28 February 2023

Zombie Patents! Can Expired Innovation Patents Still Be Examined and Certified?

ZombiesThe Australian Patent Office recently issued two decisions on the examination and certification of innovation patents owned by UK company Diogenes Limited: Diogenes Limited [2023] APO 5 concerning innovation patent no. 2020104437 (‘Diogenes 1’); and Diogenes Limited [2023] APO 8 concerning innovation patent no. 2021103809 (‘Diogenes 2’).  Both patents claim inventions relating to electronic pool wagering systems and – unsurprisingly, given this subject matter – both were found to be unpatentable under Australia’s ‘manner of manufacture’ approach to patent-eligibility.  However, it is not the substantive reasons for refusing to certify the patents that is of most interest.  What is unusual about both patents is that they had each expired before an initial examination report had even been issued.  Despite this, IP Australia proceeded with examination, issuing three reports on patent no. 2020104437, and two reports on patent no. 2021103809, before in both cases accepting requests to be heard and issuing the decisions noted above.  Just to repeat for emphasis, all of this activity occurred after the patents had expired.

The rationale for proceeding with examination is given in Diogenes 1 at paragraph [10], where the Hearing Officer observed:

It is not usual for the Commissioner to undertake actions on an expired patent. However, I note that, in order for the patentee to enforce their rights in relation to an innovation patent, it is necessary for that patent to be examined and certified. In such circumstances, and noting that the patentee could potentially bring infringement proceedings up to 6 years after expiry (assuming infringement proceedings occurred just prior to the expiry date – see subsection 120(4) of the Act), undertaking examination (and this decision) after the expiry date is appropriate.

I find this statement confusing, and suspect that the Hearing Officer may have meant to suggest that the infringement itself – rather than the ‘infringement proceedings’ – may have occurred prior to the expiry date of the patent.  In any event, we will get to the circumstances in which an expired innovation patent, that was not examined and certified within its lifetime, may nonetheless be enforceable.

Diogenes 2 was decided by a different Hearing Officer, who (at paragraph [4]) adopted the reasoning of Diogenes 1 for proceeding with examination of an expired innovation patent.

In the Diogenes cases, examination of the innovation patents was requested while they were both still alive – albeit, as we shall see, just barely!  But these decisions raise the question of whether a (former) patentee could request examination of an expired innovation patent and, in such a case, whether the expired patent could be retrospectively certified and enforced up to six years after expiry.  If so, then this might apply not only to patents that expired at the end of their maximum eight year term, but also to patents that ceased earlier than this due to non-payment of an annual renewal fee.

The upshot is that zombie innovation patents are able to rise from the dead and reach back in time to capture historical infringements!

20 February 2023

IPH Sues Again, as Competition Hots Up for Australian and New Zealand Patent Filings in 2022

CompetitionAs I recently reported, Australian (standard) patent filings in 2022 remained close to the historic highs of the previous year.  This implies, of course, that patent attorneys filing applications on behalf of domestic and foreign clients should, overall, also have maintained high numbers of new filings.  But, of course, individual firms fared differently in the competition for this work.  Looking at total new standard patent filings across Australia and New Zealand, gains were made by the two firms owned by QANTM IP Limited (ASX:QIP), namely Davies Collison Cave (up by 5.7% to 4094 applications) and FPA Patent Attorneys (up by 3.9% to 2444 applications, after incorporating filings originally made by Cotters).  Other firms to make notable gains, in terms of both filing numbers and percentage growth, were FB Rice (up by 7.6% to 3697 applications), Wrays (up by 16.2% to 1380 applications) and RnB IP (up by 10.5% to 864 applications).  Firms that also made good percentage gains, albeit off a lower base of filings, included Allens (6.0%), Michael Buck IP (6.6%), Adams Pluck (22.6%), Dentons (30.7%) and Collison & Co (18.7%).

On the other side of the ledger, Madderns’ filings fell by 13.5%, to 801 applications.  Within the group of firms owned by IPH Limited (ASX:IPH), Spruson & Ferguson, AJ Park and Pizzeys all saw declines in new filings (by 7.9%, 2.8% and 2.9% respectively), while Griffith Hack held steady with a small (0.6%) increase in filings.  IPH has just reported its half-year financial results (for July-December 2022) [PDF 255kB], and while the news was positive for the group overall – a 24% uplift in underlying earnings before interest, tax, depreciation and amortisation (EBITDA) to A$80.4 million – like-for-like EBITDA for the Australian and New Zealand IP businesses declined by 6%.  IPH has blamed this partly on travel expenses, with activity increasing following the end of COVID-related travel restrictions.  But it is apparent that a decline in Australian and New Zealand patent filings has also contributed. 

In related news from the IPH group, while Pizzeys settled its legal dispute with RnB IP late last year, Spruson & Ferguson recently commenced similar proceedings in the Federal Court of Australia (case no. NSD6/2023) against upstart firm GLMR and its four principals.  And, just as the founders of RnB IP were former employees of Pizzeys, the principals of GLMR are all former employees of Spruson and Ferguson.  Through its Federal Court action, Sprusons is seeking an order for preliminary discovery – presumably fishing for evidence of GLMR’s contact with Sprusons’ clients – which is precisely how Pizzeys commenced its action against RnB IP in June 2019.  To date, GLMR has filed just 194 applications (with the earliest being in February 2022).  However, it has also taken over responsibility for at least 629 applications that were previously filed and/or managed by Spruson & Ferguson.  It is early days yet, but we can perhaps expect to see this dispute take much the same course as Pizzeys v RnB IP.

Let’s have a look at the numbers in more detail.

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