25 May 2014

‘Why Do I Need a Patent Attorney?’

‘I hesitate not to pronounce, that every man who is his own lawyer, has a fool for a client’ – an unknown lawyer, early 19th century.

InventionWhile the above is often regarded, cynically, as a self-serving proverb promulgated by the legal profession, for better or worse it is almost always true.  There may be no other profession for which lay people are more inclined to persuade themselves that they do not require the services of an expert with years of training and experience behind them.  After all, virtually nobody would dispute the same sentiment if the word ‘lawyer’ were replaced with ‘surgeon’, ‘engineer’, ‘architect’ or ‘pilot’!

And, although patent attorneys (in Australia, at least) are mostly not also lawyers, we are, quite rightly, generally regarded as providers of specialist legal services.  One consequence of this is that there are people out there who wish to avoid paying our fees, and have a go at representing themselves before the Patent Office, and even in the Federal Court.

One such person is Mr Svetko Lisica, who recently lost his appeal against the rejection of his patent application no. 2012200955, somewhat grandly entitled ‘Universal Intonation System For Music, The Absolute and The Beyond’: Lisica v Commissioner of Patents [2014] FCA 433.

Sadly, Mr Lisica had taken it upon himself to prepare and file his own provisional patent application (no. 2011903465), an international application under the Patent Cooperation Treaty (no. PCT/AU2011/000257), and the Australian patent application which eventually became the subject of the Federal Court appeal. 

I say ‘sadly’ because, although Mr Lisica avoided payment of any patent attorney fees, I estimate that the process he has been through has cost him at least A$8500-A$9000 in Patent Office and Court fees.  This does not take into account any incidental expenses he may have had, or the value of his time, energy and stress in taking on the system.  And he has nothing of any value to show for this exhausting experience.

To make matters worse, it seems possible that Mr Lisica might have had something potentially patentable.  While it is difficult to discern from his various patent specifications, which are largely couched in theoretical terms more arcane than those employed by most lawyers and patent attorneys, there are indications that his musical theories may have practical application in the form of new instruments and computer software for assisting in the creation of musical compositions.  There is, however, no sufficiently clear disclosure of any such practical, and potentially patentable, applications of the theoretical concepts.

18 May 2014

Apple/Google End ‘Thermonuclear’ War – But What of Samsung?

Nuclear - Wrong WayApple and Google have announced in a joint statement that they have ‘agreed to dismiss all the current lawsuits that exist directly between the two companies’ and ‘to work together in some areas of patent reform.’

The statement goes on to say that ‘[t]he agreement does not include a cross license.’

The settlement is symbolically significant.  It has been widely accepted, since the commencement of Apple’s various patent lawsuits against Android-based handset makers back in 2010, that the ‘true’ target of all this litigation was Google, as the provider of the Android operating system.  This was confirmed in Walter Isaacson’s authorised biography of Steve Jobs, which revealed the late Apple CEO’s strong animosity towards Google, including his infamous vow to ‘go thermonuclear war’ to ‘destroy Android’.

At the time, however, Apple faced a challenge in striking directly against Google, which did not actually manufacture and sell any Android-based products of its own.  Rather than pursue some complex (and potentially unsuccessful) indirect infringement theory against Google itself, Apple chose to attack Android by suing manufacturers, such as HTC, Motorola and Samsung, which it saw as responsible for direct infringement of its patents.

Now, more than four years after Apple’s ‘first strike’ against Taiwanese smartphone maker HTC, it is very clear that Android has not been, and will not be, ‘destroyed’ by patent litigation.  On the contrary, in Q1 2014, 81% of smartphones shipped were Android-based, while just 16% ran Apple’s iOS.  Tit-for-tat lawsuits have ultimately resulted in little more than a growing series of stalemates, the most recent of which was a ruling in the dispute between Apple and Samsung in California earlier this month which is widely regarded as inconsequential to both parties.

17 May 2014

Government Eviscerates Australian Science & Innovation Funding

Piggy BankLast Tuesday evening, Treasurer Joe Hockey handed down the first budget to be delivered by the current Australian Government.  We were warned that it would be tough, and that the Government needed to find billions of dollars in savings in order to bring the budget back into surplus over the next few years.  But I had hoped, nonetheless, that it would at least ensure the country’s ongoing investment in key science, innovation, technology and commercialisation programs, to build the expertise, skills and industries that will be most important globally throughout the coming years and decades.

Unfortunately, it seems that one of the Federal Government’s strategies in its 2014 budget is to mortgage the country’s long-term future to produce a better balance sheet in the near-term.

In my view, the Liberal/National Party Coalition Government is selling out Australian science, technology, innovation and creativity.  We will surely come to regret the loss of opportunities, over the coming years, for this country to develop and grow intellectual capital and technological skills.

The LNP government has cut more than A$450 million from key science agencies, including:
  1. A$111.4 million from the CSIRO;
  2. A$74.9 million from the Australian Research Council;
  3. A$80 million from the Cooperative Research Centres program;
  4. A$7.8 million from the Australian Institute of Marine Science;
  5. A$120 million from the Defence Science and Technology Organisation;
  6. A$27.6 million from the Australian Nuclear Science and Technology Organisation; and
  7. A$36 million from Geoscience Australia.
What good news there is for science and innovation in the budget – e.g. a new Medical Research Future Fund, and an Entrepreneurs’ Infrastructure Programme – is more than offset by cuts elsewhere.  What this budget lacks is any kind of coherent long-term vision for the kind of capabilities, industries, skills, knowledge – the intellectual capital and infrastructure – that will make up the Australian economy in five years and beyond, once the painful short-term cuts to expenditure have done their work.

11 May 2014

Oracle v Google: Copyright in APIs Explained for Non-Programmers

Android InvadersOn 9 May 2014, the United States Court of Appeals for the Federal Circuit (CAFC) issued its opinion in Oracle America, Inc v Google Inc. [PDF 342kB], in which it overturned the earlier ruling by District Judge William Alsup that Oracle's Java API declaring code was not protected by copyright.  I will explain what that means, for non-programmers, below.  But the significant point of this judgment is that Google’s Android operating system – now by far the most popular smartphone operating system globally – has appropriated elements of Oracle’s Java programming language environment that are subject to copyright protection.  Potentially, therefore, Google may be found to to have infringed copyrights owned by Oracle.

This is a blog about patents and innovation, and I do not usually write about copyright.  But the Oracle/Google litigation started out as a combined patent and copyright matter, and one of the most popular early articles on this blog was about this particular dispute.  The patent issues have since fallen by the wayside, but I have continued to follow the fortunes of this case out of personal interest.

Although the decision in this appeal is technically a loss for Google, it is far from being the end of the story.  The case is now going to return to the United States District Court for the Northern District of California for a further trial, to decide whether Google’s use of Oracle’s programming code is covered by a ‘fair use’ defence.  If so, then Google will be off the hook.  If not, then it will probably owe Oracle an absolute shed-load of cash in damages!

I want to try to explain what this case is all about, and why it is really important, in the simplest terms possible, assuming that many of my readers are not programmers.

04 May 2014

Patent Attorney to Sleep ‘Rough’ to Help the Homeless

Vinies CEO Sleepout LogoMany readers of this blog will know – or at least know of – Karen Sinclair.  Karen is one of my colleagues at Watermark – Intellectual Asset Management.  More importantly, for present purposes, she is a Principal and Chairman (her preferred title) of the firm.

Hopefully, many readers will also be familiar with the Vinnies CEO Sleepout.  This annual event is run by the St Vincent de Paul Society in order to raise awareness, and funds for Vinnies to support people experiencing homelessness as part of a larger Escape from Poverty campaign.

Through the CEO Sleepout, business leaders help to raise money towards achieving Vinnies’ goal, which is not just to service the homeless, but to bring about an end to homelessness.  As their website states, the discomfort of sleeping on the streets is a fragment of the larger reality that Vinnies hopes to impart upon influential leaders of the community.

On Thursday 19 June 2014 Karen is hoping (really!) to be spending the night outside, exposed to the elements, along with many other business leaders around Australia.  For those readers who may be unfamiliar with the climate here in Melbourne, Australia, the average overnight minimum temperature in June is 6.9 Celsius (44 F).  There is, statistically speaking, around a 7% chance that the temperature will drop below two degrees Celsius (36 F), and about a 50% chance that it will rain!

In order to get there, Karen needs to reach – and hopefully exceed – her fundraising target of A$5000.


Some of you will know Karen through her contributions to teaching aspiring members of the patent attorney profession over a number of years.  Others will know her through her involvement with the Licensing Executives Society (LES), where she is currently a vice-chair of the Asia Pacific Committee, and its local chapter LESANZ.  Still others will know Karen from her recently-concluded tenure on the Professional Standards Board for Patent and Trade Marks Attorneys.  Or perhaps you have worked with – or against – her on some IP-related matter.

In any event, if you do know Karen it is likely that you either want to do what you can to support her, or what you can to ensure that she spends a night out in the cold – or, possibly, both!  And even if you do not know Karen, Vinnies is a great cause.  Also, if you are an Australian taxpayer, all donations above A$2 are tax-deductible.

So, do what you can to send a patent attorney out to spend a night in the cold!

Taming the Trolls – Awarding Attorney Fees in Patent Cases

Lawyer and MoneyThe big patent-related news in the US this past week has been the Supreme Court’s dual decisions in Octane Fitness, LLC v. ICON Health & Fitness, Inc. [PDF, 112kB] and Highmark, Inc. v. Allcare Health Management System, Inc. [PDF, 80kB], in which the court confirmed that district courts have discretion to determine whether a case is ‘exceptional’, such that attorney fees may be awarded against a losing party under section 285 of the US patent code. 

Furthermore, the Supreme Court has ruled that the the role of an appeals court (i.e. the US Court of Appeals for the Federal Circuit), in reviewing a decision of a district court to award attorney fees, is to determine whether or not the lower court has abused its discretion.

These decisions of the Supreme Court overturn a standard set by the Federal Court in 2005, which started from a presumption that patent cases are litigated in good faith, and then required that a party show, by ‘clear and convincing evidence’ either that ‘there has been some material inappropriate conduct’ or that the litigation is both ‘brought in subjective bad faith’ and ‘objectively baseless’ before an award of attorney fees can be made.

By coincidence, the Federal Court of Australia has also issued a decision in the past few days relating to a ‘special case’ of fee awards which is provided for under the Australian Patents Act 1990.  Specifically, in AstraZeneca AB v Alphapharm Pty Ltd [2014] FCA 419, the patentee has been awarded a higher level of attorney fees under section 19 of the Patents Act, which relates to Certificates of Validity.