Oracle – a company that received over 600 US patents last year.  Although he is at pains to point out that the opinions expressed are his own, ‘and do not necessarily represent those of Oracle Corporation, its subsidiaries or affiliates’, there is no question that he is well-placed to know what he is talking about.  And there is no disputing the facts established by his analysis of the thousands of patents/applications of two large (but anonymous) software-related product/service companies:
  1. many applications in the data set were filed with remarkably short independent claims;
  2. examination (‘prosecution’) of patent applications generally (and not just those with ‘extremely short’ claims) results in amendments that lengthen the independent claims; and
  3. on average, applications filed with shorter independent claims are subject to lengthier and more costly prosecution, and to more extensive claim-lengthening amendments.
I am sure that we can generally agree that it is less than ideal to file patent claims that are so broad they have virtually no prospect of allowance without significant narrowing amendment.  But is erring on the side of breadth in the independent claims at filing really such terrible strategy?  And does the ‘blame’ for this lie so squarely with ‘lazy’ patent attorneys?

Based on my own experience, I would suggest that the answer to both of these questions could well be ‘no’.  More data is needed if we are going to understand what is truly going on here.  I doubt very much that it is as clear-cut as Sutton proposes.

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