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

That’s a Wrap! Kimberly-Clark Patent Valid, but Not Infringed

Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2010] FCA 1318

Construction – meaning of ‘sheet’ – Infringement – whether claims require ‘inner wrap sheet’ and ‘outer wrap sheet’ to be initially unconnected – Validity – whether priority claim valid – novelty – whether claims fairly based on specification – Rectification of Register – whether Register of Patents should be ‘corrected’ due to non-compliance of claims with unity requirement

BACKGROUND AND SUMMARY

Kimberly Clark Worldwide Inc is the proprietor, and Kimberly-Clark Australia Pty Ltd the exclusive licensee (collectively ‘Kimberly-Clark’), of three Australian patents (nos. 695238, 715940 and  758905), all entitled ‘Single Step Sterilization Wrap System’.  The three patents are related as divisional ‘grandparent’, ‘parent’ and ‘child’, respectively.

As the court (Justice Stone) describes it (at [3]):

The patents are for a single step sterilisation wrap system.  Sterilisation wrap systems are designed to facilitate the sterilisation and storage of instruments, generally surgical instruments, and other supplies, by wrapping them before the sterilisation procedure.  After sterilisation the sterile wrap remains in place protecting the items and allowing them to be stored without contamination until required for use. Sterile wraps are designed to allow the permeation of the sterilising agent but not contaminating agents.

Kimberly-Clark alleged that Multigate Medical Products Pty Limited (‘Multigate’) was proposing to market and sell an infringing sterile wrap product in Australia.

In the usual manner, Multigate denied infringement, and asserted various grounds of invalidity of the Kimberly-Clark patents, the most interesting being that the Register of Patents should be rectified to remove the ‘child’ patent, the ground that it claims more than one invention, contrary to section 40(4) of the Patents Act 1990.

The court found the patents valid, on all counts, but not infringed by the Multigate product.  A win and a loss for each party, and much money spent on legal fees for no change in the status quo!

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Tags: Australia, Claim construction, Infringement, Register of Patents, Unity, Validity