24 December 2010

Happy Holidays!

Holidays mean different things to different people.  Sometimes, quite literally.

Holiday Detector
Did you know, for example, that a flaw in a coating intended to protect a pipe, or other conduit, from corrosion is known as a 'holiday'?  It is therefore important to be able to reliably check a coated pipe for any such flaws before it is buried in the ground or dropped to the bottom of the ocean.  So if you thought that a 'holiday detector' might be a device that sounds an alarm on or around 10 December each year, then you may need to think again!  One particular form of electronic holiday detector was the subject of US Patent No. 3,259,893.

'Holiday' Plums

'Holiday' is also, apparently, a distinct cultivar of the Guzmania plant, and is the subject of US Plant Patent no. PP15,924, as well as a plum tree subject of US Plant Patent No. PP15,553.

Guzmania 'Holiday'

Tasmania - the 'Holiday Isle'

While not patented, Tasmania has somehow earned the name 'Holiday Isle'.  We imagined that this was just the result of a marketing campaign, but it has stuck sufficiently to earn an entry in the Macquarie Dictionary!

Audrey Hepburn, Gregory Peck and
a Vespa share a Roman Holiday

A 'Roman holiday' originally referred to an event or spectacle, in which the suffering of others is used to provide entertainment.  Fortunately Gregory Peck and Audrey Hepburn managed to give this rather gruesome term a positive makeover.

Billie Holiday

And any catalog of famous holidays would be incomplete without jazz singer Billie Holiday!

But the type of holiday we wish for all of our readers this year is a Happy Holiday!

All the best from Patentology for the festive season - however you may spend it - and for the New Year!

Holidays Down Under!

23 December 2010

Australia’s National Broadband Network Business Plan Released

The Patentology blog is – appropriately enough – primarily about patents, law and practice.  But patents (or, at least, those patents worth having) are essentially incentives for, and by-products of, innovation.  And we believe that innovation will only happen effectively and efficiently when supported by appropriate infrastructure.

This is why we think that Australia’s proposed National Broadband Network (NBN) is an important project.  It is why we identified broadband policy as the major innovation-related issue in the recent federal election, and why we agreed substantially with the views expressed by Jonathan Coppel (Economic Counsellor to the OECD Secretary General) when he said back in September that:

Good infrastructure facilitates trade, bolsters market integration and competition, fosters the dissemination of ideas and innovation and enhances access to resources and public services. These benefits are particularly important for Australia because of its size, geographical dispersion of the population and production centres and distance from other major markets.
Australia cannot rely upon open competition to deliver universal access to quality broadband service, because there are vast areas of the continent where it is simply not profitable to deliver such a service at prices that are affordable to the local communities.  Additionally, a population of 22 million people cannot reasonably afford to pay for duplication of expensive infrastructure in order to facilitate ‘competition’ in those geographic areas where there are substantial profits to be made.

Australian Senate Inquiry Seeks Submissions on 'Gene Patent' Amendments

On 25 November 2010 we reported on the introduction of a Private Senator's Bill, the Patent Amendment (Human Genes and Biological Materials) Bill 2010, to outlaw the patenting of human genes, and other biological materials that are 'substantially identical to such materials as they exist in nature'.

It has now come to our attention (thanks to AusBiotech) that the Bill was almost immediately referred to the Senate Legal and Constitutional Committee for inquiry.  The Commitee is due to report on 16 June 2011, and is currently seeking written submissions from interested individuals and organisations.

The deadline for submissions is 25 February 2011, and the preferred method of submission is online, although submissions may also be made via email to legcon.sen@aph.gov.au or post.

22 December 2010

NZ Patent Office Issues Draft Guidelines on Computer-Implemented Inventions

Is this a comment, or merely
an illustration? You be the judge!
As we have previously reported (here, here and here), the Patents Bill currently before the New Zealand Parliament proposes that computer programs be excluded from patentability.

Naturally, this proposal caused some controversy, and even many of those generally opposed to the grant of so-called 'software patents' felt that it was important that the provision not exclude microprocessor-based products having functions implemented using 'embedded software'.

Rather than attempt to encapsulate a definition of 'embedded software' into the Bill, NZ Commerce Minister Simon Power asked the Intellectual Property Office of New Zealand (IPONZ) to 'develop guidelines to allow inventions that contain embedded software to be patented.'

On 20 December 2010, IPONZ issued draft guidelines in response to the Minister's instructions.

21 December 2010

What ‘Means’ Means

Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 (30 September 2010)

Construction – scope of claim features expressed in ‘means-plus-function’ form – Validity – whether claims (as construed) novel – whether claims involve an inventive step

It is not uncommon to claim features of an invention in terms of their functional purpose, rather than their specific structural form.  This has particular consequences in the United States, where interpretation of such ‘means-plus-function’ language is expressly dictated by 35 USC 112, paragraph 6, which states that:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

As a result, this form of claim language is interpreted relatively narrowly in the US, and indeed the absence of sufficient disclosure of structure within the specification can result in a claim being found invalid, for lack of written description support.

In Australia, no such problem arises.  As in Europe, and many other jurisdictions, features defined in terms of function are interpreted broadly.  However, a broad interpretation is not without its potential pitfalls.

17 December 2010

Modified Examination – What It Is and Why (not) to Use It

The Australian Patents Act 1990 provides for an ‘alternative’ mode of examination of a standard patent application, known as ‘modified examination’.  This procedure is rarely used – and for good reason, as we shall explain – however the Kimberly-Clark decision, on which we reported earlier this week, reminded us that there are circumstances in which an applicant might consider requesting modified examination.

In particular, in appropriate cases the modified examination procedure may be used to obtain an Australian patent with claims that do not satisfy the usual requirement of being directed to one invention only, thus avoiding the need to file one or more divisional applications.

To understand modified examination, it is useful first to take a look at the process of normal examination.

15 December 2010

Surcharge on USPTO Fees in FY2011 - Boom or Bust?

We are not experts on the US system of government, but we believe that the Bill must still be passed by the Senate, and that this may not be a straightforward process.  However, if Section 2202 of the Bill ultimately passes in its current form, it will provide the USPTO with a budget of US$2,262,000,000 for salaries and expenses, and also apply a 15% surcharge to many official fees on a temporary basis throughout FY2011.

We fear, however, that there is a risk of this temporary surcharge having precisely the opposite effect on the PTO budget than is intended.

14 December 2010

That’s a Wrap! Kimberly-Clark Patent Valid, but Not Infringed

Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2010] FCA 1318

Construction – meaning of ‘sheet’ – Infringement – whether claims require ‘inner wrap sheet’ and ‘outer wrap sheet’ to be initially unconnected – Validity – whether priority claim valid – novelty – whether claims fairly based on specification – Rectification of Register – whether Register of Patents should be ‘corrected’ due to non-compliance of claims with unity requirement


Kimberly Clark Worldwide Inc is the proprietor, and Kimberly-Clark Australia Pty Ltd the exclusive licensee (collectively ‘Kimberly-Clark’), of three Australian patents (nos. 695238, 715940 and  758905), all entitled ‘Single Step Sterilization Wrap System’.  The three patents are related as divisional ‘grandparent’, ‘parent’ and ‘child’, respectively.

As the court (Justice Stone) describes it (at [3]):

The patents are for a single step sterilisation wrap system.  Sterilisation wrap systems are designed to facilitate the sterilisation and storage of instruments, generally surgical instruments, and other supplies, by wrapping them before the sterilisation procedure.  After sterilisation the sterile wrap remains in place protecting the items and allowing them to be stored without contamination until required for use. Sterile wraps are designed to allow the permeation of the sterilising agent but not contaminating agents.
Kimberly-Clark alleged that Multigate Medical Products Pty Limited (‘Multigate’) was proposing to market and sell an infringing sterile wrap product in Australia.

In the usual manner, Multigate denied infringement, and asserted various grounds of invalidity of the Kimberly-Clark patents, the most interesting being that the Register of Patents should be rectified to remove the ‘child’ patent, the ground that it claims more than one invention, contrary to section 40(4) of the Patents Act 1990.

The court found the patents valid, on all counts, but not infringed by the Multigate product.  A win and a loss for each party, and much money spent on legal fees for no change in the status quo!

10 December 2010

Patentology Soundbytes

"All the news (and views) that's fit to link!"

'Soundbytes' are even more brief than 'Newsbytes'.  No original commentary, just links to other news items, articles and publications that have come to our attention.

In this issue:
  1. Research Corp. Technologies v. Microsoft Corp.
  2. Progress on a single 'pan-European' patent?
  3. Intellectual Ventures lashes out.
  4. PwC's annual US Patent Litigation Study.
...and more...
Patentology Soundbytes - we trawl the Web, so you don't have to!

09 December 2010

Successful Cooperative Research Centre Bids Announced

The Australian Government Minister for Innovation, Senator Kim Carr, has announced the successful bids for funding in the 13th Round of the Cooperative Research Centre (CRC) program.

As the Minister's Media Release puts it:
Four new world-class research centres are being established to help prevent mental illness in young Australians, transform our pork industry, improve our environment and treat Alzheimer’s disease.

Success of Phase 3 Trials 'Obvious' In View of Phase 1 and 2

Genentech, Inc [2010] APO 27 (15 November 2010)

None of my inventions came by accident. I see a worthwhile need to be met and I make trial after trial until it comes. What it boils down to is one per cent inspiration and ninety-nine per cent perspiration.
- Thomas Edison (1929 press conference)

While Edison's inventions were generally of a more macroscopic nature, his words are perhaps nowhere more apt than in the pharmaceutical industry.  Indeed, a mere 99% perspiration may be an understatement.  The path leading from a promising drug candidate, or an idea for a therapeutic treatment, to an actual successful product or therapy that can be used on humans is long, expensive, and uncertain.  Which is why patents provide an important economic incentive in this field, and also why this Patent Office decision, by Delegate Dr Steven Barker, is potentially of concern to researchers and companies active in this area.

Specifically, the decision seems to stand for a general proposition that a claim directed to a method of medical treatment of humans, supported by successful phase 3 trial results, will necessarily be considered obvious in view of any prior disclosure of promising phase 1 and 2 trials.

07 December 2010

Patentology Newsbytes

A semi-regular round-up of breaking news, current events and comments too trivial to warrant their own posts.


AusBiotech, Legal Academics &  Australian R & D Review Weigh-In on Gene Patent Debate – IP Australia Christmas Closedown Arrangements – Entries About to Close for 2010/2011 DuPont Innovation Awards – Google to Provide European Patent Translation Service

03 December 2010

Federal Court Punishes CSL for Amendment Delay

CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) [2010] FCA 1251 (18 November 2010)

Amendment – application to amend under section 105 of the Patents Act 1990 – whether patentee's delay in applying to amend was unreasonable – whether patentee took unfair advantage of unamended patent


This Federal Court decision follows on from a ruling issued back in the early days of this blog (nearly six months ago – an eternity on the internet!)
The court has refused an application by the patentees, CSL Limited and Monash University, for leave to amend the patent-in-suit on the basis that their delay in requesting the amendment was unreasonable, and that they sought to take unfair advantage of a patent that they had good cause to believe was invalid.

This decision further emphasises the antipathy of the Federal Court to applications to amend patents in cases in which there were earlier opportunities to address any potential validity issues.

01 December 2010

LED Innovator Dies, Age 83

Professor Neumark
(Picture: Columbia University)
A recent obituary reporting the passing of Gertude Neumark Rothschild, from heart failure at the respectable age of 83 years, caught our attention for at least three reasons.

Firstly, she was a Professor of materials science and engineering at Columbia University, where she made important advances in wide bandgap semiconductors which were isntrumental in the commercial development of short-wavelength light emitting diodes (LEDs) and laser diodes.  Semiconductor optical devices are a subject close to the Patentology heart, having been the subject of our PhD research.

Secondly, Professor Neumark (as she was known professionally) obtained patents on aspects of her research, which in 2005 she successfully asserted against a number of companies, including the Philips Lumileds Lighting Company, Epistar, Toyoda Gosei and Osram.  More recently, in 2008, she filed complaints with the US International Trade Commission (ITC) against numerous companies, including such luminaries (pardon the pun) as Sony, Nokia and Hitachi.

30 November 2010

Patentology Newsbytes

A semi-regular round-up of breaking news, current events and comments too trivial to warrant their own posts.


US Supreme Court to Hear Microsoft v i4i – IP Australia Launches Beta Version of Full Text Searching – IP Events News – Patentology Author Published in The Age Newspaper

Servier Denied Patent Amendment on Appeal

Les Laboratoires Servier v Apotex Pty Limited [2010] FCAFC 131 (11 November 2010)

Amendment – application to amend under section 105 of the Patents Act 1990 – whether primary judge erred in exercising discretion to refuse application – whether requested amendment allowable under section 102 of the Patents Act 1990

This decision is the result of an appeal by Les Laboratoires Servier ('Servier') from a decision of Justice Bennett, issued on 11 September 2009 (Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019), in which Her Honour exercised the discretion afforded by s105 of the Patents Act 1990 to deny Servier's amendment request, even though she concluded that the amendments would otherwise have been allowable under s102.

The three appeal court judges, Justices Emmett, Kenny and Stone, were in agreement that the appeal should be dismissed, although they were split on their reasons. 

26 November 2010

Gene Patents Survive Australian Senate Enquiry – For Now

Australia's Parliament House,
where Committees roam free
in their natural habitat!
The report of the Australian Senate Community Affairs Committee Inquiry into Gene Patents was released today.  (Download a copy of the report.)

The Committee has not recommended any drastic amendments to the law, and in particular has stopped short of recommending that patents for genetic or other biological materials be expressly prohibited.

We reported yesterday on the Patent Amendment (Human Genes and Biological Materials) Bill 2010 that was introduced by Senator Bill Heffernan, who was a participating member of the inquiry Committee.  It appears that the committee as a whole may not have been persuaded to his relatively extreme position, and that the proposed legislation is a largely independent effort by Senator Heffernan and its co-sponsors (including the committee's chair, Senator Rachel Siewert).

25 November 2010

Australian Senator's Surprise Attack on Gene Patents

On 24 November 2010, legislation to outlaw the patenting of human genes was introduced into the Australian federal parliament by NSW Liberal senator Bill Heffernan.  The Patent Amendment (Human Genes and Biological Materials) Bill 2010, also supported by senators Helen Coonan, Rachel Siewert and Nick Xenophon, proposes amendments to Section 18 of the Patents Act 1990.

According to this report in The Age newspaper, in introducing the Bill into the Senate, Senator Heffernan called the patenting of genes "legal hocus pocus", and submitted that:

This principle [that patents are granted only for 'inventions'], however, has been for the past 30 years the subject of a legal trick played by clever patent attorneys.  ... Isolated biological materials, that is, naturally occurring biological materials that have been removed from the natural environment, such as the human body, are no longer regarded as products of nature, but as inventions.
While Senator Heffernan's stance on gene patents is well-known, we confess to being surprised by this move.  It is perhaps no coincidence, however, that a revived Senate Committee (including Senator Heffernan) inquiring into gene patents is due to report today.

22 November 2010

Experimental Confirmation – 'Information = Energy'

Illustration: Peter
Macdonald, Edmonds UK
In a letter published in the journal Nature Physics on 14 November 2010, Japanese scientists have reported the first experimental confirmation of a thought experiment, dubbed 'Maxwell's Demon', that was first proposed around 150 years ago by James Clerk Maxwell .

The significance of the experiment is that it verifies the equivalence of information and energy, ie that information can be converted to energy (and vice versa), just as energy and mass are equivalent (ie according to E=mc2).  Thus, it can truly be said that mass, energy and information are all convertible, from which it follows that none is any more or less 'physical' than the others.

Under the current Australian law relating to patentable subject matter (ie 'manner of manufacture'), a necessary prerequisite for patentability is a 'physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation' (Grant v Commissioner of Patents [2006] FCAFC 120, at [32]).  This experiment proves that the manipulation of information is sufficient to satisfy this requirement.

19 November 2010

Patentology Newsbytes

A semi-regular round-up of breaking news, current events and comments too trivial to warrant their own posts.


Sigma Appeals EFFEXOR Decision – CSL Denied Leave to Amend Growth Hormone Patent – ACIP Seeks Submissions on Public/Private Collaboration – IP Australia Office Closure Dates for 2011 – Government Announces IP Resource for Indigenous Business Owners

Amazon '1-Click' Heads for the Canadian Federal Court of Appeal

Click on the image
to view the complete
Notice of Appeal
Last month we reported the ruling of the Canadian Federal Court, overturning the decision of the Commissioner of Patents to refuse Amazon.com's claims covering its '1-Click' ordering system on the grounds that they were directed to unpatentable subject matter, namely a "business method".

On 15 November 2010, the Attorney General of Canada and the Commissioner of Patents filed a Notice of Appeal in the Federal Court of Appeal against the ruling.  The grounds of the appeal are that the primary judge "erred in fact and law" in finding that the Amazon claims comprise patentable subject matter. 

NZ Patent Office Rejects Applicant's Late-Filed Evidence

Foot Steps Orthotics Pty Limited v Foot Science International Limited [2010] NZIPOPAT 21 (22 October 2010)

Opposition proceedings – admissibility of late-filed evidence

In this New Zealand Patent Office decision, Assistant Commissioner A Hazelwood considered whether patent applicant Foot Steps Orthotics Pty Ltd ("Foot Steps") should be permitted to file additional evidence after the conclusion of the normal evidentiary stages of an opposition by Foot Science International Ltd ("Foot Science").

Foot Steps had submitted that the late evidence was necessary to address criticisms raised in Foot Science's final evidence in reply in relation to the experience and qualification of Foot Steps' expert witness, and that for this reason the evidence could not have been lodged earlier.

The NZ Patent Office had initially proposed to allow the evidence to be filed, with Foot Science then being provided with an opportunity to file its own further evidence in reply.  The decision states (at paragraph [01.15]) that the applicant then sought a hearing on the admissibility of the evidence, although it seems to us that this may be an error, it being more likely that the opponent would have objections to the late filing of evidence.

18 November 2010

Lotto Prize Schemes Not Patentable, Says Australian Patent Office

Iowa Lottery [2010] APO 25 (21 October 2010)

Hearing in relation to examiner's rejection of a patent application – whether the claimed invention a manner of manufacture

In this Patent Office decision, the Commissioner's Delegate, Deputy Commissioner Phil Spann, considered whether claims relating to a lottery prize pool comprised patentable subject matter (ie were for a "manner of manufacture" under the Australian law), concluding that they were not, and rejecting the application.


The application subject of this decision has a chequered past.

17 November 2010

IP Australia Announces Upcoming Launch of Full Text Patent Searching

In a notice sent on 3 November 2010 to subscribers of its Patent Search mailing list, IP Australia has annouced the forthcoming launch of full text searching for Australian patent specifications.

Up until now, the databases provided by IP Australia have included electronic specifications dating back to 1998.  These specifications have not been full-text searchable.

16 November 2010

Australian Federal Court Blocks Generic EFFEXOR-XR

Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth Australia Pty Ltd [2010] FCA 1211 (8 November 2010)

Validity – whether claims entitled to priority date of original US application – whether description is sufficient – whether claims are clear and fairly based on description – whether claims are novel –  whether claims are inventive – whether patent obtained by false suggestion or misrepresentation – entitlement – whether patentee gained title to the invention from all inventors – effect of omission of co-inventors' names from application – infringement – whether generic pharmaceuticals would infringe patent

An Australian Federal Court judge has upheld a patent covering the "extended release" formulation of Wyeth's antidepressant drug EFFEXOR (venlafaxine hydrochloride), marketed as EFFEXOR-XR, barring generic manufacturers Sigma Pharmaceuticals (Australia) Pty Ltd, Alphapharm Pty Ltd and Generic Health Pty Ltd from "importing, marketing, taking orders for, selling, supplying, and offering to supply" their own versions of the drug in Australia.

Each of the three generic pharmaceutical companies has obtained registration of extended release formulations of venlafaxine hydrochloride on the Australian Register of Therapeutic Goods.  Sigma's product is known as Evelexa XR, Alphapharm's as Enlafax-XR and Generic Health's as "generichealth XR".

The extended release formulation of venlafaxine hydrochloride is the subject of Australian Patent No. 2003259586 ("the XR patent"), which was granted on 11 May 2007.  The basic compound, venlafaxine hydrochloride, was the subject of Australian Patent No. 567524, which expired on 6 December 2008.

09 November 2010

Gene Patents Back on the Australian Political Agenda

It appears that the issue of so-called "gene patents" is maintaining some political momentum in Australia.  We had thought that it might fall by the wayside when the Senate Committee considering the issue declined to deliver a comprehensive report following the calling of the Federal election, which then resulted in a hung parliament and the formation of a minority government.  However, it seems that we may have been wrong!

By way of background, we have previously reported on the Myriad cases in Australia and the US (here, here and here), on the Australian Senate enquiry into gene patents (here) and its demise (here), on opinion in the Australian press (here), and on the coverage of this issue on the ABC's Four Corners program (here, here and here).


Last week, the Honourable Member for the Federal seat of Wentworth (also former leader of the Opposition, and current Shadow Minister for Communications and Broadband), Malcolm Turnbull, contributed an opinion piece to the Melbourne Age newspaper, dramatically entitled Humanity Fights for Ownership of its Soul

15 October 2010

Business Methods Patentable (Again) in Canada

Amazon.com v The Attorney General of Canada and the Commissioner of Patents 2010 FC 1011 (14 October 2010)

Ordering cheese online with just
one click!
The keenly-awaited decision in the appeal by Amazon.com against the rejection of its so-called '1-click' patent application has just been released.

The outcome – the Commissioner's decision has been overturned.  The court considered Amazon's claims to comprise patentable subject matter, and concluded that "a 'business method' can be patented in appropriate circumstances" (at [3]).

In the original decision of the Patent Appeal Board, all of Amazon's claims were found to be novel and nonobvious, notwithstanding their rejection on subject matter grounds.  Therefore, barring an appeal by the Commissioner of Patents, the Amazon '1-click' patent is now on-track to be granted in Canada.

13 October 2010

Does Australia Need its Own Bayh-Dole Style Legislation?

It has been thirty years since US federal policy in relation to the commercialisation of publicly-funded research underwent a major change through the Bayh-Dole Act of 1980.  Bayh-Dole fostered greater uniformity in the way research agencies treat inventions arising from the work they sponsor.  Before the Act, if government agencies funded university research, the funding agency retained ownership of the knowledge and technologies that resulted.  However, very little federally funded research was actually commercialised.

As a result of the Act, which provides for the universities to take title to the IP in most circumstances, patenting and licensing activity from such research has accelerated.

Although the system created by Bayh-Dole has remained stable, concerns have sometimes arisen that it might impede other forms of knowledge transfer, or that universities might prioritize commercialization at the expense of their traditional mission to pursue fundamental knowledge.

The US National Research Council therefore convened a committee of experts from universities, industry, foundations, and similar organizations, as well as scholars of the subject, to review experience and evidence of the technology transfer system's effects and to recommend improvements.  The result of this review is a report, published by National Academies Press (NAP), entitled Managing University Intellectual Property in the Public Interest

12 October 2010

IP Australia Extends Business Hours for Summer

Australian geography has compelled IP Australia to extend its business hours over summer.  An Official Notice published online on 11 October 2010 announced that the hours of operation for the customer service centre are 9am to 8pm Australia Eastern Daylight Time (AEDT) from the commencement of daylight savings on Tuesday, 5 October 2010 until Friday, 2 April 2011.

What has geography got to do with it?  We are glad you asked!

Due to its size, Australia presents some unusual time zone issues for a single country.  It's northernmost city, Darwin, is situated at about 12 degrees south latitude, well into the tropics and around the same distance from the equator as Barbados.  Southernmost city Hobart is at around 42 degrees south latitude, equivalent to Beijing, Rome and New York in the North, with a shortest day of almost exactly nine hours, and a longest day of just over 15 hours and 20 minutes.  Add to this the fact that the country spans nearly 40 degrees of longitude, and keeping track of the time interstate can become something of a headache.

11 October 2010

Rules for Calculation of Time Periods Measured in Months

Make sure you mark the
right date!
In an Official Notice issued on 30 September 2010, which appears to have taken everybody by surprise, the UK Intellectual Property Office (UKIPO) has announced a change in practice in relation to the period allowed for filing a Notice of Opposition to the registration of a national trade mark.  Specifically, the expiry of the two-month opposition period has been reduced by one day.

For example, if an application is published for acceptance on 6 October 2010, it would previously have been the case that a Notice of Opposition could be filed up until 6 December 2010.  Under the new practice, the final date for filing a Notice of Opposition is 5 December 2010.

While we do not usually trouble ourselves with trade mark matters on the aptly-named Patentology blog, this sudden change in practice by the UKIPO gave us pause to wonder whether some similar surprise may be lurking unnoticed in any of the regulations we operate under in our day-to-day practice.  We are pleased to report that this seems unlikely and, indeed, this particular UK rule appears to be an anomaly.

08 October 2010

News from IP Australia

Discontinuing of Provision of National Examination Services to Singapore – IP Training Program Wins Award – Upcoming Creative Commons Licensing Seminar – So You Want to be a Patent Examiner...

We have received a few items from IP Australia this week, so we thought we would provide a brief digest of current news and events.

Motorola Bites Apple for Infringement of Smartphone Patents

Not to be outdone by the high-profile spat between Oracle and Google (see our prior articles here and here), Motorola Mobility, Inc has filed not one, nor even two or three, but four separate complaints against Apple, Inc, alleging infringement of a total of 18 Motorola patents by various Apple iPhone, iPad, iPod, MacBook, iMac and Mac products.

Two of the complaints have been filed in the US District Court in the Northern District of Illinois, one in the US District Court in the Southern District of Florida, and one with the US International Trade Commission (ITC).

07 October 2010

Google Pushes Back on Oracle's Java IP Law Suit

The most read article we have yet published on the Patentology blog was Why has Oracle Sued Google? which discussed the background to Oracle's complaint of patent and copyright infringement against Google Inc., in relation to the Android software for mobile devices.

Google has now filed its reply to Oracle's complaint (read the reply here), in which it has denied that the Android software violates Java patents and copyrights.  In its own version of the background to the suit, Google has also accused Oracle of hypocrisy, saying that back in 2007 "Sun came under significant criticism from members of the open source community, including Oracle Corp., for its refusal to fully open source Java."

05 October 2010

Australia Must Invest in Innovation, Infrastructure, Says OECD Economist

New Australian Workplace Uniform,
Available in a Range of Fashion Colours!
Last week Jonathan Coppel, who is the Economic Counsellor to the OECD Secretary General (and an Australian) posted on his blog a copy of a speech he recently gave at National Economic Review: Australia's Annual Growth Summit 2010.  Coppel's allocated task was to explain how Australia might improve its growth performance.

Coppel's thesis is that Australia's recent growth, measured as increase in per capita GDP, has been achieved through increases in labour utilisation, ie more Australians working more of the time.  However, according to Coppel:
  1. Australian GDP per capita remains 7% below the average for the upper-half of OECD nations (although this gap continues to close);
  2. Australian productivity, measured as GDP per hour worked, remains 15% below the upper-half OECD benchmark, and is not moving from this level; and
  3. growth based on increasing labour utilisation is clearly not sustainable in the long term.

04 October 2010

No Relief for Razer Pending Decision on "Licence to Infringe"

Law v Razer Industries Pty Limited [2010] FCA 1058 (29 September 2010)

Infringement – infringement commenced during period when patent had ceased – whether there is a causal relationship between temporary ceasing of the patent and respondent's allegedly infringing activities – whether respondent can obtain a licence from Commissioner of Patents pursuant to s 223(9) of the Patents Act 1990 – whether respondent entitled to a stay of orders for infringement pending determination of licence application – whether patentee entitled to restraining order preventing respondent from infringement pending determination of licence application

Cause-and-effect necessary for
grant of a license under s223(9)

Back in August we reported on a dispute between Razer Industries Pty Ltd ("Razer") and Robert R. Law ("Law") over Law's patent relating to a scraper blade arrangement for a conveyor belt cleaner ("the patent").  In particular, we reviewed a Patent Office decision in which the Commissioner's Delegate denied Razer's request to dismiss an opposition by Law to an application by Razer for what we dubbed a "licence to infringe".

We noted at the time that we expected to hear more of this dispute, since there are related infringement proceedings ongoing, and apparently various other parties involved.

This decision, issued by Justice Bennett in the Federal Court of Australia, relates to the infringement proceedings, which were commenced by Law on 5 March 2010.  Razer sought a stay of the proceedings, pending the outcome of the Patent Office decision on its application for a licence, on the basis that the infringement question will be moot if a licence is granted, while Law sought an order restraining Razer from infringing the patent during the same period.

02 October 2010

Patentology Adopts DISQUS & Relaxes Moderation Policy

If you look at the bottom of this posting, you will see that Patentology has replaced the "vanilla" Blogger comment system with the DISQUS comment system and moderation tool.

DISQUS provides us with a great deal more control over comments and moderation.  For example, we can elect to require only comments containing certain "restricted words" to be moderated, or to require moderation for comments containing links.  We can also blacklist abusive users by email address, DISQUS username, or IP address.

For readers posting comments, creating a DISQUS profile enables centralised tracking and management of comments across all DISQUS-enabled sites.  DISQUS also allows replies to other comments, and displays these as discussion threads.

01 October 2010

Australian Software Licensing Invention in the News

If only software product activiation
was as easy as flicking a switch...
One of the highest-profile software patent cases of 2009 was the litigation between Uniloc USA Inc and Microsoft, over a patent which Uniloc asserts covers the "software activation" system widely used to register licensed copies of software.  Uniloc provides its own software protection and licensing software and services under the name SoftAnchor.

The case first made headlines when a jury awarded damages of US$388 million against Microsoft for patent infringement, and then again when the presiding District Court judge overturned the verdict in a "Judgement as a Matter of Law" (JMOL).

Naturally, Uniloc appealed the judge's decision.  Oral arguments in the case were heard in the US Court of Appeals for the Federal Circuit (CAFC) last month.  Readers with a burning interest in such proceedings can listen to a MP3 recording of the hearing, available from the CAFC website.

Something that is less well-known (perhaps unsurprisingly, since Uniloc is a US company, and its parent is based in Singapore) is that the founder of Uniloc is an Australian by the name of Ric Richardson, who invented the software licensing system and filed his first patent applications back in the early 1990's.

30 September 2010

Proceedings in Other Jurisdictions No Excuse for Delay

Wyeth v The Kennedy Institute of Rheumatology [2010] APO 20 (21 September 2010)

Opposition – request for extension of time to serve evidence in answer – whether waiting for decision from the European Patent Office constitutes a satisfactory explanation of delay.

Current practices relating to the grant of extensions of time in Australian patent opposition proceedings are relatively generous, although IP Australia has clearly indicated its desire and intention to introduce a stricter regulatory regime in order to improve the speed and efficiency of an often drawn-out process.

Nonetheless, there are limits to the reasons that  may be considered acceptable excuses for delay, as this decision from Delegate Dr Steven Barker demonstrates.  Although the patent applicant in this case was granted the requested extension of time on other grounds (not least the fact that by the time the hearing took place the evidence had already been served), it is clear from this decision that waiting for an outcome in related proceedings in other jurisdictions is not, in itself, an adequate excuse.

29 September 2010

Victorian Government to Support Uptake of Small Technologies

According to the Small Technologies Cluster (STC), the term "small technologies" refers to "a convergent technology underpinned by nanotechnology, biotechnology, information technology, microtechnology and advanced engineering technologies."

The Victorian Government today announced the launch of the first round of the Small Technologies Industry Uptake Program (STIUP) which was a key part of the $10.5 million Victorian Action Plan for Small Technologies.

The program is intended to support businesses in accessing facilities, goods, services and advice to help them include small technologies in their products, processes and services.  The resources available in Victoria include the Melbourne Centre for Nanofabrication, the Australian Synchrotron and MiniFab as well as facilities and institutions such as the CSIRO and universities.

28 September 2010

Review – WIPO Goes Troppo with New Services

The past week has seen the launch of not one, but two, new information services by the World Intellectual Property Organisation (whose imposing glass headquarters in Geneva is pictured).

First, on 20 September 2010, WIPO Lex was announced.

And then, because too much searchable IP information is never enough, WIPO announced the launch of IP Advantage.

Need to know more?  Then read on!

27 September 2010

Free Software Foundation Incites USPTO Letter-Writing Campaign

Back in July, the USPTO issued its Interim Bilski Guidance to assist the examining corps in determining subject matter eligibility under 35 U.S.C. § 101 in view of the United States Supreme Court decision in Bilski v. Kappos.  It also invited the public to comment on this guidance, with submissions closing on 27 September 2010.

The Free Software Foundation (FSF) has caught on to this "opportunity", encouraging like-minded citizens to write to the USPTO to ask them to please stop issuing software patents.  You can read their "news posting" here, if you have not already encountered it via one of the many mailing lists, blogs or social networking sites through which it has been spreading like wildfire over the last few days.

24 September 2010

Divisional Decision Defies Deductive Determination

Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 18 (8 September 2010)
Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 19 (8 September 2010)

Opposition – original application and corresponding divisional application both opposed – whether claims of both applications lack novelty, inventive step and/or clarity – whether claims 23 to 37 of divisional application entitled to the priority date of the parent application – whether claims 23 to 37 of divisional application lack novelty and inventive step in light of original application publication

These two Patent Office decisions, both penned by hearing officer Jacob Elijah, relate to oppositions filed by Memcor Australia Pty Ltd ("Memcor") against an initial application no. 715364 ("the parent") and an associated divisional application no. 2004203856 ("the divisional"), both in the name of GE BetzDearborn Canada Company ("GE").  The applications are directed to relatively large systems for the microfiltration of liquids, typically water in applications such as wastewater treatment.  Both have substantially the same descriptions, but different claims.

Our interest in these cases is not in the substantive basis of the oppositions.  Memcor asserted the unexceptional grounds of lack of novelty, lack of inventive step (ie obviousness) and lack of clarity.  A number of prior art documents, and much expert evidence, was tendered and considered in the decision.  Memcor was unsuccessful on all substantive grounds.

23 September 2010

IP Australia Gets Tougher on Patent Applicants

IP Australia has published an Official Notice announcing changes to patent examination practice.  The changes are intended to improve quality and certainty in the validity of granted patents, and are part of IP Australia's ongoing patent reform agenda, which has been progressing through a series of reports and public consultations over the past 18 months.

Many of the proposed reforms will require changes to legislation and/or regulations, however some can be implemented within the existing framework by changes in Patent Office practice.  This announcement therefore signals the commencement of an expected series of reforms.

The initial changes are intended firstly to "raise the bar" in relation to examination for inventive step, and secondly to limit the impact of certain practices relating to the filing of divisional applications, which IP Australia considers to be undesirable.

Changes to the way in which inventive step is assessed have the potential to affect all applicants, while the impact of the current changes in divisional practice will mainly impact on applicants attempting to use divisional filings in order to extend application pendency.

22 September 2010

Free Software Activist in Conference Demonstration – of Ignorance

As we reported recently, Richard Stallman – originator of the GNU project, and founder of the Free Software Foundation – is currently in Australia on a speaking tour.

iTNews has reported that Stallman yesterday made an "unexpected appearance" at a presentation by the European Patent Office at the World Computer Congress in Brisbane, toting a placard reading "Don't get caught in software patent thickets".  This no doubt left European Patent Officer Ralf Abbing, whose presentation on "big issues in IP in relation to computing technology" was briefly interrupted, quaking in fear at the prospect of being entangled in dense woodland!

We have, as yet, heard no reports of retaliation by EPO activists at Stallman's presentation later in the day.  We have therefore launched our own minor protest, in the form of the above photograph (courtesy of Wikimedia Commons, for those concerned about copyright issues).

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