24 December 2010

Happy Holidays!

Holidays mean different things to different people.  Sometimes, quite literally.

Holiday Detector
Did you know, for example, that a flaw in a coating intended to protect a pipe, or other conduit, from corrosion is known as a 'holiday'?  It is therefore important to be able to reliably check a coated pipe for any such flaws before it is buried in the ground or dropped to the bottom of the ocean.  So if you thought that a 'holiday detector' might be a device that sounds an alarm on or around 10 December each year, then you may need to think again!  One particular form of electronic holiday detector was the subject of US Patent No. 3,259,893.

'Holiday' Plums

'Holiday' is also, apparently, a distinct cultivar of the Guzmania plant, and is the subject of US Plant Patent no. PP15,924, as well as a plum tree subject of US Plant Patent No. PP15,553.

Guzmania 'Holiday'

Tasmania - the 'Holiday Isle'

While not patented, Tasmania has somehow earned the name 'Holiday Isle'.  We imagined that this was just the result of a marketing campaign, but it has stuck sufficiently to earn an entry in the Macquarie Dictionary!

Audrey Hepburn, Gregory Peck and
a Vespa share a Roman Holiday

A 'Roman holiday' originally referred to an event or spectacle, in which the suffering of others is used to provide entertainment.  Fortunately Gregory Peck and Audrey Hepburn managed to give this rather gruesome term a positive makeover.

Billie Holiday

And any catalog of famous holidays would be incomplete without jazz singer Billie Holiday!

But the type of holiday we wish for all of our readers this year is a Happy Holiday!

All the best from Patentology for the festive season - however you may spend it - and for the New Year!

Holidays Down Under!

23 December 2010

Australia’s National Broadband Network Business Plan Released

The Patentology blog is – appropriately enough – primarily about patents, law and practice.  But patents (or, at least, those patents worth having) are essentially incentives for, and by-products of, innovation.  And we believe that innovation will only happen effectively and efficiently when supported by appropriate infrastructure.

This is why we think that Australia’s proposed National Broadband Network (NBN) is an important project.  It is why we identified broadband policy as the major innovation-related issue in the recent federal election, and why we agreed substantially with the views expressed by Jonathan Coppel (Economic Counsellor to the OECD Secretary General) when he said back in September that:

Good infrastructure facilitates trade, bolsters market integration and competition, fosters the dissemination of ideas and innovation and enhances access to resources and public services. These benefits are particularly important for Australia because of its size, geographical dispersion of the population and production centres and distance from other major markets.
Australia cannot rely upon open competition to deliver universal access to quality broadband service, because there are vast areas of the continent where it is simply not profitable to deliver such a service at prices that are affordable to the local communities.  Additionally, a population of 22 million people cannot reasonably afford to pay for duplication of expensive infrastructure in order to facilitate ‘competition’ in those geographic areas where there are substantial profits to be made.

Australian Senate Inquiry Seeks Submissions on 'Gene Patent' Amendments

On 25 November 2010 we reported on the introduction of a Private Senator's Bill, the Patent Amendment (Human Genes and Biological Materials) Bill 2010, to outlaw the patenting of human genes, and other biological materials that are 'substantially identical to such materials as they exist in nature'.

It has now come to our attention (thanks to AusBiotech) that the Bill was almost immediately referred to the Senate Legal and Constitutional Committee for inquiry.  The Commitee is due to report on 16 June 2011, and is currently seeking written submissions from interested individuals and organisations.

The deadline for submissions is 25 February 2011, and the preferred method of submission is online, although submissions may also be made via email to legcon.sen@aph.gov.au or post.

22 December 2010

NZ Patent Office Issues Draft Guidelines on Computer-Implemented Inventions

Is this a comment, or merely
an illustration? You be the judge!
As we have previously reported (here, here and here), the Patents Bill currently before the New Zealand Parliament proposes that computer programs be excluded from patentability.

Naturally, this proposal caused some controversy, and even many of those generally opposed to the grant of so-called 'software patents' felt that it was important that the provision not exclude microprocessor-based products having functions implemented using 'embedded software'.

Rather than attempt to encapsulate a definition of 'embedded software' into the Bill, NZ Commerce Minister Simon Power asked the Intellectual Property Office of New Zealand (IPONZ) to 'develop guidelines to allow inventions that contain embedded software to be patented.'

On 20 December 2010, IPONZ issued draft guidelines in response to the Minister's instructions.

21 December 2010

What ‘Means’ Means

Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 (30 September 2010)

Construction – scope of claim features expressed in ‘means-plus-function’ form – Validity – whether claims (as construed) novel – whether claims involve an inventive step

It is not uncommon to claim features of an invention in terms of their functional purpose, rather than their specific structural form.  This has particular consequences in the United States, where interpretation of such ‘means-plus-function’ language is expressly dictated by 35 USC 112, paragraph 6, which states that:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

As a result, this form of claim language is interpreted relatively narrowly in the US, and indeed the absence of sufficient disclosure of structure within the specification can result in a claim being found invalid, for lack of written description support.

In Australia, no such problem arises.  As in Europe, and many other jurisdictions, features defined in terms of function are interpreted broadly.  However, a broad interpretation is not without its potential pitfalls.

17 December 2010

Modified Examination – What It Is and Why (not) to Use It

The Australian Patents Act 1990 provides for an ‘alternative’ mode of examination of a standard patent application, known as ‘modified examination’.  This procedure is rarely used – and for good reason, as we shall explain – however the Kimberly-Clark decision, on which we reported earlier this week, reminded us that there are circumstances in which an applicant might consider requesting modified examination.

In particular, in appropriate cases the modified examination procedure may be used to obtain an Australian patent with claims that do not satisfy the usual requirement of being directed to one invention only, thus avoiding the need to file one or more divisional applications.

To understand modified examination, it is useful first to take a look at the process of normal examination.

15 December 2010

Surcharge on USPTO Fees in FY2011 - Boom or Bust?

We are not experts on the US system of government, but we believe that the Bill must still be passed by the Senate, and that this may not be a straightforward process.  However, if Section 2202 of the Bill ultimately passes in its current form, it will provide the USPTO with a budget of US$2,262,000,000 for salaries and expenses, and also apply a 15% surcharge to many official fees on a temporary basis throughout FY2011.

We fear, however, that there is a risk of this temporary surcharge having precisely the opposite effect on the PTO budget than is intended.

14 December 2010

That’s a Wrap! Kimberly-Clark Patent Valid, but Not Infringed

Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2010] FCA 1318

Construction – meaning of ‘sheet’ – Infringement – whether claims require ‘inner wrap sheet’ and ‘outer wrap sheet’ to be initially unconnected – Validity – whether priority claim valid – novelty – whether claims fairly based on specification – Rectification of Register – whether Register of Patents should be ‘corrected’ due to non-compliance of claims with unity requirement


Kimberly Clark Worldwide Inc is the proprietor, and Kimberly-Clark Australia Pty Ltd the exclusive licensee (collectively ‘Kimberly-Clark’), of three Australian patents (nos. 695238, 715940 and  758905), all entitled ‘Single Step Sterilization Wrap System’.  The three patents are related as divisional ‘grandparent’, ‘parent’ and ‘child’, respectively.

As the court (Justice Stone) describes it (at [3]):

The patents are for a single step sterilisation wrap system.  Sterilisation wrap systems are designed to facilitate the sterilisation and storage of instruments, generally surgical instruments, and other supplies, by wrapping them before the sterilisation procedure.  After sterilisation the sterile wrap remains in place protecting the items and allowing them to be stored without contamination until required for use. Sterile wraps are designed to allow the permeation of the sterilising agent but not contaminating agents.
Kimberly-Clark alleged that Multigate Medical Products Pty Limited (‘Multigate’) was proposing to market and sell an infringing sterile wrap product in Australia.

In the usual manner, Multigate denied infringement, and asserted various grounds of invalidity of the Kimberly-Clark patents, the most interesting being that the Register of Patents should be rectified to remove the ‘child’ patent, the ground that it claims more than one invention, contrary to section 40(4) of the Patents Act 1990.

The court found the patents valid, on all counts, but not infringed by the Multigate product.  A win and a loss for each party, and much money spent on legal fees for no change in the status quo!

10 December 2010

Patentology Soundbytes

"All the news (and views) that's fit to link!"

'Soundbytes' are even more brief than 'Newsbytes'.  No original commentary, just links to other news items, articles and publications that have come to our attention.

In this issue:
  1. Research Corp. Technologies v. Microsoft Corp.
  2. Progress on a single 'pan-European' patent?
  3. Intellectual Ventures lashes out.
  4. PwC's annual US Patent Litigation Study.
...and more...
Patentology Soundbytes - we trawl the Web, so you don't have to!

09 December 2010

Successful Cooperative Research Centre Bids Announced

The Australian Government Minister for Innovation, Senator Kim Carr, has announced the successful bids for funding in the 13th Round of the Cooperative Research Centre (CRC) program.

As the Minister's Media Release puts it:
Four new world-class research centres are being established to help prevent mental illness in young Australians, transform our pork industry, improve our environment and treat Alzheimer’s disease.

Success of Phase 3 Trials 'Obvious' In View of Phase 1 and 2

Genentech, Inc [2010] APO 27 (15 November 2010)

None of my inventions came by accident. I see a worthwhile need to be met and I make trial after trial until it comes. What it boils down to is one per cent inspiration and ninety-nine per cent perspiration.
- Thomas Edison (1929 press conference)

While Edison's inventions were generally of a more macroscopic nature, his words are perhaps nowhere more apt than in the pharmaceutical industry.  Indeed, a mere 99% perspiration may be an understatement.  The path leading from a promising drug candidate, or an idea for a therapeutic treatment, to an actual successful product or therapy that can be used on humans is long, expensive, and uncertain.  Which is why patents provide an important economic incentive in this field, and also why this Patent Office decision, by Delegate Dr Steven Barker, is potentially of concern to researchers and companies active in this area.

Specifically, the decision seems to stand for a general proposition that a claim directed to a method of medical treatment of humans, supported by successful phase 3 trial results, will necessarily be considered obvious in view of any prior disclosure of promising phase 1 and 2 trials.

07 December 2010

Patentology Newsbytes

A semi-regular round-up of breaking news, current events and comments too trivial to warrant their own posts.


AusBiotech, Legal Academics &  Australian R & D Review Weigh-In on Gene Patent Debate – IP Australia Christmas Closedown Arrangements – Entries About to Close for 2010/2011 DuPont Innovation Awards – Google to Provide European Patent Translation Service

03 December 2010

Federal Court Punishes CSL for Amendment Delay

CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) [2010] FCA 1251 (18 November 2010)

Amendment – application to amend under section 105 of the Patents Act 1990 – whether patentee's delay in applying to amend was unreasonable – whether patentee took unfair advantage of unamended patent


This Federal Court decision follows on from a ruling issued back in the early days of this blog (nearly six months ago – an eternity on the internet!)
The court has refused an application by the patentees, CSL Limited and Monash University, for leave to amend the patent-in-suit on the basis that their delay in requesting the amendment was unreasonable, and that they sought to take unfair advantage of a patent that they had good cause to believe was invalid.

This decision further emphasises the antipathy of the Federal Court to applications to amend patents in cases in which there were earlier opportunities to address any potential validity issues.

01 December 2010

LED Innovator Dies, Age 83

Professor Neumark
(Picture: Columbia University)
A recent obituary reporting the passing of Gertude Neumark Rothschild, from heart failure at the respectable age of 83 years, caught our attention for at least three reasons.

Firstly, she was a Professor of materials science and engineering at Columbia University, where she made important advances in wide bandgap semiconductors which were isntrumental in the commercial development of short-wavelength light emitting diodes (LEDs) and laser diodes.  Semiconductor optical devices are a subject close to the Patentology heart, having been the subject of our PhD research.

Secondly, Professor Neumark (as she was known professionally) obtained patents on aspects of her research, which in 2005 she successfully asserted against a number of companies, including the Philips Lumileds Lighting Company, Epistar, Toyoda Gosei and Osram.  More recently, in 2008, she filed complaints with the US International Trade Commission (ITC) against numerous companies, including such luminaries (pardon the pun) as Sony, Nokia and Hitachi.

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