What Every Patent Practitioner and Applicant Needs to Know About Divisional Applications in Australia

Since commencement of the Raising the Bar patent reforms in 2013 there has been a potentially fatal trap in the Australian rules relating to divisional applications.  I have always thought it inevitable that someone would eventually fall into this trap – and practically certain that when it did happen, the applicant would be from the United States.  A recent decision of the Australian Patent Office, in which a US-based applicant has been denied the opportunity to convert an application into a divisional of an earlier filing, in order to avoid having one of its own previous applications cited as invalidating prior art, has confirmed my prediction: Magnum Magnetics Corporation [2019] APO 3.  Of course, this may not be the first time this situation has arisen.  To the best of my knowledge, however, it is the first time it has resulted in an actual Patent Office decision highlighting the issue.

In this recent case, Magnum Magnetics Corporation (‘Magnum’) filed an independent patent application in Australia when (as it subsequently turned out) the application should really have been filed as a divisional of an earlier application.  So far, its efforts to correct this error have been unsuccessful.

As most readers will be aware, a divisional patent application is a type of patent application which is based on a previously filed application, commonly called the ‘parent’ application.  A divisional application inherits the parent’s filing date and, to the extent that it discloses and claims subject matter that was also present in the parent, those claims are entitled to the same priority date.  The primary purpose for which divisional applications were originally created was to enable further inventions that may have been disclosed in an initial application to be protected, since as a general principle a single patent may only claim a single invention.  However, over the years many other practical and strategic uses of divisional applications have been developed.  For example, it is permissible to update or add new subject matter in a divisional application, although any claims based on the added matter will not usually be entitled to the benefit of the parent’s priority date.

Historically, it has been very easy in Australia to convert between ‘regular’ and divisional applications, requiring only a straightforward amendment to the patent request.  Such an amendment could be made at any time during the lifetime of the application/patent.  However, the Raising the Bar reforms changed the rules, adding additional restrictions on when an application may legitimately be converted to a divisional.  These restrictions will rarely be an issue for applicants that are making appropriate and well-informed use of the Australian patent application system.  However, a failure to appreciate the limitations of the Australian system – and, to be honest, this is something I have seen on a number of occasions from US practitioners, since their system is quite different – can get an applicant into trouble.

Unfortunately, this appears to be what happened to Magnum, although I think that there may still be some hope of saving its application.

 Read full article ► 

Tags: Australia, Divisional applications, Extensions of time, International treaties, Paris Convention, PCT, Priority claim

Loss of CRISPR Priority in Europe is a Warning to All Patent Applicants

On 17 January 2018, a panel of the European Patent Office (EPO) opposition division wholly revoked a patent co-owned by the Broad Institute (‘Broad’) relating to CRISPR/Cas9 ‘gene editing’ technology.  The European patent in question, number EP2771468, is entitled ‘Engineering of systems, methods and optimized guide compositions for sequence manipulation’, and is a European equivalent to US patent no. 8,906,616, which is one of the key Broad patents involved in the US patent interference dispute with the University of California (UC) – which is currently on appeal to the US Court of Appeals for the Federal Circuit.  As is usual with European opposition proceedings, the ruling was issued immediately at the hearing (which had originally been scheduled to continue for two further days).  A full written decision providing detailed reasons is likely to be a few weeks away.

Technically, the basis for revocation in the final decision is likely to be lack of novelty and/or inventive step of all claims of the Broad patent.  However, the underlying reason for Broad’s failure to defend its patent is a loss of priority.  In particular, the EPO panel determined that Broad was not entitled to claim priority from four of its earlier US provisional applications, including the earliest filing, US provisional application no. 61/736,527, which was filed on 12 December 2012.  This loss of priority was fatal to the patent, as a result of a number of publications – including Broad’s own – that occurred subsequently, but prior to the full application’s filing date of 12 December 2013.

While this decision is obviously pivotal in the ongoing disputes between Broad and UC over ownership of foundational patent rights relating to CRISPR/Cas9 technology, it also provides an object lesson and a timely reminder of essential requirements for valid priority claims for patent applicants around the world, in all fields of technology.  While the circumstances of Broad’s case are somewhat more complex than most patent filings, what has happened to it here is not at all specific to the particular invention at issue.  In a nutshell, the problem was that, at the time of filing international application no. PCT/US2013/074819 (from which the European patent is derived), the named applicants – Broad, MIT and Harvard – did not collectively own all of the rights necessary to claim priority from the earlier provisional applications.  More particularly, the provisional applications named a researcher from Rockefeller University as a co-inventor/applicant, yet neither the researcher nor Rockefeller was named as an applicant on the international application.  Nor had the named applicants received any assignment from Rockefeller of the right to claim priority in the international application.

In fairness to Broad, the US national law relating to ‘internal’ priority (i.e. claiming the benefit of a US provisional application in a subsequent non-provisional application) is less strict, and focusses on the substance of the invention actually claimed in the later application rather than on a distinct right of priority.  But this can hardly be an excuse for ignorance of the international position, especially when the stakes are so high.  Broad has issued a statement, arguing that the EPO decision is based on a technicality, and asserting that it is ‘inconsistent with treaties designed to harmonize the international patent process, including that of the United States and Europe’.  I disagree.  Not only is this not the first time that the EPO has applied these rules in relation to priority claims, but it is not the only adjudicating body to have determined that they are, in fact, required by the international treaties in question.

Broad has vowed to appeal.  In the meantime – and in anticipation of the likelihood that any appeal will fail – all international applicants would be well-advised to ensure that they are clear on the ownership of the right to priority at the time of filing.  At the end of this article, I set out some guidelines for avoiding the troubles that Broad has encountered, not only at the EPO but at any international patent office.

 Read full article ► 

Tags: CRISPR, Europe, International treaties, Paris Convention, Patent Cooperation Treaty, Priority claim

What’s ‘Provisional’ About Provisional Applications?

Last week I wrote about one of the benefits of filing a provisional patent application – the ability, in most cases, to mark corresponding products or services as ‘patent pending’ or equivalent.  I have been thinking, however, that there is a bit more to be said about provisional applications.

Provisional applications are, in my experience, not very well understood among the general community.  For example, there remains a pervasive belief that a provisional application is something that can be prepared and filed quickly, casually and cheaply, and that this will provide all the protection needed for the first 12 months.  This may once have been true, in a somewhat limited sense, but it is certainly not the case in Australia any more.  It has, in any event, never been true for applicants who wish to pursue patent rights in foreign jurisdictions based on an initial provisional filing in Australia.

In fact, it is generally best to treat provisional filing with the same gravity as any other patent application process.  What, then, is the benefit of provisional applications?  And should you be filing them?

 Read full article ► 

Tags: Priority claim, Provisional applications, Strategy

Provisional Patent Pending?

One of the most common questions asked by any applicant or inventor after a new provisional application has been filed is: ‘can I now say “patent pending” about my product/service?’

You might think that the answer to this would be straightforward.  Ultimately, the client just wants a ‘yes’ or ‘no’ answer.  Indeed, most patent attorneys will answer ‘yes’ without hesitation.  The main thing – we will tell our clients – is not to represent that you actually have a patent when all that you actually have is an application.

But is it really so simple?

I was given pause recently when someone asked this very question of IP Australia (@IPAustralia) on Twitter.  The answer that came back (across four Tweets that I have here concatenated into a single reply) was this:

A standard patent can only be enforced once it is granted. ‘Patent pending’ is used by some applicants to indicate they have lodged a patent application which has not been granted. A provisional patent is not a patent application per se and won’t result in a granted patent and hence saying 'patent pending' for a provisional application would be misleading.

I cannot say that I agree with this, and in particular I do not think there is anything misleading in using the phrase ‘patent pending’ while there is any form of application on-foot that has the potential to lead ultimately to granted patent rights.  However, there are laws that apply to the representations made in relation to patents and applications, and applicants do need to be careful about the claims they make with regard to patent rights.

The topic is therefore worthy of some closer investigation.

 Read full article ► 

Tags: Australia, Marking, Priority claim, Provisional applications

‘Professional’ Provisionals – Now More Important Than Ever

Anybody filing a provisional patent application now, and waiting the full 12 months before filing complete (non-provisional) applications in Australia and/or the United States, may be subject to revised patent laws in both countries.

Most of the substantive provisions of the Australian Raising the Bar Act commence on 15 April 2013, while the new ‘first-inventor-to-file’ provisions on the America Invents Act commence on 13 March 2013.  Both reforms have potentially significant impact on applications filed after these dates, even if these claim the benefit of provisional applications filed prior to commencement of the amendments.

In particular, as a result of the reforms, even though they have not yet fully commenced, it is now effectively imperative that any priority document, including a provisional application, provide full support for the invention as it is ultimately claimed in the complete, non-provisional, application.
‘…any provisional application filed now, and forming the basis for a complete application filed in 12 months time, will be completely worthless for priority purposes in Australia and the US unless it supports the invention across the full scope of the ultimate claims…’
The notion that a provisional application can provide a lower standard of disclosure, without prejudice to the applicant, was never really true.  But is is now more crucial than ever that this myth be dispelled.

There are a number of people ‘out there’ – principally serial inventors, inventor advocates and invention promotion companies – who are keen to tell you (often for a price) that you do not need a patent attorney to assist in the preparation and filing of a provisional patent application.  This, they say, is something any inventor can do for themselves, in order to obtain ‘meaningful’ protection for an invention at a low initial cost.

Sorry, but this is simply not true.  If you do not really know what you are doing, your provisional application may be worthless.  Indeed, it may be worse than worthless, if it provides you with a false sense of security that your invention is protected.

No doubt cynical readers will be thinking that this is exactly what you would expect a self-serving patent attorney to say.  Maybe so.  But after reading this article we hope you will at least be in a position to make an informed decision.

 Read full article ► 

Tags: Australia, Priority claim, Provisional applications, US

Divisional Decision Defies Deductive Determination

Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 18 (8 September 2010)
Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 19 (8 September 2010)

Opposition – original application and corresponding divisional application both opposed – whether claims of both applications lack novelty, inventive step and/or clarity – whether claims 23 to 37 of divisional application entitled to the priority date of the parent application – whether claims 23 to 37 of divisional application lack novelty and inventive step in light of original application publication

These two Patent Office decisions, both penned by hearing officer Jacob Elijah, relate to oppositions filed by Memcor Australia Pty Ltd ("Memcor") against an initial application no. 715364 ("the parent") and an associated divisional application no. 2004203856 ("the divisional"), both in the name of GE BetzDearborn Canada Company ("GE").  The applications are directed to relatively large systems for the microfiltration of liquids, typically water in applications such as wastewater treatment.  Both have substantially the same descriptions, but different claims.

Our interest in these cases is not in the substantive basis of the oppositions.  Memcor asserted the unexceptional grounds of lack of novelty, lack of inventive step (ie obviousness) and lack of clarity.  A number of prior art documents, and much expert evidence, was tendered and considered in the decision.  Memcor was unsuccessful on all substantive grounds.

 Read full article ► 

Tags: Australia, Divisional applications, Opposition, Priority claim

When is "Secret Prior Art" Not Prior Art?

In re Giacomini, No. 09-1400 (Fed. Cir. July 7, 2010)

In light of this decision by Judge Rader, we are today struggling to come to grips with the precise nature of the relationship between a US provisional patent application, and a subsequent corresponding nonprovisional application.

In re Giacomini addresses the question of whether, and in what circumstances, the prior art effect of a US patent under section 102(e) of the US Patent Code dates from an initial provisional filing date rather than the filing date of a nonprovisional application claiming the benefit of the provisional.

 Read full article ► 

Tags: Australia, Prior art, Priority claim, US

USPTO Multi-Track Examination Proposal & Non-US Applicants

Patentology is watching with some interest the USPTO's proposal for a multi-track examination system.

Of course, we are not the only one -- see, for example, the posts on the Patently-O blog here and here.

However, as an antipodean practitioner, Patentology has a particular interest in the potential effect of these proposals on non-US applicants, as you will see.

 Read full article ► 

Tags: Patent law, Priority claim, US

The Importance of Establishing Early Ownership of Inventions

It is common for employers to assume that they own their employees' inventions, either due to express provisions in employment contracts or by operation of relevant statutes and/or common law.

It is also often assumed that, in any event, an assignment may be obtained from an inventor at any time after the invention has been made.  It appears to be particularly common in the US that the first time a written assignment document is executed by the inventors, whether employees or not, is after the filing of a nonprovisional application at the USPTO.

A relatively recent case from the UK highlights the potential danger of delaying formal assignment of inventors' rights until later in the patent process, while a recent Australian case serves as a further reminder that there is no guarantee, in all circumstances, that an employer will gain entitlement to an employee invention simply because it was made during a period of employment.

 Read full article ► 

Tags: Australia, Employee inventions, Patent law, Priority claim, UK