29 June 2010

Bilski, Bilski, Bilski... Round the Traps

So the US Supreme Court decision in Bilski v Kappos, relating to the patentability of a business process, is finally out.  Step right up and get your copy here!  For those needing a quick summary: Bilski's claimed hedging method is not patent-eligible, but other business processes may be, and the Federal Circuit's "machine or transformation" test is too narrow, but can be a useful "investigative tool".

28 June 2010

On Appeal, Simulated Flames from Direct Light Found Infringing

Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75 (23 June 2010)

Infringement - absent express limitation, a claim including a specific feature encompasses products combining that feature with other, unclaimed, features - Fair Basis - claims can extend beyond the scope of preferred embodiments, where the skilled addressee would not read the specification as imposing serial restrictions or limitations on the invention.

In earlier proceedings before a single judge of the Federal Court of Australia, Bitech accused Garth and four other respondents of infringing its patent relating to an electric heater with a simulated flame effect (see image, right).  In a decision issued on 26 November 2009, the court found the patent to be valid, but not infringed (Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393).  Bitech appealed to the full bench of the Federal Court on infringement, and Garth cross-appealed on fair basis as a ground of invalidity (ie alleging that the claims were not adequately supported by the description in the patent specification).  In this decision the Full Court has allowed Bitech's infringement appeal, and rejected Garth's invalidity case.

Business Methods and Bilski: the Wait is (almost) Over

Anybody interested in patents, and the patentability of inventions in different sectors of commerce, would have to have been living under a rock for the past few years not to be aware of In Re Bilski.  We have been waiting since last November for the US Supreme Court to issue its decision in this case.  It is widely anticipated that the Court will find Biski's claims (which relate to a "pure" business method, requiring no use of a computer or other technology) to be unpatentable, upholding the adverse decisions already issued by the USPTO and the Federal Circuit.  However, interest in the case is focused on the likelihood that the Supreme Court took on the Bilski case in order to clarify the "rules" distinguishing the types of invention that are legitimate subjects of patent protection from those that are not.

27 June 2010

Patentology Weekly Update Emails

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24 June 2010

Peer-to-Patent Australia Trial Completes Community Review Phase

The Australian Peer-to-Patent pilot project which is based upon the original US program  is being administered by the Queensland University of Technology (QUT), and has been operating with the support of the Australian Patent Office within IP Australia since December 2009.

The Peer-to-Patent projects are designed to test whether an open community of reviewers can effectively locate prior art that might not otherwise be located by the patent office during a typical examination.

22 June 2010

IP Australia Official Fees Likely to Increase from 1 August 2010

IP Australia (the government authority encompassing the Patents, Trade Marks and Designs offices) has been conducting a review of its fee structure.

It was announced today that the review has been completed, and that IP Australia will now be requesting approval from the government to make regulations increasing a number of fees from 1 August 2010.

The proposed new fees were previously published for public comment in this Fee Review Summary document.

21 June 2010

Myriad Appeals US District Court Ruling on Genes

As expected, Myriad Genetics, along with its co-patentees, appealed the decision by the District Court for the Southern District of New York finding its US patents relating to BRCA1 and BRCA2 human genes to be partially invalid (see Genomics Law Report article here).

Patentology has reported previously (here and here) on corresponding proceedings commenced by Maurice Blackburn lawyers against a related Australian patent, licensed exclusively to Genetic Technologies Ltd.

We presume that Myriad, GT, and the other defendants, will also vigorously contest the Australian court action.

19 June 2010

More on Fast-Track Examination

A survey is being conducted over on the Patently-O blog on the prospective popularity of the USPTO's proposed "fast-track" examination process. We look forward to the results with some interest, particularly with regard to the likely utilisation of such a system by domestic (ie US-based) applicants.  Patentology has already considered the possible issues for foreign applicants in this earlier article.

The Patently-O survey asks, among other things, about the price-point, in terms of official fees, at which fast-track examination might be an attractive option.  The subtext appears to be that if the fee were set too low, a large proportion of applicants might request prioritised examination, such that the priority queue would become, in effect, the same thing as the current standard examination queue, such that little improvement in examination time could be achieved.

Patentology is not convinced, however, that the setting of the fee is a major issue.  As we have previously noted, many jurisdictions already provide applicants with substantial control over the pace of examination.  Just north of the US border in Canada, for example, applicants can delay requesting commencement of examination until up to five years from the original filing date.  In Australia, a similar five-year deadline also applies, with the difference that the Commissioner of Patents can issue an Official Direction at an earlier date, requiring the applicant to request examination within six months.  Examination Directions are presently issuing no earlier than around three to four years after the priority date, with the delay being longer in around half of all cases.

17 June 2010

The Continuing Saga of Faked Korean Stem Cell Research

H Bion Inc v Commissioner of Patents [2010] FCA 539 (1 June 2010)

Summary: Application refused for an extension of time within which to appeal a decision of the Commissioner of Patents relating to acceptance of a patent under s49 of the Patents Act 1990.

Patentology does not require any special interest in cloning technology, or stem cell research, to recall the scandal that erupted back in late 2005 over faked research results published in the journal Science by Dr Hwang Woo Suk and his team from Seoul National University, claiming to have successfully obtained stem cells from cloned human embryos.  The controversy was covered extensively in the mainstream media (see, for example, this summary from the New York Times).

Of somewhat less general interest was the fate of international patent aplication no. PCT/KR03/002899, which included claims allegedly supported by those same falsified research results.

Report on Australian Senate Enquiry into Gene Patenting Delayed Again

In an earlier article, Patentology advised that the Report of the Australian Senate Commitee enquiring into the patenting of genes was due to report on 17 June 2010, ie today.

The Senate has now extended the reporting time (again) until 2 September 2010, due to "the extensive evidence received and the complex nature of many issues associated with this inquiry."

And so we continue to wait.

15 June 2010

Double Patenting - impermissible, but not invalidating

Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302 (31 March 2010)

Summary: While it is technically impermissible under the Australian Patents Act 1990 for two patents to be granted to the same patentee in respect of the same invention, in the event that this should occur it is not fatal to the validity of either patent.

In this recent Australian case, Arbitron, Inc ("Arbitron") contended that Telecontrol Aktiengesellschaft ("Telecontrol") infringed Arbitron's Australian Patent No. 747044, relating to its "Portable People Meter" (PPM) technology.

Right: "No!!! I said portable people meter!"
The claims of the patent relate to a method of encoding a "signature" within the spectrum of an audio signal, which can then be decoded by a digital signal processor in a small battery operated device, that can be carried around by a ratings survey subject.  Or, in lay terms, a way of hiding a "secret code" in sound (such as radio or television broadcasts) that a clever electronic device can detect, but that is generally inaudible to people.  The idea is that when the portable meter detects a specific signature, it can then record the fact that the survey subject is listening to (or at least is in earshot of) a corresponding broadcast program.

11 June 2010

More on Australian Gene Patent Challenge

Patentology reported earlier this week on the challenge to the validity of Myriad's Australian patent relating to the BRCA1 and BRCA2 genes, which can be used to diagnose genetic predispostion to breast and ovarian cancer.

This is not at all our area of expertise, so we are grateful to one of our colleagues for providing us with additional background.


The Australian patent in question (no. 686004) is jointly owned by Myriad Genetics, Inc (US), Centre de Recherche du Chul (CA) and The Cancer Institute (JP).  Details of the patent can be found in the IP Australia database, while the patent specification itself can be viewed or downloaded from the EPO esp@cenet system.

Genetic Technologies Limited (GT) is an Australian Stock Exchange and NASDAQ listed company (ASX: GTG; NASDAQ: GENE), which has held an exclusive license to the patent in Australia and New Zealand since 2002.  It seems that the patent, and the cancer screening test, have had a controversial history.

08 June 2010

NZ Committee Recommends Ban on Software Patents

[Link to update on this topic.]

New Zealand has been in the process, for quite some time now, of drafting brand new patent legislation to replace its tired old Act of 1953.

A proposed Patents Bill was introduced into the NZ Parliament on 9 July 2008, and reinstated in the next Parliament on 9 December 2008.  On 5 May 2009 it was referred to the New Zealand Commerce Committee, which received comments up until 2 July 2009.  The Committee reports having received and considered 67 submission from interested groups and individuals, and having heard 36 submissions.

You can read the Committee's report (including a marked-up copy of the Patents Bill) here.

Myriad Gene Patent Challenged in Australia

According to this report in the news today, law firm Maurice Blackburn is about to launch a revocation action against an Australian patent relating to BRCA1 and BRCA2 human genes, which corresponds with the US patents recently found partially invalid by the district court for the Southern District of New York (see commentary on Patently-O here).

As in the US case, the action is being instigated primarily by an interest group, rather than by a commercial competitor or potential infringer.  Maurice Blackburn specialises in compensation claims, and has been involved in a number of high profile cases fighting large corporations on behalf of the "little people".  Patentology is unaware of the firm having any particular expertise in IP cases.

We will watch further developments with interest.

USPTO Multi-Track Examination Proposal & Non-US Applicants

Patentology is watching with some interest the USPTO's proposal for a multi-track examination system.

Of course, we are not the only one -- see, for example, the posts on the Patently-O blog here and here.

However, as an antipodean practitioner, Patentology has a particular interest in the potential effect of these proposals on non-US applicants, as you will see.

06 June 2010

The Importance of Establishing Early Ownership of Inventions

It is common for employers to assume that they own their employees' inventions, either due to express provisions in employment contracts or by operation of relevant statutes and/or common law.

It is also often assumed that, in any event, an assignment may be obtained from an inventor at any time after the invention has been made.  It appears to be particularly common in the US that the first time a written assignment document is executed by the inventors, whether employees or not, is after the filing of a nonprovisional application at the USPTO.

A relatively recent case from the UK highlights the potential danger of delaying formal assignment of inventors' rights until later in the patent process, while a recent Australian case serves as a further reminder that there is no guarantee, in all circumstances, that an employer will gain entitlement to an employee invention simply because it was made during a period of employment.

Are patent statutes unnecessarily complex?

The Australian Patents Act 1990 comprises 240 Sections, and covers 169 pages, including the 10-page Dictionary in Schedule 1 which is essential for the correct interpretation of the Act.  The corresponding Patents Regulations 1991 are 207 pages in length, not including the nearly 300 pages of Schedules (including copies of the Budapest Treaty and Regulations, and the Patent Cooperation Treaty and Rules).

Patentology is not sure if this is the most extensive patents legislation in the world, but if not it must come close.  The irony is that the Act and Regulations were the product of an effort in the late 1980's and early 1990's to draft legislation using "plain language", in the hope that this would make the law more accessible to ordinary citizens

Today Patentology asks the question: have modern patent statutes become needlessly complex, and if so is there any hope of a reversal of this trend?  We will begin our enquiry in Venice, if only because we like gondolas.

VENICE, 1474

You may be wondering about the ancient manuscript that adorns the upper part of the Patentology blog.  It is the full text (somewhat reduced and squashed) of the original Venetian Statute on Industrial Brevets of 1474, widely believed to be the first formally enacted patent law anywhere in the world.

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