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.

 Read full article ► 

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.

 Read full article ► 

Tags: Australia, Examination, Patent Office

At Last – ‘Software Patent’ Appeal Upheld in Australian Court

RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871 (30 August 2013)

Appeal – from opposition decision of the Commissioner of Patents – patentable subject matter – whether computer-implemented information system and process a ‘manner of manufacture’

Justice Middleton, in the Federal Court of Australia, has found the claims of an innovation patent relating to an automated information and evidence gathering system to relate to a patent-eligible ‘manner of manufacture’.

I usually put any disclaimers or disclosures of interest at the bottom of a post, but on this occasion I am putting them right up-front (although for some readers, at least, this will not be news).

RPL Central Pty Ltd is a client of my employer, Watermark Intellectual Asset Management.  I drafted the patent specification which is analysed by Justice Middleton in forensic detail in RPL Central Pty Ltd v Commissioner of Patents.  My colleagues within Watermark’s IP Law firm ran the Federal Court appeal against the Patent Office decision finding all of the patent claims to be invalid on subject-matter grounds (i.e. not for a ‘manner of manufacture’ under the Australian law).  I was involved throughout the process, even joining the lawyers in court last December.

I am therefore, not even remotely, an unbiased observer in this case, and I am openly delighted – for myself, my colleagues, Counsel who acted in the matter, and our client – that Justice Middleton upheld the appeal.  I am also relieved that my work has (so far) survived the scrutiny to which it has been subjected.  I have to say, also, that it is a somewhat surreal feeling to see words and drawings that I produced now reproduced in a Federal Court judgment.  In the overall scheme of things, so few patents actually become the subject of court proceedings that many practitioners may go their entire careers without this happening to them.  Most, I dare say, would be glad of this!

 Read full article ► 

Tags: Australia, Computer programs, Patentable subject matter

New Zealand Finally Gets a Modern Patent Law (With Software)

On 28 August 2013, the New Zealand Parliament finally passed the bill which will henceforth be known as the Patents Act 2013.

This is actually a fairly momentous event – and not principally because of the supposed ‘software patent exclusion’ (which I discuss further below).  It is mostly significant because it means that New Zealand will finally have patents legislation which is in line with most of the world’s developed nations, rather than a law dating back to just a few years after the Second World War.

The current patent law in New Zealand is set out in the Patents Act 1953, i.e. a 60-year-old piece of legislation, which was itself based on the 1949 UK Act.  Australia also had laws based on the old UK Act, in the Patents Act 1952, which was replaced over 20 years ago by the current legislation, the Patents Act 1990.

So when the existing New Zealand patent laws came into effect, the exciting new inventions of the day included the transistor (1947), Velcro (1948), super glue (1951) and the black box flight recorder (1953).  While the world has moved on somewhat since then, the New Zealand patent laws have not!

 Read full article ► 

Tags: Computer programs, Law reform, New Zealand

A Conversation with the Commissioner of Patents (Part 3)

In the first of this series of articles documenting my recent conversation with the Australian Commissioner of Patents, and Deputy Director General of IP Australia, Fatima Beattie, we learned a bit about her about her background as a chemical engineer working with steel, about how she came to the role of Commissioner, and about what the job involves on a day-to-day basis. 

In the second part of the interview, we spoke about the law reform process – what has already been achieved through the Raising the Bar amendments, the further reforms which are currently ongoing, and the opportunities for future reform.

In this third, and final, part of the discussion we speak about the patent-eligibility of contentious subject matter such as computer-implemented inventions, business processes, and genetic materials, as well as the challenges facing the patent system over the coming years.

 Read full article ► 

Tags: Business processes, Computer programs, Fatima Beattie, Genetic technology, Interview, Patentable subject matter, Patents and society