IP Australia Gazumps ACIP, and Revives the Petty Patent!

Having published the initial tranche of draft Regulations implementing the Raising the Bar patent reforms just last Friday, IP Australia has today sprung upon the world a new consultation paper: Innovation Patents – Raising the Step. 

And what a surprise it is!  If IP Australia has its way, the innovation patent system will be effectively eviscerated.  The plan is to completely eliminate the distinction in inventive threshold between standard patents and innovation patents, such that an ‘invention’ and an ‘innovation’ would be required to meet exactly the same inventive step threshold. 

Thus, if an invention is not a sufficient advance over the prior art to qualify for a standard patent, it will also not qualify for an innovation patent.  Conversely, anyone with a qualifying patentable invention will have the choice of obtaining a right which is valid for only eight years, is limited to five claims, and is subject to additional exclusions from patentability.  Or they could just apply for a standard patent.

Furthermore, the intention appears to be that the ‘raised step’ will come into effect as soon as possible, in view of the commencement of the Raising the Bar reforms in April 2013.  IP Australia is concerned that the raising of the inventive step threshold ‘will lead to an increased disparity between the threshold for Standard and Innovation Patents, if Innovation Patents continue to be judged against the current innovative step threshold.’ 

The solution, in IP Australia’s submission, is not merely to raise the innovative step threshold, but to abolish it entirely, such that in one fell swoop the entire concept of a genuine second-tier patent right in Australia will be eliminated.

IP Australia’s publication of its consultation paper – which comes complete with drafting instructions for the proposed amendments to the Patents Act 1990 – appears to pre-empt the ongoing review of the innovation patent system currently being conducted by the Australian Council on Intellectual Property (ACIP).  Despite the consultation paper recognising the ACIP review, it is difficult to see what useful purpose a review of the existing innovation patent system could serve if that system effectively no longer exists once a final report is published.

IP Australia is inviting written submissions in reply to the consultation paper, but you will need to be quick!  The deadline is 5.00pm on 25 October 2012, and you will need to find time to squeeze this in while also working your way through the draft Raising the Bar regulations and preparing your submissions in relation to that consultation also.

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Tags: Australia, Innovation patent, Law reform

Draft Regulations Reveal Applicants to be Slugged with Search Fee

Draft amendments to the Patents Regulations 1991, published by IP Australia on Friday 21 September 2012, reveal plans to introduce a new search fee which may see customers (as applicants are known these days) paying at least A$2,200 to the government authority for search and examination of an Australian patent application.

The primary purpose of the draft regulations is to implement the Intellectual Property laws Amendment (Raising the Bar) Act 2012 (see previous articles on Patentology, including Bar Raised, as IP Law Reforms Signed Into Law). 

IP Australia has indicated that it will publish the draft regulations in two stages, so as ‘to maximise the time for public comment’.  At this time, draft regulations implementing Schedule 1 (relating to enhanced standards of patentability), Schedule 4 (reforms to the regulatory regime for patent and trade marks attorneys) and Schedule 5 (trade mark and copyright enforcement have been made available for consultation.

We have prepared a ‘redlined’ copy of the present Regulations, showing the changes that would be made by the proposed amending regulations, which we will update when the further draft regulations become available:

1. Volume 1 (Chapters 1 to 23 and Schedules 1, 1A and 2) [PDF 1.3 MB]; and
2. Volume 2 (Schedules 2A to 8 and the Notes) [PDF 414 kB].

IP Australia is inviting written submissions on the draft regulations, due by an unextendable deadline of 5.00pm, on 21 November 2012.  Submissions may be emailed (Word or RTF format preferred) to reform@ipaustralia.gov.au.

Over the coming weeks we will take the opportunity to review some of the proposed regulations in more detail, just as we did with the exposure draft of the Raising the Bar Bill (see Australian Patent Reform – Wrap-Up).  Some of the amendments to the Patents Regulations are extensive, and will require careful consideration. 

However, we intend to start with one of the least extensive changes: the amendment of a single row in the table of fees in Schedule 7 of the Regulations, simultaneously eliminating the fee for ‘modified examination’ (which has been repealed by Raising the Bar) while adding a new fee of A$1,710 for a ‘search by the Commissioner in relation to a patent request and complete specification as part of an examination, if the complete application was made on or after 15 April 2013’.

In the remainder of this article we will look at this new fee, the purpose and justification for its introduction, and a comparison with similar fees in other jurisdictions.  While the search fee may be justifiable from a cost-recovery perspective, it appears to us to be problematic from an innovation policy perspective.  Indeed, we believe it is time for Australia to consider introducing US-style ‘small-entity’ fee reductions.

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Tags: Australia, Innovation policy, Law reform, Official fees, Patent Office, Raising the Bar, Regulations

Shocking – Judge Compels Experts Actually to Assist the Court!

Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 2] [2012] FCA 1018 (17 September 2012)

Infringement – expert evidence following Markman-style claim construction hearing – whether appropriate to appoint assessor or referee

Earlier this year Justice Middleton, in the Federal Court of Australia, broke new ground in this country by holding a hearing, and issuing a decision, purely on the issue of claim construction as a preliminary matter in patent infringement proceedings (see Federal Court Conducts Markman-Style Hearing in Hot Tub). 

This week, Justice Middleton has issued two further decisions in the patent infringement case brought by Britax Childcare Pty Ltd (‘Britax’) against Infa-Secure Pty Ltd (‘Infa-secure’).  In the first of these decisions, he has rejected efforts by Infa-Secure to have the court order that infringement issues be referred to an independent third party for assessment.  Instead, the two experts will be returning to the so-called ‘hot tub’ to provide joint evidence to the court, based upon a claim construction with which neither one of them wholly agrees.

If all goes to schedule with this plan, the parties will be back in court for three days in December, for a further hearing to decide whether or not Infa-Secure infringes Britax’s patents.

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Tags: Claim construction, Evidence, Federal Court practice, Infringement

The ABCs of Patent Publication

You have probably noticed the letter/number codes which sometimes appear after patent or application numbers, and if you are not a professional patent attorney or searcher you might have wondered what – if anything – they mean, and whether you should care about them. 

The short answer is that if you care enough to be looking at published patent documents in the first place then, yes, you should care about the codes which appear at the end of the publication numbers.  For one thing, they tell you whether or not the document you are looking at represents a granted patent (i.e. a right that you might potentially infringe) or merely a pending application (which may or may not be granted, now or in the future, in the form you have in front of you). 

To give an example of what we are talking about, Australian patent no. 2007286532 (i.e. Apple’s ‘heuristics patent’, which is among those it is asserting against Samsung in Australia) has been published six times – as AU2007286532-A1, AU2007286532-A8 (twice), AU2007286532-B2, AU2007286532-B8 and AU2007286532-C1.

Since we are sometimes asked by clients what all these added letters and numbers mean, and it is sometimes helpful to know, here is a brief explanation.

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Tags: Australia, Patent Office, Publication

NZ Patents Bill Second Reading Debate

On 12 September 2012, the New Zealand parliament debated the new Patents Bill, in its ‘second reading’ speeches.  For readers unfamiliar with the British-style parliamentary system, a ‘first reading’ is when a bill is introduced into parliament, the ‘second reading’ is generally when it is substantively debated and amendments proposed, and a ‘third reading’ is when it is either passed, or rejected (with or without various amendments).

As we have reported recently, the big issue regarding this legislation – which will replace the horrendously outdated Patents Act 1953 – is whether, and/or to what extent, computer programs will be patentable.  Unsurprisingly, therefore, the heated debate which has surrounded this issue in recent days was reflected in the New Zealand parliament.

New Zealand is a politically interesting country.  It has been quite some time since it has had a true majority government.  The conservative National Party currently governs, but holds only 59 of the 121 seats in the parliament.  The main opposition parties are the Labour Party (which holds 34 seats) and the Green Party (with 14 seats).  The remaining seats are held by five minor parties, three of which are currently supporting the Nationals’ government.  However, none of the minor parties are bound to vote with the government on issues not directly affecting its ability to retain power.

So while the Nationals only need to find two votes in order to push legislation through, there can never be absolute certainty that this will happen.

As we explain in greater detail below, as of this moment it appears likely that the Nationals will succeed with their proposed ‘European-style’ software patent exclusion (see NZ Government Backtracks – to Europe – on Software Patents).  However, the Labour opposition has introduced its own more radical exclusion, which would ban all software patents with the sole caveat that this does not prevent ‘an invention that makes use of an embedded computer program from being patentable’, i.e. the same provision championed by the No Software Patents in NZ lobby group (see ‘My Software, My Choice’).

Additionally, the Green Party has gene patents in its sights, although this does not appear to be the same hot-button issue it has been in Australia (see, most recently, ‘Gene Patents’: Lies, Damn Lies, and Statistics).

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