Commissioner Of Patents Applies to Appeal RPL Central Decision

On 30 August 2013, Justice Middleton in the Federal Court of Australia upheld the appeal by RPL Central Pty Ltd against the decision of the Commissioner of Patents to revoke an innovation patent relating to an automated information and evidence gathering system.  The Commissioner had determined that the patent was invalid on the ground that it did not relate to a patent-eligible ‘manner of manufacture’.

On 25 September 2013, the Commissioner filed an application with the Federal Court for leave to appeal Justice Middleton’s decision (the case is number VID1023/2013 in the Victorian Registry of the court).

As I have pointed out on previous occasions when reporting on this case, I am not an impartial observer, nor am I at liberty to reveal all that I know about the status of the matter, or to express all of my true thoughts and opinions.  RPL Central Pty Ltd is a client of my employer, Watermark Intellectual Asset Management.  I drafted the patent specification which is under scrutiny in the case.  My colleagues within Watermark’s IP Law firm ran – and continue to run – the Federal Court appeal.

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Tags: Appeal, Australia, Business processes, Computer programs, Patent Office, Patentable subject matter

The World of Science and Innovation is No Place for Discrimination

This is, nominally, a blog about patents.  But I like to think that it is a bit more than that – I endeavour, when I can, to write about the role of patent law, practice and policy in a broader social context.  I believe strongly in the importance of discovery and innovation to the prosperity and improvement of individuals, communities, nations and humanity at large, and therefore that the ways in which we encourage and foster these activities are also vitally important.

The universe is full of mysteries, and the world of problems in need of solutions.  OK, so some of those problems – such as how to signal to the user of a touchscreen device that they have reached the end of a scrollable page – are of a decidedly ‘first world’ nature (though they are nonetheless important to the prosperity of innovative companies).  However there are other challenges – such as how best to bring the benefits of pharmaceutical innovations to populations in the developing world – which genuinely test the limits of our resolve to apply human ingenuity for the benefit of all.

It is, I believe, self-evident that the more people we have involved in the entire process of innovation – in basic research, in development, in commercialisation, in policy-making, and so forth – the more progress will be made.  It is, therefore, utterly unacceptable for anybody to be excluded from the endeavour, or discriminated against, on the basis of gender, skin colour, age, sexuality, or any other irrelevant consideration.  This is, of course, equally true in all fields of human endeavour, but I think we are entitled to expect that those built on a rational scientific foundation, and populated substantially by the privileged and highly-educated, should be leading the way in this regard.

Which is why I count myself among the large number of people who have been rightly outraged by the treatment of Scientific American blogger DNLee in recent days.  Indeed, she experienced two successive acts of discrimination: firstly by some low-life blog editor at Biology-Online.org, who called her a ‘whore’ because she had the temerity to say ‘no’ to providing them with free content; and then again by Scientific American itself, which removed her post reporting on the incident on the spurious basis that Scientific American ‘is a publication for discovering science’ and that ‘the post was not appropriate for this area’.

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Tags: Patents and society, Personal, Public policy

NZ’s PowerbyProxi Sits on a Potential SEP Goldmine

A $4 million investment by Samsung Ventures Investment Corporation in New Zealand company PowerbyProxi Limited has received wide coverage over the past week (see, e.g., the IAM Magazine blog, scoop.co.nz, gigaom.com and AllThingsD, among many others).

On the face of it this is a good news story for the NZ start-up company, which was founded in 2007 based, in part, on intellectual property originally developed at the University of Auckland.  PowerbyProxi claims to have developed the world’s most advanced and safest wireless power system, and the first commercial wireless recharging system capable of 3D power transfer, regardless of how a device (such as a smartphone) is oriented within the recharging unit.  It also claims to own a portfolio of 126 granted patents worldwide, along with numerous further pending applications.

There are two components to the Samsung deal.  Samsung Electro-Mechanics has entered into a strategic partnership with PowerbyProxi, under which it will license the NZ company’s consumer electronics and home appliance wireless power IP and technology.  The other component is the $4 million in strategic funding from Samsung Ventures Investment Corporation, which will also see Samsung Ventures America senior investment manager Michael Pachos joining the PowerbyProxi board, suggesting that the deal gives Samsung a substantial equity interest in the company.

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Tags: Innovation, Intellectual Asset Management, Licensing, New Zealand, Technology standards

Whither — or Wither — the Innovation Patent?

Last month the Australian Government’s Advisory Council on Intellectual Property (ACIP) released an ‘Options Paper’ in its ongoing review of the innovation patent system.  The options presented in the paper are threefold: do nothing; modify the innovation patent system in some as-yet unspecified way; or abolish the innovation patent system entirely.  I think that pretty much covers the full gamut of possibilities, and ACIP is now going back to the public seeking further input.

I have written about this review before, most recently in relation to IP Australia’s ‘Raising the Step’ proposal, in September 2012, 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.  As I wrote at the time, IP Australia’s publication of its consultation paper – which arrived complete with drafting instructions for the proposed amendments to the Patents Act 1990 – appeared to completely pre-empt ACIP’s review.

Submissions were due by 25 October 2012, in response to IP Australia’s consultation.  I made a submission, although it appears to have gone astray, since my name is not included among the list of submissions on page 46 of the ACIP Options Paper.  While I expected that the submissions would be published, and some further proposals or conclusions put forward by IP Australia, on the contrary the consultation seemed to disappear without trace.  In fact, ACIP’s Options Paper reveals that the submissions to IP Australia were passed on for consideration in the course of its ongoing review.

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Tags: Australia, Innovation patent, Law reform

IP Australia Confirms Impact of Reform on Patent Examination

In a news update sent out by email on 6 September 2013, IP Australia has confirmed what many of us already knew to be the case – that the rush of patent applications and examination requests in the lead-up to the commencement of the Raising the Bar reforms on 15 April 2013 has led to a significant blow-out in the examination backlog.

I presented figures back in April, shortly after the new laws came into effect, showing that in the final month under the former provisions over 6000 applications were filed (more than three times the long-term average filing rate), with half of those being filed in the week leading up to commencement. 

My Watermark colleague Geordie Oldfield subsequently published examination request numbers on the firm’s Intellectual Asset Management blog revealing an almost 40-fold increase in the rate of voluntary examination requests over the months prior to 15 April 2013.  In the final month, a total of nearly 22,000 examination requests were filed (around 1,700 in response to Patent Office directions, and over 20,000 voluntary requests).  This compares with a long-term average rate of under 1000 examination requests filed per month.

Additional 7-Month Examination Delay Expected

IP Australia has a Customer Service Charter, in which it sets out its commitments with regard to timeframes for completing various actions.  Currently, the Charter commits the Patent Office to issue a first examination report within 12 months of the date of filing of a request for examination.

IP Australia’s email update acknowledges the surge in examination requests, and goes on to explain that:

The main impact of this surge will be an increase in the pendency of first reports in coming years. Pendency is expected to increase in the December 2013 quarter, and is likely to exceed the 12 month customer service charter commitment by the end of April 2014. Based on projections, this could average up to 19 months at its peak during 2014, before returning to the 12 month commitment in early 2015.

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Tags: Australia, Examination, Patent Office