Overcoming Examination Objections – Advocacy vs Evidence

At a high level, the patent application process in Australia is not unduly complex.  First, an application is prepared and filed.  Then – either at filing, or at some later point in time – examination of the application is requested.  A patent examiner subsequently reviews the application, searches the prior art, and either approves the application for acceptance, or issues an examination report setting out any legal deficiencies or obstacles preventing this.  Once the application has been accepted, it is open for opposition by third parties for a period of three months.  The vast majority of accepted applications are not opposed, and so acceptance mostly leads directly to the grant of a patent.

Dealing with examination objections is therefore a critical part of the application process in many cases.  The primary decision to be made is whether to continue with the application, or to give up.  In my experience, some applicants are reluctant to take the second option, even when it would be wise to do so.  When the examiner’s objections have merit, and overcoming them would be unduly costly and/or could not be achieved without limiting the scope of the patent to something of little or no commercial value, the best thing to do might be to let the application die a natural death, and get on with doing something more productive with your time and money.  But this article is not going to be about how to abandon an application.

This article is about dealing with objections, in the many cases in which it is worthwhile to proceed with an application.  Sometimes – horrifying as it may seem – an examiner is simply wrong, in which case a reply to the examination report may consist of written submissions, such as reasoned explanation or argument, seeking to persuade the examiner of his or her error, such that the objections will be withdrawn.  Not uncommonly, there is some merit to the examiner’s objections, but the issues can be addressed by some form of permissible amendment to the application, usually accompanied by supporting written submissions.

What I intend to look at, in particular, is the nature of the written submissions made in response to an examination report.  How much weight do these have, what can be done to limit the examiner’s ability to ‘argue back’, and are there risks in testing the boundaries of ‘fair’ argument?

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Tags: Australia, Evidence, Examination, False suggestion, Patent Office

‘It Is Found’ That Implying Experiments Have Been Conducted May Be Fatal to a Patent

A recent decision, in an appeal to a Full Bench of the Federal Court of Australia, provides a cautionary tale about how even the most seemingly innocuous language employed in a patent specification can ultimately bite the patentee on the backside!  (Morellini v Mizzi Family Holdings Pty Ltd [2016] FCAFC 13.)

In this case, the simple phrase ‘it is found…’ was interpreted by the court to imply that systematic experiments had been carried out in order to arrive at the stated findings.  There was, however, no evidence that anyone had ever conducted any relevant experiments.  The court was not swayed by the patentee’s argument that the ‘finding’ in question was ‘readily capable’ of interpretation as the inventor’s own personal experience and conclusions.  In a unanimous decision, the judges determined that the phrase constituted a false suggestion or misrepresentation which materially influenced the decision of the Commissioner of Patents to grant a patent which was, as a result, invalid.

The particular difficulty for the patentee in this case was that the statement at issue was relied upon to establish novelty, and the presence of an inventive step, over the prior art.  Clearly, a point of difference can be sufficient to support the grant of a patent, but only if that difference imparts some material and previously unrecognised advantage that the inventor can claim to have contributed to the art.  If (as the court seems to have concluded here) the inventor has chosen particular parameters, without taking any steps to verify their significance, a representation that there is some unprecedented new finding involved may be material to the decision to grant a patent, at least if the representation is relied upon as basis for a patentable distinction over the prior art.

There are lessons in this decision for all those involved in the preparation and filing of patent specifications, including the attorneys responsible for drafting them, and the clients responsible for reviewing drafts before they are finalised for filing.

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Tags: Australia, False suggestion, Validity

USPTO Rightly Grants Patent to Disgraced Korean Researcher

In the last couple of weeks the US Patent and Trademark Office (USPTO) has been subject to some harsh criticism after granting a patent naming Korean researcher Hwang Woo-suk and 13 co-workers as inventors.  Managing Intellectual Property provides a brief summary of the ‘controversy’, noting that the grant of the patent (no. 8,647,872) has been described as representing ‘staggering incompetence’ on the part of the USPTO, which has supposedly been ‘embarrassed’ by its actions.

I doubt the USPTO is embarrassed.  At least it has had the courage to follow the law as it stands, and let the cards fall as they may, which is (as I will explain) more than can be said for IP Australia.  The reasons for which the Hwang patent was granted (or, perhaps more to the point, could not be rejected) are worthy of discussion. 

In 2011, the Canadian Patent Office granted a patent to Dr Hwang and his team.  Yet earlier, in 2008, the Australian Patent Office initially accepted a corresponding application before subsequently nullifying that decision in circumstances that, to my mind, were themselves highly controversial.

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Tags: Australia, Canada, Cloning, False suggestion, Fraud, Genetic technology, Korea, Patent Office, US, Utility/usefulness

Federal Court Again Rejects "Obvious to Try"

Abbott GMBH & Co. KG v Apotex Pty Ltd (No 2) [2010] FCA 940 (2 September 2010)

Validity – whether claims anticipated by a single example in a prior art document – whether claims lack an inventive step – whether invention not a manner of manufacture because claimed compound would come into existence in natural course – whether patent obtained on false suggestion that an amendment made during prosecution made a material difference when, in fact, it did not.

We recently reported on an update to the Australian Patent Office Manual of Practice and Procedure, which states that an "obvious to try" analysis is a legitimate approach to assessing inventive step, albeit with limitations.  In particular, we expressed the view that the High Court of Australia has, in fact, rejected the "obvious to try" or "worth trying" approach, and that the appropriate test is, rather, "whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention" (full citations may be found in the previous article).

In a recent decision by Justice Jessup, it appears that the Federal Court of Australia agrees with us on this point.  Other grounds of invalidity pursued were lack of novelty, lack of patentable subject matter (ie not a "manner of manufacture", and that the patent was obtained on a false suggestion.  All grounds failed.

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Tags: Australia, False suggestion, Novelty, Obviousness, Patentable subject matter, Pharmaceuticals, Validity