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

When Does ‘Novel’ Not Mean ‘New’?

One of the fundamental requirements for an invention to be patentable is that it must be novel.  The word derives ultimately from the Latin novus or novellus, meaning ‘new’.  It has other counterparts in modern Romance languages, including Spanish (novillo), French (nouveau), Italian (novello) and Romanian (nuia).  In English, the word tends to connote something a little more nuanced than merely ‘new’ – perhaps a note of surprise, unexpectedness or particular originality.  It also has the alternative meaning of a long-form work of fiction, contracted from the Italian novella storia.

And then there is the meaning of ‘novel’ within patent law, where it means ‘new’ in the relatively narrow sense of not having been previously publicly known or discovered in essentially the same form subsequently claimed as an invention.

The key word here, however, is ‘publicly’.  Patents can be – and have been – validly granted for inventions that had been known and used by one or more other people prior to the later inventor filing a patent application.  Basically, if an invention exists, but has not been made available to the public, then it remains available for someone else to independently invent and, if they so wish, to patent.  This could happen because the invention has been locked away in the original inventor’s basement and never disclosed or, in a commercial setting, because the company responsible for its original development made a deliberate decision to retain the invention as a trade secret.

So far this may seem quite sensible.  However, consider the following scenario.  A first person imports a product from overseas, and offers it for sale in Australia.  Samples of the product are placed on display in a showroom, where they are seen by many potential buyers, however none are actually sold.  The product has an internal mechanism that cannot be seen during normal use (or display), but which can be readily accessed for inspection or servicing, should anyone wish, or need, to do so.  The product is subsequently withdrawn from sale.

Later on, a second person develops, and files a patent application for, an equivalent product having an internal mechanism with essentially the same features as the earlier unsuccessful imported product.  A patent is granted.

The question, then: is this granted patent valid, or does it lack novelty in light of the earlier imports?  More specifically, is it enough that the imported products were on public display, such that anyone who wished to could have inspected and disassembled them (either before or after purchase), or is it necessary to show that some member of the public actually did inspect and disassemble a sample in order to show that the later patented invention is not novel?

The answer, according to a recent ruling of a Full Bench of the Federal Court of Australia, is that it is necessary to establish, by evidence, that some person was ‘in fact interested in the internal componentry’ or ‘was in fact free to examine the product as he or she pleased’, or ‘actually had the opportunity to ascertain the internal workings’ of the product: Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31.

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Tags: Appeal, Australia, Novelty, Validity

High Court Declines (Again) to Weigh In on Innovative Step

The High Court of Australia has turned down an opportunity to review the standard of ‘innovative step’ under the Patents Act 1990, effectively confirming once again that the Full Bench of the Federal Court in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 correctly decided the matter back in 2009.

This latest opportunity arose in relation to a dispute over mining processes, between SNF (Australia) Pty Ltd (‘SNF’) and Ciba Specialty Chemicals Water Treatments Limited (‘Ciba’).  Ciba is the owner of a number of innovation patents covering methods for processing waste products from mining, i.e. the so-called 'tailings', which generally comprise a slurry of particles (clay, sand, dirt, etc) suspended in water.  Ciba accused SNF of infringing its patents, and SNF in fact conceded that it had been using a process which fell within the scope of Ciba's claims, and thus would be liable for infringement, if the claims were valid.

Naturally, SNF contended that Ciba's patents claims were invalid for (among other grounds) lack of novelty, and lack.of innovative step.

I wrote about another aspect of the original decision in this case (the application of the indirect infringement provisions in section 117 of the Patents Act) back in July 2011.  The issues of novelty and innovative step, which appeared to have been decided in accordance with the established legal principles, did not seem very interesting at the time.

The Story In Brief

The primary judge found in favour of Ciba, i.e. that its claims were novel, and involved an innovative step.  SNF appealed this ruling to a Full Bench of the Federal Court, which handed down its decision upholding the original judgment in June last year (SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2012] FCAFC 95).  I did not report on that largely unremarkable decision at the time, however it has taken on new interest in view of the fact that SNF sought Special Leave to appeal to the High Court of Australia.

The Special Leave application was heard – and denied – on 15 March 2013.  SNF presented the High Court panel (comprising Chief Justice French and Justice Gageler) with an interesting proposition in relation to innovative step.  Specifically, counsel for SNF contended that if a point of difference between a claim of an innovation patent and the prior art could, in at least some circumstances, have a negative or disadvantageous effect, then this should mean that the claimed feature makes 'no substantial contribution to the working of the invention', and thus does not comprise an innovative step.

The High Court was profoundly uninterested in taking up this point.  Nor did it consider the other ground of appeal raised by SNF – regarding interpretation of the term ‘improved rigidification’ – to involve any legal principle worthy of its attention.  Indeed, the Court did not even need to hear from counsel for Ciba before refusing the application for Special Leave, with costs awarded against SNF.

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Tags: Appeal, Australia, Claim construction, Innovation patent, Novelty, Validity

Innovation Patent Claims Found Invalid in Dynamite Decision

Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCA 163 (4 March 2013)

Australia’s innovation patent is widely considered to have an unreasonably low threshold of validity – so much so, in fact, that last year IP Australia put forward a proposal to eliminate the ‘innovative step’ standard entirely, and require that innovation patent claims meet the same test for ‘inventive step’ as a standard patent.  You could therefore be forgiven for thinking that pigs might sprout wings and take to the air before an innovation patent would be found invalid on grounds of lack of innovative step.

Yet – until and unless there is a successful appeal – you may need to keep your eyes peeled for porcine aviators, because a judge in the Federal Court of Australia has done just that, striking down all asserted claims of an innovation patent held by Dynamite Games Pty Ltd (‘Dynamite’) for failing to meet the innovative step threshold.  Dynamite had sued Aruze Gaming Australia Pty Ltd (‘Aruze’) for infringement of various claims of a standard patent relating to gaming machines, along with a number of claims of a related innovation patent.

Aruze, in turn, sought revocation of the patents on numerous grounds available under the Patents Act 1990 – that none of the claims is for a manner of manufacture; that the claimed invention is not novel; that the claimed invention does not involve an inventive step or an innovative step; that the claims are not clear and succinct; and that the claims are not fairly based on the matter described in the body of the respective specifications.

The decision is interesting for a number of reasons, starting with the fact that it is a judgment of Justice Emmett, the same Federal Court judge who recently found the ‘business method’ claims of a patent application filed by Research Affiliates, Inc, to be invalid on the basis that they were not patent-eligible under the ‘manner of manufacture’ test.  Justice Emmett considered all of the asserted grounds of invalidity of Dynamite’s patent claims, but declined to formally rule on any of the others after first finding the standard patent claims to be obvious, and the innovation patent claims to lack an innovative step.  However, he did indicate that, had he needed to do so, he would have been inclined also to rule against Dynamite on the grounds of lack of novelty and lack of ‘manner of manufacture’.  In doing so, he reprised some of the themes of his Research Affiliates decision.

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Tags: Australia, Infringement, Innovation patent, Litigation, Novelty, Obviousness, Patentable subject matter, Revocation

Study Shows that Patent Examiners Make a ‘Meaningful Difference’

On 21 November 2012, we attended a seminar in Melbourne presented by Professor Andrew Christie of the Intellectual Property Research Institute of Australia (IPRIA) on the topic of An Empirical Comparison of the Outcome of Patent Examination in the USPTO, the EPO and IP Australia.

While the title may seem dry, Professor Christie provided, as always, an intelligent, engaging and thought provoking presentation (for an earlier example, see Why IP Professionals Must Take ‘Gene Patent’ Opponents Seriously).

IPRIA researchers studied a sample of 494 patent families, on which patents had been granted by all three of the US, European and Australian patent offices in recent years, and for which the main claim of each application was identical in all three offices when originally-filed.  They compared the granted claims with the original claims in each case, to identify whether the examination process had resulted in a ‘meaningful change’ to the scope of the claims.

What the researchers found was that in a majority of cases, across all three patent offices, examination had resulted in the applicant amending its claims in some meaningful way.  This happened most commonly in the USPTO (79% of cases), while the rate of meaningful amendment in the EPO was 68%, and in Australia 57%.  Most of the amendments were what the researchers called ‘integral’ changes, i.e. the narrowing of the main claim by incorporation of additional features or limitations.

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Tags: Australia, Europe, Jurisdiction, Novelty, Obviousness, Patent law, Patents and society, Unity, US

Extended Monopoly on ARAVA (Leflunomide) Upheld on Appeal

Appeal Decision:	Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) [2012] FCAFC 102 (18 July 2012)
Appeal from:	Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) [2011] FCA 846
See also:	Australian Federal Court ‘Evergreens’ ARAVA for Sanofi-Aventis

Claim construction – second medical use claims directed to treating specific ailments – Novelty – application of the ‘reverse infringement test’ where effect may be ‘inherent’ in practising the prior art – Infringement – infringement by supply of products

A Full Bench of the Federal Court of Australia has unanimously upheld a July 2011 decision of Justice Jagot barring the introduction of generic alternatives to Sanofi-Aventis’ ARAVA and ARABLOC products.  At first instance, the court found that a ‘second medical use’ patent directed to the use of the active ingredient leflunomide for the treatment of psoriasis effectively extends an existing monopoly on marketing of the drug for treatment of rheumatoid and psoriatic arthritis until 2014.  Sanofi’s original patent on leflunomide expired in 2004.

The three main patent issues in the case are:

1. the correct interpretation of a ‘second medical use’ claim;
2. whether a prior art teaching to administer a compound to a patient anticipates a claimed effect of the compound on the patient; and
3. whether, and in what circumstances, marketing a compound for one medical purpose constitutes an indirect infringement of a patent directed to an alternative use of the compound.

A fourth issue – whether the patent claims were directed to suitable subject matter, i.e. a ‘manner of manufacture’ – was readily dismissed at first instance and on appeal.

The three appeal judges unanimously overturned Justice Jagot’s claim construction finding (quite rightly so, in our opinion).  However, the court’s original finding of novelty was upheld (Chief Justice Keane adopting different reasoning from Justices Bennett and Yates), as was a finding that supply of products containing leflunomide as an active ingredient would be an infringement under section 117 of the Patents Act 1990.

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Tags: Australia, Claim construction, Indirect infringement, Infringement, Novelty, Pharmaceuticals

Hate Bad Patents? You Could Try Being More Observant!

It is widely believed that there are a lot of ‘bad patents’ around – ones that the examiner should have rejected, if only the search had turned up the most relevant prior art.

There is certainly some truth to this belief.  Examiners in all patent offices are only human, they have limited time to examine each application which comes before them, and the searching tools available to them are imperfect.  Indeed, there is no such thing as a perfect search, because the world’s stores of public knowledge are just not fully available in a readily searchable form.

In this context, crowdsourcing of patent searching makes a great deal of sense.  Patent laws and regulations are increasingly making provision for ‘third parties’ (i.e. people who are neither the applicant, nor the examiner) to submit information that may be pertinent to the validity of claims in filed patent applications.  For example, under provisions of the America Invents Act, an expanded third party submission program will commence on 16 September 2012.

The latest passenger on the bandwagon is the World Intellectual Property Organisation (WIPO), which from 2 July 2012 is accepting ‘third party observations’ on pending international applications (IAs) filed under the Patent Cooperation Treaty (PCT).

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Tags: Examination, Novelty, Obviousness, PCT, Prior art, WIPO

Evergreening by Business Method? Patent Office Says ‘No’!

Celgene Corporation [2012] APO 12 (17 January 2012)

Manner of Manufacture – whether a method of dispensing a drug with a ‘prescription approval’ step is patent-eligible – novelty – whether use of a ‘prescription approval code’ makes method new

We wrote back in June last year about Celgene Corporation’s unsuccessful application for an extension of term of a patent for the drug REVLIMID the active ingredient of which is lenalidomide, a close relative to thalidomide which is well-known as a ‘teratogen’, i.e. it causes horrific birth defects when used during pregnancy.  (See Celgene Denied Term Extension on REVLIMID Patent.)  That application failed because although a new indication for REVLIMID – for treatment of the class of genetic blood disorders disorders known as myelodysplastic syndromes (MDS) – has recently been added to the Australian Register of Therapeutic Goods (ARTG), an extension of term can only be based on the original registration date of a product, and not upon a later date of amendment to the ARTG.

Celgene has since been pursuing certification of an innovation patent directed to unusual subject matter for a pharmaceutical company – a business method.  To be more specific, Celgene’s Australian innovation patent no. 2011100687 relates to a method of dispensing thalidomide to a patient. 

As explained below, Celgene has thus far been unsuccessful.  But its efforts nonetheless raise the question of why a pharmaceutical company should be pursuing a business method patent of this type.  The specification notes that ‘the Australian Therapeutic Goods Administration (TGA) has approved an application by Celgene Pty Limited to market thalidomide for the treatment of erythema nodosum leprosum (ENL) and multiple myeloma in specified circumstances’, and that it is expected that it will be useful in the treatment of other conditions.  ‘However,’ the specification continues, ‘due to the severe teratogenic risk of thalidomide, methods are needed to control the distribution of this drug so as to preclude administration to foetuses.’

We are therefore inclined to speculate that Celgene predicts growth in the prescription of thalidomide, and has come up with a creative ‘evergreening’-type strategy to benefit from this, irrespective of whether there are any patent rights relating to the treatments themselves, by securing a monopoly over a process for prescribing and dispensing the drug which reduces the risk of harm to patients and foetuses.  If the process were to be mandated by the government, Celgene would stand to benefit from every prescription of thalidomide, either by operating the scheme itself, or by collecting patent license fees from a third-party operator.

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Tags: Australia, Innovation patent, Novelty, Patentable subject matter, Pharmaceuticals

Contact Lens Cleaning Method ‘Inherently’ Anticipated by Prior Use

Abbott Medical Optics, Inc v Alcon Laboratories, Inc [2011] APO 79 (26 September 2011)

Opposition – novelty – whether claimed method anticipated by prior published instructions and prior use where benefits of method previously unrecognised – whether ‘strict proof’ of prior use required

This decision, issued by Delegate Dr B. Akhurst, concerns methods for the care of contact lenses.  In particular, the invention at issue is directed to the use of a single solution for cleaning and disinfecting contact lenses.

The interesting aspect of the decision is its analysis of novelty in the case that the claimed method may have been taught/performed before the relevant priority date, even though the actual inventive contribution or discovery of the later inventor may not have been previously disclosed or recognised.

In some other jurisdictions, such as the US, this situation would fall under the ‘doctrine of inherency’.  In Australia, there is no formal legal ‘doctrine’ of inherency although – as this decision demonstrates – this does not mean that it is necessarily possible to obtain a patent based merely on the discovery of a previously unknown property of a known process or composition.  In place of any distinct doctrine, the notion of inherency is itself inherent in the established tests for novelty of a claimed invention.

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Tags: Australia, Inherency, Novelty, Opposition

Australian Federal Court ‘Evergreens’ ARAVA for Sanofi-Aventis

Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) [2011] FCA 846 (29 July 2011)

Claim construction – scope and construction of second medical use claims – ‘objective purpose’ of administration of therapy – actual effect of administration

Novelty – application and limitations of the ‘reverse infringement test’

Infringement – infringement by supply of products

In a decision issued by Justice Jagot in the Federal Court of Australia, Sanofi-Aventis has been handed what seems to amount to an effective 10-year extension on its patent monopoly for the pharmaceutical compound leflunomide, which it markets in Australia under the names ARAVA and ARABLOC.

Briefly, Sanofi-Aventis had an Australian patent on the compound, which expired in 2004.  This, of course, enabled it to prevent the supply of leflunomide for any purpose during the life of the compound patent.  The approved purposes for which the drug is registered for use relate to the treatment of rheumatoid and psoriatic arthritis.

But Sanofi-Aventis also has a patent covering a subsequent medical use of the drug, not envisaged in the original patent, namely in the treatment of the skin condition psoriasis.  Until 2014, when this further patent expires, Sanofi-Aventis therefore has a monopoly on the use of leflunomide for the treatment of psoriasis.  However, the drug is not currently approved in Australia for this purpose.

Based on the above description of the present circumstances, you might think that a generic manufacturer, such as Apotex, would now have the right to market a competing leflunomide product for the purposes covered by the existing approvals, i.e. treatment of rheumatoid and psoriatic arthritis.

According to the Federal Court, however, you would be wrong.  Justice Jagot has found – generously (to Sanofi-Aventis) – that Apotex’s proposed supply of a generic leflunomide product for the treatment of arthritis would infringe the psoriasis treatment patent, and that Sanofi-Aventis is thus entitled to an injunction preventing such supply.

It is difficult to see how this decision does not effectively ‘evergreen’ the compound patent, making the supply of leflunomide for any therapeutic purpose that might incidentally treat psoriasis an infringement of the Sanofi-Aventis patent, for an additional ten years (until 2014).

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Tags: Australia, Indirect infringement, Infringement, Novelty, Pharmaceuticals

Inventor’s Disclosure Bars Market Research Patent Rights

Robert Dommett v Zebra Research Pty Ltd [2011] APO 53 (12 July 2011)

Inventorship – request under section 32 of the Patents Act 1990 – entitlement – request under section 36 of the Patents Act 1990 – identification of ‘inventive concept’ – whether inventor’s prior disclosure of inventive concept precludes claiming inventorship and/or entitlement in a subsequent patent application

This Australian Patent Office decision, by Hearing Officer Owen Haggar, concerns issues of inventorship and entitlement.  In particular, Robert Dommett, who through his business RDA Research provides market research services, contended that he was in inventor, and was entitled to be a ‘nominated person’ (i.e. applicant), in respect of Australian patent application no. 2010201111, filed in the name of Zebra Research Pty Ltd (‘Zebra’), and naming Katie Harris as an inventor.

Two provisions of  the Australian Patents Act were relied upon by Dommett.  Section 32 provides for the Commissioner to make decisions regarding disputes between parties over patent applications.  In this case, Dommett requested that he be declared as the inventor on the application, and not Katie Harris.  Section 36 provides for the Commissioner to make determinations regarding the correct ‘eligible persons’ on a patent application, i.e. the persons (natural or corporate) entitled by invention, assignment or other transfer of title, to be the owner of any patent ultimately granted.  Dommett requested such a determination, with the intention of showing that he (or perhaps his company) is the correct eligible person.

To cut a long story short, the Hearing Officer determined that Dommett was indeed the originator of the broad ‘inventive concept’ underlying the patent application.  However, since he had made non-confidential disclosures and commercial use of the concept prior to the priority date of the patent application, this subject matter was not novel or inventive, and could not be the basis for the grant of a valid patent.  Therefore Dommett could not be an inventor, and could not be eligible for the grant of a patent on the application.

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Tags: Australia, Entitlement, Inventorship, Novelty

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

CardinalCommerce Credited with Patent Win Over Visa

Visa Inc. v CardinalCommerce Corporation [2011] APO 34 (25 May 2011)

Opposition – whether claims suffer from ‘parametritis’ – whether claimed invention novel and inventive over systems in prior use – whether Internet Archive a ‘reliable source’ of prior art information – whether information relating to prior systems would have been ‘ascertained’ before the priority date – whether claims are for a ‘manner of manufacture’

International credit card giant, Visa Inc, has been wholly unsuccessful in an opposition to the grant of a patent in Australia relating to transaction authentication.  The patent application was filed in the name of CardinalCommerce Corporation, which bills itself as ‘the global leader in enabling authenticated payments, secure transactions and alternative payment brands for both eCommerce and mobile commerce.’

Visa contended that the CardinalCommerce claims lacked novelty and/or inventive step in view of two prior authentication systems – Active Access / Active Merchant and Secure Suite – and payment gateways that were well-known at the priority date of 12 June 2002.  Visa also contended that the claims did not define a ‘manner of manufacture’, i.e. were not for patentable subject matter.

Hearing Officer Matt Kraefft found that the evidence did not support a conclusion that the claimed invention lacked novelty, nor that it was obvious at the priority date.  He also found that ‘claims clearly relate to supporting authentication processing of on-line commercial transactions involving several physical steps in a networked environment’, and satisfied the requirements for a manner of manufacture.

He also considered the following additional issues:

1. whether the claims suffered from ‘parametritis’ (they did not);
2. whether the Internet Archive, or ‘WayBack Machine’, is a reliable source of prior art information (it may not be definitive, but a conclusion may be reached on the balance of probabilities); and
3. whether documents that were not confidential, but may have had only a limited distribution, could be considered as the foundation for a lack of inventive step (they could not).

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Tags: Australia, Business processes, Computer programs, Novelty, Obviousness, Patentable subject matter

Telstra Scores Pyrrhic Victory in Amazon ‘1-Click’ Opposition

Telstra Corporation Limited v Amazon.com, Inc. 2011 APO 28 (9 May 2011)

For over a decade, the infamous Amazon ‘1-click’ ordering patent has courted controversy, and it continues to do so.  Its US incarnation, patent no. 5,960,411, was subjected to re-examination following a request filed by New Zealander Peter Calveley, but survived with only a slight narrowing to the scope of its claims.  Its Canadian counterpart, application no. 2,246,933, was rejected by the Patent Appeal Board on the ground that it did not claim legitimate statutory subject matter, however Amazon successfully appealed this decision in the Federal Court of Canada (see Business Methods Patentable (Again) in Canada).

Despite widespread disbelief and disgruntlement, felt particularly by section of the software development community, the novelty and nonobviousness (i.e. inventive step) of the ‘1-click’ ordering invention has yet to be successfully challenged.  Even a US$10,000 ‘bounty’, to be awarded to anybody bringing forward prior art that would invalidate the Amazon claims, failed to produce a significant challenge to the patent.

While the main battleground has been North America, for the last eight years a dispute has been quietly simmering away here in Australia over the local counterpart to the ‘1-click’ ordering patent.  Australian application no 94779/98 resulted from the national phase of Amazon’s international patent application no. PCT/US1998/018926, filed on 10 September 1998, and claiming priority from earlier US applications filed on 12 September 1997 and 23 March 1998.  The application passed examination, and was advertised accepted on 19 June 2003 under the prospective Australian patent no. 762175.

On 19 September 2003, Telstra Corporation Limited (Telstra) filed a Notice of Opposition to the grant of patent no. 762175.  Thus began an opposition proceeding that would eventually last for nearly eight years.  A decision in the opposition finally issued on 9 May 2011.

While Telstra has achieved some small level of success – Hearing Officer Ed Knock finding claim 1, 2 and 4 to 61 (out of 141 claims in total) to be invalid – the claims that have survived the Australian opposition are, to our knowledge, the broadest of any of the ‘1-click’ patent family members.  For all practical purposes, after years of proceedings and (no doubt) tens of thousands of dollars in costs (at least), Telstra has gained no meaningful freedom-to-operate out of the opposition.

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Tags: Amazon 1-click, Australia, Business processes, Computer programs, Novelty, Obviousness

Valid ‘Notional Claim’ Required for ‘Whole of Contents’ Novelty Test

Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 (29 March 2011)

Novelty – ‘whole of contents’ citation – requirement for drafting of ‘notional claims’

There is much to mull over in this decision of Justice Bennett, which spans 378 paragraphs plus a 40 paragraph primer.  However, in this article we wish to focus on just one aspect of the case, which we consider may have significant implications in a number of areas of Australian patent law and practice, including:

1. the way in which patent applications are examined by the Patent Office;
2. the way in which applications are prosecuted by applicants and their agents;
3. the conduct of patent oppositions and revocation actions; and
4. the effect of some of IP Australia’s proposed patent law reforms.

The issue relates to the so-called ‘whole of contents’ novelty test.  While this does not commonly arise, in our own practice we generally see a handful of applications each year where objections are raised on this basis, so it is certainly not insignificant.

A ‘whole of contents’ ground of rejection (or invalidity) of a claim arises when an Australian patent application is identified which has an earlier priority date than the claim, but which was not published until after the priority date of the claim.  Such an application is not prior art by virtue of publication, however it may represent prior rights by another applicant to claim the same invention.

According to the ‘whole of contents’ novelty rule, this type of prior application can be used as the basis for rejection of claim due to lack of novelty, but not for lack of inventive step (or obviousness).  During prosecution of applications the usual practice is simply to treat the ‘whole of contents’ reference just as any other prior art document for novelty purposes, but to disregard it for the purposes of assessing inventive step.

However, according to Justice Bennett this approach is a form of ‘shortcut’ that is not legitimate under the current law.  Rather, in order to establish lack of novelty on a ‘whole of contents’ basis, it is first necessary to establish that a valid ‘notional claim’ can be drafted in relation to the prior application that encompasses the information relied upon for the ‘whole of contents’ objection.

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Tags: Australia, Novelty, Validity, Whole of contents

Australian Patent Office Rejects Cannabis Lunacy

Christopher Gary Parmenter [2011] APO 26 (28 April 2011)

Hearing in relation to re-examination of patent application after acceptance – basis for re-examination – whether amendments allowable – whether claims novel under ‘reverse infringement’ test – whether skilled person would have found prior art document available via the internet – whether Commissioner requires formal evidence as basis for factual inferences – whether claims involve an inventive step

One of our readers was most anxious to ensure that we did not miss this decision – a couple of weeks ago we received an anonymous tip via our ‘Questions’ form to keep an eye on patent application no. 2004288607, followed up with a further tip-off when this decision was published.

The patent application, in the name of Christopher Gary Parmenter and entitled ‘A Method of Cultivating Plants’, was accepted on 12 February 2010.  Claim 1 of the application as accepted was in the following terms:

A method of cultivating plants including the step of harvesting the plant at a time within a period of 5 days prior to a lunar apogee and 5 days after the lunar apogee [i.e. the point at which the moon is at its greatest distance from the earth in its slightly elliptical orbit] in any given cycle.

A routine quality review following acceptance resulted in documents being found that had not been considered during examination and which appeared to anticipate the claimed invention in the accepted claims.  A re-examination was initiated under section 97(1) of the Patents Act 1990.  A re-examination report was issued on 23 April 2010 finding the accepted claims either not novel or not inventive.

Notwithstanding the considerable breadth of the above claim (which must surely be inadvertently infringed on a regular basis by many plant growers unconcerned with the location of the moon), we suspect that the real interest in this patent application lies in the subject matter of the main embodiment described in the specification.  In the words of Hearing Officer Greg Powell, who was responsible for the Patent Office decision:

The preferred embodiment focuses on cannabis and particularly the amount of tetrahydrocannabinol (THC) that is present (i.e. its “potency”) when the plant is harvested. There is also some briefer discussion on the “Stinging Tree” and the “Stinging Nettle” and the potency of their sting, sugar cane with respect to its sugar content and vegetables and herbs generally with regard to taste, flavour and shelf life. It is stated in the specification that these characteristics vary in time with the lunar apogee-perigee-apogee cycle – also known as the “anomalistic cycle”.

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Tags: Australia, Evidence, Novelty, Obviousness

Anti-histamine Inventive… But Not Novel, Says Federal Court!

Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120 (18 February 2011)

A Judge in the Federal Court of Australia has found patent claims directed to an anti-histamine drug known by the non-proprietary name of fexofenadine to be lacking in novelty, and yet to involve an inventive step.

Many Australian practitioners have long thought that the scheme of the Australian Patents Act 1990, and specifically section 7, allows for the possibility that a claim could fail the test of novelty prescribed by subsection 7(1), and yet pass the test for inventive step that is separately prescribed in subsections (2) and (3).  While this is interesting to contemplate as an academic exercise, as a practical matter there is generally no need to devote significant effort to assessing inventive step once a want of novelty has been established.  Certainly this is the view of a majority of patent examiners at IP Australia, who are inclined to open objections with statements such as ‘…claim 1 lacks novelty (and does not involve an inventive step) in light of D1, which discloses…”.

But clearly this view is not shared by Justice Jessup of the Federal Court of Australia who, to be fair, no doubt felt somewhat constrained by certain precedential appeal decisions of the full bench of the court.

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Tags: Australia, Novelty, Obviousness, Pharmaceuticals, Prior art

What ‘Means’ Means

Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 (30 September 2010)

Construction – scope of claim features expressed in ‘means-plus-function’ form – Validity – whether claims (as construed) novel – whether claims involve an inventive step

It is not uncommon to claim features of an invention in terms of their functional purpose, rather than their specific structural form.  This has particular consequences in the United States, where interpretation of such ‘means-plus-function’ language is expressly dictated by 35 USC 112, paragraph 6, which states that:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

As a result, this form of claim language is interpreted relatively narrowly in the US, and indeed the absence of sufficient disclosure of structure within the specification can result in a claim being found invalid, for lack of written description support.

In Australia, no such problem arises.  As in Europe, and many other jurisdictions, features defined in terms of function are interpreted broadly.  However, a broad interpretation is not without its potential pitfalls.

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Tags: Australia, Claim construction, Novelty, Obviousness

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