An Audience with the Productivity Commission on the Patenting of Computer-Implemented Inventions

On Friday 24 June 2016 I attended a public hearing in Melbourne, conducted by the Productivity Commission in relation to its draft report in its review of ‘Intellectual Property Arrangements’.  I had made a written submission on the draft report, and the purpose of the Commission’s public hearings was to ‘provide participants with the opportunity to elaborate on their submissions, respond to submissions of others, and to discuss issues with Commissioners.’

The focus of my written submission, and the topic of my discussion with the Commissioners, was the chapter of the draft report dealing with ‘Business Methods and Software.’  The single draft recommendation to arise out of that chapter is that ‘the Australian Government should amend section 18 of the Patents Act 1990 (Cth) to explicitly exclude business methods and software from being patentable subject matter.’  I disagree strongly with that recommendation!

My full written submission is available from the Productivity Commission’s web pages relating to the IP review.  (A copy can be downloaded directly – PDF, 120kB.)  Full transcripts of the hearings, which were conducted in Brisbane, Sydney, Canberra and Melbourne, are also now available.

The following is an edited transcript of my appearance.  The Commissioners are Mr Jonathan Coppel (‘JC’) and Ms Karen Chester (‘KC’).  I have cut the length of the transcript by about half, and added some headings to flag the particular topics being discussed.  Other than that I have employed the usual conventions of ellipsis (...) to mark where text has been deleted, and square brackets to indicate paraphrasing.  Comments replacing longer passages are in square brackets and italics.  I have also corrected punctuation, mistranscriptions and typographical errors without providing specific indications (the convention, of course, would be to leave them in place and pepper the text with [sic], which is ugly and distracting).

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Tags: Australia, Computer programs, Innovation policy, Patentable subject matter, Public policy, Reviews

Federal Appeals Court Considers ‘Omnibus Claims’

The word ‘omnibus’ derives from the Latin ‘omnis’, meaning ‘all’.  More particularly, the Latin ‘omnibus’ is the plural dative or ablative case of the noun (grammar nerds are getting excited right now), and may therefore be translated as ‘to, for, by, with or from everybody or everything’.  Appropriately, therefore, omnibus is the origin of the same English word referring to a collected edition of multiple works, such as novels.  And our modern word ‘bus’, describing a form of mass transit, is itself a contraction of the word ‘omnibus’, which was used back in the days when such things were still drawn by horses.

To put it bluntly, then, ‘omnibus’ is an old-fashioned word for a variety of old-fashioned things.

One of those things is a type of patent claim, intended to cover all forms of an invention disclosed in a patent application.  The exact form of an omnibus claim varies, but typically goes something like ‘a splendiferous widget substantially as described herein with reference to the accompanying drawings.’  You can see how the patentee of such a claim is trying to hedge her bets, by including the word ‘substantially’.  What even does that mean?  How ‘substantial’ is substantial enough?  How is someone to know whether or not they are infringing such a claim, assuming that they have not copied one of the described embodiments exactly?

It is for precisely this reason that omnibus claims have fallen out of fashion and favour over time.  In most jurisdictions they are no longer permitted (if they ever were), on the grounds that their scope is unclear.  In Australia, they have been banned in new applications as of 15 April 2013 by the Raising the Bar reforms, which added section 40(3A) to the Patents Act 1990, prescribing that a claim ‘must not rely on references to descriptions or drawings unless absolutely necessary to define the invention.’

However, patents and applications that were subject to examination under the former provisions may still validly contain omnibus claims, and so they will continue to be relevant in Australia until at least 2033.  It is therefore significant that a Full Bench of the Federal Court of Australia has recently had a rare opportunity to consider the scope of omnibus claims: GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90 (‘GSK’).

The court’s decision confirms that, in the majority of cases involving consistently-drafted patent specifications, an omnibus claim should be interpreted to have relatively narrow scope, being restricted by the essential features of the invention as described and defined elsewhere in the specification.

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Tags: Australia, Claim construction, Omnibus claims

What Will ‘Brexit’ Mean for European Patents?

On Thursday 23 June 2016, around 72% of eligible UK voters turned out and decided, by a narrow margin of 52%-48%, to leave the European Union (EU).

This outcome has left the nation deeply divided, along numerous lines.  First, there is a division between England and Wales, which voted to leave, and Scotland and Northern Ireland, which voted to stay.  Then there is a socioeconomic division between the most affluent and highly educated, who are dominant in the South East and who favoured remaining in the EU, and those who feel disenfranchised by the existing system and voted for the UK to reassert its sovereignty. 

I am most concerned, however, about the generational divide.  Pre-election surveys indicated that 57% of Britons aged between 18 and 34 who intended to vote supported remaining in the EU, while that proportion rose to around 75% in voters under the age of 25.  As one 27 year-old reportedly commented, ‘we're the ones who've got to live with it for a long time, but a group of pensioners have managed to make a decision for us.’

Although I would prefer that the UK stay in the EU, I must say that I have some sympathy for those people who feel that Britain has allowed itself to become too subservient to an ‘undemocratic’ pan-European government, if the immediate reaction of the European Commission president, Jean-Claude Juncker is anything to judge by.  Juncker has said that he wants to ‘get started immediately’ on the process of separation which, he says, is ‘not an amicable divorce’.  These are more the words of a petulant child than a committed democrat, who should realise that such a close outcome is hardly a resounding endorsement of the ‘Brexit’ by the British people, and that neither that fractured nation, nor the world at large, will be well-served by rushing into what is likely to be a messy, painful and disruptive process.  There are actual, real people, as well as companies and entire nations, who are shocked, uncertain and in need of reassurance and guidance as to what an EU without the UK ‘means’.  So if this is what passes for ‘leadership’ in the EU, then maybe Britain is better off ‘out’!

But enough of the general socio-political commentary – you came here to read about patents!  So what does all this mean for patents in Europe?  There are actually two separate answers to this question. 

Importantly, for existing patentees of, and applicants for, European patents the first answer is ‘pretty much nothing’, where we are talking about the established European patent system. 

However, the second answer is ‘possibly quite a lot’, where we are talking about the nascent ‘Unitary European Patent’.

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Tags: EU patent, Europe, Treaties

Attorneys Should Keep Clients Informed – The One Lesson From a Very Odd Disciplinary Proceeding

The Patent and Trade Marks Attorneys Disciplinary Tribunal has issued a decision finding a senior member of the Australian patent attorney profession guilty of ‘unsatisfactory professional conduct’ for failing to inform two clients in a timely manner of problems with patent applications in the United States and India.  Indeed, the attorney in question effectively pleaded guilty to the charges brought against him in this regard.  He was, however, found not to be guilty of more serious charges of ‘professional misconduct’ in relation to the same matters.  (For an explanation of the difference between the two charges, see my earlier article What To Do If You’re Unhappy With An Australian Patent Attorney.)

A copy of the Tribunal’s decision can be found on the website of the Professional Standards Board for Patent and Trade Marks Attorneys, or downloaded directly via this link [PDF, 322kB].  The name of the attorney in question is, of course, revealed in the decision.  However, for reasons that should become apparent, I will not be naming him in this article.  To quote from the Tribunal’s decision, he ‘has in my view already been through enough’ and it would be inappropriate in light of that finding to expose him to potential further embarrassment, along with the additional damage to reputation that may result from having negative information reflected disproportionately in internet search results.

I have, in fact, given very careful thought to whether I should comment of the Tribunal’s decision at all.  In deciding to do so, I have taken into account the fact that disciplinary decisions in relation to the conduct of Australian patent and trade marks are very rare (there have been only seven since the Tribunal was created), and each is therefore significant in what it may teach attorneys and their clients about expected standards of conduct.

In this case, the lesson is a simple one: when things go wrong – and things most definitely do go wrong, from time-to-time – attorneys need to think about how they communicate with their clients, and about keeping them informed of what is happening in relation to their IP rights, even if that may mean delivering potentially alarming news!

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Tags: Australia, Patent attorney profession, Professional conduct

The Effectiveness of ‘Virtual Marking’ of Patented Products in Australia

In many jurisdictions there are advantages to marking patented products to indicate that they are, in fact, patented.  However, the benefits of marking – or the disadvantages of not doing so – can very greatly from country-to-country.  In the United States, for example, the marking statute (35 USC § 287) provides that in the absence of marking, the patentee bears the burden of proving the date upon which an infringer was made aware of the existence of a patent in order to recover any damages for past infringement.

The provisions in the Australian patent law relating to marking are, fortunately, less onerous.  Indeed, in Australia the patentee has an advantage, in the case that products are not marked as being patented, and it is the infringer that must satisfy the court that it lacked relevant awareness of the existence of a patent.

Even so, there are clear benefits in marking products as patented in Australia.

However, marking can create problems of its own.  For example, if a product is patented in multiple countries, and/or is protected by multiple patents, is it practical to mark it with the relevant details of every one of those patents?  What are the rules for marking products while an application is pending, i.e. before a patent is actually granted?  Are there penalties where products continue to be marked after the patent has expired?  These may not be trivial matters, because changing the marking on products themselves – or even only upon the packaging – may involve substantial costs and administrative overheads.

And what about patented methods, e.g. services or manufacturing processes – should these be ‘marked’ in some way?

A solution to many of these problems is so-called ‘virtual marking’, which refers to making patent information available via the Internet and marking the product with the corresponding address.  Such information can, of course, easily be updated without requiring any changes to products, packaging, or other materials.  Express provision was made for virtual marking in the US in the America Invents Act of 2011 (legislation better known for converting the United States from a ‘first-to-invent’ priority system to ‘first-inventor-to-file’).  By way of example, TiVo maintains its patent information at www.tivo.com/legal/patents, and marks its products accordingly.

But what about Australia?  Is virtual marking an effective and useful option here?  I think so, and I will explain why.

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Tags: Australia, Infringement, Marking