Raising the Bar and Sharing the Onus

As regular readers will be aware, for the past few months I have been working with CCH Australia to assist in updating the patents commentary in its Australian Industrial and Intellectual Property ‘loose-leaf’ service (which is also available as an online service).  Among other content, this service provides full text legislation and detailed commentary on copyright, designs, patents and trade marks.

This project is progressing well, with many of the reforms introduced by the Raising the Bar Act now incorporated into the commentary, along with a range of further revisions bringing other aspects of the commentary up-to-date, such as the recent approach of the courts to the tests for ‘manner of manufacture’ and novelty.  The commentary now also includes a comprehensive guide to the different criteria for assessing inventive step which apply to patents now in force, which depend upon when the application was originally filed and/or examined.

One of the topics covered in the most recent update to the patents commentary is the across-the-board application of the ‘balance of probabilities’ test in decision-making by the Commissioner of Patents, which was introduced by the Raising the Bar reforms.  Before 15 April 2013, patent applicants had long enjoyed the ‘benefit of the doubt’ in relation to many aspects of the review of applications conducted by the Patent Office of IP Australia.

For example, the questions of whether a patent application related to eligible subject matter, under the ‘manner of manufacture’ test, whether the invention was useful, and whether the claims were clear, concise and ‘fairly based’ on the description in the patent specification, were all to be decided in favour of the applicant in the event of any doubt. Prior to 2002, the same benefit also applied to the crucial decision as to whether a claimed invention was new, and involved an inventive step.

The applicant enjoyed a similar position during contested opposition proceedings, with the Patent Office being obliged to allow an opposed application to proceed to grant unless it were practically certain that the resulting patent would be invalid. This significant onus of proof upon the opponent also applied in the case of an appeal of an opposition decision to the Federal Court.

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Tags: Australia, CCH, Patent law, Patent Office, Standard of proof

A Conversation with the Commissioner of Patents (Part 1)

I was recently privileged to sit down and have a conversation on-the-record with the Australian Commissioner of Patents, and Deputy Director General of IP Australia, Fatima Beattie.  To my knowledge, this is the first time she has agreed to such an arrangement, so I am very grateful for the opportunity.

Our conversation was recorded and transcribed and – being quite lengthy – will be reproduced in a series of posts here at Patentology.  Both the Commissioner and myself took the opportunity to edit the transcript slightly before publication (largely, speaking for myself at least, to appear somewhat more coherent than may have been the case on the day), however I can assure readers that the final transcript is a faithful reproduction of the discussion.

For those who have not met her (as I had not) I can confirm that the Commissioner is, unsurprisingly, an intelligent and articulate woman, with a keen interest in the patent system, and its role in fostering innovation and economic development.  She is also – and I point this out as a statement of fact, not as any criticism – a public servant who is answerable to the government of the day.  It is also worth pointing out, for those international readers who may have missed the Daily Show’s coverage of the Australian election campaign, that we are effectively between governments right now, and the Commissioner does not actually know to whom she will be answerable in a month’s time!

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Tags: Fatima Beattie, Interview, Patent Office

Where Can You Not Get a Patent Via the PCT?

On 3 August 2013 Saudi Arabia became bound by the provisions of the Patent Cooperation Treaty (PCT), while the Islamic Republic of Iran will become bound on 4 October 2013.  Any international patent application filed on or after that date will therefore entitle the applicant ultimately to proceed in any of 148 contracting states.

So many countries are now bound by the PCT that it is almost easier to think in terms of which countries are not members of the international application system than to keep track of those which are.  If you want to file a patent application, and to keep your options open for as long as possible (typically until at least 30 months after your initial priority filing date), then a PCT application is definitely the way to go about it.  However, you do need to think about whether there are any countries which may be important to you, but which are not PCT members.

So which countries are not PCT contracting states?  And how many of them might you really care about?

This article attempts to answer these questions, although of course some disclaimers are necessary.  While I have made every effort to verify details from multiple sources, for some countries reliable, up-to-date information is not easy to come by.  To the extent that the information here is accurate, I can vouch for it only at the current time, i.e. 14 August 2013.  In other words, despite all due care, I take no responsibility for the consequences of relying on this information, and recommend that you always seek professional advice appropriate to your specific circumstances.

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Tags: International treaties, PCT, Strategy

Are ITC Exclusion Orders a Pre-Globalisation Anachronism?

Earlier this week I spoke to reporter Yun-Hee Kim via Skype, for the WSJ Live Asia Today program, about the decision of the Obama Administration to veto the US International Trade Commission (ITC) exclusion order issued against a number of older Apple devices.  The products in question had earlier been found to infringe a Samsung patent which is essential to implementation of the 3G international wireless communications standards.

I have embedded the video report at the end of this article, or you can view it on the WSJ Live web site.

In issuing an exclusion order, the ITC had done nothing particularly unusual.  As I will explain further below, it does not really have any other powers it can exercise against infringers.  Furthermore, it is part of the standard process that all proposed orders made by the ITC are subject to review, and possible veto, by the President of the United States within a period of 60 days.

To my mind, there are three aspects of this case that have contributed to the exceptional level of interest it has generated.  Together, they suggest that it might be time to reconsider the role of the ITC in ‘protecting’ the US market from imports of patent-infringing products, which increasingly looks like a relic from a simpler time in which companies, and industries, were either ‘domestic’ or ‘foreign’, rather than global.

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Tags: Apple-v-Samsung, Injunctions, Smartphone wars, US, USITC

Talking About Trolls – Continuing the Conversation

Last week I participated in a story broadcast by ABC Radio National’s Law Report program entitled ‘Feeding the Patent Trolls’.  You can listen to the report, which is about 20 minutes in length, and/or read the transcript on the programme’s web site (if you do not wish to be tied to Windows Media Player or RealAudio, choose the ‘download’ option for a straight MP3 file).

The jumping-off point for the story is the recent commencement of patent infringement litigation by Vringo, in the Federal Court of Australia, against Chinese telecommunications equipment manufacturer ZTE.  I have written about this case previously, end explained why I do not think that Vringo satisfies the criteria to be called a true ‘patent troll’. 

On one level, the ‘Feeding the Patent Trolls’ report seeks an answer to the question of whether patent trolls are coming to Australia.  I have made my own views on this pretty clear – I do not believe that the Australian system will sustain a business model predicated on ‘shaking down’ practising entities using the threat of litigation based on patents of dubious scope or validity.  In other words, there is no reason for trolls to target Australia when there are such lucrative opportunities in the US.

However, other types of non-practising entities (NPEs) – including ‘privateer’ licensing companies, which is now Vringo’s business – can expect to obtain the same benefits from litigation in Australia as any other patent owner.

The other guest on the Law Report programme, expressing a view somewhat different from my own, was Kim Heitman, who is General Counsel at the University of Western Australia (UWA), and current President of the Society of University Lawyers.  I think it fair to say that Kim would draw the line between ‘legitimate’ and ‘trollish’ activities somewhat closer to the ‘practising entity’ end of the spectrum that I would.

A few of Kim’s statements in the report bothered me, although having had a 40-minute interview reduced to a few excerpts myself it did seem likely that at least some of what he was saying may have been isolated from its original context.  I therefore emailed Kim to ask him a few questions about his comments, and he was kind enough to reply to me in some detail.  What follows is thus a form of continuation of the conversation started by the Radio National report.

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Tags: Law reform, Trolls