15 January 2021

How Up-to-Date is IP Australia’s AusPat Data?

SearchingOne of the great resources provided by IP Australia is its AusPat online patent data service.  AusPat enables users to search for Australian patents and applications using a range of options and search fields, view numerous data items for each application, and access most incoming and outgoing correspondence via eDossier.  In my view, it is one of the best available systems for online access of national patent data.  For example, in comparison with the USPTO’s services, AusPat effectively combines the functionality of the US Patent Full-Text Databases, the Public Patent Application Information Retrieval (PAIR) system, and the Patent Assignment Search system, into a single convenient and powerful interface.  And while Australian patent information ultimately finds its way into various other public and proprietary databases, AusPat is the first place that any new filings, changes, or events will be reflected.  It is, therefore, the go-to source for the most up-to-date data on all Australian patents and applications.  I rely heavily upon AusPat for much of the analysis I present on this blog, including the regular updates I have been providing over the past few months on patent filings during the COVID-19 pandemic.

One thing that other users may be wondering is: exactly how up-to-date is the data available in AusPat?  You might think that with almost all filing and other transactions now being conducted electronically, the consequences of any new applicant actions would be reflected immediately in AusPat.  However, that is not quite correct.

12 January 2021

While One IPH Firm Sues Former Partners, 20% of Patent Attorneys Jump Ship from Another

Moving boxesOn 14 December 2020, Pizzeys Patent and Trade Mark Attorneys – a firm in the stable owned by listed company IPH Limited (ASX:IPH) – filed suit in the Federal Court of Australia against former Pizzeys principals William Bennett and Martin Richardson, along with the new firm they have established, RnB IP (collectively ‘RnB’).  The lawsuit alleges that Bennett and Richardson lured lucrative US law firm clients away from Pizzeys, in breach of non-compete, non-dealing, and/or non-solicitation restraints that were included in their employment contracts subsequent to the acquisition of Pizzeys by IPH.

This lawsuit has been a long time coming, after Pizzeys was awarded preliminary discovery back in December 2019.  The documents required to be produced by William Bennett following that decision included communications with Martin Richardson, marketing plans, and communications with prospective clients, relating to the establishment of RnB IP.  I believe that discovery was provided early in 2020, and it is unclear why it has taken Pizzeys so long to decide to commence proceedings against RnB.  Perhaps they would blame the pandemic?

Meanwhile, elsewhere in the IPH group, there appears to have been a recent exodus of patent attorneys from Griffith Hack.  In December 2020, there were 48 patent attorneys recorded on the Register maintained by the Trans-Tasman IP Attorneys Board (TTIPAB) as being employed by Griffith Hack, but only 37 of these were still listed on the firm’s web site.  I am aware that at least one of these was a departure earlier in 2020, but my understanding is that most are recent resignations where staff are currently on ‘gardening leave’, or otherwise temporarily restrained from commencing new employment (and thus updating their registration details). 

These numbers represent a loss of about 20% of registered patent attorneys from Griffith Hack over a short period of time, suggesting a significant level of dissatisfaction among the firm’s professional staff.  Whether this dates back to life under the ownership of Xenith IP (which acquired Griffith Hack in 2017), or is a consequence of the more recent management of IPH (which acquired Xenith in 2019) is unclear.

22 December 2020

DABUS Down Under – Can an AI ‘Communicate’ an Invention to a Human Applicant?

Xmas robotBack in September I reported that an application naming an ‘artificial intelligence’ going by the name DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) as inventor had been filed in Australia.  The application – no. 2019363177 – was derived from an international application filed under the Patent Cooperation Treaty (PCT), and names Dr Stephen Thaler, the developer of DABUS, as applicant.  The Australian Patent Office issued a formalities report, objecting that the application does not comply with the Patents Regulations 1991, because ‘it is the Commissioner’s understanding that inventors for the purposes of the Patents Act 1990 must be natural persons.  As DABUS is not a natural person the Commissioner is of the view that no inventor has been supplied for the purposes of Regulation 3.2C(2)(aa).’  There has since been further correspondence between Dr Thaler’s Australian patent attorneys and the Patent Office.  Thus far, however, the initial objections have not been overcome, and it seems likely that the matter is headed for a hearing, which will result in a formal decision being issued.

On 19 November 2020, the applicant responded to the initial formalities report.  For some reason, this response is not currently available in the public ‘eDossier’ for the application, however the Patent Office’s reply of 25 November 2020 sets out the substance of the response:

You have indicated that there is no explicit definition of an inventor, which by implication means that an artificial intelligence machine can be an inventor. You have also stated that it is sufficient for the purposes of the Patents Act 1990 if the applicant derives title to the invention from the inventor under section 15(1)(c). In the present case this would require DABUS to transfer title to Stephen Thaler. It is not apparent that DABUS is capable of executing an assignment, or has a contract of employment (for instance).

Interestingly, however, the Patent Office reply goes further, by suggesting an alternative theory (not, it seems, put forward in the applicant’s response) under which the Dr Thaler might assert the right to be granted a patent:

It may be that you are suggesting that Dr Thaler should be regarded as the communicatee of DABUS (a category of applicants recognised under section 34(1)(e) of the 1952 Act, and amalgamated into the present section 15(1)(c) - JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2006] FCAFC 141). According to traditional principles the communication should be for the purpose of obtaining a patent (H's Application (1955) 73 RPC 197).

The significance of identifying a mechanism for Dr Thaler to derive rights to DABUS’ inventions is that, in the Office’s view, if DABUS ‘is not capable of transferring or communicating an invention to a person, it would appear to be inconsistent with the structure of the Act for the machine to be treated as an inventor for the purposes of the Act.’  However, quite why the Office should wish to make its own suggestions in this regard is something of a mystery.

The applicant, for his part, appears to want no part of this novel theory proposed by the Patent Office.  In a further reply dated 9 December 2020, his attorneys have argued simply that:

The common law confers ownership of anything produced by DABUS to its owner, the applicant. There is a general rule that the owner of a thing is the owner of the fruits of that thing, much like the owner of a fruit tree is entitled to the fruit produced by that tree. The principle of accession or first possession can apply.

I think that this is the right approach (even though it is unlikely to succeed).  A UK court has already ruled that DABUS is incapable of transferring intellectual property rights to Dr Thaler (or anybody else), and there is no reason to expect a different outcome in Australia.  Furthermore, an analysis of the historical basis for the category of ‘communicatee’ suggests that it may no longer exist under Australia’s current patent laws and that, in any event, it would not provide for Dr Thaler to obtain a patent on DABUS’ inventions.  His best bet is therefore to continue to push the ‘ownership’ line, even though it has so far failed in the UK, the US, and at the European Patent Office.  I believe that it will fail in Australia, also, under the existing law.  But my understanding is that the larger objective of the Artificial Inventor Project, which is backing Dr Thaler’s applications, is to lobby for changes in the law, to recognise AI inventors, and entitlement by way of ownership.

In any event, the Patent Office’s unusual proposition provides an opportunity to delve into this strange historical category of ‘communicatee’.  What is it?  Why did it exist?  Does it still exist somewhere in the modern patent law?  (Readers interested only in Dr Thaler’s prospects of success, and not the historical context, can skip ahead to the section entitled ‘Can Title to an Invention be Derived from an AI?’)

30 November 2020

How the Australian High Court Found that Refurbished Ink Cartridges do not Infringe Seiko Patents

InkRecently, I wrote about the decision of the High Court in Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41, with particular focus on the Court’s finding, by a 4-3 majority, that the first sale of a patented product exhausts the patentee’s exclusive rights in that product.  In this article, I will look at the other aspect of the Court’s decision, namely its finding (again by 4-3 majority) that Epson printer ink cartridges that had been refurbished, refilled, and resold in Australia, did not infringe patents relating to aspects of the cartridges, which are owned by Seiko.

As we shall see, the decision of the High Court majority on infringement depended upon a distinction between use of a patented product following sale, and making of a new embodiment of the patented product.  It did not depend upon whether the (old) ‘implied licence’ doctrine, or the (new) ‘exhaustion’ doctrine applies under Australian law.  In this sense, it was not necessary for the Court to overturn over a century of law to replace the doctrine of implied licence with one of exhaustion, although it did so nonetheless, and it is that aspect of the case that has attracted most attention.

The reasoning of the majority on infringement is important, however, in giving guidance to lower courts, patentees, and providers of refurbished goods, on the circumstances in which modifying, repairing, or reconstituting of depleted or otherwise ‘expired’ goods may result in patent infringement.

29 November 2020

COVID Update – October Filings Down, as Pandemic Pain not Shared Equally Among Attorney Firms

COVID-normal workingLast month I reported that, against the trend of 2020, September was a busy month for Australian patent filings, with standard applications up by 8.1% on the same month in 2019.  (In fact, following more recent additions and corrections in IP Australia’s records, the increase is even higher, at 9.2%.)  But, sadly, any optimism this might have generated was short-lived, with October filings down by 7.9% on last year.  Numbers of new filings originating in Australia, the US, Japan, and Europe were all substantially lower than in October 2019, although applications from China once again bucked the trend.  Filings from all other countries were comparable to 2019, down by just 0.7%.

Counted at the end of October, Chinese applicants have filed 1822 Australian standard patent applications during 2020, just 6% behind Australian applicants at 1937.  This compares with 1410 applications filed by Chinese applicants at the same time in 2019.  Most of these gains have come in the second half of the year, with monthly filings from China being substantially higher than during 2019 in every month since June.  If this trend continues for the final two months of the year, Chinese residents will surpass Australians for the first time as the second largest users of the Australian patent system after the US.

Chinese applicants also continued to make ridiculously high use of the innovation patent system, reflecting the effect of subsidies back in China, rather than any inherent value of the innovation patents themselves.  By the end of October, Chinese residents had filed 1719 innovation patent applications, compared with just 332 at the same point in 2019.  Meanwhile, Australian residents filed 801 innovation patent applications, with a further 618 coming from the rest of the world combined.  With just nine months remaining until its abolition, the innovation patent system is now looking very much like the laughing stock that it has long been regarded as by some critics.

For the ‘coronavirus-affected’ period from March to October, the number of standard patent applications filed in Australia is 2.4% below the same period last year while provisional filings are down by 3.0% overall.  However, a relatively large number of provisional applications are filed by self-represented applicants, and the decline in professionally prepared and filed provisionals is slightly higher, at 4.4%.

While all of this means fewer standard and provisional filings for the patent attorney profession generally, the pain has not been shared equally.  Indeed, some sectors of the market, and individual firms, have seen growth in their filings compared with 2019, while others have experienced more significant declines.  Very broadly speaking, the best place to be, in terms of 2020 patent filings, is a medium-sized or large privately-held firm, although micro-practices and medium-sized firms within the listed groups have also collectively increased their share of standard patent filings during the pandemic.

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