27 May 2013

When (and Where) is a Claim ‘Preamble’ Limiting?

ConstructionA reader of this blog recently asked me about the ‘preamble’ to a patent claim, and in particular whether statements made in the preamble are limiting under Australian law, and whether the position is different under US law.  In other words, can a claim with the same wording nonetheless mean different things in different jurisdictions?

The preamble to a claim is the opening part which generally sets the context for the main features of the claimed invention.  These main features could be the interrelated components of a claim directed to some apparatus, or the series of steps making up a claimed method or process.

The reader in question specifically asked me about the CSIRO WLAN claim, which I analysed in detail about a year ago.  I am only going to talk about the preamble here, so if you are interested in the remainder of the claim you will have to go back and read the earlier article.  That claim opens as follows:

A method for transmitting data in a confined multipath transmission environment of radio frequencies, said data being provided by an input data channel coupled to transmission signal processing means in turn coupled to antenna means, said method comprising the steps of…

This tells us right away that the claim is directed to a method, and we therefore expect that it will define a sequence of steps which together make up the method.  Certainly those steps will be essential to the claimed invention unless there is some very clear indication to the contrary.

But does it make any difference to the scope of the claim that the method is said to be ‘for transmitting data in a confined multipath transmission environment of radio frequencies, said data being provided by an input data channel coupled to transmission signal processing means in turn coupled to antenna means’?  And is the answer to this question likely to depend upon the jurisdiction in which the claim is being interpreted?

25 May 2013

The Hazards of ‘Fast-Tracked’ Patents

TrackShould patent offices issue patents within 18 months from their original date of filing?

The European Patent Office (EPO) recently declined to grant a patent, even though examination had identified no grounds of objection, because it was too soon to be confident that the patent would be valid.  The applicant appealed, claiming that there is no basis in the European Patent Convention (EPC) for the Office to delay the grant of a patent which is otherwise in-order.  The Board of Appeal upheld the decision, finding that the EPO is under no obligation to grant a patent until it is satisfied that a complete examination has been conducted.

I am unaware of any other patent office having a policy of not granting patents within 18 months of the original filing (i.e priority) date.  The Australian Patent Office will do so, and quite regularly examines and certifies innovation patents within this period.  The US Patent and Trademark Office (USPTO) will also do so, as I can attest from recent experience.

There is, however, a real question as to whether other patent offices should be following the EPO’s lead.

19 May 2013

There Ain’t No Such Thing as a Free Video Codec

Motion picturesGoogle, Inc recently achieved something that perhaps no other company or organisation on the planet could have done – it secured an agreement from most of the major corporate owners of patents relating to digital video coding standards, which will enable developers and users to access digital video on the web without payment of patent royalties.

At least, this is what will happen if the World Wide Web Consortium (W3C) takes up the opportunity that Google has created.  However, Google’s recent publication of the proposed terms of a royalty-free cross-licence for implementers of it’s digital video technology has drawn predictable criticism from a number of sources, including Open Source Initiative President Simon Phipps (‘proposal closes door on software freedom’) and FOSS Patents blogger Florian Mueller (effectively accusing Google of hypocrisy and disingenuousness).

It is easy to be cynical about the motivations of a company as large and ubiquitous as Google.  But it is worth having a closer look at exactly what Google has achieved here, regardless of its level of self-interest.  In my opinion, the deal that Google has struck is a significant step forward for royalty-free and open standards on the internet.  And while it is never going to satisfy those individuals and organisations at the more radical end of the free software and/or anti-patent movements, as a practical matter the deal will give the vast majority of internet users an assurance that there will be an open source and royalty-free video standard available for use on the World Wide Web.

12 May 2013

Raising the Bar – New Life for Patents of Addition?

AdditionIf you have never heard of a ‘patent of addition’, I am sure that you are not alone.  Even those of us who practice in a jurisdiction in which these beasts are rumoured to exist have rarely, if ever, actually seen one.  It is not even easy to track one down, or to find out how many of them there may be out there in the wild, since IP Australia’s AusPat database does not provide a facility to search specifically for applications and patents of addition.

However, readers experienced with US patent law and practice may already be familiar with the basic rationale behind the patent of addition, which has much in common with what is known as ‘non-statutory obviousness-type double patenting.’  The principle applied in both cases is that an applicant can be permitted to obtain a second patent for a new, but obvious, variation of an invention already claimed in an earlier patent, but that the second patent may not outlive the first.  In this way, the patentee’s rights are insured, but not improperly extended.

It is possible that one reason why patents of addition have been uncommon in Australia is because the law relating to inventive step has been so weak that they have generally been unnecessary (see my recent article on Australia’s ‘four laws of inventive step’).

However, with the commencement of the Raising the Bar reforms in Australia on 15 April 2013, perhaps the patent of addition will have a new lease on life.  After a decade in the Australian patent profession, I have yet to set eyes on an actual application for a patent of addition, but I have been involved with a number of US applications in which obviousness-type double patenting objections have been raised.

If there is anything to this theory, applicants and their advisors in Australia will want to make sure that they are sufficiently familiar with the patent of addition to identify when it might be useful.

09 May 2013

New Zealand Resolves ‘Software Patent’ Impasse

Computer gearsIf you read what has been written in the media today (e.g. in The New Zealand Herald, Forbes, The Register, and ZDNet, to name just a few who have jumped on the bandwagon) you might think that New Zealand has just outlawed ‘software patents.’

If so, then you would probably be, strictly speaking, mistaken.  As I shall explain, it is quite likely that a wide variety of computer-implemented inventions will continue to be patentable in New Zealand, assuming the Patents Bill passes in the proposed form.  However, it is also true that many of the types of ‘software patents’ which cause the greatest concern to advocates of free and open source software (FOSS) will be excluded under the proposed provisions, just as they are in Europe.

However, it appears that the amendment put forward by aptly-named Commerce Minister Craig Foss in a new Supplementary Order Paper (SOP) is the result of an extended process of consultation behind the scenes, which has resulted in it receiving broad-based support across the New Zealand IT industry, and political opponents of the previous version of the provision (including Labour MP Clare Curran, who rather hyperbolically refers to the addition of what amounts to a clarification as ‘a humiliating back down’ by the Government).

As I have explained previously, the New Zealand Government had adopted a ‘European-style’ approach to software patents, excluding computer programs from patentability, but ‘only to the extent that a patent or an application relates to a computer program as such’.  Those two little words – ‘as such’ – which also appear in the European Patent Convention, and corresponding national laws, were the cause of great consternation among opponents of software patents, such as the New Zealand Open Source Society (NZOSS) accusing Minister Foss of throwing Kiwi software developers ‘under a bus’ (yes, hyperbole does seem to be par for the course over in New Zealand).

But even though the two evil words remain in the latest SOP, NZOSS is now back on speaking terms with Mr Foss, proclaiming itself ‘gratified by the government's willingness to work with the software industry to reach this stage’.

More importantly, the fact that the New Zealand Government has managed to find an acceptable compromise means that the Patents Bill should now be able to proceed through the remainder of its passage into law.  I can only agree wholeheartedly with NZOSS that this update to the creaky old Patents Act 1953 is long overdue.

06 May 2013

Australia’s Four Laws of Inventive Step

StepsAs I reported in a recent article, the Australian Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came full effect on Monday, 15 April 2013.  Among the many reforms introduced by the Raising the Bar Act was a change to the procedure for assessing inventive step, which raises standards to bring Australia’s laws more into line with major trading partners such as the US and Europe.

Of course, it would be unjust to make the changes retrospective – there could be many patents previously granted, and applications previously filed, which would have been rendered invalid overnight.  So the new laws apply only to those applications and patents in which a request for examination is filed on or after 15 April 2013. 

My previous article on this topic included some astonishing statistics on the number of new applications filed in the weeks leading up to commencement of the Raising the Bar reforms.  I have since heard that in the first two weeks of April, around 16,000 requests for examination were filed.  To put this in perspective, in 2012 IP Australia granted a total of 17,724 patents, so those two weeks’ of requests alone added the better part of a year’s worth of examination work to the pipeline.

If you have only a casual interest in Australian patent law, or you have not been following the subject for very long, you might think that there are now two different standards of inventive step to keep in mind when considering the validity of Australian patents and applications.  However, you would be wrong.  In fact, right now there are live Australian applications and patents variously subject to no fewer than four different standards of inventive step.

05 May 2013

IP Australia Delivers Mixed Report Card on Australian IP

Australian Intellectual Property Report 2013Last month IP Australia launched the Australian Intellectual Property Report 2013.

This report contains an attractively-packaged compilation of data and information about the IP system in Australia, and how the country measures up internationally. 

While the report includes information on patents, registered designs, trade marks and plant breeder’s rights, naturally my primary interest is in the statistics on Australia’s performance in relation to patents and technology innovation.

And what IP Australia’s report has to tell us about this is not exactly discouraging, but will hardly set the world on fire.  ‘Revelations’ in the report include:
  1. Australians are filing more patent applications than ever before, both locally and overseas;
  2. however, increasing patenting activity is not leading to any significant change in Australia’s ‘IP balance of trade’;
  3. foreign nationals file the vast majority of Australian standard patent applications, and receive most of the patents granted here; and
  4. it appears that the big challenge for Australian companies lies in capturing and extracting value from intangible assets, currently languishing at only 4% of tangible asset value (compared with 91% in the US).
IP Australia promises that this will be the first in an ongoing series of reports and updates, and it is well worth a read..