07 February 2016

A ‘Heads-Up’ for Selected Patent Applicants: IP Australia Trialling Pre-Exam Notifications

ChangeFrom 25 January 2016 IP Australia has commenced a trial of a pre-examination notification process.  Under this process, which will initially be applied to 900 pending patent applications, a ‘Pre-Examination Processing Notice’ is sent out approximately two months before the application is referred to an examiner.  This provides the applicant with an opportunity to make any last-minute amendments to the application prior to the commencement of examination.

I think that this is a positive initiative by IP Australia that coud be of great benefit to (some) applicants and examiners alike.  The Australian system of examination differs from many others – such as the US, Europe, Japan and China – where a new response deadline (of typically between three and six months) is set each time an examination report is issued.  In Australia, an acceptance deadline is set, providing a single fixed period within which all objections to the grant of a patent must be overcome, regardless of how many rounds of review and response are require to reach this point.

The Raising the Bar law reforms, which commenced on 15 April 2013, reduced the time available for securing acceptance of an application to just 12 months (down from 21 months) from the date on which a first examination report is issued.  In some cases this is ample time.  In others it is less so.  Providing applicants with an opportunity to ‘hit the ground running’ by making any required amendments shortly prior to examination has the potential to reduce the number of rounds of substantive examination during the 12-month period, leading to earlier finalisation of applications.  This will also hopefully take some pressure off applicants, examiners and attorneys, none of whom enjoy finding themselves up against a final acceptance deadline!

Pre-exam notifications will not be beneficial for all applicants, however.  There will be cases in which they may slightly increase the cost of obtaining a patent in Australia without providing the applicant with any corresponding benefit.  Whether there is, nonetheless, a net benefit to applicants and the administration of the Australian patent system is something that IP Australia will hopefully be able to evaluate through the current trial.

31 January 2016

RPL Central Requests Leave to Appeal Software Patent Eligibility Ruling to High Court of Australia

High Court of AustraliaOn 7 January 2016, RPL Central Pty Ltd filed an application with the High Court of Australia, requesting ‘special leave’ to appeal December’s ruling of a Full Bench of the Federal Court of Australia that its patent claims covering a computer-implemented method of evidence gathering for recognition of prior learning (RPL) were not directed to patent-eligible subject matter (i.e. a ‘manner of manufacture’) under Australian law.

The fact that the special leave application has been filed has now been published on the Federal Court website.

How Does the Special Leave Process Work?

It is important to understand that there is no automatic right to have an appeal heard by the High Court.  Any party wishing to appeal must persuade the Court in a preliminary hearing that special reasons exist which justify the appeal being heard.  These special leave hearings are brief and potentially brutal.  Under Rule 41.11.3 of the High Court Rules 2004 the applicant (in this case, RPL Central) is permitted just 20 minutes to present its case for the grant of leave.  The respondent (in this case, the Commissioner of Patents) then also has 20 minutes, typically used to argue that the case is insufficiently exceptional to justify a hearing by the High Court.  Finally, the applicant has a further five minutes to reply.  The Court then renders its decision on the application on-the-spot.

CRISPR Interference Update

DNATwo weeks ago I wrote about the interference proceedings that have been instituted by the US Patent and Trademarks Office (USPTO) in order to determine who is rightfully entitled to fundamental patent rights in relation to CRISPR gene-editing technology, under the former ‘first-to-invent’ priority rules.  The contest is between a team led by Berkeley Professor of Chemistry Jennifer Doudna and her collaborator Emmanuelle Charpentier, and a team at the Broad Institute, Inc and MIT led by Feng Zhang.  In that article, I explained generally how interference proceedings work, the distinction between ‘senior’ and ‘junior’ parties in an interference, and what it means to be ‘first-to-invent’.

Kevin Noonan has now written about the CRISPR interference over at the Patent Docs blog.  Being both a US patent attorney, and having a background in molecular biology, Kevin is far better qualified than I to write about this topic!  Obviously, therefore, you should read his article in full, if this subject is of particular interest to you. 

I was also recently contacted by Lee McGuire, who is the Chief Communications Officer at the Broad Institute, drawing my attention to a CRISPR IP information page that is being maintained on the Broad’s website.  You will appreciate, of course, that this is not a source of unbiased information.  It is, however, a useful resource with a lot of interesting content and links covering the CRISPR ‘story’ from Broad’s perspective.  As far as I have been able to determine, Berkeley is not (at this stage) providing any similar resource.

So, what will you learn if you take the time to read these additional sources?

24 January 2016

Disclosure and Support in Australian Patent Specifications: Raised Bar Trips Applicant in Opposition

SupportBack in November 2015, the Australian Patent Office issued the first published decision to consider enhanced requirements for patent specifications that were introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012: CSR Building Products Limited v United States Gypsum Company [2015] APO 72.

The decision arises from an opposition by CSR Building Products Limited to the grant of a patent on an application by United States Gypsum Company.  The invention disclosed and claimed in the application relates to a new form of light-weight fire-resistant gypsum panels used in construction, e.g. as wall or ceiling panels.  This subject matter may not seem very exciting to most readers, however the decision itself should be of interest to all Australian patent applicants.

The Commissioner’s Delegate who heard the opposition determined that US Gypsum’s claims satisfied the requirements of the novelty and inventive step.  However, they failed to meet the new requirements for ‘disclosure’ and ‘support’.

In very broad terms, the ‘disclosure’ requirement obliges a patent applicant to teach the skilled reader how to put the invention into practice.  Under the ‘old’ law (prior to 15 April 2013) it was enough to teach just one way of doing so, and the applicant might then be entitled to claim as broadly as the prior art would allow.  Under the updated law, however, the idea is that the teaching provided by the applicant should enable the skilled reader to perform the invention across the full scope of the claims.  Broad claims should therefore require a more comprehensive disclosure of how to work the invention in a correspondingly wide range of implementations.

The ‘support’ requirement dictates, from a different perspective, how broadly the applicant may be permitted to claim their invention.  Whereas ‘disclosure’ is about the ‘how’ to work the invention, ‘support’ is about ‘what’ the inventor has actually contributed to the world.  Under the old law of ‘fair basis’ it was pretty much enough for an applicant to be consistent about how broad a patent they would like to receive, regardless of the actual contribution made.  Under the updated law, if the inventor has merely developed one new and improved way to do something, then that may be as much as she is entitled to claim.  However, if an invention is based upon the discovery of a new and previously unknown general principle that can be applied, without further invention, to produce a range of improved results, then this may provide support for a correspondingly broad claim.

The US Gypsum decision illustrates how the bar has been raised on disclosure and support, and demonstrates how the new provisions may be applied to prevent the grant of unduly broad patents.

17 January 2016

Who Will Get the CRISPR Patent?

CrispyAs has been widely reported, the US Patent and Trademark Office (USPTO) has instituted interference proceedings to determine who is entitled to own foundational patent rights in relation to CRISPR/Cas9 ‘gene editing’ technology.  I wrote about this brewing dispute back in July 2015, when I predicted that this would be ‘the last great US patent interference’, given that the US patent system changed from first-to-invent to first-inventor-to-file on 16 March 2013. 

As the number of applications filed under the former first-to-invent system dwindles, the opportunities for new interference proceedings – which are all about figuring out who invented first when separate applications with competing claims are filed – are becoming scarce.  Even less likely is another interference over a genuinely groundbreaking and immensely valuable invention.

For the full story, you should really go back and read my earlier article.  But if you lack the time or stamina, here is the TL;DR recap:
  1. Berkeley Professor of Chemistry Jennifer Doudna and her collaborator Emmanuelle Charpentier were the lead researchers on a team that, in around 2012, developed so-called CRISPR/Cas9 – a biotechnology system consisting of an engineered RNA and a ‘cutting’ protein that can be used for highly-targeted gene editing;
  2. Doudna, Charpentier and their co-workers have a US patent application pending (serial no. 13/842,859), which is based on a series of filings beginning in May 2012;
  3. Doudna and Charpentier’s original work related to the discovery of the CRISPR system in relatively simple bacterial cells, but in January 2013 they were successful in applying the technology to human cells;
  4. roughly in parallel, however, a team led by Feng Zhang at the Broad Institute, Inc and MIT reported similar success using CRISPR to edit human genes;
  5. Zhang and his team also filed a US patent application, based on a series of their own filings beginning in December 2012 (i.e. more than six months later than Doudna’s earliest filing);
  6. to complicate matters, Zhang requested prioritised examination under the USPTO’s Track One program and, as a result, was awarded the first patent on the basic CRISPR technology – US Patent No. 8,697,359, ‘CRISPR-Cas systems and methods for altering expression of gene products’, issued on 15 April 2015, even though Doudna’s group had been the first-to-file;
  7. Doundna and Charpentier subsequently requested the USPTO to institute interference proceedings, in order to determine who is really entitled to own the patent rights to the CRISPR/Cas9 technology.
That request has now been granted.  So who will get the CRISPR patent?  Well, if I knew that I could save the USPTO a whole lot of work, and the parties a great deal of time and money.  Ultimately, only time and the evidence will tell.  But what I can do is to outline the basics of interference proceedings, and make a few tentative predictions.

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