28 February 2011

Anti-histamine Inventive… But Not Novel, Says Federal Court!

Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120 (18 February 2011)

A Judge in the Federal Court of Australia has found patent claims directed to an anti-histamine drug known by the non-proprietary name of fexofenadine to be lacking in novelty, and yet to involve an inventive step.

Many Australian practitioners have long thought that the scheme of the Australian Patents Act 1990, and specifically section 7, allows for the possibility that a claim could fail the test of novelty prescribed by subsection 7(1), and yet pass the test for inventive step that is separately prescribed in subsections (2) and (3).  While this is interesting to contemplate as an academic exercise, as a practical matter there is generally no need to devote significant effort to assessing inventive step once a want of novelty has been established.  Certainly this is the view of a majority of patent examiners at IP Australia, who are inclined to open objections with statements such as ‘…claim 1 lacks novelty (and does not involve an inventive step) in light of D1, which discloses…”.

But clearly this view is not shared by Justice Jessup of the Federal Court of Australia who, to be fair, no doubt felt somewhat constrained by certain precedential appeal decisions of the full bench of the court.

25 February 2011

Anti-Gene-Patents Bill Introduced in Lower House

On 21 February 2011, the Patent Amendment (Human Genes and Biological Materials) Bill 2010 was introduced into the Australian House of Representatives by Liberal Party members Peter Dutton, and Malcolm Turnbull, National Party member John Forrest, and Independent member Rob Oakeshott.

The text of the Bill, which is identical to the corresponding Bill introduced into the Senate last year, is available from the ComLaw site, while Mr Dutton’s first reading speech can be found in the Parliamentary Hansard for 21 February 2011, on pages 29 and 30.

We reported the introduction of the Senate Bill here, where we described the proposed amendments as 'appalling and ill-conceived'.  Our opinion has not mellowed in the intervening period!

24 February 2011

New Zealand’s Drop-Dead Divisional Deadline

Baxter Healthcare SA [2011] NZIPOPAT 2 (4 February 2011)
American Aerogel Corporation [2011] NZIPOPAT 3 (4 February 2011)


Here is something that anybody who files and/or prosecutes patent applications in New Zealand should know: the deadline for filing a divisional application is the date on which a Notice of Acceptance is issued on the parent case.

Here is something else that these same people should know: this deadline cannot be extended.

Let us be absolutely clear about this – not at all… not ever… not in any circumstances!

And under the current New Zealand Patent Office practice, the Notice of Acceptance is issued once the examiner determines that there are no outstanding objections to the grant of the patent.  So, once a response is filed that may place the application in order for acceptance, it is best to assume that there will be no warning of the divisional filing deadline.

In other words, if the applicant wishes to file a divisional application, they had better do so no later than the day on which they file a response placing the application in order for acceptance.

Two decisions recently issued by the New Zealand Patent Office are a sobering reminder of the hazards of failing to consider the need for a divisional application before filing a response.

22 February 2011

Submissions to Senate Inquiry on 'Gene Patent' Amendments Due Friday!

This is just a reminder, to those with substantive interests in the patenting of genetic and other biological materials, that submissions to the Australian Senate Inquiry established to report on the Patent Amendment (Human Genes and Biological Materials) Bill 2010 are due this Friday, 25 February 2011.

As we reported back on 25 November 2010, this Bill proposing to outlaw the patenting of human genes and other naturally-occurring biological materials, was introduced into the Australian federal parliament as a Private Senator's Bill, co-sponsored by Senators Coonan, Heffernan, Siewert and Xenophon.

Further details of the inquiry can be found in our report of 23 December 2010.

21 February 2011

Australia and New Zealand – Two Laws, One Patent Examination?

On 16 February 2011 Australian Prime Minster Julia Gillard and New Zealand Prime Minister John Key held a press conference at which they signed a new ‘investment protocol’ as part of the ongoing Trans Tasman Single Economic Market (SEM) program.

The press conference included the announcement of a project to reduce the duplication of work  in the Australian and New Zealand patent offices in the case of patent applications filed in both countries. 

Under so-called ‘Integrated Patent Examination’, applications filed in both countries would be reviewed by a single examiner from either IP Australia or the New Zealand Intellectual Property Office (IPONZ).  Apparently most applications filed in New Zealand are also filed in Australia – although in our experience the converse is not true – so there is certainly scope in this proposal to substantially reduce the workload in IPONZ.

Notably, it is not being proposed that Australian and New Zealand patent laws be fully harmonised, or that a single ‘ANZ Patent’ would be issued.  Ultimately, there will still be two distinct patents which would need to be separately enforced under the respective laws of the two countries.

The single examination process is expected to be fully in place within three years.

18 February 2011

Oracle vs Google II – the Android Strikes Back!

Currently, the list in the sidebar to the right shows that the most-viewed article ever posted on this blog is our analysis of the background to Oracle's IP infringement lawsuit against Google (Why Has Oracle Sued Google? 18 August 2010).

Now, according to a Reexamination Alert from the firm of Westerman Hattori Daniels & Adrian LLP, Google has fired the next salvo in the ongoing dispute by asking the USPTO to reexamine four of the patents asserted by Oracle – US Patent nos. 5,966,702, 6,061,520, 6,125,447 & RE 38,104.

In principle, full details of reexamination proceedings, including documents filed by the parties, are available via the USPTO's Public Patent Application Information Retrieval (Public PAIR) system.  In practice, finding the documents can be less than straightforward, but for those readers who may wish to follow the process we provide further information and instructions at the end of this article.

So far, it appears that the documents filed by Google are only available in three of the cases, although we expect that the other will follow shortly.

IP Australia’s ‘Case Management’ of Divisional Applications

Senomyx, Inc [2011] APO 5 (2 February 2011) ; Qualcomm Incorporated [2011] APO 6 (2 February 2011) ; McNeill-PPC, Inc. [2011] APO 8 (4 February 2011) ; Scott Laboratories, Inc. [2011] APO 9 (4 February 2011) ; Schering Corporation [2011] APO 10 (4 February 2011) ; E.I. De Pont De Nemours and Company [2011] APO 11 (16 February 2011)

Ask not for whom the
Division Bell tolls...
We reported back in September last year (‘IP Australia Gets Tougher on Patent Applicants’) on the first steps in IP Australia’s reform agenda. 

One of these steps is a new ‘case management’ approach to the processing of potentially ‘abusive’ divisional applications, i.e. those that may have been filed primarily to maintain a pending patent application after the expiry of the 21-month acceptance period of the original application.  IP Australia’s concern about such applications is that they create undue uncertainty for competitors in the Australian marketplace, since the scope of any patent rights that may ultimately be granted remains unknown.

It appears that this approach is starting to bite, although it is not entirely clear whether it is the patent applicant or IP Australia that is getting more severely bitten.  In the past two weeks or so, IP Australia has issued no less than six written decisions refusing divisional applications that have been subject to case management!

17 February 2011

ACIP Reports on ‘Patentable Subject Matter’

The Australian Government’s Advisory Council on Intellectual Property (ACIP) has released the Report of its review of ‘patentable subject matter’.


The background to the review is set out on ACIP’s web site, of which the following is an excerpt:

In recent years a variety of concerns have been raised about the sorts of things that can be patented. In Australia the main legal test of whether an invention is patentable subject matter is whether it is a 'manner of manufacture'.  In its broad ranging 2004 review of gene patenting and human health Report … the Australian Law Reform Commission (ALRC) recognised the value of a flexible test for patentable subject matter, but found that the manner of manufacture test was ambiguous and obscure. … The ALRC recommended that the manner of manufacture test be reviewed.

… Consequently, the Minister for Innovation, Industry, Science and Research has requested that the Advisory Council on Intellectual Property (ACIP) conduct a review of patentable subject matter, including the appropriateness and adequacy of the 'manner of manufacture' test as the threshold requirement for patentable subject matter under Australian law, and the historical requirement that an invention must not be 'generally inconvenient'.

16 February 2011

IP Contributes 3.7% to Book Value of ‘Australia, Inc’

We are sure that someone out there has been wondering – ‘suppose I wanted to buy Australia, lock, stock and big-red-rock, how much would I expect to pay?’

Well, don’t answer… because Phil Ruthven, Chairman of IBISWorld, has already crunched the numbers for you, and come up with A$9.94 trillion.  To put this in perspective, the projected spending in the current US budget papers for the five fiscal years from 2012-16 is just over US$20 trillion.  So, at current exchange rates, if the US government dumped half of its programs for the next five years, it could buy Australia instead! 

This might not actually be such a bad plan – consider how much (or, indeed, how little) of the mortgage on a new house you might be able to pay off by redirecting just half of your household budget for only five years.  Look at it that way, and Australia is a bargain for a big country like the United States.  Now please, nobody tell China!

11 February 2011

Microsoft Tops Australian Patent Grants for 2010

‘Tis the season for statistics, as everybody looks back on the year that was 2010!

As we previously briefly reported, patent research company IFI CLAIMS Patent Services recently released its annual list of top US patent recipients for 2010.  Notably, companies in the information and communications technologies (ITC) sector dominated the list, which was headed by IBM with an astonishing, and record-breaking, 5896 US patents issued in 2010. IBM has now topped the US patent charts for 18 consecutive years.

This got us to wondering – how would the corresponding statistics for Australian patent grants compare?

Patent Reform–IP Australia’s Underexposed Exposure Draft

Now, here is something interesting… on the website of the Department of the Prime Minister and Cabinet you can obtain a document listing all of the legislation proposed for introduction during the Autumn 2011 sessions of Parliament.

On page eight you will find the following intriguing entry:
Intellectual Property Laws Amendment Bill
  1. raise patent standards and increase certainty in the validity of granted patents
  2. give researchers the freedom to innovate without the threat of litigation
  3. speed up the processes for determining patent and trade mark applications
  4. improve the operations of the intellectual property profession
  5. improve mechanisms for trade mark and copyright enforcement in Australia
  6. modernise aspects of Australia’s intellectual property system
Reason for legislation: to implement a range of intellectual property reforms, including raising Australian patent thresholds to international standards
In our recent guest article for the IPWatchdog blog, we listed IP Australia’s patent reform agenda at number five in our ‘top eight’ IP issues in Australia and New Zealand, noting that an Amendments Bill is expected to emerge in 2011.  But we have seen nothing as yet, and Autumn is nearly upon us.

So what, we wonder, is the story here?

10 February 2011

Patentology Soundbytes

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

In this issue...

>   Briefing underway in Microsoft v i4i
>   IBM and Samsung announce massive cross-licensing deal
>   USPTO issues new 35 USC 112 Guidelines
>   Federal Circuit issues its first ever inter partes reexam decision
>   'Collateralized loans' patent survives Bilski



Patentology Soundbytes - we trawl the Web, so you don't have to!

08 February 2011

Join Us at ‘ANZ-IP’ on LinkedIn

We would like to invite all of our readers to join, and contribute to, a new discussion group that we have created on LinkedIn.

The group, named ‘ANZ-IP’, is intended as a members-only forum for anyone and everyone interested in the practical aspects of protecting, managing, exploiting and enforcing IP and IP rights in, or from, Australia and New Zealand.  This is a forum for people to ask questions, to share experiences and strategies, and to network with, and seek assistance from, fellow professionals and experts.  All with these interests are most welcome to join. 

07 February 2011

Innovation Patent Claims Once Again Construed Narrowly

Australian Mud Company Pty Ltd v Coretell Pty Ltd [2010] FCA 1169 (29 October 2010)

Claim construction – meaning of ‘device’ – whether ‘core orientation device’ is a unitary tool or may be in multiple parts

We have commented previously that the price to be paid for the near-invulnerability of the Australian innovation patent to invalidity attacks based on lack of ‘innovative step’ may be a corresponding tendency for the claims to be interpreted more narrowly. 

There is nothing in the Australian Patents Act authorising any difference in treatment between the claims of a standard patent, and the claims of an innovation patent.  However, it is not uncommon in a patent dispute that makes it as far as the Federal Court for key issues to be finely-balanced.  If this were not so, the parties would most likely have settled the dispute earlier, rather than both sides believing that they may prevail in court.

Claim construction is just such a key issue.  A broad interpretation of claim terms makes infringement more likely, but also increases the likelihood that the claim is invalid when compared with the prior art.  Conversely, a narrow interpretation may allow an alleged infringement to escape the scope of the claim, even though the claim is valid.  The parties to a patent dispute will therefore often argue for alternative constructions of the claims, and in a finely-balanced case the Court’s decision could go either way.

All else being equal, it may well be open to the Court – as perhaps in this case – to fall on the side of a narrower construction when dealing with an innovation patent.

03 February 2011

Now It's IPONZ Getting a Facelift...

Further to our report earlier this week on IP Australia's new Corporate Branding, we have belatedly learned that its counterpart across the Tasman is undergoing a similar revamp.

The Intellectual Property Office of New Zealand (IPONZ) announced in November last year that it would be 'adopting a new visual identity' to align with the 'fern branding' already applied to some other government departments and activities.  (The 'fern' in question is New Zealand's widely-recognised national emblem, the silver fern, or cyathea dealbata.)

Patentology Newsbytes

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

IN THIS ISSUE…

WIPO Acts Against Unauthorised Register Scams – IP Australia Announces First Ever Privacy Policy – US Congressional Research Service Report on Patentable Subject Matter – NSW Government Funds ‘Six Million Dollar Concierge’ – Patentology Contributes to IP Watchdog

02 February 2011

Mixed Report Card Issued on Australian Research

In 2010, the Australian Research Council (ARC) conducted the first full evaluation of the Excellence in Research for Australia (ERA) initiative.  Its report, released on 31 January 2010, provides the outcomes of the ERA 2010 evaluations, which applies to research undertaken between 1 January 2003 and 31 December 2008.

The Report indicates that in many fields of research, Australia’s universities perform at, or above, world standards.  (The Report makes the point that ‘world standard’ is a defined indicator of quality and not, for example, a geographical or ‘average’ performance measure.)  Particular strengths include the mathematical, physical and earth sciences, areas of agricultural and veterinary sciences, areas of engineering (especially aerospace, environmental, manufacturing and resources), biotechnology, microtechnology (especially communications and nanotechnology), areas of medical and health sciences, history and archaeology.

Specific fields of research in which four or more institutions were rated as being ‘well above world standards’ include cardiovascular medicine, oncology, immunology, astronomical and space sciences, quantum physics and historical studies.

Areas of relative weakness include education, economics, commerce, social studies, legal studies, creative arts and writing, language, communication and culture.