RePipe Appeals, Following Failed Attempts to Amend

Some time ago – indeed, BC (i.e. before COVID) – I reported on a decision of Justice McKerracher in the case of Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 (RePipe No 1).  RePipe is a plumbing business based in Western Australia that has developed a risk management software system called rerisk^®, which is available as a service to other businesses that want to improve their workplace health and safety (WHS) processes.  The system comprises a server-based backend, and an app that can be installed on portable devices (i.e. smartphones or tablets) carried by workers on site.  In use, information and documentation pertinent to WHS compliance processes for particular jobs carried out by workers at specific locations are downloaded to the portable devices. The system provides prompts and checklists to ensure that workers comply with relevant procedures, generates alerts when problems or risks are identified, and enables information provided by the workers to be uploaded back to the server and/or communicated to other workers on site.

RePipe has filed patent applications in a number of jurisdictions.  In Australia, two innovation patents covering the rerisk^® system were examined and found liable to be revoked by the Patent Office, on the basis that their claims were not directed to patent-eligible subject matter, i.e. a ‘manner of manufacture’ under the Australian law.  RePipe appealed to the Federal Court, which upheld the Patent Office decisions in RePipe No 1, issued on 22 November 2019.  The court found that the claimed inventions were, in substance, merely unpatentable business methods.  The claims were not saved by the fact that the inventions were necessarily implemented in software.  As Justice McKerracher explained (RePipe No 1 at [93]-[94]):

No specific application software has been claimed or even identified in any claim of the Patents. No computing programming logic or code is disclosed anywhere in the Patents. The substance of both inventions is a mere scheme that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim. To implement the scheme, a reader must use his/her own skill and knowledge to write an appropriate software application. No such application is disclosed in the Patents.

…The language used by patent attorneys when drafting and amending claims cannot convert what is, in substance, an unpatentable business method or scheme into a patentable invention by merely asserting that the invention is in the field of computer technology or by using words in the claim or specification that refer to computer technology …. As a matter of substance, there is no meaningful technical content in the description in the body of the claims or specification.

This was not, however, the end of the story.  Following some further ado (discussed below), RePipe has filed an application for leave to appeal to a Full Bench of the Federal Court of Australia, on 2 March 2021.

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Tags: Amendments, Appeal, Australia, Computer programs, Patent Office, Patentable subject matter

Drafting a Patent Specification with ‘Reasonable Skill and Knowledge’ is a Collaborative Exercise Between Client and Attorney

A recent appeal decision by a Full Bench of the Federal Court of Australia has clarified what is meant by the requirement for a patent specification to be framed with ‘reasonable skill and knowledge’, finding that this is a collective responsibility that arises among everybody involved, including inventors, patent attorneys, and any other corporate managers or intermediaries.  Under Australian law, this requirement arises in relation to the effect of amendments on the rights of a patentee.  In particular, a patent is only enforceable during the period prior to making an amendment if the specification without the amendment was ‘framed in good faith and with reasonable skill and knowledge’.

This decision should be of interest not only to Australian patent attorneys, but to patent professionals globally who are involved in drafting specifications that may ultimately be filed in Australia, and result in the grant of Australian patents.  It confirms that responsibility for ‘framing’ a specification with ‘reasonable skill and knowledge’ does not lie solely – or even primarily – with the person tasked with actually drafting the specification, but is shared between all those involved in the process.

A competent patent attorney might be expected to have reasonable knowledge of the law and practices relating to the drafting of patent specifications, and to make reasonable efforts to obtain necessary information from a client.  However, the client has a key role to play in ensuring that the patent attorney is properly instructed.  And while the patent attorney is not necessarily expected to share the level of domain-specific technical expertise of an inventor, the specification will nonetheless be assumed to have been drafted with the benefit of the client’s knowledge of the invention, including knowledge that the client reasonably should be taken to have had, in all of the relevant circumstances.  Ensuring that this is the case is at least as much the responsibility of the client as it is of the patent attorney (or other patent professional) tasked with drafting the specification.

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Tags: Amendments, Damages, Patent attorney profession, Patent drafting, Patent specifications

Australian Federal Court Upholds Privilege in Communications Involving Patentee’s Foreign Patent Attorneys

Legal professional privilege (also called ‘client legal privilege’ in Australia, to reflect the fact that the privilege is actually held by the client) is a rule of law which protects communications between legal professionals and their clients, along with related records and documents, from compulsory disclosure by order of a court, or under a provision of statutory law.  The rationale for protecting such communications has been explained in various ways, including to encourage full disclosure of information by a client to a lawyer, and to enable the lawyer to give full and considered advice without fear of subsequent adverse consequences to the client.  The privilege that exists between a client and a lawyer is established under the common law, by the Commonwealth Evidence Act 1995, and by similar provisions of state legislation in some states.

In Australia, patent attorneys are generally not also lawyers, however section 200 of the Patents Act 1990 provides that communications, records or documents made for the dominant purpose of a registered patent attorney providing intellectual property advice enjoys the same privilege as if it were made by a legal practitioner providing legal advice. These provisions were strengthened as of 15 April 2013, on commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which also extended the privilege to individuals authorised to do patents work under the laws of other countries or regions, i.e. to foreign patent attorneys and patent agents.  Prior to this change, advice provided by foreign practitioners was not protected by patent attorney privilege (Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 2) [2004] FCA 850: ‘The language of s 200(2) is clear. The privilege is confined to communications with patent attorneys registered as such in Australia.’)

In a recent decision, a judge of the Federal Court of Australia has upheld the claims of a patentee, Neurim Pharmaceuticals (1991) Ltd, for legal professional privilege and patent attorney privilege in relation to documents prepared by Israeli, US, and UK/European patent attorneys in respect of US and European patent applications corresponding to an Australian patent that is now the subject of litigation: Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd [2018] FCA 1082.

Interestingly, a number of the documents were originally produced and communicated in 2008 and 2011, i.e. prior to the commencement of the Raising the Bar reforms that extended privilege to the work of foreign practitioners.  It seems that it was common ground between the parties that the amendments to section 200 have retrospective effect, in the sense that they apply to communications, records, and documents made prior to their commencement.  A similar concession was made in a earlier case relating to privilege in communications that took place in 2004, but were assumed to be subject to the post-Raising the Bar provisions, although in that case it was less clear that the changes in the law would have materially altered the outcome.

Accordingly, the court was not asked to consider whether patent attorney privilege actually applied to the foreign-practitioner documents.  Rather, the dispute between the parties was as to whether the privilege had been waived by the patentee as result of its decision to make amendments to its Australian patent, upon commencing litigation in 2017, that were similar to earlier amendments made to its corresponding US and European patent applications.  The court found that, in the circumstances, privilege was not waived, and Neurim was therefore not required to produce the documents.

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Tags: Amendments, Australia, Patent attorney profession, Privileged communications

Does Your Patent Attorney Possess ‘Reasonable Skill and Knowledge’?

It is a general principle of patent law that publication of a patent specification and claims serves to put the public on-notice of the existence and scope of the patentee’s rights.  In an effort to ensure that this is the case, the Australian Patents Act 1990 requires that ‘the claim or claims must be clear and succinct and supported by matter disclosed in the specification’ (subsection 40(3)), while the analogous US provision, 35 USC § 112(b) states that ‘the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.’  In Australia we usually refer this as the ‘clarity’ requirement, while the US courts have developed a corresponding doctrine of ‘indefiniteness’.  In its 2014 decision Nautilus, Inc. v Biosig Instruments, Inc, the US Supreme Court interpreted this to mean that ‘a patent is invalid for indefiniteness if its claims … fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention’.  Other jurisdictions have similar requirements.

This is all very well, but what happens if the claims change?  It is not uncommon for a patentee to seek amendment of its patent specification, for example in preparation for, or in the course of, litigation.  Granted patent claims can only be amended in ways that do not broaden the scope of a patent, i.e. no valid amendment can result in any act becoming an infringement that would not have been an infringement prior to the amendment, so this does not provide a mechanism for a patentee to ‘capture’ a previously non-infringing activity.  However, a claim could, in principle, be narrowed by replacing unclear, vague, or ambiguous wording with clearer and more definite wording that specifically targets the actions of a competitor.

In such a case, the patentee would no doubt argue that it was simply ‘tightening up’ the language of its claims to limit the issues to be addressed during infringement proceedings, and perhaps as a pre-emptive defence against a cross-claim for invalidity.  The accused infringer, on the other hand, might argue that it was not properly on-notice of scope of the patent prior to the amendment, as a result of the ambiguity in the wording of the claims.

Fortunately, the Australian legislation anticipates this situation.  Subsection 115(1) provides that:

Where a complete specification is amended after becoming open to public inspection, damages shall not be awarded, and an order shall not be made for an account of profits, in respect of any infringement of the patent before the date of the decision or order allowing or directing the amendment:
        (a)  unless the court is satisfied that the specification without the amendment was framed in good faith and with reasonable skill and knowledge…

In layperson’s terms, if the job was not done honestly and properly in the first place, then the patentee should not expect to be able to obtain any compensation for alleged infringement that occurred prior to the amendment.

But what constitutes ‘reasonable skill and knowledge’?  Does your patent attorney (or, if you are a patent attorney, do you) possess these attributes?  And what responsibility does a patent applicant, in instructing a patent attorney, bear in ensuring that reasonable skill and knowledge are employed?  These issues were recently considered by Justice Jagot in the Federal Court decision Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 250, who confirmed that ‘the words “reasonable skill and knowledge” require the specification as framed to be in the form in which a person, with reasonable skill in drafting patent specifications and a knowledge of the relevant law and practice, would produce given the patentee's knowledge of the invention.’  The judgment also provides some interesting guidelines as to what, exactly, might be expected of a patent attorney in order to meet this standard.

The question was not merely academic, with over $25 million in damages at stake.  And it may not yet be finally settled, with various aspects of the case now in appeal to a Full Bench of the Federal Court of Australia.

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Tags: Amendments, Damages, Patent attorney profession, Patent drafting, Patent specifications, Pharmaceuticals

Appeal ‘Incompetent’ – Is This A Problem With Patent Opposition in Australia?

The Australian Patents Act 1990 provides for a pre-grant opposition process.  Specifically, once an application has passed examination, and is accepted, there is a three-month period during which anybody may file an objection, i.e. ‘opposition’, to the grant of a patent.  This allows third parties, such as competitors of the patent applicant, to raise prior art and/or new arguments or grounds for rejection, that may not have been readily available to the examiner.  Opposition provides an additional mechanism for preventing invalid patents from being granted.

Opposition proceedings can be quite involved, although they are generally much simpler and cheaper than court action.  The objecting party, i.e. the ‘opponent’, is required to file a Statement of Grounds and Particulars, outlining the basis for the opposition, so that the applicant can understand, at an early stage, the case it will be required to answer.  Subsequently the opponent must file its evidence in support of the opposition, which may include prior art documents or other information, and/or written testimony of expert witnesses that is relevant to the validity of the accepted patent claims.  The applicant then has an opportunity to file its own answering evidence, and finally the opponent may file further evidence, strictly limited to addressing new issues raised in the applicant’s evidence.

The opposition then typically proceeds to a hearing before an officer at the Australian Patent Office, following which a written decision is issued.  There are a few possible outcomes from an opposition.  At the two extremes, the opposition may be dismissed (i.e. the opponent’s case is found to fail completely) or may be upheld (i.e. all of the opposed claims may be found irredeemably invalid).  However, many cases fall somewhere between these two extremes, with an opposition being only partly successful, and/or the Hearing Officer finding that successful grounds of opposition might nonetheless be overcome by some form of amendment to the patent specification and claims.

An example of this last type of outcome is the subject of a recent decision of the Federal Court of Australia in Merck Sharpe & Dohme (Australia) Pty Ltd v Genentech Inc [2016] FCA 324, which highlights a potential pitfall of the pre-grant opposition process in Australia.  In particular, there are cases in which amendments may be legitimately made that result in claims that are nonetheless potentially invalid, but which cannot be effectively challenged prior to the patent being granted.

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Tags: Amendments, Appeal, Australia, Novelty, Obviousness, Opposition

Patentee Punished for Failing to Heed Attorney’s Recommendation

A judge of the Federal Court of Australia has denied a request by patentee Les Laboratoires Servier (‘Servier’) to amend a patent in order to avoid cancellation for failure to disclose the best method of performing the claimed invention solely because it opted not to follow a recommendation made by its Australian patent attorneys during examination of the original application back in 2004: Apotex Pty Ltd v Les Laboratoires Servier (No 4) [2015] FCA 104.

Just be absolutely clear here, the court found that the requested amendment was allowable in principle (i.e. was not precluded by any provision of the Patents Act 1990), and that in all other respects Servier had acted promptly and appropriately, such that the court would otherwise have exercised its discretion to allow the amendment.  The one and only reason given for refusing the amendment request was that the patent attorneys had suggested that a similar amendment might be made prior to grant of the patent, but that the responsible person within Servier was of the opinion that the disclosure within the patent specification was adequate, and that the amendment was therefore not necessary.  The court bluntly describes this as ‘an error on her part’ (at [180]).

I find this decision frankly extraordinary, and I fully expect that it will be appealed.  The patent in question covers the compound perindopril arginine, which is the active ingredient in the brand name drug COVERSYL, which is used to treat hypertension (i.e. high blood pressure).  This patent, and foreign counterparts, have been extensively litigated in Australia and overseas.  It is clear that there is a great deal at stake in this case, and Servier is unlikely to abandon its efforts to save a patent that has been found, in all other respects, to be valid.

I should say, at this point, that the patent attorney firm in question here was Watermark, where I work.  However, Watermark no longer acts for Servier in relation to this matter, and nothing that I shall say in this article is based on anything other than publicly available information.  Opinions, as always, are my own, and should not be taken as representing the views of Watermark, its Principals, management, other employees or clients (past or present).

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Tags: Amendments, Australia, Best method/mode, Pharmaceuticals, Validity

Patent Oppositions and Amendments: Law Reform Fixes Flaws

Garford Pty Ltd v Dywidag-Systems International Pty Ltd [2014] FCA 1039 (18 September 2014)

As many readers will be aware, Australia’s patent laws include a pre-grant opposition system – once an application has been evaluated by an examiner, and approved for grant, an opportunity exists for third parties to step in and challenge that decision.

The purpose of such opposition proceedings (from a policy perspective, at least) is to reduce the probability of invalid patent claims being granted.  Even if prior art searching and examination were perfect, participants in the specific technology area to which an invention relates will always have access to additional information, not readily accessible to a patent examiner, that may be pertinent to the patentability of the invention.

The system thus recognises that the examination process is necessarily imperfect in practice, particularly given that examination resources are finite.

Furthermore, if either party to an opposition (i.e. the applicant or the opponent) is dissatisfied with a Patent Office decision in an opposition, there is an avenue for appeal to the Federal Court of Australia.  Prior to commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 on 15 April 2013, however, there was a problem with the available procedure for appealing a decision in a partially-successful opposition.

Specifically, the Federal Court on appeal was confined to considering the very same subject matter that had been reviewed by the Patent Office in the original opposition proceedings.  Thus, if the opposition had been partially successful, in the sense that the opponent had established that at least some of the accepted claims were invalid, but the patent applicant was given the opportunity to propose amendments to address the successful grounds of opposition, the court could not take into account those proposed amendments.

This was unhelpful to both the patent applicant and the opponent.  From the applicant’s point of view, it would be best that the proceedings before the court be based upon a set of claims that it considers to be defensible.  From the opponent’s perspective, an appeal that may simply have the same outcome as the Patent Office decision, with the applicant still having an opportunity to amend, is potentially a complete waste of time and money.

A judge of the Federal Court has now confirmed that a ‘fix’ for this problem, implemented in the Raising the Bar Act, has been effective.

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Tags: Amendments, Appeal, Australia, Law reform, Opposition

Reining-In Amendments Under Australian Patent Law Reforms

As regular readers will be aware, I have been working with CCH Australia to assist in updating the patents commentary in its Australian Industrial and Intellectual Property ‘loose-leaf’ service (which is also available as an online service).  Among other content, this service provides full text legislation and detailed commentary on copyright, designs, patents and trade marks.

The most recent update to the patents commentary includes coverage of reforms to provisions for amending patents and applications, which were introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  This article discusses some of these reforms, and the corresponding updates to the CCH commentary.

Background

Before the commencement on 15 April 2013 of the Raising the Bar Act, the Australian Patents Act 1990 included some of the most generous amendment provisions in the world.  In extreme cases it was possible, and indeed remains possible for those patent applications to which the former provisions continue to apply, to file a wholly inadequate patent specification, and to correct this defect by amendment up until at least the date of grant of the patent.

For patents and applications filed on or after 15 April 2013, and for pending applications for which a request for examination had not been filed prior to this date, this generosity has ceased to apply.  In common with most other major jurisdictions, it is no longer possible to make amendments which result in any new disclosure.

This change is something that applicants accustomed to being permitted to amend specifications to add additional supporting examples, or new experimental results, will now need to bear in mind.

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Tags: Amendments, Australia, CCH, Raising the Bar

Lost In Transition – Opposition, Appeal and Amendment

Suntory Holdings Ltd v Commissioner of Patents [2013] FCA 999 (2 October 2013)

The Federal Court of Australia has, for the first time, considered the effect of reforms to the mechanisms for amending a patent application during appeals from decisions of the Commissioner of Patents which where introduced earlier this year by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  Unfortunately for patent applicant Suntory Holdings Ltd, the changes in the law mean that its previous efforts to amend its application through the Patent Office have been in vain, and it will now have to start again by applying to the court.

Ironically, the reforms were intended to ensure that application to amend in the course of an appeal could be handled more efficiently.  This should be the case in the future, however Suntory has fallen victim to bad timing, and been caught out by the transitional provisions of the Raising the Bar Act.

The same transitional provisions bit Euroceltique S.A. earlier this year, although in that case the patent applicant did not elect to appeal the Commissioner’s decision to the Federal Court.

I have to say, though, that it is not entirely clear to me what Suntory was hoping to achieve by the requested amendments.  It is even less clear why it appealed the Commissioner’s refusal of its application to amend.  I am not complaining, however, since early judicial consideration of the Raising the Bar reforms is helpful to all of us in confirming that they operate as intended!

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Tags: Amendments, Appeal, Australia, Raising the Bar

‘Raising the Bar’ Transition Begins to Bite!

Euroceltique S.A. [2013] APO 30 (9 May 2013)
Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc. [2013] APO 34 (30 May 2013)


Two recent decisions of a Delegate of the Commissioner of Patents have focussed attention on transitional provisions in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  In each case the outcome has been unfavourable to the applicant.

1. In the first decision, Euroceltique S.A. has been denied permission to amend its patent application while an appeal of an earlier opposition to the Federal Court remains pending, as a result of the operation of new section 112A of the Patents Act 1990.
2. In the second decision, a request by joint applicants Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc. for an extension of time to file a request for examination under the former law, predating the Raising the Bar reforms, has been refused.

As regular readers of this blog would be well-aware, the majority of provisions in the Raising the Bar Act came into effect on 15 April 2013.  Naturally, this act included transitional provisions to define what should happen in the case of applications and other actions commenced before the commencement date, but which remain in-progress after that date.

The most important of these transitional provisions cover the substantive changes to the standards required of a valid patent, including the tests for inventive step, utility, and the level of disclosure required in order to support the full scope of protection claimed by an application or patent.  For these types of reforms introduced by the Raising the Bar Act, the new standards may apply to applications filed before 15 April 2013, but only if a request for examination is not filed until after that date.

However, other amendments made by the Raising the Bar Act have alternative transitional provisions and, in particular, some had immediate effect from 15 April 2013 even in respect of matters already in-progress.

In the short time since commencement of the Raising the Bar reforms, the Patent Office has already had reason to consider the effect of each of these types of transitional provision.

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Tags: Amendments, Australia, Extensions of time, Raising the Bar

Patent Office Told: Factual Matters Preclude Summary Dismissal

Preference Manufacturing (Aust) Pty Ltd and Commissioner of Patents and Breezway Australia (Holdings) Pty Ltd (Joined Party) [2012] AATA 393 (27 June 2012)

Practice and procedure – opposition to the allowance of an amendment of notice of entitlement summarily dismissed – whether matter capable of being determined summarily

In the latest development in a dispute which could turn out to be a great expenditure of time, money and public resources for little substantive effect, the Administrative Appeals Tribunal (AAT) has ruled that a delegate of the Australian Commissioner of Patents was wrong to summarily dismiss an opposition to a request to correct a document which was filed in the course of prosecution of a patent application.

According to the AAT’s decision (at [22]), there were ‘factual matters that warranted investigation and proper consideration’, and it was therefore inappropriate for the opposition to be dismissed without submission of evidence or argument, and without (if requested) conducting a hearing.

The erroneous document in question is a ‘Notice of Entitlement’.  For readers unfamiliar with Australian patent procedures, this is a statement which must be filed by, or on behalf of, a patent applicant before the Patent Office can issue a patent.  The statement explains the basis upon which the ‘nominated person’ (i.e. the applicant for the patent) gains the rights required for it to be the legitimate owner of the patent.  Usually this is by some chain of assignment, or other contractual provision (such as employment) leading back to the original inventor(s).

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Tags: Amendments, Appeal, Entitlement

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

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.

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Tags: Amendments, Australia, Legislation

Cadbury Objections to Nestle Amendment Too Little, Too Late

Societe des Produits Nestle S.A v Cadbury Holdings Limited [2011] APO 35 (31 May 2011)

Opposition – final determination – amendments consistent with findings of initial decision sufficient to overcome grounds of opposition – opponent too late to raise objections to initial findings

This decision by Hearing Officer Karen Ayres is a final determination of an opposition originally heard on 24 March 2010, with the initial decision being issued on 24 June 2010 (Societe Des Produits Nestle S.A. v Cadbury Holdings Limited [2010] APO 9).

This case is a lesson for practitioners of the importance of identifying appealable findings in a decision, and filing any appeal within the relevant time limit following the date of the decision.  The fact that a decision may be of an ‘interim’ nature, and not a final determination, does not mean that any objection to, or appeal of, specific findings in the decision can be delayed until the time of final determination.

SUMMARY

Cadbury Holdings Ltd (‘Cadbury’) had been partially successful in an opposition to a patent application filed by Societe Des Produits Nestle S.A (‘Nestle’), however the Hearing Officer had provided Nestle with a strong indication of the nature and scope of patentable subject matter in the application, and provided it with an opportunity to amend its claims to overcome the successful ground of opposition.

Nestle duly made the suggested amendment, which was subsequently allowed by the Patent Office, and the case returned to the Hearing Officer for final determination.  It was only at this stage that Cadbury raised objections to the amended claims.

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Tags: Amendments, Appeal, Australia, Novelty, Opposition

Patent Reform Exposed Part VII – ‘Search to Sealing, and Beyond…’

In previous articles of this series, we have looked in detail at a number of the main proposals in the Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 which would change the substantive requirements for validity of a patent.  In this article, we look at some of the proposals that would change practices, and some of the standards applied, within the Patent Office. 

While some such proposals may affect whether or not a patent is granted, none have any impact on the validity of a granted patent.  The objective is essentially to raise the standards of examination in order to reduce the number of patents actually granted with invalid claims.  As many readers will no doubt be aware, there is no ‘presumption of validity’ of a granted patent in Australia.  On the contrary, section 20 of the Patents Act 1990  expressly disavows any such presumption, and makes clear that the work of the Patent Office is conducted on an ‘all care, but no responsibility’ basis.

The proposed changes discussed below are:

1. provision for preliminary search and opinion;
2. examination of utility;
3. permitting examiners to consider evidence of ‘prior use’;
4. lowering the barrier to refusal of an application; and
5. changes to amendment provisions.

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Tags: Amendments, Australia, Examination, Law reform, Opposition, Patent law, Raising the Bar

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

ABSTRACT

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.

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Tags: Amendments, Australia

Servier Denied Patent Amendment on Appeal

Les Laboratoires Servier v Apotex Pty Limited [2010] FCAFC 131 (11 November 2010)

Amendment – application to amend under section 105 of the Patents Act 1990 – whether primary judge erred in exercising discretion to refuse application – whether requested amendment allowable under section 102 of the Patents Act 1990

This decision is the result of an appeal by Les Laboratoires Servier ('Servier') from a decision of Justice Bennett, issued on 11 September 2009 (Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019), in which Her Honour exercised the discretion afforded by s105 of the Patents Act 1990 to deny Servier's amendment request, even though she concluded that the amendments would otherwise have been allowable under s102.

The three appeal court judges, Justices Emmett, Kenny and Stone, were in agreement that the appeal should be dismissed, although they were split on their reasons. 

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Tags: Amendments, Appeal, Australia

Striking or Material Difference in Claim Scope Leaves NZ Applicant Sheepish

Merial Limited [2010] NZIPOPAT 18 (23 August 2010)

Amendment – whether proposed amendment is by way of disclaimer, correction or explanation – whether proposed claims cover subject matter not in substance disclosed in the unamended specification – whether proposed claims are wholly within the scope of the unamended claims

Our New Zealand friends are understandably unimpressed by jokes and innuendo relating to their large sheep population, although they do tend to give as good as they get!  However, it is difficult to resist some passing comment in this case, which involves a request to amend a patent specification that has been under opposition (by up to four parties) for 15 years, after being initially advertised as accepted on 28 March 1995.  Furthermore, the application was filed as a divisional of a patent that was subject to litigation which was ultimately appealed all the way to the Privy Council in London.

And what could be the subject matter of patents of such vital importance that they would justify this level of persistence and expense?

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Tags: Amendments, New Zealand

Amendments: Can a Mistake that Nobody Noticed Be "Obvious"?

Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd [2010] FCA 983 (7 September 2010)

Amendment – obvious mistake – allowability under s 102 of the Patents Act – discretion

Philosophical musings aside, when a tree falls in the forest, physical laws dictate that it makes a sound, whether or not anyone is there to hear it, or if someone who is there is listening to loud music through their iPod, or if they are hearing-impaired, or if they are just not paying attention!  As the tree falls, vibrational energy is generated through abrasive and percussive contact, and the release of stresses in overburdened timber.  The vibrational energy is transferred to the surrounding air, to generate what we call "sound".

What has any of this to do with amendment of patent specifications, you ask?

Well, in light of this decision of Justice Bennett in the Federal Court of Australia, we ask the question: if a mistake occurs in a patent claim, but nobody sees it, can it be said to be "obvious"?  Is the law on this point objective, like the laws of classical physics, or is it capricious and observer-dependent in the manner of some pop-science rendering of quantum theory?

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Tags: Amendments, Australia

Does Your Patent Portfolio Need a Health Check?

Like all other assets, intellectual assets require proper care and maintenance.  In the case of patents, there is more to this than just paying periodic renewal fees.  As your business and associated patent portfolio evolve, you should regularly turn your attention to the continuing health of that portfolio. 

Aside from managing the content of your patent portfolio to ensure that it has continuing relevance to your commercial strategy, you must also review your important patent assets to ensure that they remain valid and useful.

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Tags: Amendments, Australia, Patent litigation, Strategy

A Tale of Four Amendment Requests

Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 (4 August 2010)
CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd [2010] FCA 671 (28 June 2010)
Zetco Pty Ltd v Austworld Commodities Pty Ltd [2010] FCA 235 (17 March 2010)
Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019 (11 September 2009)

ABSTRACT

There are two mechanisms by which a patentee may amend a granted patent in Australia.  The first is to file an application for leave to amend at the Australian Patent Office.  The second is to apply to the court.

Each approach has its advantages and disadvantages, depending upon the circumstances in which the patentee finds themselves.  Ideally, the patentee has a choice, but in some cases they may find this has been taken away.

All four of these cases - the most recent having issued just last week - relate to amendment applications filed in the Federal Court of Australia.  In each case the patentee's reasons for applying to the court, rather than through the Patent Office, were different.  In all four cases the amendments were technically allowable, but in one case the court nonetheless denied the application.

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Tags: Amendments, Australia