30 September 2010

Proceedings in Other Jurisdictions No Excuse for Delay

Wyeth v The Kennedy Institute of Rheumatology [2010] APO 20 (21 September 2010)

Opposition – request for extension of time to serve evidence in answer – whether waiting for decision from the European Patent Office constitutes a satisfactory explanation of delay.

Current practices relating to the grant of extensions of time in Australian patent opposition proceedings are relatively generous, although IP Australia has clearly indicated its desire and intention to introduce a stricter regulatory regime in order to improve the speed and efficiency of an often drawn-out process.

Nonetheless, there are limits to the reasons that  may be considered acceptable excuses for delay, as this decision from Delegate Dr Steven Barker demonstrates.  Although the patent applicant in this case was granted the requested extension of time on other grounds (not least the fact that by the time the hearing took place the evidence had already been served), it is clear from this decision that waiting for an outcome in related proceedings in other jurisdictions is not, in itself, an adequate excuse.

29 September 2010

Victorian Government to Support Uptake of Small Technologies

According to the Small Technologies Cluster (STC), the term "small technologies" refers to "a convergent technology underpinned by nanotechnology, biotechnology, information technology, microtechnology and advanced engineering technologies."

The Victorian Government today announced the launch of the first round of the Small Technologies Industry Uptake Program (STIUP) which was a key part of the $10.5 million Victorian Action Plan for Small Technologies.

The program is intended to support businesses in accessing facilities, goods, services and advice to help them include small technologies in their products, processes and services.  The resources available in Victoria include the Melbourne Centre for Nanofabrication, the Australian Synchrotron and MiniFab as well as facilities and institutions such as the CSIRO and universities.

28 September 2010

Review – WIPO Goes Troppo with New Services

The past week has seen the launch of not one, but two, new information services by the World Intellectual Property Organisation (whose imposing glass headquarters in Geneva is pictured).

First, on 20 September 2010, WIPO Lex was announced.

And then, because too much searchable IP information is never enough, WIPO announced the launch of IP Advantage.

Need to know more?  Then read on!

27 September 2010

Free Software Foundation Incites USPTO Letter-Writing Campaign

Back in July, the USPTO issued its Interim Bilski Guidance to assist the examining corps in determining subject matter eligibility under 35 U.S.C. § 101 in view of the United States Supreme Court decision in Bilski v. Kappos.  It also invited the public to comment on this guidance, with submissions closing on 27 September 2010.

The Free Software Foundation (FSF) has caught on to this "opportunity", encouraging like-minded citizens to write to the USPTO to ask them to please stop issuing software patents.  You can read their "news posting" here, if you have not already encountered it via one of the many mailing lists, blogs or social networking sites through which it has been spreading like wildfire over the last few days.

24 September 2010

Divisional Decision Defies Deductive Determination

Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 18 (8 September 2010)
Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 19 (8 September 2010)

Opposition – original application and corresponding divisional application both opposed – whether claims of both applications lack novelty, inventive step and/or clarity – whether claims 23 to 37 of divisional application entitled to the priority date of the parent application – whether claims 23 to 37 of divisional application lack novelty and inventive step in light of original application publication

These two Patent Office decisions, both penned by hearing officer Jacob Elijah, relate to oppositions filed by Memcor Australia Pty Ltd ("Memcor") against an initial application no. 715364 ("the parent") and an associated divisional application no. 2004203856 ("the divisional"), both in the name of GE BetzDearborn Canada Company ("GE").  The applications are directed to relatively large systems for the microfiltration of liquids, typically water in applications such as wastewater treatment.  Both have substantially the same descriptions, but different claims.

Our interest in these cases is not in the substantive basis of the oppositions.  Memcor asserted the unexceptional grounds of lack of novelty, lack of inventive step (ie obviousness) and lack of clarity.  A number of prior art documents, and much expert evidence, was tendered and considered in the decision.  Memcor was unsuccessful on all substantive grounds.

23 September 2010

IP Australia Gets Tougher on Patent Applicants

IP Australia has published an Official Notice announcing changes to patent examination practice.  The changes are intended to improve quality and certainty in the validity of granted patents, and are part of IP Australia's ongoing patent reform agenda, which has been progressing through a series of reports and public consultations over the past 18 months.

Many of the proposed reforms will require changes to legislation and/or regulations, however some can be implemented within the existing framework by changes in Patent Office practice.  This announcement therefore signals the commencement of an expected series of reforms.

The initial changes are intended firstly to "raise the bar" in relation to examination for inventive step, and secondly to limit the impact of certain practices relating to the filing of divisional applications, which IP Australia considers to be undesirable.

Changes to the way in which inventive step is assessed have the potential to affect all applicants, while the impact of the current changes in divisional practice will mainly impact on applicants attempting to use divisional filings in order to extend application pendency.

22 September 2010

Free Software Activist in Conference Demonstration – of Ignorance

As we reported recently, Richard Stallman – originator of the GNU project, and founder of the Free Software Foundation – is currently in Australia on a speaking tour.

iTNews has reported that Stallman yesterday made an "unexpected appearance" at a presentation by the European Patent Office at the World Computer Congress in Brisbane, toting a placard reading "Don't get caught in software patent thickets".  This no doubt left European Patent Officer Ralf Abbing, whose presentation on "big issues in IP in relation to computing technology" was briefly interrupted, quaking in fear at the prospect of being entangled in dense woodland!

We have, as yet, heard no reports of retaliation by EPO activists at Stallman's presentation later in the day.  We have therefore launched our own minor protest, in the form of the above photograph (courtesy of Wikimedia Commons, for those concerned about copyright issues).

Yo Ho-Hum – Pirates Sink in Swedish Elections

Back in June of 2009, the Swedish political party Piratpartiet (Pirate Party) gained 7% of the Swedish vote in the European elections, and a seat in the European Parliament, on a platform of fundamental reform of copyright law, abolition of the patent system, and ensuring that citizens' rights to privacy are respected.

Barely 15 months later, in the current Swedish elections, Piratpartiet has seemingly been scuttled, gaining under 1% of the vote, and performing no better than in the 2006 Swedish elections.  This assumes, of course, that we are reading the result tables correctly, given our nonexistent knowledge of the Swedish language beyond "hej", "tack", "smorgasbord", "ABBA", "IKEA" and "bork, bork, bork" (which we secretly suspect may not be actual Swedish).

21 September 2010

IP Australia to "Sponsor" TV Invention Program Final

IP Australia, the government authority comprising the Patent, Trade Marks and Designs Offices, has today announced that it "is proud to sponsor the Grand Final of the ABC’s New Inventors, 8.30pm Thursday 23 September on ABC1."

New Inventors describes itself thus:

The New Inventors' is all about inventions and inventors.  Each week three totally new, never before seen inventions are demonstrated, examined, prodded, pushed, pulled and occasionally dropped by host James O'Loghlin. Their inventors are then subjected to a barrage of questions by the three member judging panel. At the end of the show the judges choose a winner, who may advance to the show's grand final at the end of the year.
The connection between IP Australia and New Inventors is a natural one, although for patent attorneys it can be either depressing or cringeworthy to watch hopeful inventors parade their unprotected inventions on national television each week!

Striking or Material Difference in Claim Scope Leaves NZ Applicant Sheepish

Merial Limited [2010] NZIPOPAT 18 (23 August 2010)

Amendment – whether proposed amendment is by way of disclaimer, correction or explanation – whether proposed claims cover subject matter not in substance disclosed in the unamended specification – whether proposed claims are wholly within the scope of the unamended claims

Our New Zealand friends are understandably unimpressed by jokes and innuendo relating to their large sheep population, although they do tend to give as good as they get!  However, it is difficult to resist some passing comment in this case, which involves a request to amend a patent specification that has been under opposition (by up to four parties) for 15 years, after being initially advertised as accepted on 28 March 1995.  Furthermore, the application was filed as a divisional of a patent that was subject to litigation which was ultimately appealed all the way to the Privy Council in London.

And what could be the subject matter of patents of such vital importance that they would justify this level of persistence and expense?

17 September 2010

Prestigious Award for Australian Bionic Professor

At the age of 75, Australian bionic ear pioneer Professor Graeme Clark has been awarded one of surgical science's most prestigious awards, the Lister Medal, for his leading role and contributions to surgical science with the multi-channel cochlear implant. 

The official announcement was made yesterday evening (16 October 2010) by the Royal College of Surgeons of England at a 75th birthday dinner hosted at the University of Melbourne for Professor Clark.

16 September 2010

Welcome to The Patent-Free Zone

You unlock this door with the key of imagination. Beyond it is another dimension - a dimension of sound, a dimension of sight, a dimension of mind. You're moving into a land of both shadow and substance, of things and ideas. You've just crossed over into... the Patent-Free Zone
(With apologies to The Twilight Zone)

We would like to share an interesting insight into the potential uses of intellectual property in developing countries, to which our attention was recently drawn.

The "Patent-Free Zone" is the brain-child of JiNan Glasgow, a North Carolina–based patent attorney and CEO of patent analysis firm NeoPatents.  The concept, once you see it, is startlingly simple – the fact that most major companies see developing countries as insignificant markets for innovative products and services is precisely why they present unique opportunities for development and growth.  This is good news for entrepreneurs willing and able to take advantages of these opportunities, and hopefully also good news for the developing countries themselves.

15 September 2010

Reminder: Unauthorised Patent Register Scams

A few weeks ago, in Patent Spam and Other Scams, we wrote (amongst other things) about the growing prevalence of "unauthorised register" scams.

As a reminder, operators of these scams monitor public databases for newly-published applications, and then send an official-looking letter offering to register the applications on an unofficial database – for a substantial fee, of course!  Many of these scams may be technically legal, assuming that the operators do indeed provide the unofficial registration service, because although the letters typically look like invoices, they usually include a description of their actual purpose and effect somewhere in the "fine print".

At the time, we noted that many of the letters include logos remarkably similar to the old WIPO insignia, and we speculated that it would not be long before they would begin to adapt to the new logo. Unfortunately, though unsurprisingly, it turns out that we were right.

Amendments: Can a Mistake that Nobody Noticed Be "Obvious"?

Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd [2010] FCA 983 (7 September 2010)

Amendment – obvious mistake – allowability under s 102 of the Patents Act – discretion

Philosophical musings aside, when a tree falls in the forest, physical laws dictate that it makes a sound, whether or not anyone is there to hear it, or if someone who is there is listening to loud music through their iPod, or if they are hearing-impaired, or if they are just not paying attention!  As the tree falls, vibrational energy is generated through abrasive and percussive contact, and the release of stresses in overburdened timber.  The vibrational energy is transferred to the surrounding air, to generate what we call "sound".

What has any of this to do with amendment of patent specifications, you ask?

Well, in light of this decision of Justice Bennett in the Federal Court of Australia, we ask the question: if a mistake occurs in a patent claim, but nobody sees it, can it be said to be "obvious"?  Is the law on this point objective, like the laws of classical physics, or is it capricious and observer-dependent in the manner of some pop-science rendering of quantum theory?

14 September 2010

New Research Cluster to Target Stroke

Coinciding with the commencement of National Stroke Week yesterday, a group of leading Australian research institutions launched a new study of stroke, called START (Stroke, imaging, pRevention and Treatment).

The "cluster", comprising CSIRO through its Preventative Health Flagship, along with the Florey Neuroscience Institutes, the University of Melbourne and the Royal Melbourne Hospital, will collect and analyse information derived from brain imaging and blood samples taken from 200 Australian stroke victims with the aim of discovering and validating new diagnostic biomarkers to identify patients at risk of recurrent stroke and post-stroke depression.

Further details are available in a CSIRO Media Release, here.

13 September 2010

Australasian Innovation, According to the World Economic Forum

On 9 September 2010, the World Economic Forum (WEF) launched The Global Competitiveness Report 2010-2011.  You can read the press release here, and download the full 515 page PDF document here (should you feel so inclined), or just get the 71 page highlights package.

By way of background, in the introductory comments to the first Chapter the report states:

For more than three decades, the World Economic Forum’s annual competitiveness reports have examined the many factors enabling national economies to achieve sustained economic growth and long-term prosperity.  ...
Since 2005, the World Economic Forum has based its competitiveness analysis on the Global Competitiveness Index (GCI), a highly comprehensive index for measuring national competitiveness, which captures the microeconomic and macroeconomic foundations of national competitiveness.
We define competitiveness as the set of institutions, policies, and factors that determine the level of productivity of a country.

10 September 2010

Prolific Xerox Inventor Dies, Age 84

An obituary in today's Age newspaper caught our eye.

Physicist Robert W. Gundlach joined Xerox (then Haloid) in 1952, at the age of 26.  He stayed with the company until his retirement in 1995.

During this time, he was credited as an inventor on 155 patents on behalf of Xerox.  That works out at around 3.6 patents per year of employment, and indeed he got off to a flying start with three inventions made during his first year of employment subsequently being awarded patents!

09 September 2010

Review: Four Corners – "Body Corporate"

ABC1 – original air date – 6 September 2010

Summary – emotive, unbalanced, shallow and ultimately disappointing platform for the anti-gene-patent campaign.

We presume that the name Four Corners was originally chosen (back in 1961) as an allusion to balanced investigative journalism (looking at issues from all sides), or to taking a global approach (from all four corners of the world), or possibly both.  Four Corners describes itself as "Australia's premier television current affairs program" with "consistently high standards of journalism and film-making".  And there have been numerous occasions on which it has lived up to those standards.

However, Andrew Fowler's story "Body Corporate", billed as "the high stakes battle over who owns your genes", was not one of those occasions.

08 September 2010

Federal Court Again Rejects "Obvious to Try"

Abbott GMBH & Co. KG v Apotex Pty Ltd (No 2) [2010] FCA 940 (2 September 2010)

Validity – whether claims anticipated by a single example in a prior art document – whether claims lack an inventive step – whether invention not a manner of manufacture because claimed compound would come into existence in natural course – whether patent obtained on false suggestion that an amendment made during prosecution made a material difference when, in fact, it did not.

We recently reported on an update to the Australian Patent Office Manual of Practice and Procedure, which states that an "obvious to try" analysis is a legitimate approach to assessing inventive step, albeit with limitations.  In particular, we expressed the view that the High Court of Australia has, in fact, rejected the "obvious to try" or "worth trying" approach, and that the appropriate test is, rather, "whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention" (full citations may be found in the previous article).

In a recent decision by Justice Jessup, it appears that the Federal Court of Australia agrees with us on this point.  Other grounds of invalidity pursued were lack of novelty, lack of patentable subject matter (ie not a "manner of manufacture", and that the patent was obtained on a false suggestion.  All grounds failed.

07 September 2010

Myriad Offers BRCA Gene Patent as "Gift" to the Australian People

We felt that last night's Four Corners program on so-called gene patents failed to present any sort of balanced view of the topic, devoting about 90% of its time to the case against, predictably focusing on dedicated doctors, lawyers and researchers along with emotionally-charged examples of individuals and families whose lives have been tragically affected by genetic diseases.

Were it not for brief interviews with US patent attorney Kevin Noonan during the first part of the program, and Executive Director of the Sydney Garvan Institute Professor John Shine towards the conclusion, there would have been no contrary case presented whatsoever.

06 September 2010

Gene Patents to Feature on Australian "Four Corners" TV Program

As our Australian readers will know, Four Corners on public broadcaster ABC is this country's longest-running and most respected investigative journalism program.

Tonight (Monday, 6 September 2010) the story is entitled "Body Corporate", pitched as "the story of the battle that will decide who owns your body and the biological building blocks that make you the person that you are."

We have previously reported on the Myriad cases in Australia and the US (here, here and here), on the Australian Senate enquiry into gene patents (here and most recently here), and on opinion in the Australian press (here).

Australian Senate Enquiry into Gene Patents Put On Hold

Seemingly unnoticed amidst the ongoing excitement of Australia's "hung parliament", and while we continue to wait to find out who will be running the country for the next three years, the Senate Community Affairs Committee quietly released a report on its enquiry into gene patents on 26 August 2010.

03 September 2010

Updates to Software and Business Method Guidance for Australian Examiners

On 1 September 2010, a number of updates to the Australian Patent Office Manual of Practice and Procedure (aka "The Examiners Manual") were published.

These include updates to Sections (relating to computer-implemented inventions) and (relating to business methods) in light of the recent Invention Pathways Pty Ltd decision, on which we reported here.

02 September 2010

Google Fails to Unmask Anonymous Opponent

Google Inc. v David Brian Webber [2010] APO 17 (30 August 2010)

Opposition – request by opponent for extension of time to serve Statement of Grounds and Particulars – request by applicant for production of documents relevant to opponent's intention to serve Statement – identity of "opponent" and of opponent's "agent or attorney"


According to Section 59 of the Patents Act 1990, any person may oppose the grant of a standard patent.  There is no requirement that an opponent be an interested party, or be aggrieved by the prospective grant of a patent.

It therefore sometimes happens that an interested party who wishes to remain anonymous will oppose by proxy through an agent, most commonly a patent attorney.  Naturally, in such circumstances the patent applicant would prefer to know the identity of their "true" adversary.  In some cases, the applicant may find itself in settlement negotiations with a party whose nature and commercial interests are completely unknown.

There are therefore clear potential benefits in being an anonymous opponent, particularly in keeping the applicant guessing and on the back foot.  And while the case discussed here turned out well for the unknown party, it does suggest some possible risks associated with anonymous opposition.

Dark Day at the GPO Extends IP Deadlines in South Australia

A blackout at the Adelaide GPO on 31 August 2010 allowed South Australian residents an additional day to complete any official IP transactions due on that date.

By way of background, commencing in 2009 IP Australia outsourced its state-based lodgement services.  Prior to this, it had operated its own sub-offices in Melbourne, Sydney, Perth, Adelaide, Brisbane and Hobart. 

Starting with Hobart in September 2009, and ending with Brisbane in April 2010, the lodgement function of each sub-office was taken over by Australia Post.

01 September 2010

Free Software Movement Founder to Speak in Australia

A significant proportion of our practise is in the area of software and information technologies, and we have a number of clients with patents and applications in this general field.  We are therefore, unsurprisingly, supportive of software patents not merely because they are a source of work (there are many other sources of work, after all), but mainly because our own experience has shown us how patents and other intellectual property rights add value to our clients' businesses and assist them in achieving commercial and strategic outcomes.

We therefore disagree with pretty much everything Richard Stallman – originator of the GNU project, and founder of the Free Software Foundation – has ever had to say about the alleged "evils" of software patents and copyright.

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