Patentology Newsbytes

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

IN THIS ISSUE...

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. 

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).

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.

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.

Patentology Newsbytes

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

IN THIS ISSUE...

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.

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.

BACKGROUND

The application subject of this decision has a chequered past.

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.

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

EFEXOR-XR: C₁₇H₂₇NO₂

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.

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).

SHADOW MINISTER WEIGHS IN

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.