31 December 2011

Australian Taxpayers Dig Deep for ‘Trade Liberalisation’ in LDC’s

WTO Building, GenevaMany Australian taxpayers – this one included – may be surprised to learn that we are collectively donating A$18 million for ‘trade facilitation to support the Least Developed Countries’ (LDC’s) in their endeavours to reduce or eliminate tariffs and ‘non-tariff barriers’ in order to benefit through global free trade.

You might have thought that our government would be loudly promoting this magnanimous gesture, but in fact we might not have found out about it if the World Intellectual Property Organisation (WIPO) had not issued a thank you note media release shortly before Christmas, announcing ‘an Australian donation of A$2 million for projects to help developing and least developing countries (LDC’s) build capacity in the field of intellectual property (IP) and ensure they were in a position to actively participate in the benefits of innovation and the knowledge economy.’

And we might not even have noticed the WIPO media release if it had not been kindly pointed out on the always-on-the-ball IPKat blog earlier this week.

The IPKat, and the WIPO release, both inform us that this is part of ‘a A$16 million contribution announced at the 8th World Trade Organization Ministerial Conference’.

So, armed with this clue we went in search of further information about our significant financial contribution to global free trade and IP capacity-building…

28 December 2011

Why IP Australia is Clearly Wrong About Research Affiliates

Research Affiliates, LLC. [2010] APO 31 (17 December 2010)
Research Affiliates, LLC [2011] APO 101 (5 December 2011)

Manner of manufacture – whether method, system and computer program product for generating a weighted securities index is patent-eligible

RAIn this continuation of IP Australia’s ‘war on business methods’, a Delegate of the Commissioner of Patents has, for a second time, rejected claims directed to an invention directed to the construction and use of passive portfolios and indexes for securities trading.

A first set of claims was rejected in a decision issued on 17 December 2010, with that decision subsequently being appealed to the Federal Court of Australia.  However, the applicant – originally the inventor Robert D Arnott, and subsequently the assignee, Research Affiliates LLC – had filed a divisional application with slightly different claims, and the appeal was placed on-hold pending a decision on this further application.

The outcome in the second case is unsurprising.  The Delegate (who also issued the first decision) has not even bothered to provide full reasoning for his decision, instead settling for a comparison table to explain why the reasons in the first decision apply also to the revised claims of the divisional application.  Indeed, he has gone a step further, stating that the divisional claims constitute ‘an even greater contravention’ of the requirement to define a manner of manufacture than the claims of the parent application.

Research Affiliates has now appealed the second decision also.  We expect that the two appeals will be joined to a single proceeding, to be heard together.

We are hopeful that the appeals will be successful.  IP Australia’s decisions in these cases are not merely wrong, they are demonstrably inconsistent with very clear statements made by the Full Court of the Federal Court of Australia (by which a single judge of the court is bound) plainly indicating that the subject matter of the Research Affiliates claims, in both the parent and divisional applications, is patent-eligible in Australia.

23 December 2011

Patent Attorney Sails to Hobart, Raising Money for MS Research

Kiss Goodbye to MSStarting on Boxing Day – when many of us will be relaxing at home, and recovering from Christmas festivities, one of our colleagues at Watermark Intellectual Asset Management, Ian Lindsay, will be amongst the crew of the yacht Kiss Goodbye to MS battling whatever nature decides to dish up this year in the Rolex Sydney Hobart Yacht Race.

Ian is a regular crew member on the yacht here in Melbourne, which normally goes by the name Beyond Outrageous.  However, for the Sydney-Hobart race it will be kitted out with sails bearing giant red lips in support of the Kiss Goodbye to MS campaign, which will run officially from May 2012.  One of Ian’s fellow crew-members has MS (multiple sclerosis), and anyone who knows someone living with this disease – or is at least familiar with the work of Michael J Fox – will be aware of just how insidious it is.

Watermark is proud to be sponsoring Kiss Goodbye to MS in its efforts to raise money for MS research – and also, hopefully, to achieve success in the yacht race!  IP Australia is also doing its bit, incorporating the efforts of Ian and the rest of the crew into its ‘IP on the High Seas’ feature.

You can sponsor Ian – who is already over half way to his target of raising A$5000.00 – through his fundraising page at EverydayHero.com.au.  If you are a regular visitor to this blog, then you have, indirectly, already made a small contribution – we have donated 5 cents for each one of the 2327 ‘unique visitors’ that Google Analytics tells us have visited the site in the past month.

Many organisations are competing for your charity dollar at this time of year, all of them worthy and deserving causes.  While some others may seem more specific to the time of year, the fact is that all charities work hard throughout the year, but rely on the extra generosity of spirit during the festive season for a large portion of their public financial support.  Please consider helping Ian to reach his goal, and then track his progress via the Sydney Hobart Yacht Race web site.

That link for donations, again, is www.everydayhero.com.au/ian_lindsay.

And happy holidays to everyone!  However you celebrate this time of year, please do so safely – we hope that you will continue to follow the blog in 2012.

22 December 2011

IPWatchdog & Patently-O Neck-and-Neck in ABA BLAWG 100!

In what is becoming something of an annual derby, the two blogs widely-recognised as leaders in US IP law, Dennis Crouch’s Patently-O and Gene Quinn’s IPWatchdog, are once again slugging it out for the title of top-blawg in the 2011 ABA Journal Blawg 100.

Indeed, the two IP law blogs are the clear leaders in their category – each having over ten times the vote of any other contender – but they are also currently numbers two and three overall, out of the 100 nominees, with only the New York Law School students’ blog Legal As She Is Spoke ahead of them (by some margin – one suspects on-campus campaigning might be partly responsible).  But the China Law Blog is pretty hot on their heels.

So, have you considered voting in the poll? And if so, then for whom?

Apple v Samsung Down Under – 2011 Redux

Apple-GalaxyThe opening gambit in the Australian arm of the global dispute between Apple and Samsung finally drew to a close earlier this month, neatly typing up a few loose ends in what must surely be the biggest Australian patent story in recent memory. The stage is now set for the main event – full trials on infringement and validity of various Apple and Samsung patents – during the course of next year.

A review of the story so far is therefore timely, as the Australian courts close down for an extended break over the holiday season, before getting back into full swing for the new year in February 2012.


On 9 December 2011, the High Court of Australia refused Apple's request for special leave to appeal from a decision of a Full Bench of the Federal Court denying a preliminary injunction against the launch of the Galaxy Tab 10.1. (Article: Breaking: High Court Rejects Apple Appeal Bid.)

In what turned out to be a temporary win for Apple, an injunction had originally been granted by a single judge of the Federal Court, pending a full trial in relation to Apple’s claims of patent infringement. (Article: Samsung’s ‘Eyes Wide Open’ Sinks Australian Galaxy Tab 10.1.)

Samsung’s tablet is now on sale in Australia, just barely in time for Christmas, and four months after the originally-planned launch in mid-August.

21 December 2011

IP Australia’s Escalating War on ‘Business Methods’

elephant-in-roomWe would much prefer to be spreading Christmas cheer at this time of year, but unfortunately the time has come to address the elephant with which many Australian practitioners in the information technology space have been sharing a room for too long now.

The elephant in question is the alleged controversy over so-called business method patents.

We have written numerous articles about individual cases, and imagine that by now it is pretty clear that we are not in agreement with IP Australia’s current policies and practices in this area.  Recent examples include Another Computer-Implemented Invention Struck Down, Australian Patent Office Shoots Down Another ‘Business Method’, Computer-Implementation No Insurance Against Rejection, and Computer-Implemented Invention Found Unpatentable.

We have now been quoted extensively in a current blog article by Joff Wild on the IAM Magazine web site, in relation to what is now clearly an intentional campaign by IP Australia to challenge the patentability of anything they consider to be a ‘business method’ invention.

Anybody – wherever they may be in the world, but Australian businesses in particular – who invests significant amounts in developing innovative new products and services which find application in the financial services sector, or are directed at improving the efficiency of organisational processes in any sector, needs to be aware of the current question-mark hanging over the availability of  patent protection for such innovations in Australia.

You think maybe we are exaggerating?  Sorry, but we no longer think that there is any scope to give IP Australia the benefit of the doubt here.  We offer the following four examples as evidence that IP Australia is waging a deliberate campaign against ‘business methods’.

15 December 2011

Federal Court Notes Possible Drafting Error in Patents Act

DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2011] FCA 1411 (7 December 2011)

Amendments – application to Federal Court for direction to amend patent – correction of claim dependency

Obvious mistake!In an otherwise unremarkable decision, directing the correction of a trivial error in the claims of a patent owned by Garford Pty Ltd, Justice Yates in the Federal Court of Australia has noted, in passing, a possible oversight in the drafting of the Australian Patents Act 1990 (‘the Act’).

In particular, on one interpretation of section 105 and section 102 of the Act, a court may be barred from directing an amendment to correct a clerical error or an obvious mistake.  If this interpretation were correct, then it would also apply to correction of such errors by direct application to the Patent Office under section 104 of the Act.  This would be a disturbing flaw in the drafting of the Act which could significantly complicate the making of certain amendments which should, in fact, be the simplest cases.

13 December 2011

IP Australia Proposes – Mostly – Modest Fee Increases

FeesUpBack in September we reported the announcement by IP Australia, which encompasses the Australian Patent, Trade Marks and Designs offices, that it was about to conduct a periodic review of the fees charged for various services (see IP Australia News – Fee Review and New Web Site). 

The purpose of the review is to ensure that the existing IP Australia cost recovery arrangements, fees and charges are transparent and consistent with the Australian Government Cost Recovery Guidelines 2005 and the Australian Government cost recovery policy.

The first stage of the review process is now complete, and a Consultation Paper setting out the details of proposed fee changes has been published for comment on the IP Australia web site.

Two stages of fee increases are proposed to take place in 2012, with most changes taking place on 1 July 2012, and a few to follow later, on 1 October 2012.  The later commencement date apples to those fees associated with services for which IP Australia plans to introduce new online or B2B service channels.  In general, where both paper filing and online filing options are available, an incentive is provided to improve efficiencies by charging a lower fee for use of the online channel

Additionally, a new ‘preliminary search and opinion’ service, and associated fee, is expected to commence on or after March 2013.

The arrangements proposed in the Consultation Paper are intended to cover a period up until June 2016, at which time fees may again be adjusted following a review.

09 December 2011

Breaking: High Court Rejects Apple Appeal Bid

Samsung has had a win today in Australia, where the High Court has refused Apple's application for 'Special Leave' to appeal from last week's decision of the Full Federal Court overturing the grant of a preliminary injunction against the launch of the Galaxy Tab 10.1 (see Samsung v Apple – A Closer Look at the Appeal Decision).

Samsung will now be free to sell its tablet in Australia, at least pending a full trial and decision in Apple's primary infringement case in the Federal Court before Justice Annabelle Bennett.  Reportedly, we should see the galaxy Tab 10.1 in Australian stores before the end of next week, for those looking to pick up a last-minute Christmas present or two!

There is, at present, no date set down for the main infringement case to be heard.  However, Samsung's counter-suit against Apple's iPhone 4S, and other 3G devices, is scheduled to be heard during March and April next year (see Samsung Drops Injunction Demands, Grabs Reins in Apple Dispute).

07 December 2011

Australian Government Improves Access to Commercialisation Grants

GrantedThe Australian Minister for Innovation, Industry, Science and Research, Senator Kim Carr, has announced changes to the governments Commercialisation Australia program which will make the grants more affordable and accessible to Australian businesses developing new products, processes or services.

From today (7 December 2011) Australian entrepreneurs will not have to repay the program’s Early Stage Commercialisation grants.  Additionally, these grants will be available to more businesses, with the maximum annual turnover permitted by eligible applicants has risen from $20 million to $50 million.

In addition, growing businesses that can benefit from access to skilled managers will now be able to apply for an Experienced Executives grant of up to $350,000, increased from $200,000.

Announcing these changes to Commercialisation Australia's grants, Senator Carr said that they would give Australian inventions a better chance of flourishing in the market place.

Further changes appear to be in the air, with the Minister also announcing that, from early 2012, eligible expenditure guidelines for Early Stage Commercialisation grants will be amended to provide broader support for the development of pilot manufacturing plants and innovative manufacturing facilities.

04 December 2011

Could Samsung’s US ‘Win’ Influence Australia’s High Court?

US-Flag-galaxyIn what could be a very timely decision for Samsung, Judge Lucy Koh in the United States District Court for the Northern District of California issued orders late on Friday, 2 December 2011, denying an interim injunction in the US patent infringement action which was initiated by Apple on 15 April 2011.

We have obtained a copy of the order, which is available for viewing in Google Docs, or for download as a PDF (2.7 Mb).

The order means that Samsung will be able to continue selling its Galaxy Tab 10.1, Galaxy S 4G, the Infuse 4G and the Droid Charge in the United States, until and unless Apple is ultimately successful at trial in establishing infringement by Samsung of at least one valid claim of the patents which it has asserted in the US proceedings. 

Significantly, despite denying a preliminary injunction at this stage, Judge Koh has indicated her provisional opinion that at least one of the four patents relied upon by Apple in the preliminary application is likely valid and infringed.  If that turns out to be so, then Samsung is potentially looking down the barrel of an expensive damages claim, unless it can settle its disputes with Apple in the meantime.

One ‘news’ item that has emerged from the publication of Judge Koh’s order – despite commercially-sensitive passages being substantially redacted – is the supposed revelation that, contrary to widely-held opinions, Apple is in fact willing to license at least some of its ‘smartphone/tablet’ related patents to its competitors, and has even negotiated with Samsung to do so.  (See, e.g., coverage by The Verge, Apple licensed iOS scrolling patent to Nokia and IBM, offered license to Samsung.)

The reason that this information should not come as any surprise is that (as we will discuss further below)  it was already revealed in Justice Bennett’s interlocutory decision in the Federal Court of Australia, again highlighted by a sea of surrounding redactions.

So, with Apple now denied a preliminary injunction in the US as well as in Australia (albeit on appeal), it seems that the stars may finally be aligning for Samsung.  However, it still faces the hurdle of a Special Leave hearing before the High Court of Australia this Friday (see High Court Grants Apple Further Galaxy Tab Reprieve).  So is it possible that the US decision could have any impact on the outcome here?

02 December 2011

High Court Grants Apple Further Galaxy Tab Reprieve

This morning at 9.30am, Justice Heydon heard arguments from Apple requesting an extended stay of the orders made on Wednesday by the Full Federal Court, overturning the injunction barring Samsung's Galaxy Tab 10.1 tablet computer from the Australian market.

The Federal Court granted a stay of its orders until 4pm today, to give Apple an opportunity to launch an application for Special Leave to appeal to the High Court.  While it would be impossible to schedule a hearing on such an application before the end of the week, the Federal Court determined that any further stay of the orders would be a matter for the High Court.

After hearing arguments from both sides, Justice Heydon granted Apple's request for a further stay, finding that the extension is necessary ‘to preserve the subject matter of a Special Leave application’, and ensuring that it will now be at least a further week before Samsung is able to bring stock of the Galaxy Tab 10.1 into Australia.

Samsung v Apple – A Closer Look at the Appeal Decision

Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 (30 November 2011)

Appeal from decision to grant interlocutory injunction – whether leave to appeal should be granted – principles to be applied when considering grant of interlocutory injunction – need to evaluate strength of the probability of success of applicant – need to take strength of probability into account when assessing the balance of convenience and justice – infringement – strength of prima facie case – invalidity – strength of prima facie case – balance of convenience – factors to be considered

Galaxy-Tab-MagnifierOn Wednesday we provided our initial thoughts on the decision of Justices Foster, Dowsett and Yates overturning the grant of an interlocutory injunction to Apple, barring the sale of Samsung’s Galaxy Tab 10.1 tablet in Australia.  For most readers the case will need no introduction.  Anybody needing to catch up can read back over the various articles we have posted since the dispute began.

Before looking at the decision in more depth, we have to say firstly that Patentology feels somewhat vindicated by the judgment of the Full Court.  Way back on 2 August 2011, when the Apple and Samsung juggernaut first rolled into Justice Bennett’s courtroom, we predicted that Apple would not be granted an interlocutory injunction (see It’s Apple vs Samsung Down-Under as Smartphone War Escalates).  From this, we suggested, further consequences would flow, such as an increased likelihood that Apple and Samsung would reach some form of global settlement of their ongoing disputes before the matter could make it to a full trial in Australia.

Justice Bennett put paid to that course of events, by holding a number of days of hearings and then, against all of our expectations, granting Apple its injunction.  This was, as the Full Court has now confirmed, an error on her part, meaning that – on this occasion at least – our original prediction was a correct evaluation of the relevant law.  An interlocutory injunction in a patent case – preventing sale of an allegedly infringing product prior to the patentee proving infringement – ought to be an extraordinary remedy only granted in exceptional cases. 

Yet the time taken to reach this point has clearly been to Apple’s benefit.  If Samsung now releases the Galaxy Tab 10.1 to the Australian market, it will be four months later than its original intended launch date, and less than three weeks before Christmas.  Apple’s early wins not only in Australia but elsewhere, such as Germany and the Netherlands, appeared to catch Samsung off-guard.  And while the sparring companies are starting to look more evenly-matched, Samsung has certainly had to come back from behind.  As matters have transpired, our prediction of a fairly orderly tit-for-tat leading to a truce was simply not to be.

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