Stakeholders Say ‘No’ to NZ Computer Program Exclusion

The New Zealand Ministry of Economic Development (MED) has published submissions received in response to its invitation to comment on the draft guidelines prepared by the Intellectual Property Office of New Zealand (IPONZ) in relation to the proposed exclusion of computer programs from patentability in the Patents Bill currently before the New Zealand parliament.

The draft guidelines were published back in December (see NZ Patent Office Issues Draft Guidelines on Computer-Implemented Inventions), and are intended to give effect to the intention that the exclusion ‘a computer program is not a patentable invention’ in clause 15(3A) of the Bill should nonetheless allow inventions that contain embedded software to be patented.

It is fair to say that the guidelines – and indeed Clause 15(3A) itself – have received very little support in the published submissions.  In fact, out of 36 submissions, we count only two relatively unqualified supporters, and one of those (the submission of Internet New Zealand) consists simply of a concurrence with an earlier submission from the New Zealand Open Source Society (NZOSS) which is not amongst those published by MED.

One thing that is surprising about the submissions is the breadth of interests represented.  No one is surprised when patent attorneys express concerns about constraints on the scope of patentable subject matter, and it is hardly a shock to find Microsoft amongst the contributors.  However, other companies and organisations expressing concerns about the legislation and guidelines comprise a cross section of domestic and foreign private and public entities, including The Director General of Trade for the European Union, Auckland UniServices, the New Zealand Institute of Plant and Food Research, Fisher & Paykel Appliances, the Business Software Alliance, Geological and Nuclear Sciences Limited, Airways New Zealand, Intel, Thermal Chemistry Limited, Qualcomm and Air New Zealand.

Despite these diverse interests, a number of common themes emerge in many of the submissions:

1. widespread opposition to clause 15(3A) itself ;
2. the observation that the stated intent of clause 15(3A) is inconsistent with its plain wording;
3. concerns that the guidelines will have no legal standing, and will therefore do nothing to alleviate uncertainty;
4. a preference for expressly aligning New Zealand law with that of Australia, the US or Europe; and
5. objections that the proposed exclusion is inconsistent with New Zealand’s obligations, under the Trade-Related Aspects of Intellectual Property (TRIPS) Agreement, to provide protection for ‘inventions in all fields of technology’.

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Tags: Computer programs, New Zealand, Patentable subject matter, Politics

Celgene Denied Term Extension on REVLIMID Patent

Celgene Corporation [2011] APO 37 (3 June 2011)

Pharmaceutical extensions of term – whether patent for a subsequent medical use of a known compound can be extended – whether registered product contains a compound within the scope of patent claims – whether date of amendment of ARTG registration can be used as the basis for extension application

In a decision by Hearing Officer Dr Steven Barker, the Australian Patent Office has refused to grant to Celgene Corporation extensions of the term of two patents relating to the pharmaceutical product marketed as REVLIMID.

The active ingredient in REVLIMID is lenalidomide, a drug which is a close relative to the infamous thalidomide.  Lenalidomide was originally developed as a treatment for multiple myeloma (a rare cancer of the blood), and has more recently been shown to be effective in treating the class of genetic blood disorders disorders known as myelodysplastic syndromes (MDS).

Celgene’s application to extend the term of its patents was based specifically on the use of REVLIMID in the treatment of MDS.  This particular indication was first added to the Australian Register of Therapeutic Goods (ARTG) in May 2010, although the product itself had been registered since 2007.

The Hearing Officer found not only that the applications for extension of term were filed out-of-time, but also that neither of the two patents is eligible for an extension of term based on the registration of REVLIMID.  In particular, this decision indicates that:

1. patents for subsequent medical uses of drugs (e.g. having claims of the form ‘compound X when used for the treatment of condition Y…’) cannot be extended on the basis of a registration of a product containing the compound;
2. for a patent directed to specific novel forms of a compound to receive an extension of term, evidence must be provided showing that the registered product actually contains the compound in the specific form claimed; and
3. an application for an extension of patent term must be based upon the original registration of a product, and not upon a subsequent registration or amendment by which an additional indication is included on the ARTG.

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Tags: Australia, Extension of patent term, Pharmaceuticals

Dispute Over Claim Construction Fails to Limit Discovery

Siemens Water Technologies Corp v GE Betz Pty Ltd [2011] FCA 641 (2 June 2011)

Practice and Procedure – whether extent of discovery may be limited by reference to the parties’ contended claim construction

As many readers – and particularly those from common law jurisdictions – will be aware, ‘discovery’ (or ‘disclosure’) is the process by which the parties to a legal dispute are able to obtain relevant evidence from each other prior to the commencement of the main trial.

Discovery can be vital in patent infringement proceedings, because sometimes it is not possible to demonstrate that a particular accused product or process infringes a patent without access to technical information known only to the alleged infringer.  Often the patentee will seek discovery of a wide range of material, while the accused infringer will resist extensive discovery on the basis that much of what is being sought will not be relevant, and the patentee is merely engaging in a ‘fishing expedition’.

Of course, an apparatus or process will only be infringing if it falls within the scope of one or more claims of the patent.  Consequently it is possible, in principle at least, that the legitimate extent of discovery may depend upon the proper construction (i.e. interpretation) of the patent claims.  In Australia, disputes over claim construction are decided by the court during the main trial, and not at some preliminary stage (such as the ‘Markman hearings’ normally held for this purpose in the US).

So what happens if the parties disagree on the proper construction of the claims in the course of discovery?

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Tags: Australia, Claim construction, Discovery, Federal Court practice

Australian Federal Court Revokes Undefended Patent

Huawei Technologies Company Ltd v Al Amri [2011] FCA 503 (13 May 2011)

Practice and Procedure – whether default of respondent patent owner entitles applicant for revocation to summary judgement in favour

In stark contrast to the US Supreme Court’s holding that a US patent can only be invalidated on the basis of ‘clear and convincing evidence’ (see Newsflash - US Supreme Court Upholds 'Clear and Convincing' Standard), Justice Jessup in the Federal Court of Australia has recently ordered a patent be wholly revoked on the basis that the patent owner did not take steps to defend his patent.

The general principle under the Australian law is that, unlike in the US, a granted patent enjoys no presumption of validity.  There is no requirement for ‘clear and convincing evidence’ of invalidity in Australia – in an application for revocation of a patent the court is to apply the civil standard of the ‘balance of probabilities’, which is similar to the ‘preponderance of the evidence’ standard for which Microsoft argued in its dispute with i4i.

However, this decision shows that, in the absence of a defence by the patentee, an applicant for revocation may prevail in the absence of any evidence whatsoever.

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Tags: Australia, Federal Court practice, Revocation

Newsflash - US Supreme Court Upholds 'Clear and Convincing' Standard

Microsoft Corp. v i4i Limited Partnership et al (US Supreme Court, No. 10-290, 9 June 2011)

Overnight, Australian time, the Supreme Court of the United States issued its mch-anticipated decision in Microsoft v i4i.  And for the second time this week it has upheld a decision of the Court of Appeals for the Federal Circuit (CAFC), by ruling that section 282 of the US Patent Act, which provides that '[a] patent shall be presumed valid' and '[t]he burden of establishing invalidity . . . shall rest on the party asserting' it, requires an invalidity defense to be proved by 'clear and convincing evidence.'

For those unfamiliar with the case, i4i (and co-respondents) are the proprietors of US Patent No. 5,787,449, which claims an improved method for editing computer documents.  i4i sued Microsoft for willful infringement of the patent, and Microsoft asserted, in its defense, that the patent was invalid the claimed invention had been on sale in the United States more than one year prior to the filing of the patent application.

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Tags: Evidence, Patent law, US, Validity