Australia Slips Further Out-of-Step on Pharmaceutical Extensions

On 28 April 2011, the Japanese Supreme Court ruled that a term extension can be allowed for a patent covering a subsequent therapeutic product based on the same active ingredient as a product having an earlier regulatory approval date.  This decision further confirms that the approach taken in Australia is at odds with many of the nation’s major trading partners.

We have written previously about pharmaceutical extensions of term (see Pharmaceutical Extensions and International Inequities).  The basic principle is simple enough – where a patentee experiences delays in its ability to exploit a patent due to the requirements of obtaining regulatory approval (e.g. permission to market a drug for treatment of humans), it may apply for an extension to the normal 20-year patent term as whole or partial compensation for such delays. 

To prevent the patentee from unfairly extending its monopoly, there are restrictions on the grant of an extension of term.  In particular, it is generally the case that an extension is only available on the basis of the first inclusion of a therapeutic product on the relevant register.  Thus a subsequent patent, directed perhaps to some variation, improvement, or new delivery method, might not be eligible for extension if the active ingredient had previously been registered in its own right.

The recent Japanese decision appears to adopt a more lenient approach to such restrictions than is currently the case in Australia, and seems more in line with the US approach.

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Tags: Australia, Extension of patent term, Japan, Pharmaceuticals, US

CardinalCommerce Credited with Patent Win Over Visa

Visa Inc. v CardinalCommerce Corporation [2011] APO 34 (25 May 2011)

Opposition – whether claims suffer from ‘parametritis’ – whether claimed invention novel and inventive over systems in prior use – whether Internet Archive a ‘reliable source’ of prior art information – whether information relating to prior systems would have been ‘ascertained’ before the priority date – whether claims are for a ‘manner of manufacture’

International credit card giant, Visa Inc, has been wholly unsuccessful in an opposition to the grant of a patent in Australia relating to transaction authentication.  The patent application was filed in the name of CardinalCommerce Corporation, which bills itself as ‘the global leader in enabling authenticated payments, secure transactions and alternative payment brands for both eCommerce and mobile commerce.’

Visa contended that the CardinalCommerce claims lacked novelty and/or inventive step in view of two prior authentication systems – Active Access / Active Merchant and Secure Suite – and payment gateways that were well-known at the priority date of 12 June 2002.  Visa also contended that the claims did not define a ‘manner of manufacture’, i.e. were not for patentable subject matter.

Hearing Officer Matt Kraefft found that the evidence did not support a conclusion that the claimed invention lacked novelty, nor that it was obvious at the priority date.  He also found that ‘claims clearly relate to supporting authentication processing of on-line commercial transactions involving several physical steps in a networked environment’, and satisfied the requirements for a manner of manufacture.

He also considered the following additional issues:

1. whether the claims suffered from ‘parametritis’ (they did not);
2. whether the Internet Archive, or ‘WayBack Machine’, is a reliable source of prior art information (it may not be definitive, but a conclusion may be reached on the balance of probabilities); and
3. whether documents that were not confidential, but may have had only a limited distribution, could be considered as the foundation for a lack of inventive step (they could not).

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Tags: Australia, Business processes, Computer programs, Novelty, Obviousness, Patentable subject matter

Australian Patents Regulations Amended, Effective 1 July 2011

 
On 12 May 2011, the Federal Executive Council made the Intellectual Property Legislation Amendment Regulations 2011 (No. 1).  The Regulations amend the Patents Regulations 1991, Trade Marks Regulations 1995, Designs Regulations 2004, Plant Breeder’s Rights Regulations 1994, and the Olympic Insignia Protection Regulations 1993.

There are three changes, in particular, to the Patents Regulations 1991 that are likely to be of some interest to patent owners and applicants, and their advisers:

1. it will be possible to use any Australian postal address as an ‘address for service’ in relation to a patent or application;
2. the period allowed for payment of an unpaid fee for requesting an amendment to a complete specification will be extended from one month to two months; and
3. certain formal requirements for the layout of patent specifications will be aligned more closely with the corresponding PCT Rules – in particular, type will be required to be 1 ½ spaced, and paragraph and/or line numbering will no longer be required.

The amendments will come into effect from 1 July 2011.  Further details of the three changes highlighted above are set out below.

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Tags: Australia, News, Regulations

IP Australia on Collision Course with Private Practitioners?

Last week the Director General of IP Australia, Philip Noonan, gave a presentation at the conference 'Perspectives on Metrics-Based Research Evaluation – Two Years On', held at the University of Queensland.  The presentation was entitled The hidden value of patent information: What can universities learn?  In it, Mr Noonan described the features and benefits of ‘patent analytics’, and set out IP Australia’s plans for a ‘National Patent Analytics Pilot’.

A copy of the presentation slides is available from the conference website.  Mr Noonan’s comments have also been reported in The Australian newspaper.

IP Australia obviously subscribes to commercial patent information services to support its patent searching and examination activities.  We have been hearing whispers for some time that it would like to extract additional value (and revenue) from these subscriptions by providing additional intelligence services, such as patent analytics.  The National Patent Analytics Pilot appears to be an example of such a service.

However, this clearly raises questions about the proper role of a government authority in offering ‘value-added’ services that potentially compete with private enterprise providers.  IP Australia’s core task is to administer statutes (e.g. the Patents Act 1990, Trade Marks Act 1995 and Designs Act 2003) relating to IP, and to grant exclusive IP rights for defined periods of time in accordance with those statutes.  It also has responsibilities in shaping IP policy. 

It is not at all clear, however, that IP Australia should be getting involved in providing services that are already available from commercial service providers on a competitive basis.  And if it is going to become a player in this market, the existing providers may have a legitimate concern as to whether IP Australia’s services will be offered on a truly competitive basis, considering that it already has essentially all of the resources and infrastructure necessary – funded from its core activities – to provide these services.

In this article, we will therefore delve more deeply into ‘patent analytics’, and the potential concerns in relation to IP Australia’s proposed pilot program and future activities.

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Tags: Australia, Intellectual Asset Management, Patent analytics, Patent Office

An Inventor’s Lament for the Broken Promises of the Patent System

Book review – Don’t File A Patent by John D Smith (The Smith Press, 2010)

John D Smith is an inventor and a good, old-fashioned, entrepreneur who believes in the power of the individual to take a good idea from conception to market, to the mutual benefit of the consumer – who gets a new or better product – and the inventor – who gets the personal satisfaction and financial rewards of running a successful business.

In other words, all Smith is really asking for is his share of the American Dream.  It is, perhaps, easier for those of us living outside the United States to perceive the potential damage wrought by this national ethos of freedom, prosperity and success.  From a distance, we can see that the promise is just too great to deliver on the expectations it creates, and so some degree of disappointment, disillusionment and bitterness is an almost inevitable consequence when the dream meets reality.

The US patent system has its own place within the national psyche.  It is timely to examine this now, as the US Congress considers legislation to reform the system in a number of respects, but most controversially to replace the ‘first-to-invent’ principle with a ‘first-inventor-to-file’ approach more closely aligned with the rest of the world.  It is said by some that this unique feature of the US patent law finds its origins in the articles of the Constitution upon which the Nation was founded, and that placing the individual at the heart of the system, as the source of all innovation, has contributed to America’s great economic and cultural success.

This may seem somewhat philosophical, but it actually does matter.  If it is true that the current system provides better support for individuals and small enterprises to successfully commercialise their inventions, then the proposed reforms may indeed be harmful.  But if, on the other hand, the notion of a patent system that supports, protects and nurtures the individual inventor is just one more myth waiting to be busted, then the arguments in favour of reform almost certainly outweigh those against.

The story that Smith tells in his book Don’t File A Patent is therefore one that should be read by inventors, patent attorneys, legislators, policy makers, patent examiners, patent office officials, and anybody else with more than a passing interest in how the US patent system really works.  Smith’s disillusionment and bitterness are, at times, palpable as you read this book.  However, his reactions are entirely understandable, and have not prevented him from writing a book that is informative and readable – even, in places, downright entertaining and almost laugh-out-loud funny (such as his ‘Office Action Rejection Wheel’).  Nor have they prevented him from devoting more than half of the book to practical and positive advice on what to do with the time, money and energy you will save by not filing a patent application.

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Tags: Book review, Patent law, US