IP Australia Proposal Renders Innovation Patents ‘Obsolete’ - IPTA

As reported here last month (see IP Australia Gazumps ACIP, and Revives the Petty Patent!), IP Australia recently released a consultation paper proposing to replace the present ‘innovative step’ test for innovation patents with the ‘inventive step’ test as will apply to standard patents following implementation of the Raising the Bar Act.

If the proposals become law, innovation patents will have exactly the same patentability requirements as standard patents, but with a shorter term, limited number of claims and restricted subject matter.  As we argued in our earlier article, this would effectively represent a return to the ‘petty patent’ system, which was widely regarded as a failure – rarely used, except for tactical purposes.  This was precisely the reason the Australian Council on Intellectual Property (ACIP) recommended the introduction of the innovation patent as a new ‘second tier’ system of protection for lower-level advances.

The stated purpose of the innovation patent system was to stimulate innovation in Australian small-to-medium enterprises (SMEs) and to provide for protection of their lower level inventions.  Without a distinct ‘innovative step’ test, this purpose will not longer be satisfied.

Patentology is not alone in holding these views.  The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) has circulated a notice to members regarding IP Australia’s proposal, to which was attached a letter setting out IPTA’s position on the proposed reforms.

As many readers will be aware, Patentology is steadfastly independent.  We are not a member, or otherwise formally affiliated, with IPTA, although we are always happy to publish the sincerely-held views of people or organisations with a genuine interest in the Australian patent system, even if they do not accord with our own.

On this issue, however, we are absolutely as one mind with IPTA.  What follows is a copy of the letter setting out IPTA’s position on IP Australia’s proposal for the innovation patent system, and we encourage readers – particularly those connected with Australian SMEs – to consider making formal submissions to IP Australia, and to bring this article to the attention of like-minded associates and colleagues.

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Tags: Australia, Innovation patent, IPTA, Law reform

Smartphone Wars, Gangnam Style!

There is an incredible video on YouTube which shows South Korean pop star PSY performing his global viral hit Gangnam Style in front of a Seoul audience of 80,000 fans.  The entire audience pulses with the waving of arms in time to the music, which is itself barely audible over the noise of the crowd which, to a man, woman and child, appears to know every single word of the song.

To find a comparable achievement by an artist in the western world, you might have to go back to Queen's performance at the Live Aid convert in 1985, which was remarkable for the fact that, while the crowd of 72,000 was slightly smaller than PSY's, Freddie Mercury had them eating out of his hand despite the fact that they were not a dedicated Queen audience.

But if the PSY phenomenon demonstrates anything more broadly, it is that Apple should be afraid… very afraid!

So what has K-Pop got to do with smartphones, we hear you cry? We think quite a lot, as we shall explain.

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Tags: Apple-v-Samsung, Innovation, Smartphone wars, Strategy, The Asian Century

Dangerous Opinions

A couple of weeks ago I received a call from a person – let’s just call them ‘X’ – who is involved, in a professional capacity, in one of the Australian Federal Court matters about which I have written over recent months.

To be clear, X was perfectly courteous, and the conversation that we had was not at all inappropriate.  While I do not know X personally, they are well-known and highly-regarded within the Australian IP professions as a person of the highest integrity.  X did not pressure me to change anything I had written, but simply wanted to provide some additional background information so that I would have the opportunity to ensure that my reporting was as factually accurate as possible.

It seems, additionally, that some concerns had been raised about what X’s clients might infer if they were to read my articles on the case.

With all due respect to those involved in the case (and I mean that sincerely, not in the disingenuous way the phrase is sometimes used in legal argument), what I would hope anybody reading any of my articles would infer is that they are written by a patent attorney who is not – unless expressly disclosed – privy to any inside information regarding the matters under discussion, and that they provide commentary comprising a mix of facts and personal opinions.  I credit the readers of the Patentology blog with intelligence (an assumption generally supported by the quality of comments and other feedback I receive), and I would hope that X’s clients, like any other reader, would have the reading comprehension skills necessary to distinguish between fact and opinion.

However, there are undoubtedly dangers in expressing opinions online, particularly when those opinions relate to legal proceedings and might reflect on matters such as the correctness of a judge’s decision, or the effectiveness of a legal team’s strategy.  There is sometimes a fine line between writing commentary which may provide some insight into a matter for readers who are not experts in the area, and writing something which might be perceived as prejudicial or defamatory.

It might therefore be useful to set down a few of my thoughts on these issues, and suggest some of my preferred options for people who disagree with me, who think I have got something wrong, or who feel aggrieved by something I have written.

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Tags: Patentology admin, Personal

Reading Prior Art When the Times, They Are A-Changin’

Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd [2012] FCA 944 (31 August 2012)

Construction – consideration of how a person skilled in the art would have interpreted and understood the prior art – time at which prior art is to be construed

There are many issues of patent law touched upon in the 369 paragraph decision of Justice McKerracher in Bradken Resources v Lynx Engineering, however in this article we will look at just one – the continuingly vexed question of the date at which a prior art document is to be interpreted (the more common terminology in patent law being ‘construed’).

As the court noted in this recent case (at [211]) there appears to be a schism in the authorities on this question.  Two different dates – possibly very different in some cases – are generally proposed as being the relevant time to assess the meaning and content of a prior art document:

1. the date of publication of the prior art document; or
2. the priority date of the claim which is being assessed (e.g. as to novelty or inventive step) in relation to the prior art document.

As we shall explain, there are sound reasons why either one of these dates might be chosen, although generally for different purposes.  There are (at least) three different reasons for which one might want to understand exactly how a document should be understood:

1. to determine what is meant by various terms used in the document;
2. to determine whether the document shows that something was fully known and/or used at some time in the past (e.g. to assess novelty of a claim); and
3. to determine whether a skilled person would be able, after reading the document, to arrive at something which, while not fully described, could nonetheless then be derived by routine steps (e.g. to assess obviousness of a claim).

We would argue that only the third of these reasons should involve any consideration of the state of the art, or the knowledge and understanding of a relevantly skilled person, at the priority date of the claim(s) under consideration, and even then the meaning of the document at its date of publication remains a relevant consideration.

In this case, the court construed a prior art document at its date of publication (in 1936), for the second purpose above, i.e. to assess the novelty of Lynx’s patent claims, which we consider was the correct approach.

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Tags: Australia, Prior art

Can I – and Should I – Patent My Smartphone App?

One of the most common types of enquiry we receive in our day-to-day practice is about patenting of smartphone (i.e. iOS or Android) apps.  Indeed, if we had a dollar for every prospective new client who had rung up or emailed to ask how to protect their ‘million dollar app’ idea, we would have… well… probably more money than we have made from actually preparing and filing patent applications based on these enquiries!  Because most of them end up going nowhere, once we have had a conversation about the pros and cons of patenting.

This post will explain why.  And it is not because smartphone apps cannot be patented – many of them most probably can be.  However, for most inventors the appropriate question is not ‘can I patent my smartphone app?’ but ‘should I patent my smartphone app?’  This second question is difficult to answer without having a solid business plan, which is something that has rarely been considered by people calling a patent attorney because a friend or relative told them: ‘that is a great idea, you should patent it!’

These days, the Apple iTunes App Store and Google Play (the Android equivalent) are incredibly competitive marketplaces.  According to recent data from app analytics specialists Flurry, there are over 600,000 apps now available from each of these markets.  Wikipedia entries for the two stores place these figures for September 2012 at 700,000 apps in the Apple App Store and 675,000 apps on Google Play.  Whichever figures are most accurate, this is an awfully large number of apps!

If you are going to make any money in these markets – whether by app sales, through in-app revenue and/or via advertising – you are going to have to get noticed first.  And clearly there is much more to this than just having a great idea.  (In fact, this may be the least important element, unless you are the sort of person who thinks that flinging kamikaze birds at green pigs with a slingshot is a ‘great’ idea!)

Ask not, therefore, whether your app idea can be patented.  Ask instead whether it is worth patenting.  This is as much a business question as an IP issue, and for many – perhaps the majority – of app inventors, the answer may well be ‘no’.

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Tags: Android, Computer programs, Intellectual Asset Management, iOS, Strategy