29 July 2010

An Oblique Commercial Announcement...

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Patentology is committed to keeping the main blog dedicated to independent reporting and opinion, and free of overt promotional or other commercial content. 

However, we cannot let this week pass without a brief nod to an event that is the culmination of much hard work by many of our colleagues over the past few months.  On Monday 26 July 2010 our employer launched a new look, and a new approach to business, which we are very excited to share with the world!  As promised, however, no pressure, no names and no links right here.  Interested readers will have no trouble tracking us down via the "About" page.

Enough said, we now resume normal programming...
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28 July 2010

Method for Commercialising Patentable Inventions Found Neither Patentable nor an Invention

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Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010)

Hearing in relation to examiner's rejection of a patent application - whether the claimed invention a manner of manufacture - whether the claimed invention involves an inventive step

In this Patent Office decision, the Commissioner's Delegate, Deputy Commissioner Phil Spann, considered whether a claimed method for commercialising inventions constituted patentable subject matter (ie was a "manner of manufacture" under the Australian law), and also whether the method involved an inventive step (ie was non-obvious).

The answer to both questions was, in this case, an emphatic "no".
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26 July 2010

Federal Court Reprimands Time-Wasting Litigants

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Hunter Douglas Inc v MarketMakers (Aust) Pty Ltd [2010] FCA 751 (20 July 2010)

In a decision that "never was", Justice Yates in the Federal Court of Australia has warned litigants, in no uncertain terms, against wasting the court's time by using litigation as a tool to facilitate negotiations.

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22 July 2010

What Do You Think About Software Patents?

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Despite the fact that most major patent offices around the world have been granting patents for at least some classes of computer-implemented inventions for over two decades, the patentability of software remains controversial and continues to receive regular attention from courts, legislators, and other interested parties.

As reported here last week, the New Zealand government appears to be pressing ahead with a move to significantly limit the scope of patentable software.  This year, both the US Supreme Court (in Bilski v Kappos) and the European Patent Office Enlarged Board of Appeal (in G 0003/08) have been given cause to reconsider the issue, and in both cases elected to preserve the status quo, much to the consternation of software patent opponents.

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21 July 2010

Australian Inventor of "Black Box" Dies, Aged 85

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The Age newspaper reports this morning that Dr David Warren, the Australian inventor of the "black box" flight recorder, has died in a Melbourne nursing home, aged 85.

Despite featuring prominently as a "famous Australian invention" in the foyer of the IP Australia offices in Canberra, and having been made the subject of an "Australian Innovations" postage stamp (right) commemorating the centenary of the Australian Patent Office in 2004, we are not aware of Dr Warren's "black box" (which is actually bright red or orange, to make it easier to find) ever having been the subject of a patent.  The 1961 date of invention indicated on the commemorative stamp also appears inconsistent with the historical record.

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20 July 2010

Statistics II: How Many Examiners Does the USPTO Need?

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For this second in a short series of data-heavy reports, we set out to examine the USPTO's performance data in some detail, in an effort to determine how realistic (or otherwise) are the goals and benchmarks set out in the recent Draft USPTO Strategic Plan for FY 2010-2015.  We confess that we did not commence the exercise with high expectations, and we anticipated that we might produce the common type of cynical report that often follows these kinds of crystal-ball-staring exercises.

However, we have ended up forming a view that the USPTO's goals, in terms of reduction of the backlog of pending applications, and achieving and maintaining low pendency time, are quite attainable.  Furthermore, the increase in size of the examining corps proposed in the Strategic Plan is more than adequate to achieve these goals.  A number of current proposals, pilot programs and other initiatives are all likely to have a positive impact.

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19 July 2010

Court Pours (Stored) Water on Employer's Claim to Ownership of Employee Designs

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Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735 (15 July 2010)

This is a case relating to a registered design, rather than a patent. However, Patentology claims interest on this occasion because it addresses an issue in common with patent rights, namely the circumstances in which an employer will (or, in this case, will not) have a claim to ownership of employee inventions.

The take-home message from this case, as in similar cases in the past, is that an employer is not entitled to assume ownership of the products of their employees’ efforts, including patentable inventions and registrable designs, unless they have actually been produced pursuant to the employees’ paid duties.

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16 July 2010

Confirmation that New NZ Patents Act Will Exclude "Computer Programs"

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We previously reported (here) that the New Zealand Commerce Committee had recommended an exclusion for computer programs following their review of the proposed Patents Bill, in view of numerous submissions from interested parties.

We also reported (here) on subsequent indications that Commerce Minister Simon Power was contemplating a partial backdown on supporting this recommendation.

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So You Want to Attack an Invalid PCT Application...

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The World Intellectual Property Office (WIPO) has been working on a number of enhancements to the international patent application system operating under the Patent Cooperation Treaty (PCT), in response to a study by the International Bureau (IB) entitled “The Need for Improving the Functioning of the PCT System”.

According to the current (July-August) edition of the PCT Newsletter, a number of recommendations were endorsed at a recent meeting of the PCT Working Group.

One of these, reportedly due to be implemented in the near future, is to develop an online system to accept third party observations in relation to pending PCT applications.  This will enable any person having information (typically prior art) relevant to the validity of claims in a pending PCT application to submit that information via a web form hosted on the WIPO site.  The submitted documents would be accessible to international examiners, to examiners in the various national offices, and to third parties (via the PATENTSCOPE service).

Similar provisions are already in place at some national patent offices.  For example, any third party can submit observations and pertinent prior art in respect of any application pending before the European Patent Office (EPO), which will generally be considered by the Examining Division.  In Australia, section 27 of the Patents Act 1990 provides for any person to submit information to the patent office that may affect the validity of the claims of a patent application.

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14 July 2010

"Ich Bin ein Jelly Doughnut" - Is Machine Translation the Key to a Pan-European Patent?

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There is no question that the quality of machine translations between a variety of languages is gradually improving.  If a new proposal from the European Commission is ever put into effect, many users of the European patent system may find themselves reliant on computer-generated translations, for non-legally-binding "information" regarding the patent rights of their competitors in Europe.

The Commission is attempting once again to resolve the impasse over language and translation, and clear the way for the implementation of a unitary patent registration and enforcement regime covering the entire European Union.

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Innovation Patents Flop Like Stunned Mullet

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Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2010] FCA 723 (12 July 2010)

Australia's second-tier patent, the Innovation Patent, has been dubbed "the strongest patent in the world".   This has been as a result of court decisions that have demonstrated the very great difficulty of invalidating innovation patent claims (other than on grounds of clear anticipation) due to the very low threshold of "innovative step". 

It is now established that the innovative step enquiry is no more than a modified novelty test requiring nothing more than the presence of at least one meaningfully functional novel feature when a claim is compared to each individual item of prior art separately.  Whether or not the novel feature has any inventive "merit" is completely irrelevant to the test.

Following earlier court decisions, one of our colleagues has speculated that there may be a flip side to the low threshold of validity, namely the possibility that innovation patent claims might be interpreted relatively narrowly in order to avoid giving too much scope to these almost indestructible patent rights.  This decision of the Federal Court of Australia provides the first indication that this may indeed be the case.

Furthermore, the judge in this instance (Spender J) appears to have shown a particular willingness to find an innovation patent invalid on alternative grounds, when an attack based on lack of innovative step fails.

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13 July 2010

Statistics I: The USPTO Backlog and Applicant Behaviour

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"The are three kinds of lies: lies, damned lies, and statistics."
The above quotation, popularised by Mark Twain but probably wrongly-attributed to Benjamin Disraeli is generally trotted out to attack weak positions supported by questionable statistics, or to attack strong positions by disparaging reliance upon statistical information.

However, today we are fascinated by an example of solid statistical analysis used to investigate a plausible proposition, that in fact turns out to be completely without basis.  This is a story about what happens when you start out by asking the wrong question, even if everything you do from then on is right!  The truth is that statistics do not always set out to be bad, sometimes they're just drawn that way.

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10 July 2010

09 July 2010

When is "Secret Prior Art" Not Prior Art?

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In re Giacomini, No. 09-1400 (Fed. Cir. July 7, 2010)

In light of this decision by Judge Rader, we are today struggling to come to grips with the precise nature of the relationship between a US provisional patent application, and a subsequent corresponding nonprovisional application.

In re Giacomini addresses the question of whether, and in what circumstances, the prior art effect of a US patent under section 102(e) of the US Patent Code dates from an initial provisional filing date rather than the filing date of a nonprovisional application claiming the benefit of the provisional.

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08 July 2010

Pharmaceutical Extensions and International Inequities

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H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 (11 June 2009)
Ortho-McNeil Pharmaceutical, Inc. v. Lupin Pharmaceuticals, Inc., No. 09-1362 (Fed. Cir. May 10, 2010)

"White powder" (or, indeed, powder or other chemical substances of any colour) is not within Patentology's usual area of expertise, and we generally rely upon various colleagues to educate us in this area.

Yet we could not help but notice two recent decisions, one in Australia and one in the US, which resulted in completely opposite outcomes in otherwise analogous circumstances.  We will therefore endeavour to explain our take on these decisions.

In order to do so, we will need to provide a little background, firstly on the provisions for extending the term of pharmaceutical patents, and secondly on the specific chemical issues in these cases.  If you are familiar with this background, click here to jump to the conclusions.

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06 July 2010

The "Morality" of Gene Patents

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Patentology notes this contribution in today's Melbourne Age newspaper to the "gene patent" debate, by IP lawyer Karen Abidi.

Ms Abidi brings some balance to the debate surrounding genetic patents when she points out that a genetic patent does not grant anyone "ownership" of any person's genes.  However, she places herself firmly on one side of the debate in stating that isolated genes are not inventions, but discoveries, and "there is a moral case against patenting them."

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05 July 2010

Is That a Flashlight in Your Pocket...?

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To prove that we are not all about seriousness and gravitas here at Patentology, we are amused to learn that Interactive Life Forms, LLC ("ILF") has brought suit in the US District Court for the Western District of Texas against more than 20 companies it accuses of infringing two patents that cover a sex toy for men that resembles a flashlight, known as the "Fleshlight".

Obviously, this is a very serious matter for ILF, which is just as entitled to protection for its innovative products as companies in any other industry.  But the schoolboy in us cannot help sniggering just a little behind our hand over this one, as we wonder whether this case is going to get on a "rocket docket"!

Some of the more entertainingly-named respondents include Honey's Place Inc, Liberator Inc, Satistec LLC, Polydigitech Inc, Sawhorse Enterprises Inc, and (of course) Gigglesworld Corporation.

Who knew that the market for male sex toys disguised as everyday household items was so competitive?!

You can, if you feel so inclined, read the full complaint, and the two related patents US 5,782,818 and US 5,807,360.

We will keep you posted and/or enlighten you, if we hear of any further developments in this case!
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02 July 2010

Prison for Infringement of IP Rights in Australia!

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Deckers Outdoor Corporation Inc. v Farley (No 8) [2010] FCA 657 (24 June 2010)

Contempt - Power of the court to punish contempt - whether disobedience of court order constitutes contempt of court

With only a small number of exceptions (mostly related to copyright), infringement of intellectual property rights is not generally a criminal offence in Australia.  However, this recent decision of Justice Tracey in the Federal Court of Australia demonstrates that injunctions against continuing infringement can have very sharp teeth!
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Update on Proposed NZ Computer Program Exclusion

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We previously reported here on the New Zealand Commerce Committee's recommendation that computer programs be excluded from patentability.

In more recent developments, New Zealand opposition MP Clare Curran has reported on the Labour Party blog Red Alert that NZ Commerce Minister Simon Power has twice publicly indicated that the government would support the computer program exclusion, but that "backroom lobbying by the organisation [NZICT] that includes major software patenters has resulted in the Ministry of Economic Development backing away from the Commerce Committee’s recommendation and instead redrafting the Bill along the lines of the European Convention."

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01 July 2010

As If Patent Litigation Were Not Already Expensive Enough...

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CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd [2010] FCA 671 (28 June 2010)

Patents Act 1990 - Section 105 - application for direction to amend - Discovery - whether further discovery of documents relevant to s105 application should be granted.

This decision breaks no new ground, but appears to be an object lesson on the potential consequences of cutting corners in drafting and prosecution of a patent application.  On the face of it, it seems to us that the situation that has arisen here could have been avoided, or at least rendered less critical, by employing a different claim strategy.  Patent drafters and prosecutors take note!

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