10 December 2024

New IP Scam Alert: Fraudsters Now Impersonating Registered Attorneys

Fraud AlertIn a concerning development, the authority that regulates the Australian and New Zealand IP professions, the Trans-Tasman IP Attorneys Board (TTIPAB), has warned attorneys about an ongoing scam involving the impersonation of registered IP attorneys to defraud IP rights owners.  Specifically, the TTIPAB has warned that ‘IP Australia became aware of a scam that is currently circulating, where applicants are pressured into filing a trade mark via emails fraudulently purporting to be from a well-known registered attorney.’  Of course, this type of scam could easily target any type of IP right. The threat is particularly worrying because it undermines one of the traditional safeguards against IP-related scams – checking whether correspondence comes from a registered attorney.

While I have not seen the emails in question, it appears that what makes this new scam especially disturbing is that the fraudsters are not simply creating fictitious firms, attorneys, or official-sounding registration authorities, but are actually impersonating a real registered attorney.  Since the Register of Patent and Trade Marks Attorneys is publicly accessible, scammers can easily obtain legitimate attorney details to make their communications appear more credible.

29 November 2024

Is It Time to Talk (Again) About Reforming Australia’s ‘Best Method’ Requirement?

It's cool to be vaccinated, even if you're a pig!The recent Full Federal Court decision in Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc [2024] FCAFC 145 has highlighted fundamental flaws in the Australian patent law’s ‘best method’ requirement.  While the court's application of existing principles appears sound, the resulting analysis reveals that the requirement is not only arbitrary in its operation, but potentially counterproductive to innovation.

The Australian Patents Act 1990 sets out requirements for patent specifications in section 40.  These include that the specification must: disclose the invention in a manner clear enough and complete enough for the invention to be performed by a person skilled in the relevant art (the enablement requirement);  disclose the best method known to the applicant of performing the invention (the best method requirement);  and that the claims must be supported by matter disclosed in the specification (the support requirement).  While failure to satisfy enablement or support might affect only certain claims, failure to disclose the best method is fatal to the entire patent.  It is, in effect, a ‘nuclear’ ground of invalidity that cannot be remedied by amendment or partial revocation.

The Zoetis case concerned three patent applications for pig vaccines that were found invalid for failing to disclose the best method of performing the inventions.  While the applications disclosed ranges of antigen concentrations that would work, they did not reveal the specific concentrations used in Zoetis's successful experimental vaccines.  The court’s analysis of why this was fatal to the applications exposes deep problems with the requirement itself.

28 November 2024

Hindsight by Stealth? Pre-RtB ‘Ascertainment’ After Sandoz v Bayer

Looking for documentsA recent Full Court decision suggests that demonstrating prior art could be ‘reasonably expected to be ascertained’ under the pre-Raising the Bar (RtB) law may be considerably easier than previously thought.  But has the pendulum swung too far?  In relaxing the evidentiary requirements for establishing that prior art information would have been found by the skilled person, the Full Court may have undermined a safeguard against hindsight analysis that was inherent in the prior law.

In Sandoz AG v Bayer Intellectual Property GmbH [2024] FCAFC 135, the Full Court has taken a markedly different approach to prior art ‘ascertainment’ than the primary judge (Rofe J in Sandoz AG v Bayer Intellectual Property GmbH [2023] FCA 1321).  While acknowledging that whether prior art ‘could be reasonably expected to have been ascertained’ is a question of fact, the Court has effectively lowered the bar for the evidence required to establish this factual foundation.  This raises a question of whether the practical difference between the old and new law is as great as previously assumed.

The primary judge took what might be called a ‘real world’ approach to ascertainment.  Her Honour wanted to see evidence of the complete search process that would have been undertaken by the skilled person, without knowledge of the target document.  This included evidence of searches across multiple databases using various relevant search terms, and – critically – how the skilled person would have identified the relevant document from among all the search results that would have been generated.

The Full Court rejected this approach as too demanding.  Instead, the Court held that once it is established that a document would have been found in a relevant database search, it is not to the point that additional searches might have been performed or that other documents might also have been found.

This might seem like a practical approach – after all, if a document exists in a database that would have been searched, using search terms that would have been used, isn't that enough to show it could have been found?  But this reasoning potentially introduces precisely the kind of hindsight analysis that the ‘ascertainment’ requirement was – arguably – meant to guard against.

27 November 2024

Full Court Delivers Hot N Cold Comfort in Katy Perry Trade Mark Battle

Two rightsWhile this blog normally focuses on patent matters, occasionally a case comes along that warrants stepping outside my usual lane.  The Full Court of the Federal Court’s decision in Killer Queen LLC v Taylor [2024] FCAFC 149, delivered last week, is one such case.  After all, it’s not every day that an Australian small business owner finds herself locked in a trade mark dispute with an international pop superstar over their shared name.

The case is a sobering reminder that sometimes you can wake up to find that your own name has effectively been monopolised by someone more famous – even if you got there first. It's enough to make you want to Roar in frustration!

02 September 2024

Here We Go Again? Aristocrat Eyes High Court After Grant of Leave to Appeal

Roundabout A single judge of the Federal Court of Australia, Justice O’Bryan, has granted Aristocrat Technologies Australia Pty Ltd (‘Aristocrat’) leave to appeal a decision issued back in March this year.  In that decision, Justice Burley found that all remaining claims in a group of innovation patents relating to computer-implemented electronic gaming machine (EGM) technology did not define patent-eligible subject matter.  The grant of leave opens up an opportunity for Aristocrat to ask the High Court of Australia to untangle the mess that it created back in 2022 when a six-judge panel split 3:3 on whether or not to allow an earlier appeal against a decision of the Full Federal Court relating to the primary claims of the same innovation patents.

The case has a complicated history.  For anybody who may just be joining us, or who requires a recap, here is the story so far in a nutshell.

  1. Way back in 2018, a Delegate of the Commissioner of Patents revoked four innovation patents relating to the implementation of a ‘feature game’ in an EGM (i.e. a secondary, or bonus, game triggered by the occurrence of a defined event in the ‘base’ game of spinning reels) on the basis that the patents did not claim a patent-eligible ‘manner of manufacture’ under Australian law: Aristocrat Technologies Australia Pty Limited [2018] APO 45.
  2. Aristocrat appealed to the Federal Court where, at first instance, Justice Burley determined that the claims were, in fact, directed to ‘a mechanism of a particular construction, the operation of which involves a combination of physical parts and software to produce a particular outcome in the form of an EGM that functions in a particular way’, and that this was patentable subject matter in Australia: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778.  (For more, see Federal Court Finds Computer-Implemented Gaming Machine Patent-Eligible in Australia.)  Importantly, this decision was based on consideration of a single claim that the parties agreed was representative of the primary claims in all four innovation patents.  The dependent claims of the patents were not considered at all in the judgement.
  3. The Commissioner of Patents was granted leave to appeal to the Full Federal Court, where all three judges on the panel agreed that the decision of Justice Burley should be overturned, and the matter remitted back for consideration of any residual issues relating to the dependent claims.  However, a plurality of two judges (Middleton and Perram JJ) based their decision on a new two step test – first asking whether the claims are for a ‘computer-implemented invention’ and then whether that invention can ‘broadly be described as an advance in computer technology’ – while the third judge (Nicholas J) instead took a more conventional path, observing that the substance of the claimed invention lay in the mere computer implementation of an unpatentable ‘scheme or set of rules for the playing of a game’: Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202.  (For more, see Patent-Eligibility of Computer-Implemented Inventions – Appeals Court Says an ‘Advance in Computer Technology’ is Required.)
  4. The High Court granted Aristocrat special leave to appeal.  Unfortunately, on the days of the hearing one judge was absent due to illness and – for whatever reason – the Court decided to proceed with a panel of six judges (which, astute observers will note, is an even number).  The panel split 3:3, meaning that, under section 23(2)(a) of the Judiciary Act 1903, ‘the decision appealed from shall be affirmed’.  This left the judgment of the Full Federal Court intact, notwithstanding that three judges of the High Court (Gordon, Edelman and Steward JJ) would have reversed it, and the remaining three (Kiefel CJ, Gageler and Keane JJ) would have upheld it on different grounds.  All six judges of the High Court explicitly or implicitly disapproved the novel two step test of patentability proposed by the plurality in the Full Federal Court: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29.  (For more, see High Court’s Failure Exposes the Festering Eligibility Sore in Australia’s Patent Laws.)
  5. In accordance with the orders of the Full Court, the case was remitted back to Justice Burley for consideration of the ‘residual issues’.  In the resulting judgment, his honour determined that the effect of section 23(2)(a) of the Judiciary Act is plainly that the Full Court decision is ‘affirmed’, that he was bound, as a single judge of the court, by that decision, and that he should not therefore have any regard to the reasoning of the High Court in reaching his decision.  As a result, Burley J found all of the remaining claims to be unpatentable under the plurality’s two step test: Aristocrat Technologies Australia Pty Limited v Commissioner of Patents (No 3) [2024] FCA 212.

Aristocrat sought leave to appeal this further decision of Burley J.  Section 25(2) of the Federal Court of Australia Act 1976 stipulates that applications for leave to appeal must be heard and determined by a single judge unless a judge directs that the application be heard and determined by a Full Court – which happens quite often in cases such as this, including in Aristocrat’s appeal from Justice Burley’s original decision.  On this occasion, however, Aristocrat expressly sought that the application for leave be determined by a single judge, separately and before the hearing of any appeal.  This preserves its option to have the appeal removed directly to the High Court under s 40(2) of the Judiciary Act.

With leave having now been granted by O’Bryan J in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2024] FCA 987, it seems reasonable to assume that Aristocrat will now apply to have the High Court take up the case directly.  But for those who may be hoping that this is a short-cut to having the Court resolve the impasse it reached in 2022, I regret that matters may not be quite so simple.

03 May 2024

Have Australia’s ‘Raising the Bar’ Law Reforms Suppressed Patent Oppositions?

BalanceAustralia has a pre-grant patent opposition system.  That is to say, once an application has passed examination and been accepted for potential grant as a patent, there is a period (of three months) during which anybody may oppose the grant.  The subsequent opposition proceedings – if they run their full course – consist of a series of evidentiary stages, legal submissions, and an oral hearing, following which the hearing officer (a delegate of the Commissioner of Patents) issues a written decision on the outcome of the opposition.  In the final reckoning, the patent application may emerge unscathed, it may be refused, or it may end up being granted subject to narrowing amendments. 

The patent opposition system recognises that the examination process is imperfect.  Examiners have limited time, resources and technical expertise.  Therefore, they may not always find the closest and most relevant prior art, or spot every technical and legal issue that might be identified by a motivated competitor to the patent applicant, equipped with a team of technical and legal experts.  Furthermore, opposed applications are presumably those that are of greatest concern to competitors, enabling the system to weed out invalid claims that have the greatest potential to unfairly stifle competition.

In the years prior to 2016, the number of oppositions filed each year was fairly consistently between 100 and 120.  In recent years, however, it has commonly been between 40 and 60.  In other words, there are now only about half the number of patent oppositions being filed than was the case just a decade ago.  So, if oppositions play an important role in the Australian patent system – and the policy rationale for having them asserts that they do – is it possible that they are now less effective than they once were?  And, if so, then why?

In this article, I will present data on all patent oppositions filed between 2008 and 2023.  I will demonstrate that the decline in patent oppositions appears to be associated with the commencement of the Raising the Bar (‘RtB’) IP law reforms in 2013.  Among other things, the RtB reforms introduced more stringent standards of patentability, particularly in relation to inventive step and the level of disclosure required to support broader patent claims.  The reforms also changed the standard of proof to be applied during examination and opposition proceedings.  I will show that in the post-RtB era, opposition proceedings have more frequently progressed through to a final decision, and that opponents have had somewhat greater success in completely eliminating opposed applications.  However, the overwhelming majority of opposed applications still result in granted patent rights, and in nearly half of all cases the opponent has been wholly unsuccessful and the patent has been granted with the originally accepted claims.

While the data cannot directly reveal the reasons for the significant reduction in opposition filings, I tentatively argue that the change in the standard of proof applied in patent oppositions may have had the unintended consequence of suppressing patent oppositions, and reducing the effectiveness of the opposition system.

05 March 2024

Large vs Small, Group Ownership vs Independent – What Factors Influenced Firms’ Patent Filing Share in 2023?

Business ups and downsAs I recently reported, Australian patent filings in 2023 fell slightly, by 2.4%, over the previous year.  This implies, of course, that patent attorneys filing applications on behalf of domestic and foreign clients should, overall, also have experienced a similar decline new filings.  But, of course, individual firms fared differently in the competition for this work.  Looking at new complete (i.e. non-provisional) patent filings across Australia and New Zealand, declines were experienced by all firms held within the two groups owned by Australian Securities Exchange listed entities IPH Limited (ASX:IPH) and QANTM IP Limited (ASX:QIP).  IPH firms Spruson & Ferguson, Griffith Hack, AJ Park, and Pizzeys filings declined by 5.0%, 3.6%, 14.9% and 6.9% respectively,  QANTM IP firms Davies Collison Cave and FPA Patent Attorneys filings declined by 13.2% and 8.8% respectively. 

But it was not only the listed group firms that saw declines in excess of the 2.4% average.  Of the leading ten firms, only Phillips Ormonde Fitzpatrick (+3.1%) and Madderns (+10.3%) achieved growth in filing numbers.  While ownership structure is one possible factor influencing client choice, firm size (irrespective of ownership) appears also to be (negatively) correlated with filing growth.  Additionally, the number of new patent filings fell significantly in New Zealand, which disproportionately impacted those trans-Tasman firms – most notably A J Park – with a higher exposure to the market for New Zealand patent services.

Overall, the share of Australian patent filings has continued to shift generally away from larger and/or listed group firms in favour of smaller independent firms.  But even this trend is not simple to unpack.  For many years now, IPH firms have shed filing share, while the QANTM IP firms have held fairly steady, although they experienced a notable decline in share in 2023.  On the other hand, the top six independent firms that have been in continuous operation since IPH initially listed in 2014 have collectively gained 6.3% filing share over this period.  However, bigger gains have been made by the numerous small (i.e. employing fewer than 10 patent attorneys), independent, practices that account for just over half of the trans-Tasman patent attorneys working in private practice.  There are over 150 such practices, including the two rapidly-growing recent entrants RnB IP and GLMR, which have collectively gained 11.8% filing share since 2014, and now account for nearly 23% of all Australian complete patent filings.

Let’s look at the numbers in more detail.

28 February 2024

LG Again Tops Australian Patent Filings in 2023, as Most of the ‘Usual Suspects’ Return

Winners' podium Over the past five years (i.e. since 2019) Korea’s LG Electronics Inc and China’s Huawei Technologies Ltd have consistently placed in the top five applicants for Australian patents.  Indeed, for the past four years they were in the leading three.  In 2021, Huawei came out on top with LG a close second.  In 2022, LG took top place, with IBM appearing from nowhere to push Huawei back into third.  And in 2023, LG has once again grabbed the top spot, with Huawei not too far behind, and IBM easing up on its Australian filing frenzy to slip back into equal 14th position with a ‘mere’ 100 applications.

Notwithstanding Asian companies holding the top two positions, US applicants dominated to top 30 filers, taking up 20 spots including six of the top 10.  This is no great surprise.  As the numbers in my previous article show, US residents filed 44% of all Australian patent applications in 2023, despite a 6% decline in US-originating filings.  While some applicants moved up or down the rankings, the overall make-up of the top 30 was similar to the previous year, with only eight exits/entries among the lower positions.  Furthermore, a number of the applicants entering the table are not unfamiliar names, having appeared previously before dropping out temporarily.

Once again, the leading Australian-based applicant was Aristocrat Technologies Australia Pty Ltd with 73 applications, followed by the Commonwealth Scientific & Industrial Research Organisation (CSIRO) with 54 applications – both slightly up on the previous year’s numbers.  Yet again the top New Zealand applicant was Fisher & Paykel Healthcare Ltd which, with 107 applications, comfortably out-filed the leading Australians.

Read on for a look at the numbers in more detail.

22 February 2024

Patent Filings in Australia Fell Again in 2023, but Applications from China are Bucking the Trend

2023 falling. Image generated by Google Gemini.In 2023 the total number of standard patent applications filed in Australia remained above 30,000 for the third year running, despite a 2.4% drop in filings.  This follows a decline of nearly 0.5% in the previous year.  However, whereas the decline in new applications in 2022 was due to fewer filings by Australian residents (with a slight increase in foreign-originating applications preventing a larger fall), the drop in 2023 was the result of nearly 800 fewer filings by foreign applicants.  As always, a majority of new filings were national phase entries (NPEs) derived from international applications under the Patent Cooperation Treaty (PCT).  But, for the first time since 2016, the number of PCT NPEs fell – by 3.2% – offset somewhat by a 14% rise in new direct national filings.  The number of divisional applications also fell in 2023, by 7.3%.

In some (very limited) good news for Australia, patent filings by domestic residents increased by 2.6%, while the number of provisional applications increased by 5%.  Unfortunately, however, two thirds of the additional provisional applications in 2023 were filed without the professional assistance of a patent attorney.  (I say ‘unfortunately’ because, as I have shown previously, the outcomes for self-represented applicants are generally abysmal, so for the most part they are wasting their time and what little money they are expending on fees to IP Australia.)

The top 10 countries of origin of applications filed in 2023 were the United States, Australia, China, Japan, the UK, Germany, Switzerland, South Korea, France and Canada.  There were substantial drops in the numbers of applications filed by applicants from the US (-6.0%), South Korea (-10.5%) and Canada (-14%).  The largest growths in filings were from China (12.1%) and Japan (5.2%).  China is once again snapping at the heels of Australia from second position on the league table.  This happened previously in 2020, when I (mistakenly) predicted that Chinese filings might surpass domestic filings as early as 2021.  But while it is taking longer than appeared likely a few years ago, it seems inevitable that Australians will soon fall behind Chinese applicants as users of the Australian patent system.

Given that the innovation patent system is being phased out, it should come as no surprise that just 106 innovation patent applications were filed in 2023 (down from 191 in 2022), all of which were necessarily derived from existing applications filed prior to 26 August 2021.  Around two-thirds of applicants still filing for innovation patents are Australian (120 in 2022 and 67 in 2023).  Furthermore, a larger proportion of innovation patents are now being certified and made enforceable than has historically been the case, with 75 of those filed in 2022, and 31 of those filed in 2023, so far having been certified.  But with innovation patents now being a small, and shrinking, part of the Australian patent system, I shall have nothing more to say about them in this article, and I will drop the distinguishing term ‘standard’ when talking about ‘regular’ patent applications.

07 January 2024

The Major Australian Client at the Centre of David and Goliath Legal Battle Between Patent Attorney Firms

Breville invented the electric toasted sandwich maker in 1974As some readers may be aware (I have previously mentioned it only in passing) a firm in the IPH Limited (ASX:IPH) group – the market cap of which is A$1.56B at publication – is once again taking legal action against a recently-established firm and its founders, all of whom are former employees of Spruson & Ferguson (‘S&F’).  Earlier, IPH group firm Pizzeys had sued RnB IP and its two founders – formerly partners in Pizzeys at the  time of its acquisition by IPH – for alleged breach of non-compete, non-dealing, and/or non-solicitation restraints that were included in their employment contracts.  That dispute ultimately settled out of court and was finalised prior to trial, in September 2022, so we did not get the benefit of judicial consideration of whether the contractual restraints were reasonable and/or enforceable.

The startup firm on this occasion is GLMR, founded by Edward Genocchio (‘G’), Michelle Lee (‘L’), David Müller-Wiesner (‘M’) and Simon Reynolds (‘R’).  The firm was also, for a short period, known as LMW IP, which was established by ‘L’ and ‘M’ before they were joined by ‘G’ and ‘R’.  The action taken thus far against GLMR and its founders by S&F is an application to the Federal Court of Australia for preliminary discovery (case no. NSD6/2023), in which the GLMR parties are identified as prospective respondents in a potential future action.  This is the same strategy previously employed by Pizzeys against RnB IP.  In the RnB case, the preliminary application was contested, and resulted in a published decision of Justice Jagot ordering discovery.  In the present case, however, it appears that the parties have reached agreement on scope of discovery, with the corresponding orders made by a Registrar of the court (see orders made on 23 October 2023 [PDF, 135kB]).  While preliminary discovery was initially due by 29 November 2023, this has been extended by further orders to 5.00pm on 16 February 2024.

The discovery orders provide some insight into the nature of S&F’s prospective case against GLMR.  An impression of the impact that GLMR has had on S&F’s patent business can also be discerned from the public records of the Australian Patent Office.  In this article, I take a look at these two aspects of the matter.

02 January 2024

Disciplinary Decision Against Registered Attorney a Reminder of the Importance of Clear Communication and Record Keeping

Pursuit

Back in July, the Trans-Tasman IP Attorneys Disciplinary Tribunal (‘the Tribunal’) issued a decision in relation to a complaint about a registered attorney (‘the attorney’) by a client (‘the client’) in response to which the Trans-Tasman IP Attorneys Board (TTIPAB, a.k.a. ‘the Board’) commenced disciplinary proceedings, bringing nine charges against the attorney.  The full decision of the Tribunal can be found here [PDF, 364kB], while a separate ruling on the penalties to be applied can be found here [PDF, 223kB].  This decision is a ‘first’ in a couple of respects.  It is the first time the Tribunal has sat as a three-member panel (rather than a single decision-maker).  It is also the first time that charges have been brought against an attorney under the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018 (‘Code of Conduct’’).  Reference to specific provisions of the Code of Conduct has resulted in charges having a clearer basis and greater precision than may have been the case in past disciplinary proceedings.

There are, in this decision, three important messages – or, one would hope, reminders – for registered trans-Tasman patent attorneys.

First, an attorney’s obligation to ‘disclose to a client all information of which the registered attorney is aware that is materially relevant to work being undertaken for the client’ (paragraph 17 of the Code of Conduct) extends to information about the state of the law.  In this case, the attorney was obliged to inform the client about the difficulties inherent in obtaining patents for business methods (whether or not implemented using computer technology), and about the requirement to provide a sufficient disclosure of a claimed invention along with the potential adverse consequences of failing to do so.  The attorney was found to have satisfied the first of these two obligations, but not the second.

Second, an attorney’s obligation to ‘have appropriate competency’ and to carry out work that they undertake ‘with due skill and care’ (paragraph 14 of the Code of Conduct) includes ‘adequately and properly advising’ a client of anticipated legal risks or difficulties that may be encountered in obtaining IP rights.  Closely related to the first point above, in this case the attorney was obliged to properly advise the client of the significant risk that a patent application directed to a business method would be refused, and of the risks associated with failing to include a sufficient disclosure of a claimed invention in a patent application.  Here, the attorney was found to have satisfied neither of these two obligations.

Third, an attorney’s obligation to ‘maintain standards of professional practice as a patent attorney … that are courteous, ethical and well-informed’ (sub-paragraph 13(2) of the Code of Conduct) encompasses appropriate record keeping.  In this case, the attorney was obliged to keep adequate documentation of the advice that had been provided to the client, whether or not that advice was given in writing.  The attorney was found to have failed in this respect with regard to advice provided in relation to two patent specifications prepared on behalf of the client.

I recommend that all registered and prospective trans-Tasman patent attorneys read the full decision.  It is a credit to the profession that disciplinary proceedings are few and far between, but this makes the rare decisions that we do have all the more important.  What follows is my own overview and comments.


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