IP Australia Introduces New Forms, New 'Corporate Branding'

Last week, IP Australia announced upcoming changes to its various official forms, commencing with new Patents Forms to be launched today (31 January 2010).

The reasons for the update include providing users with information and links in relation to IP Australia's new Privacy Policy, grouping fields for personal information together on a single page, and removing the need for signatures, except when required by legislation.

But the part we found most intriguing was the promise that the new forms would apply IP Australia's 'new corporate branding'.

Now the new forms have now been released, we have been able to get our first look at what is presumably a facet of a new look for IP Australia...

‘Troll’ Targets Twitter

Here at Patentology, we are not inclined to attach the ‘t-word’ lightly to patent litigants.  There are two main reasons for this.

Firstly, the term ‘patent troll’, as a pejorative, was largely promoted by big, wealthy corporations ‘outraged’ by the assertion of patents by individual inventors, small businesses, and ‘non-practicing entities’ (NPE’s) which did not actually have competing products in the marketplace.  The problem with such patent-holders, from the perspective of the big corporation, is that they cannot be ‘bought off’ with cross-licensing deals based on the corporation’s large patent portfolio.  Credit for popularising the term ‘patent troll’, at least in its current form, is widely attributed to Peter Detkin in around 2001, when he was General Counsel at Intel, which was defending a patent infringement suit brought by TechSearch LLC.  Apparently ‘extortionist’ was libellous, whereas ‘troll’ was just a little bit cute!  Intel’s position remains that pretty much any NPE (including Universities and public research institutes) is fair game to receive the epithet ‘troll’, unless they play by Intel’s rules.

Our second reason for reluctance in applying the term ‘troll’ is that we believe there is a legitimate place in the patent system for patent holding companies.  It is self-evident that individual inventors and small entities will often not have access to the capital necessary to commercialise their inventions, or to assert their patents against infringers.  The fact that there are companies willing and able to acquire intellectual property from these minor players provides a financial incentive for small entities to pursue innovative ideas, and to protect them via the patent system, even though they do not necessarily have the resources to take them to the next stage themselves.

This does not mean, however, that some NPE’s are not worthy of the name ‘troll’.  In our view, VS Technologies, LLC, which filed suit against Twitter, Inc on 18 January 2011, is a patent troll, pure-and-simple!

Cerf’s Up! ‘Father of Internet’ Praises National Broadband Network

Vint Cerf in Vilnius, Lithuania,
September 2010

The man widely regarded as one of the ‘fathers of the Internet’, Vint Cerf, is currently on a ‘working holiday’ in Australia where, in his current role as Google’s Chief Internet Evangelist, he has been talking up the Government’s National Broadband Network (NBN) at every opportunity.

We have written here before about the NBN project, most recently upon the release of the business plan towards the end of last year.  We believe that effective innovation requires the support of suitable infrastructure, and that the NBN will be an important component of that infrastructure in the future.

It seems that Vint Cerf shares our views in this regard. 

Who Is the Commissioner of Patents?

While we have seen no official announcement, it appears that over the New Year break there may have been a change to the holder of the office of Commissioner of Patents.

Section 207 of the Patents Act 1990 provides that: '(1) There is to be a Commissioner of Patents'; and '(2) The Commissioner has such powers and functions as are conferred on him or her under this Act or any other Act.'

Many powers and duties are conferred upon the Commissioner under the Act.  However, the current Corporate Structure of IP Australia does not include any position with the title 'Commisioner of Patents'.  The 'head honcho' is Director General Philip Noonan, while Fatima Beattie is the Deputy Director General, with responsibility for operations of the Patent, Trade Marks and Designs Offices.  Within Ms Beattie's area, the Patent and Plant Breeder's Rights Group headed by General Manager Victor Portelli.

For many years, Ms Beattie has held the role of Commissioner which, amongst many other duties, involved having her signature affixed to each issued Patent Deed.  We have noticed, however, that as of at least the start of this year, newly-issued Patent Deeds have been signed 'Victor Portelli / Commissioner of Patents'.

‘Psychological Analysis’ Unpatentable, Says First Principles Decision

First Principles, Inc. [2011] APO 1 (5 January 2011)

Hearing in relation to examiner's rejection of a patent application – whether claimed method of psychological analysis and therapy a manner of manufacture – whether proposed amendments allowable – whether claimed method novel – whether claimed method involves an inventive step

In the first Patent Office decision to be issued in 2011, the Commissioner's Delegate, Deputy Commissioner Phil Spann, considered whether claims relating to a method he characterised as ‘psychological analysis and therapy’ comprised patentable subject matter (i.e. were for a ‘manner of manufacture’ under the Australian law).  He was also required to consider whether proposed amendments to add claims directed to a computer-assisted implementation of the method were allowable, and whether the claimed method was novel and inventive.

The applicant, First Principles, Inc., relying only on written submissions to make its case, was unsuccessful on all counts.

Of at least as much interest as the decision itself, is the identity of the inventor, Keith Raniere, a.k.a. ‘Vanguard’, who is reportedly either a visionary, or a charismatic but exploitative cult leader, depending on your point of view.

Australia-US Patent Prosecution Highway Extended and Expanded

IP Australia announced today that the Patent Prosecution Highway (PPH) trial between the Australian Patent Office and the US Patent and Trademark Office (USPTO), which  commenced on 14 April 2008, will once again be extended – until 13 April 2012 – and will now be expanded to include search and examination work carried out under the Patent Cooperation Treaty (PCT).

The PPH is an initiative of the USPTO, now in-place with a number of national and regional patent offices around the world, whereby an applicant may request accelerated examination in one office (e.g. the USPTO) based on a determination by the other office (e.g. the Australian Patent Office) that at least one claim of a corresponding application is allowable.

IP Australia Offers Assistance to Flood-Affected Customers

Many readers will already be aware of the devastating floods that have affected areas of eastern Australia.  Queensland and northern New South Wales have been the worst hit, however in the past few days flooding has also occurred in parts of western Victoria, eastern South Australia and Tasmania.

The Brisbane central business district has been substantially without power, and effectively closed down, since last Tuesday 11 January 2011.  This has included the Brisbane Post Office, which acts as a receiving office for filings with IP Australia (i.e. relating to patents, trade marks and registered designs).  With the reopening of the Post Office on Monday, 17 January 2011, IP Australia announced the resumption of filing service in Brisbane.

In doing so, it has taken the opportunity to remind its customers (e.g. applicants and agents) of the possibility of obtaining extensions of time to meet deadlines that may have been missed as a result of the floods.

Patentology Newsbytes

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

IN THIS ISSUE...

 

112th US Congress set to 'Promote Innovation' – Uniloc's Aussie Inventor Responds to Appeal Decision in Microsoft Case – Licensing Specialist McInnes Jumps Ship to DibbsBarker – IBM Breaks (Own) Record for Issued US Patents – Judge Jagger? Randall Rader Reportedly Rocks Raffles! 

 

Reintroduced US IP Bill to Slay the False Marking Troll?

Look at them, troll mother said.
Look at my sons! You won't
find more beautiful trolls on this side
of the moon.(John Bauer, 1915)

On 7 January 2011, a Bill was reintroduced to the US Congress that, if passed, will significantly, and perhaps excessively, curtail the penalty that can be imposed against a manufacturer that falsely marks a product as being protected by one or more patents.

BACKGROUND

Over the past couple of years, numerous companies have been sued in the US under the 'false patent marking' provisions of US patent statute, 35 USC 292(a).  False marking is the offense of marking a product as being protected by a patent that does not, in fact, cover the article in question.  This may be because the product does not fall within the scope of the patent claims or, as has often been the case in the recent spate of law suits, because a patent that may once have covered the product has expired.

For many years, US district courts interpreted the false marking provision as allowing for the imposition of a penalty of up to US$500.00 in total.  However, in the case of The Forest Group, Inc v Bon Tool Co (Fed. Cir. 2009), the US Court of Appeals for the Federal Circuit overruled the district court, finding that the law as it currently stands provides for a penalty of up to US$500.00 per offense, i.e. for each article sold that is inappropriately marked. 

Another Year, Another Scam Reminder!

We have written previously (in Patent Spam and Other Scams, and Reminder: Unauthorised Patent Register Scams) about the various ‘unauthorised register’ scams run by unscrupulous operators seeking to rip off fairly substantial sums from International Patent (PCT) applicants in order to record application details in private, and worthless, databases.

The World Intellectual Property Organization (WIPO) recently updated its PCT warning page with the following notice about envelopes:

PCT applicants and agents have informed the International Bureau that some of these requests to pay fees are being sent in envelopes which appear to bear the WIPO/OMPI logo and the address of the organization. Please carefully review all such requests. The services which are being offered in these invitations do not come from WIPO.

Uniloc Wins Some, Loses Some, in Product Activation Litigation

Uniloc USA, Inc v Microsoft Corp _CAFC _ (Case No. 2010-1035, 4 January 2010)

Back in October last year, we reported on the status of litigation brought by Uniloc USA, Inc, in relation to a patent covering the software product activation system invented by Australian Ric Richardson.

The highest-profile case was against Microsoft, in which a jury initially awarded Uniloc damages of US$388 million, only for the presiding District Court judge to overturn the jury verdict in a "Judgement as a Matter of Law" (JMOL).  Uniloc appealed the judge's decision to the US Court of Appeals for the Federal Circuit (CAFC). 

Yesterday, the court issued its opinion in the case (penned by Judge Linn), with mixed outcomes for both Uniloc and Microsoft.

In particular, the appeals court overturned the District Court judge's JMOL ruling of non-infringement (contrary to the findings of the jury), and the grant of a new trial on infringement.  To Uniloc's benefit, therefore, its patent has been determined to be valid and infringed by Microsoft's product activation system.

However, Microsoft does not walk away empty-handed.