Countdown to the End of the Innovation Patent: Abolition Legislation Signed into Law

On 26 February 2020, the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 received Royal Assent (i.e. was signed into law by the Governor General of Australia), becoming Act No. 9 of 2020.  I reported passing of this Bill in the Senate, with amendments, in November last year, noting that its passage through the House of Representatives (which eventually occurred on 5 February 2020) was a mere formality.  The full text of the Bill, as passed, can be found on the Parliament of Australia website, and should soon be available as the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 on the Federal Register of Legislation.

The main feature of the Act, about which I have written a number of times over the past few years, with varying degrees of ambivalence, is the abolition of Australia’s second-tier innovation patent system.  I briefly reviewed the history of the innovation patent’s downfall when reporting passage of the Bill through the Senate, and will not rehash this here.  The key point to note, however, is that the legislation provides for an 18 month window, commencing on the date of Royal Assent, before the phase-out of the innovation patent begins.  The following timeline has therefore now been established:

1. 26 February 2020 – Act receives Royal Assent;
2. 26 August 2021 – no longer possible to file new innovation patent applications, other than divisional applications based on applications filed on or before 25 August 2021; and
3. 25 August 2029 – final expiry date of all innovation patents (i.e. eight years after the last possible filing date of 25 August 2021).

The Bill originally provided a 12-month sunset period, however this was extended to 18 months by amendments in the Senate proposed by the Labor opposition, along with provisions requiring that a statutory review be undertaken to assess the impact on Australian small to medium enterprises of abolishing the innovation patent system, and make recommendations to facilitate access to standard patent protection for small business in Australia.  The review must commence within three months (i.e. by 26 May 2020), and provide a written report to the Minister for Industry, Science and Technology (currently the Hon Karen Andrews MP) within 12 months of commencement (i.e. no later than 26 May 2021).

To assist people with keeping track of the time remaining to file new innovation patents, I have added a countdown timer to the sidebar of this blog.  (You’re welcome!)  Notably, because 2020 is a leap year, and the Act received Royal Assent prior to 29 February and during daylight savings time, everyone has 25 hours more than would otherwise have been the case to file their final innovation patent applications!

While abolition of the innovation patent is, for most people, the big ticket item in the Act, it introduces a few other changes to Australia’s IP laws.  Read on for a brief summary of these.

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Tags: Australia, Compulsory license, Crown use, Innovation patent, Law reform, Omnibus claims

Federal Appeals Court Considers ‘Omnibus Claims’

The word ‘omnibus’ derives from the Latin ‘omnis’, meaning ‘all’.  More particularly, the Latin ‘omnibus’ is the plural dative or ablative case of the noun (grammar nerds are getting excited right now), and may therefore be translated as ‘to, for, by, with or from everybody or everything’.  Appropriately, therefore, omnibus is the origin of the same English word referring to a collected edition of multiple works, such as novels.  And our modern word ‘bus’, describing a form of mass transit, is itself a contraction of the word ‘omnibus’, which was used back in the days when such things were still drawn by horses.

To put it bluntly, then, ‘omnibus’ is an old-fashioned word for a variety of old-fashioned things.

One of those things is a type of patent claim, intended to cover all forms of an invention disclosed in a patent application.  The exact form of an omnibus claim varies, but typically goes something like ‘a splendiferous widget substantially as described herein with reference to the accompanying drawings.’  You can see how the patentee of such a claim is trying to hedge her bets, by including the word ‘substantially’.  What even does that mean?  How ‘substantial’ is substantial enough?  How is someone to know whether or not they are infringing such a claim, assuming that they have not copied one of the described embodiments exactly?

It is for precisely this reason that omnibus claims have fallen out of fashion and favour over time.  In most jurisdictions they are no longer permitted (if they ever were), on the grounds that their scope is unclear.  In Australia, they have been banned in new applications as of 15 April 2013 by the Raising the Bar reforms, which added section 40(3A) to the Patents Act 1990, prescribing that a claim ‘must not rely on references to descriptions or drawings unless absolutely necessary to define the invention.’

However, patents and applications that were subject to examination under the former provisions may still validly contain omnibus claims, and so they will continue to be relevant in Australia until at least 2033.  It is therefore significant that a Full Bench of the Federal Court of Australia has recently had a rare opportunity to consider the scope of omnibus claims: GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90 (‘GSK’).

The court’s decision confirms that, in the majority of cases involving consistently-drafted patent specifications, an omnibus claim should be interpreted to have relatively narrow scope, being restricted by the essential features of the invention as described and defined elsewhere in the specification.

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Tags: Australia, Claim construction, Omnibus claims

Innovation Patents Reach Back in Time for Infringement

Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 3] [2012] FCA 1019 (18 September 2012)

Innovation patents – divisional applications – relevant dates for assessment of infringement – claim construction – omnibus claims

According to a recent decision of the Federal Court of Australia, innovation patents may, in some common circumstances, be infringed before they have even been filed!

In a third decision in the ongoing Britax v Infa-Secure saga (see earlier articles Federal Court Conducts Markman-Style Hearing in Hot Tub and Shocking – Judge Compels Experts Actually to Assist the Court!), Justice Middleton has considered the dates from which infringement of divisional innovation patents can be considered.  This is an important issue, because a patentee may be entitled to claim compensation for the commercial activities of an infringer going back to this date.

While it is well-established that the earliest possible date of infringement of a standard patent is the day on which it was published, Justice Middleton has found that an innovation patent may be infringed from its effective filing date.  In the case of an innovation patent which has been divided from a pending standard patent application, the relevant date is the date of filing of the original patent application, even though this may have occurred years earlier than the filing of the divisional innovation patent application itself.

For this early infringement date to apply, it does not appear to be relevant whether the claims of the innovation patent were present, or clearly foreshadowed, in the original patent specification.  According to Justice Middleton’s reasons, any valid innovation patent claims (i.e. novel claims which are adequately supported by the original disclosure, as well as satisfying the low ‘innovative step’ threshold) can potentially be enforced back to the original application date.

The court also considered the interpretation of so-called ‘omnibus claims’, i.e. claims which define an invention by reference to all or part of a specification, or by reference to examples or drawings that have been included in the specification in order to illustrate the invention.  The provisions of the Raising the Bar Act 2012, which will come into effect of 15 April 2013, will largely prohibit the use of such claims, although they will continue to exist legitimately for the lifetime of many existing patents and applications.

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Tags: Australia, Claim construction, Infringement, Innovation patent, Omnibus claims