23 November 2013

Australian Appeals Court Hears ‘Business Method’ Patent Case

Yes, this is literally a 'stock photo'!Last Monday, 18 November 2013, I attended the Full Federal Court hearing of Research Affiliates’ appeal against the decision of a single judge of the court earlier this year to uphold the Australian Patent Office’s rejection of its patent applications relating to the construction and use of passive portfolios and indexes for securities trading.

The parties to the hearing were (of course) Research Affiliates, LLC and the Commissioner of Patents.  The three judges on the Full Bench were Justices Bennett (best known for presiding over the Australia Apple v Samsung litigation), Kenny and Nicholas.

The sole issue in the appeal is whether or not Research Affiliates’ patent claims, directed variously to computer-implemented methods and computer systems for ‘generating an index’, define patent-eligible subject matter (i.e. a ‘manner of manufacture’ under Australian law).  It has not been contended by the Commissioner of Patents that the claims lack novelty or an inventive step, or that the patent specification is deficient in any other way.

The patent-eligibility of so-called ‘business methods’ – including, but not limited to, processes implemented with the aid of computer software – is a contentious issue in many jurisdictions, including Australia.  There is arguably an emerging consensus that methods of organising human affairs which involve only the manipulation of legal or financial instruments, without technological assistance, are not generally eligible for patent protection, even in those countries with a liberal approach to patentable subject matter.  However, when technical means are employed, typically in the form of a programmed computer, in the implementation of an otherwise unpatentable process, the position remains unresolved. 

The Full Court will need to tackle this issue head-on in the Research Affiliates case.

18 November 2013

What’s Up Down Under With Apple and Samsung?

Smart devicesLast week, the Federal Court of Australia quietly published a further interim judgment in the ongoing litigation between Apple and Samsung.  Samsung Electronics Co. Limited v Apple Inc. [2013] FCA 1142 was officially decided in 4 November 2013, however publication was delayed to give the parties an opportunity to review the judgment and request that any confidential information be redacted. 

The new judgment is, I am afraid, not very exciting reading, particularly for the lay-person.  It is a decision on the rather dry subject of whether or not Samsung should be allowed to submit further evidence relating to ongoing negotiations conducted with Apple since the commencement of the litigation.  Any content in the judgment which would have made for interesting reading – such as, for example, the terms of proposed licensing arrangements between Apple and Samsung – has been blacked out.

The answer that the court gave to Samsung, incidentally, is ‘no’.  Samsung has already filed an application for leave to appeal the decision, and a hearing on this application will take place on 21 November 2013.

However, this seems as good an opportunity as any to review the history of the Australian Apple/Samsung litigation, and provide an update on its current status. 

As matters stand right now, it does not seem likely that any judgments will be handed down on substantive issues, such as whether Samsung or Apple infringe any of each other’s patents, or whether those patents are valid, until at least the first half of 2014.  In one of the ongoing matters (to which the latest interim decision relates) there are hearing dates set down for a further 41 days, extending into April next year.  Any judgments that are issued will almost certainly be appealed by at least one of the parties, meaning that any final determination in any of the cases is unlikely until at least the second half of 2014, and possibly not until 2015.

It is worth bearing in mind that all of these cases relate to products which are already superseded.  Indeed, some of the allegedly infringing products – such as Samsung’s original Galaxy Tab 10.1, and Apple’s iPhone 3GS – are now two or more generations old.  And, contrary to what you may read in some sections of the media, no ruling in these cases will extend to newer products merely because they appear to include similar features.  A patentee always bears the burden of proving that infringement is occurring.  A court will not ‘infer’ infringement based on a different product, no matter how similar the two may appear.

Which leaves me wondering still, as I have done before, what exactly is the purpose of all this litigation – in Australia and elsewhere – and why do Apple and Samsung seem unable to reach any kind of workable settlement?

16 November 2013

Global Patent Prosecution Highway Pilot to Commence in 2014

HighwayOn 1 November 2013 IP Australia, along with the patent offices of twelve other countries, announced the commencement of a Global Patent Prosecution Highway (GPPH) pilot.  This program will simplify the process for accelerating examination in any of the 13 participating offices based upon a favourable examination outcome in any other one of the offices.

The GPPH will commence operation on 6 January 2014.

The Patent Prosecution Highway (PPH) pilot program was originally established to enable an applicant whose claims were found to be allowable by the first patent office in which an application was filed – the ‘Office of First Filing’ (OFF) – to have examination of a corresponding application accelerated in the ‘Office of Second Filing’ (OSF).  In exchange for examining the application out-of-turn, the OSF has access to the results of search and examination in the OFF.

In effect, the PPH was conceived as a mechanism to encourage work sharing among patent offices with sufficient faith in the quality of one another’s work.  Thirty patent offices now participate, to varying degrees, in a range of bilateral PPH arrangements.  Of these, IP Australia is one of the less-involved authorities, having ongoing PPH agreements only with the USPTO.  However, that will change dramatically once the GPPH pilot is underway, giving Australian applicants access to accelerated examination in the US, Japan, Norway, Portugal, Spain, Russia, Finland, Denmark, Canada, the UK, Korea and the Nordic Patent Institute.

10 November 2013

Lost In Transition – Opposition, Appeal and Amendment

Suntory Holdings Ltd v Commissioner of Patents [2013] FCA 999 (2 October 2013)

Thumbs UpThe Federal Court of Australia has, for the first time, considered the effect of reforms to the mechanisms for amending a patent application during appeals from decisions of the Commissioner of Patents which where introduced earlier this year by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  Unfortunately for patent applicant Suntory Holdings Ltd, the changes in the law mean that its previous efforts to amend its application through the Patent Office have been in vain, and it will now have to start again by applying to the court.

Ironically, the reforms were intended to ensure that application to amend in the course of an appeal could be handled more efficiently.  This should be the case in the future, however Suntory has fallen victim to bad timing, and been caught out by the transitional provisions of the Raising the Bar Act.

The same transitional provisions bit Euroceltique S.A. earlier this year, although in that case the patent applicant did not elect to appeal the Commissioner’s decision to the Federal Court.

I have to say, though, that it is not entirely clear to me what Suntory was hoping to achieve by the requested amendments.  It is even less clear why it appealed the Commissioner’s refusal of its application to amend.  I am not complaining, however, since early judicial consideration of the Raising the Bar reforms is helpful to all of us in confirming that they operate as intended!

05 November 2013

It’s ‘Business as Usual’ on Software Claims at IP Australia

Keep Calm and Carry OnAnybody who thought that the success of RPL Central in its appeal against revocation of its innovation patent by IP Australia would change current Patent Office practice will, I am afraid, be sorely disappointed.

As most readers will be aware, there have been two decisions by the Federal Court of Australia this year in relation to the patent-eligibility of computer-implemented inventions, both resulting from appeals against rejection by the Commissioner of Patents.  The first related to two rejected patent applications by Research Affiliates, LLC, in which the rejection was upheld by Justice Emmett.  The second, as noted above, was the successful RPL Central appeal decided by Justice Middleton.

Research Affiliates is seeking to appeal its loss to a Full Bench of the Federal Court, while the Commissioner has applied for leave to appeal her loss in the RPL Central case.

This leaves applicants – and the Patent Office – in a difficult position.  The two Federal Court decisions are equally binding on patent examiners.  And, although appeals are pending in both cases, they nonetheless currently reflect the state of the law in Australia.  Arguably, the correct approach in this situation would be to determine, on a case-by-case basis, whether claims under consideration are ‘more like’ those in the Research Affiliates applications, or those in the RPL Central patent, and either reject or accept accordingly.

I have found, however, through recent experience, that this is not what is happening.  In practice, IP Australia’s current approach is to continue rejecting applications on the basis of the Research Affiliates decision, effectively ignoring the authority of RPL Central.

02 November 2013

The Days of Fax and Mail are Numbered at IP Australia

No faxesIn an announcement published on 31 October 2013, IP Australia has indicated that within a few months it will no longer be accepting communications via email, fax, or via hard copy to the current Australia Post Lodgement Points.  Nor will it be accepting over-the-phone payments.

Specifically, the ‘assist’ email (i.e. ‘assist@ipaustralia.gov.au’) and phone payment service will cease in around February 2014, while fax and Australia Post Lodgement Points will no longer be available after a date in around June 2014.

IP Australia considers that these services and communications channels will no longer be required once the eServices platform is fully operational – which is currently scheduled to be by the end of this year.  Additionally, IP Australia is promising that it is ‘implementing a number of supporting infrastructure changes which will support continued access to the eServices platform even during planned maintenance and unscheduled outages.’