07 June 2014

What Materials Can I File With My Patent Application?

Burning CDIt is widely understood that the kinds of materials that may make up a patent application are quite strictly limited.  However, comments by the judge in a recent decision of the Federal Court of Australia suggest that IP Australia may be obliged to make reasonable efforts to access, review and take into account any materials filed by an applicant is support of a patent application or, at the very least, expressly advise the applicant if unable to do so.

When applying for a patent in Australia, it is necessary to file a specification comprising a description, claims and (where necessary or helpful to explain the invention) accompanying drawings.  Regulation 3.1(1) also requires that an abstract be filed.  Schedule 3 of the Patents Regulations 1991 sets out the general requirements for the format of these documents.

Beyond the basic application documents, the Patents Act 1990, the Regulations, and IP Australia’s Electronic Business Rules, appear to leave little scope for filing of additional materials to support a patent application.  It is possible to include such things as engineering designs, example program code for software-based systems, and other implementation details of prototypes or fully-functional implementations of an invention.  However, these are generally provided simply as annexures to the patent specification, in the form of text and/or drawings which are subject to the usual format rules as set out in Schedule 3 of the Regulations.

Gene sequence listings, which may be required to provide full disclosure of certain inventions in the field of biotechnology, are a special case, because of their sheer size.  They may therefore be filed electronically, as separate files structured in accordance with the standards specified in Annex C of the Administrative Instructions of the PCT.

Finally, microbiological materials that are not otherwise available, and which are necessary to put the invention disclosed in the specification into effect, must be deposited with an approved depository institution (see section 6 and section 41 of the Patents Act).

No Additional Content?

More generally, if an applicant wishes to file additional material, not readily representable as text and drawings – such as a video presentation, or executable software demonstrating the invention – there is no express provision enabling them to do so, or requiring the patent examiner to take such material into account.

And this is not a position unique to Australia.  There are no provisions for filing additional materials with International Applications under the Patent Cooperation Treaty (PCT) or, to my knowledge, in any other national or regional jurisdiction.  (The Korean Intellectual Property Office accepts representations of industrial designs in various 3D model formats, as well as via animations, but has no similar provisions for patent applications.)

I was therefore somewhat surprised to see that a Federal Court judge has recently suggested that the Australian Patent Office is under an obligation to make some effort to open, review, and take into account material submitted in the form of executable or interactive software files.  This occurred in the case of Lisica v Commissioner of Patents[2014] FCA 433 (keen readers will note that I have previously reported on another aspect of this decision, in ‘Why Do I Need a Patent Attorney?’).

The ‘SCM Files’

It seems that Mr Lisica had submitted his application either partly, or completely, on a CD-ROM, as he was perfectly entitled to do under IP Australia’s Electronic Business Rules (note, however, that IP Australia does not consider USB devices to be an ‘approved form’ for submission of physical media).  Included on the disc were a number of files having a ‘.scm’ file extension (identified in the court’s judgment as ‘the SCM files’).

Presumably – and not unreasonably, in my view – nobody in the Patent Office considered that they were under any obligation to work out what was in the SCM files, or how to open them.  However, the judge did not agree, and he told them so (at [14]-[17]):

…a central feature of the applicant’s submissions in court was the failure of the examiner, and later of the delegate, to open four of the six files on the compact disc which constituted the applicant’s patent application. They opened only the files which were in “Word” format, from which they secured access to the terms of the specification and claims. That would have been sufficient for the delegate to have made a decision under s 40(3), but it is by no means obvious that he would have derived no assistance from the unopened files in relation to manner of manufacture. That is particularly so since, according to the applicant, the unopened files were incorporated by reference in the specification and contained working examples of the invention, thereby satisfying the requirement under s 40(2)(a) of the Patents Act that the specification describe the best method known to the applicant of performing the invention.



It may have required a modicum of ingenuity to open the SCM files – in a demonstration in court, the applicant himself did so. But the troubling aspect of the omission referred to above is not whether it was reasonable of the applicant to have expected the examiner and the delegate to open the files, but that the applicant was never informed of the difficulty which they were, apparently, experiencing, nor invited to remedy it. …

I do not suggest that the opening of the SCM files would necessarily have made a difference to the way the delegate decided the case. But the applicant was, in my view, entitled to have the whole of his application considered.

Unreasonable, Inconsistent and Unprincipled

I have to say that I disagree completely with the views expressed by the judge in this case.  I can think of at least three reasons why the kinds of materials that can be submitted as part of a patent application should be strictly limited, and the onus should lie wholly with the applicant, and not the Patent Office, to observe the limitations.

Firstly, it is plainly not reasonable to expect employees within IP Australia to endeavour to identify, open, and consider materials submitted in any arbitrary electronic format.  There are dozens of different hardware and operating system platforms, each of which is capable of running thousands of applications, most of which are able to generate a variety of files in different formats.  Even a particular file extension, such as ‘.scm’ ,might not be especially enlightening.  Assuming this is a PC file, it could be a script file for the GIMP image editing application, or an animated screen capture file from the Screen Cam application.  In this case, however, the ‘PC’ assumption itself would be wrong – Mr Lisica’s patent specification reveals that the files contain code in the Scheme programming language, associated with the Apple Mac-based ‘Impromptu Integrated Development Environment’.  (Impromptu, according to the product’s web site, is ‘an OSX programming language and environment for composers, sound artists, VJ's and graphic artists with an interest in live or interactive programming.’)

Secondly, accepting content of arbitrary nature and format as part of a patent specification, merely because the applicant incorporates that content by reference, would place Australia at odds with the laws and practices of all other jurisdictions.  An Australian application reliant on, say, a 3D engineering model to provide full disclosure of the invention would not provide a valid basis for a priority claim in any other country, or under the PCT.

Thirdly, such a practice is a complete violation of the ‘public notice’ principle of the patent system.  Words and line drawings may have their limitations, but they are the most widely-portable forms of expression that we have (language issues notwithstanding).  Even if the Patent Office managed to open Mr Lisica’s SCM files, this would not enable an interested member of the public to do so, especially if they do not have access to the correct hardware and OS platform (in this case, an Apple Mac running OSX).  And if this is a problem now, how much more so might it be later in the term of any granted patent, i.e. in ten or twenty years’ time?

Conclusion – Ludicrous!

The suggestion that patent applicants should be permitted to submit any form of content they desire is ludicrous.  It demonstrates that the judge (Justice Jessup, if you have not pulled up the judgment yet) has very little idea of the scope of the issue at hand.  I generally consider the Australian Federal Court judges who handle patent cases to be quite technically literate, but perhaps we have an exception here?

Furthermore, I do not see that the suggestion is consistent with the Australian Patents Act and Regulations, which provide only for the filing of a specification (including claims), drawings, an abstract and (where applicable) satisfaction of the micro-organism deposit requirements.  Anything more than this is, it seems to me, entirely at the discretion of the Patent Office.

Unfortunately, we now have Federal Court precedent that future applicants may use to compel the Patent Office to consider almost any additional digital content referenced in an accompanying patent specification.  Hopefully, most will recognise that this is probably not a wise idea, for at least the three reasons noted above.

As a final note, the judge’s comments in the last paragraph of the decision imply that part of the reason for his criticism of IP Australia was to dissuade the Commissioner of Patents from seeking an award of costs against Mr Lisica – an individual, unrepresented litigant.  As noble as this may be, I do not think that it is a good enough reason in this case!

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