31 August 2010

IP Australia "Reaches Out" to SMEs

Back in October of last year, US President Barack Obama stated in one of his weekly addresses that:
"Small businesses have always been the engine of our economy – creating 65 percent of all new jobs over the past decade and a half – and they must be at the forefront of our recovery,”
It is trite to note that most large companies exhibit substantial inertia, and need to work hard to maintain innovative cultures, while many small-to-medium enterprises (SMEs) are inherently innovative.  Yet in our experience the general level of sophistication of Australian SMEs when it comes to intellectual property management (identification, protection and strategic exploitation) remains, in many cases, alarmingly low.

30 August 2010

Does Your Patent Portfolio Need a Health Check?

Like all other assets, intellectual assets require proper care and maintenance.  In the case of patents, there is more to this than just paying periodic renewal fees.  As your business and associated patent portfolio evolve, you should regularly turn your attention to the continuing health of that portfolio. 

Aside from managing the content of your patent portfolio to ensure that it has continuing relevance to your commercial strategy, you must also review your important patent assets to ensure that they remain valid and useful.

Serving Documents Electronically — Not as Simple as it Seems?

Spiral Tube Makers Pty Ltd v PIHA Pty Ltd [2010] APO 16 (27 August 2010)

Extensions of Time - date of service of document delivered electronically outside business hours - whether failure to serve in time electronically was a relevant "error or omission" justifying grant of an extension of time


Electronic communications, such as via email and facsimile, are now widespread.  Indeed, for a variety of reasons, including speed, efficiency, the ability to track times of transmission and receipt, and environmental considerations, electronic communications are increasingly preferred, where practicable, over traditional mail.

It may therefore come as a surprise to some that electronic communication is not considered to be a simple alternative to traditional means of delivery under the law.  For most types of personal, business and informal communications, this is not relevant.  However, for various official purposes it is important to be ware of, and to follow, the legal provisions relating to electronic communications.

26 August 2010

Defending Against the Licence to Infringe – Grounds of Opposition

Razer Industries Pty Ltd v Robert R. Law [2010] APO 13 (13 August 2010)

Opposition to application for a licence under Regulation 22.21 – request for dismissal – whether opposition should be dismissed – available grounds of opposition – whether objection to proposed licence terms is a valid ground.


This is a Patent Office decision of a Delegate of the Commissioner, Greg Powell, relating to an opposition to an application for what we recently loosely called a "licence to infinge" a restored patent.  It is a handy guide to any patentee that may find themselves in this position as to how to go about defending against the grant of such a licence.


Robert R Law ("Law") is the proprietor of Australian Patent No. 784051 ("the patent"), which relates to a scraper blade arrangement for a conveyor belt cleaner (shown left).

Annual renewal fees are due on 27 September each year in order to maintain the patent.  However Law failed to make the payment in 2007, as a result of which the patent ceased.  On 17 August 2009, Law applied for a 23-month extension of time under Section 223 of the Patents Act 1990, in order to pay the fees due in 2007 and 2008.  The requested extension was allowed unopposed, and was granted on 27 October 2009, so that the patent was reinstated.

Online Tool Helps Businesses Manage Intellectual Assets

A new online tool, called Intellectual Property Explorer has been developed by the Asia Pacific Economic Co-operation (APEC) in partnership with the government intellectual property offices of Australia, Hong Kong and Singapore to help small and medium sized enterprises (SMEs) realise and profit from their intellectual property assets.

It is pleasing to note that the tool adopts a broad definition of "intellectual property", and reflects an approach generally consistent with principles of Intellectual Asset Management (IAM).

25 August 2010

Intervening Rights – A Licence to Infringe?

Sometimes deadlines are missed, and patents lapse.  If the lapsing was genuinely inadvertent, it may be possible to obtain an extension of time, and revive the patent.  However, it is important for the patent owner to understand that there may be some limitations on the restored rights.  Conversely, competitors should be aware that they may accrue rights during a period of lapsing.

This article discusses the Australian position.  However, comparable provisions exist in a number of other jurisdictions.


Imagine that you are in the business of manufacturing and selling widgets.  You have a major competitor with an improved widget that is proving very popular in the market.  You would like to make your own version of the improved widget, but you are prevented from doing so because your competitor has a patent on the improvements.

Sensibly, you have instigated a watch on your competitor's patent.  One day, your watching service provider reports to you that your competitor has failed to pay the annual renewal fee for its patent, which has therefore lapsed.

23 August 2010

Inventorship in the Spotlight Yet Again

Sang Bong Lee v Komipharm International Co., Ltd [2010] APO 14 (17 August 2010)

Inventorship – request under section 32 of the Patents Act 1990 and opposition to grant of patent – whether requestor/opponent is an inventor – Entitlement – whether requestor/opponent is entitled to be joint applicant under contract


This is a Patent Office decision of a Delegate of the Commissioner, Dr Steven Barker, relating to yet another dispute over inventorship and ownership of patents.

This decision comes hot on the heels of the Wake v Cavitus and Wake v Soniclean disputes, on which we recently reported.  Inventorship and ownership disputes seem very much the flavour of the month!

We can only assume that this is another situation in which business relationships have soured, leading to the removal of originally-named inventors and applicants from an application.  Although the Patent Office has resolved the dispute for the present (subject to any appeal), the decision raises questions that could arise again if the patent is ever challenged or litigated.  In particular, on the basis of the Delegate's findings, the PCT application was initially filed naming two individuals as inventors who were not inventors, and failing to name another person who was in fact the sole inventor.  Furthermore, the PCT application was amended to name two individuals as co-applicants, when they were not so entitled.

We emphasise that business relationships and politics should never be allowed to override legal requirements in relation to intellectual property matters.  Patent rights originate in inventorship, and the (legally) correct inventors must therefore be identified, as the source of any such rights.  Subsequent ownership of the invention derives only from legal transfer of title traceable back to the inventor(s), preferably in writing.

20 August 2010

Australia Votes — But Not on Innovation

After a lacklustre and largely negative election campaign infected by meaningless catch-crys, such as "moving foward" and "turn the boats around", we Australians have the privilege of executing our democratic responsibilties tomorrow by voting in the federal election.

Innovation policy has played no noticeable part in this campaign.  For anybody wondering where the major parties stand on this issue, Australian Innovation has published statements by Prime Minister Julia Gillard, and opposition leader Tony Abbott.

19 August 2010

A Note on the Limitations of the Australian "Grace Period"

We read a comment on another blog today that reminded us of common misconceptions about the Australian "grace period", held particularly by people more familiar with the US system.

This seemed like a good prompt for a quick review of the issues to watch out for.

As most readers will be aware, the "grace period" is a one-year period prior to the filing of a patent application, during which any public disclosure or use of an invention by the inventor(s) or applicant(s) will not be regarded as prior art citable against the application.

To put it the other way around, if you disclose your invention, you have a maximum of 12 months within which to file a patent application, otherwise your own disclosure will invalidate the application.

Most countries do not have a general period of grace, with the US, Canada and Australia being notable amongst the exceptions.  However, the Australian grace period should not be routinely relied upon, due to a number of limitations compared to the US system.

18 August 2010

Why Has Oracle Sued Google?

On Thursday, 12 August 2010, Oracle America Inc filed suit against Google Inc in the U.S. District Court for the Northern District of California, contending that Google's Android software for mobile devices violates Java patents and copyrights that Oracle acquired when it bought Sun Microsystems Inc back in January.  (Read the complaint here.)

Oracle America representative Karen Tillman said last Friday that "in developing Android, Google knowingly, directly and repeatedly infringed Oracle’s Java-related intellectual property.  This lawsuit seeks appropriate remedies for their infringement."

This appears to be the story of a clever strategy by Sun/Oracle to monetise intellectual assets (patents, copyrights, and other intellectual capital embodied in the Java platform) through open-source licensing, and an ambitious plan by Google to work around that strategy.  Time will tell who prevails, but in the meantime we will take a look at the story so far.

16 August 2010

Claims Under Construction in New Zealand

Hammar Maskin AB & Ors v Steelbro New Zealand Limited [2010] NZCA 83 (24 March 2010)

Claim construction – principles of construction – whether "a bearing" requires a specific structural component or is used to define a functional relationship – whether "connected" implies "directly connected".


This recent decision of the New Zealand Court of Appeal provides a useful summary of the current law relating to claim construction, along with two simple examples of its application.


Hammar Maskin AB ("Hammar") is the proprietor of New Zealand patent no. 331591, which relates to stabiliser legs on sidelifters. Stabiliser legs are extendable to the side of trucks or trailers fitted with hydraulic cranes to provide stability when loading and unloading shipping containers.

Steelbro New Zealand Limited ("Steelbro") is a New Zealand based competitor of Hammar.

Hammar brought proceedings against Steelbro in the High Court of New Zealand alleging that Steelbro infringed its patent. Steelbro denied infringement on the basis that a number of features in the Hammar claims were not present in the accused sidelifter models. In essence, Hammar and Steelbro advanced alternative constructions for three contested features. Although the High Court found in favour of Hammar on two of the three features, it found for Steelbro on the third, such that there was no infringement.

Hammar appealed this latter finding, while Steelbro cross-appealed in relation to the High Court’s finding on one of the other two features.

13 August 2010

Coming Soon: Online Access to Australian Patent Prosecution Histories

IP Australia, the Australian government authority that comprises the Patent, Trade Marks and Designs Offices, has announced that from early 2011 patent prosecution documents will be available via the AusPat online search database.

The AusPat enhancement, to be called eDossier, will provide access to documents relating to the prosecution of patent applications dating back to 2006 and which are open for public inspection (OPI), including:
  1. requests for examination ;
  2. examination reports;
  3. responses to examination reports;
  4. amendments; and
  5. search results.
This is great news, and we look forward to IP Australia joining the elite group of patent offices around the world that provide the public with this level and ease of access to information.

The IP Australia announcement of eDossier can be found here.

Australian Patent Office Embraces "Obvious to Try"

On 2 August 2010 the Australian Patent Office updated Section of its Manual of Practice and Procedure, on "Obvious to Try" in order to "to make it clear that this is a legitimate approach, and to explain the limits of the approach.".

The revised guidance cites the leading case on the subject, the High Court's decision in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, as endorsing the “Cripps question” approach to obviousness (as posed by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157).  The Patent Office "simplification" (and generalisation) of this question is stated as:
Would the person skilled in the art (in all the circumstances) directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?
The Manual characterises this as the "obvious to try" approach, and provides the following example of a reasoned objection based on this approach:
“The problem relates to identifying compounds with antibacterial activity. The citation teaches that compounds of formula II will have antibacterial activity, although there are no examples confirming this prediction. In light of this disclosure, it would have been obvious to try compounds of formula II in the expectation that they would have antibacterial activity.”

11 August 2010

Patent Spam and Other Scams

It is a fundamental feature of the quid pro quo of the patent system that details of patents and applications are made publicly available.  With the (usual) exception of the US, where applicants not filing elsewhere have the option of delaying publication until grant, in almost all other cases globally applications details are published at around 18 months after the initial priority date.

Obviously all of this patent data is very useful.  It provides a large part of the "prior art base" used to assess the novelty and inventiveness of subsequent patent applications.  It is a source of technical information in relation to the activities of individual inventors and corporations.  It can be mined to provide competitive intelligence regarding the commercial activities of companies in particular industries, or even to identify market opportunities in technologies that are not being fully exploited.  And, of course, it can be searched to identify potential infringement risks or to establish freedom-to-operate.

On the other hand, we have recently witnessed a notable rise in patent-related spam and scams, some of which is based upon the ease of availability of patent information through free online databases provided by national patent offices, the World Intellectual Property Office (WIPO), and privately operated services such as Google Patents.  We discuss below two common examples, and one other recent experience.

10 August 2010

A Tale of Four Amendment Requests

Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 (4 August 2010)
CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd [2010] FCA 671 (28 June 2010)
Zetco Pty Ltd v Austworld Commodities Pty Ltd [2010] FCA 235 (17 March 2010)
Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019 (11 September 2009)


There are two mechanisms by which a patentee may amend a granted patent in Australia.  The first is to file an application for leave to amend at the Australian Patent Office.  The second is to apply to the court.

Each approach has its advantages and disadvantages, depending upon the circumstances in which the patentee finds themselves.  Ideally, the patentee has a choice, but in some cases they may find this has been taken away.

All four of these cases - the most recent having issued just last week - relate to amendment applications filed in the Federal Court of Australia.  In each case the patentee's reasons for applying to the court, rather than through the Patent Office, were different.  In all four cases the amendments were technically allowable, but in one case the court nonetheless denied the application.

06 August 2010

Ultrasonic Cleaning II: The High-Pitched Shriek-quel

David Leigh Wake v Soniclean Pty Ltd [2010] APO 12 (30 July 2010)

Opposition – whether innovation patent should be revoked due to lack of entitlement of patentee - Inventorship – whether requestor is the sole inventor – whether requestor is an inventor jointly with named inventors


This Patent Office decision is the sequel to David Leigh Wake v Cavitus Pty Ltd [2010] APO 11 ("the Cavitus dispute"), on which we reported earlier in the week.

Again the decision illustrates the challenges and pitfalls that can be associated with determining inventorship and entitlement if these are not settled at the earliest possible opportunity.

Furthermore, the assessment of inventorship may be a complex undertaking.  In any given case, it may be necessary to consider not only the disclosure in the specification and claims, but also the state of the prior art, and also the specific circumstances in which the invention arose. There is no universally-applicable formula or "test" for inventorship, and ultimately each case will be decided on its specific facts.

04 August 2010

Inventors Shaken But Not Stirred by Ultrasonic Cleaning Decision

David Leigh Wake v Cavitus Pty Ltd [2010] APO 11 (29 July 2010)

Inventorship – whether requestor is the sole inventor – whether requestor is an inventor jointly with named inventors – Eligible persons – whether named applicant is a person to whom the patent may be granted


This is a Patent Office decision of a Delegate of the Commissioner, Owen Haggar, relating to a dispute over inventorship and ownership of a patent application.

It serves as a further reminder, if one were needed, of the difficulties that can arise when inventorship and ownership of inventions are not resolved very early in the process of innovation and commercialisation. It is easy to assume, when starting out on a new project in which all collaborators are enthusiastic and relationships are positive, that it will be possible to work out the details later.

However, if the relationships sour before these issues have been resolved then they can become complex and potentially costly distractions from the main game of commercialising the invention. This is what appears to have happened in this case.

Aventis Refused Injunction in New Zealand Targeting Generic Docetaxel

Aventis Pharma SA v Pharmaco (NZ) Ltd [2010] NZHC 860 (4 June 2010)

Patent infringement - application for interim injunction - whether damages would be appropriate remedy - Amendment of patent - whether granted and unopposed amendment application subject to judicial review


The New Zealand government operates a system for subsidising the cost of certain approved prescription pharmaceutical products, one of which is (or was) the cancer treatment drug Docetaxel, distributed in New Zealand under the brand name Taxotere by Sanofi-Aventis New Zealand Ltd under license from Aventis SA (collectively "Aventis").

Subsidised medications are purchased on behalf of the New Zealand government by its agency Pharmac.  Pharmac issues multi-product tenders annually for the supply of selected drugs.  In December 2007 the annual tender included Docetaxel, which had been supplied by Aventis since 1994.

Pharmaco (NZ) Ltd is a company engaged in sale, marketing, warehousing, distribution etc on behalf of numerous suppliers of pharmaceutical products.  The second respondent, InterPharma (NZ) Ltd is a generic drug manufacturer whose products are distributed by Pharmaco.

Aventis contends that New Zealand Patent no. 243469, which relates to "compositions containing Taxane derivatives", covers Docetaxel and generic equivalents.

02 August 2010

Well-Known Innovation Patent Takes the Next Step... Just!

Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (Administrator Appointed) [2010] FCA 465 (13 May 2010)

Patent Opposition - Appeal to the Federal Court of Australia - outcome when neither the original opponent nor the Commissioner of Patents appears and no evidence before the court


An opponent was successful in opposition proceedings before the Patent Office in having all claims of an accepted patent application rejected as lacking an inventive step.  However, when the applicant appealed the opposition decision, the opponent was unable (due to financial circumstances) to participate in the appeal proceedings before the Federal Court of Australia.

As in similar previous cases, the court was unable to uphold any ground of opposition in the absence of any relevant evidence having actually been adduced during the proceedings.

Therefore the appeal was allowed, and the patent proceeded to grant.

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