Australian Federal Court Considers Patent Attorney Privilege

Australian Mud Company Pty Ltd v Coretell Pty Ltd [2014] FCA 200 (13 March 2014)

It was only last month that I wrote about the changes to ‘patent attorney privilege’ introduced by last year’s Raising the Bar law reforms, and now we have the first decision of the Federal Court of Australia to consider the new provisions.

Just to recap quickly, the ‘privilege’ I am referring to is the legal professional privilege which protects communications between legal professionals and their clients, along with related records and documents, from compulsory disclosure by order of a court, or under a provision of statutory law.  Patent attorneys are not lawyers, and communications between patent attorneys and clients are therefore not automatically protected under common law, or by relevant provisions of the Evidence Act 1995.  Instead, express provision is made for patent attorney privilege in section 200 of the Patents Act 1990.

Interestingly, although I have speculated that the enhanced patent attorney privilege may apply only to communications, records and documents made on or after 15 April 2013, it appears to have been accepted by the parties to the dispute in this case, and by the court, that the current provisions apply to communications that took place between patent attorney and client back in 2004.  However, I do not think that this can be regarded as settled law, considering that a judge of the same court previously expressed doubts as to the retroactive effect of an earlier change to the law in relation to patent attorney privilege (Wundowie Foundry Pty Ltd and Clarewood Pty Ltd v Milson Foundry Ltd and David Wallace [1993] FCA 422).

More importantly, for patent attorneys and their clients, the court has confirmed that the current patent attorney privilege provisions protect a broad range of communications, records and documents made for the ‘dominant purpose’ of providing patent attorney services, including technical documents and communications made in the course of preparing a patent application.  Furthermore, the court found that neither public use of an invention, nor the ‘lodgement and subsequent publication of a patent application’ results in a waiver of privilege.

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Tags: Australia, Patent attorney profession, Privileged communications

Reining-In Amendments Under Australian Patent Law Reforms

As regular readers will be aware, 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.

The most recent update to the patents commentary includes coverage of reforms to provisions for amending patents and applications, which were introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  This article discusses some of these reforms, and the corresponding updates to the CCH commentary.

Background

Before the commencement on 15 April 2013 of the Raising the Bar Act, the Australian Patents Act 1990 included some of the most generous amendment provisions in the world.  In extreme cases it was possible, and indeed remains possible for those patent applications to which the former provisions continue to apply, to file a wholly inadequate patent specification, and to correct this defect by amendment up until at least the date of grant of the patent.

For patents and applications filed on or after 15 April 2013, and for pending applications for which a request for examination had not been filed prior to this date, this generosity has ceased to apply.  In common with most other major jurisdictions, it is no longer possible to make amendments which result in any new disclosure.

This change is something that applicants accustomed to being permitted to amend specifications to add additional supporting examples, or new experimental results, will now need to bear in mind.

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Tags: Amendments, Australia, CCH, Raising the Bar

The Right – Or Not – to Terminate a Patent Licence

The Australian Patents Act 1990 contains a provision, in section 145, permitting the termination of a patent licence, by either party, following expiration of a licensed patent.

The existence of this provision may well raise questions for some people.  For example, why would there be an need to terminate a licence after a patent has expired – would the licence not have also expired as a result?  Well, maybe not.  There is nothing to stop parties from entering into contracts with terms that continue beyond the expiry date of a patent. 

Which then raises the question of ‘freedom of contract’, i.e. if someone has signed a licence agreement in good faith, knowing its terms, why should they be granted a statutory right to nullify that agreement?

Last week, this question was addressed in a decision of Justice Flick in the Federal Court of Australia: MPEG LA, L.L.C. v Regency Media Pty Ltd [2014] FCA 180, at [15]

That object and purpose, at least in part, is to prevent the holder of a patent from taking potentially unfair advantage of the statutory monopoly conferred by a patent after it has expired. Like s 144, s 145 is aimed at anti-competitive conduct. A licensee wishing to use a patent may have no commercial option other than to enter into an agreement with a patent holder to pay royalties whilst the patent remained in force and for a period of time thereafter.

The issue in last week’s decision was, more specifically, whether or not s 145 permits a party to terminate a licence covering multiple patents when some, but not all, of those patents have expired.  The court ruled that it does not.

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Tags: Licensing, Patent law, Patent pools

Women Inventors and their Inventions

Today, 8 March, is International Women’s Day, and all of March it is Womens' History Month.

It seems to me that when people think of inventors, they mostly think of men.  And when they think of inventions, they mostly think of inventions made by men.  There are some obvious real-life examples, like the Wright brothers and the airplane, Alexander Graham Bell and the telephone, Guglielmo Marconi – or, alternatively, the equally male Nikola Tesla – and radio, or Thomas Edison and the light bulb (amongst many others). 

Of course, these men made genuinely significant contributions to science, technology and industry.  But they are often the beneficiaries of ‘great man’ narratives, in which they are imagined as lone geniuses striding across the technological landscape of history, rather than fairly ingenious people building on the work of many others before and beside them.  This notion is compounded in fictional books, films and TV series, where the ‘visionary’ (or ‘mad’, as the case may be) scientist is almost always portrayed as male.

Women inventors thus suffer twice.  First, their achievements tend to be downplayed in the historical record, and they are rarely accorded the same credit that a ‘great man’ would receive for the same contribution.  Women’s stories are far more likely to focus on collaboration, cooperation and teamwork, due to a historical and cultural bias in the way we view agency of women versus men.  Second, these same biases are played out in fictional accounts of scientific and technological innovation.  H G Wells did not write about The Invisible Woman, we have Ironman, not Ironwoman, and a version of Back to the Future featuring a Dr Emma Brown is impossible to imagine!

So, in celebration of International Women’s Day, here are a few of my favourite inventions made by women, and their inventors.  This list is, of course, not intended to be exhaustive or anything other than personal.  I would love it if you would add your own picks in the comments!

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Tags: Inventions, Inventors, Patents and society

USPTO Rightly Grants Patent to Disgraced Korean Researcher

In the last couple of weeks the US Patent and Trademark Office (USPTO) has been subject to some harsh criticism after granting a patent naming Korean researcher Hwang Woo-suk and 13 co-workers as inventors.  Managing Intellectual Property provides a brief summary of the ‘controversy’, noting that the grant of the patent (no. 8,647,872) has been described as representing ‘staggering incompetence’ on the part of the USPTO, which has supposedly been ‘embarrassed’ by its actions.

I doubt the USPTO is embarrassed.  At least it has had the courage to follow the law as it stands, and let the cards fall as they may, which is (as I will explain) more than can be said for IP Australia.  The reasons for which the Hwang patent was granted (or, perhaps more to the point, could not be rejected) are worthy of discussion. 

In 2011, the Canadian Patent Office granted a patent to Dr Hwang and his team.  Yet earlier, in 2008, the Australian Patent Office initially accepted a corresponding application before subsequently nullifying that decision in circumstances that, to my mind, were themselves highly controversial.

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Tags: Australia, Canada, Cloning, False suggestion, Fraud, Genetic technology, Korea, Patent Office, US, Utility/usefulness