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Author: Raelene Coelho

Australian patent claim construction and the importance of amendments to suit Australian practice

The boundaries of the monopoly provided by an Australian patent are fixed by the wording of the patent’s claims. We do not have a doctrine of equivalents. Hence the interpretation of the claims is critical, perhaps even more so than in some other jurisdictions.

A welcome degree of certainty

The Australian approach to claim interpretation has enjoyed a period of stability in recent years. Despite a few aberrant first-instance decisions, our Courts have long been consistent as to the principles of construction. This provides a welcome degree of certainty, albeit that there is always scope for argument as to how the principles should be applied on a case by case basis.

Principles of construction

As Australian law now stands, the primary requirement is for the specification to be read as a whole, in light of common knowledge in the art (before the priority date) and from the point of view of the notional non-inventive person skilled in the art (also before the priority date).[1]

Authority setting out and illustrating these principles

A recent appeal[2] centred on claim construction although the applicable principles of construction were not in dispute.[3] In the absence of dispute, the Court simply summarised the relevant principles That summary, across paragraphs 92 to 96 (available here), is highly recommended.

The invention as described and claimed

The invention related to ‘core orientation’ – that is, the rotational orientation of a core sample, e.g. taken when exploring for minerals or petroleum. As one expert witness explained:[4]

The process of orientating drill samples [cores] allows geologists to correlate recovered samples with one another to reveal trends in rock strata and predict whether resource mining is worthwhile.

The invention was an advance over earlier mechanical technologies and entailed recording orientation at time intervals, then relating this information to the time when the core sample was separated from the body of material. There was much discussion of two timers (an above-ground timer and a below-ground timer) although it was noted[5] that the claim does not refer to these timers. The key claim in question read as follows:

      1. A method of providing an indication of the orientation of a core sample relative to a body of material from which the core sample has been extracted, the method comprising:

drilling a core sample from a body of material with a core drill having an inner tube;

recording the orientation of the inner tube at predetermined time intervals during said drilling, the time intervals being referable to an initial reference time;

inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material;

removing the inner tube, with the core sample held therein in fixed relation to it, from the body of material; and

relating the inputted specific time to the recorded time intervals to obtain an indication of the orientation of the inner tube and consequently the core contained therein at the specific time. [our emphasis]

The preferred embodiment described in the patent specification entailed above- and below-ground timers mutually synchronised by being contemporaneously started to count time forward from a common initial reference time. The specification did not explicitly suggest that the invention was limited to this synchronicity, nor did it explicitly suggest any version of the invention that did not entail this synchronicity.

The impugned product

The impugned product[6] entailed above- and below-ground timers that counted time forward from different starting points:

  • the time of the core break is recorded by pressing a ‘Mark button’ on the above-ground device; then
  • after a wait period of 33 seconds, the elapsed time is transmitted to the downhole tool; then
  • the elapsed time is subtracted from the below-ground timer to establish at what time, on that timer, the core break happened.

The outcome

The lower Court’s finding of infringement on the basis that ‘beyond’ means no more than ‘after’ or ‘later’ was affirmed.

The importance of amendments to suit Australian practice

When prosecuting foreign-originating patent specifications, Australian patent attorneys routinely make minor amendments for strict consistency with the independent claims and to moderate the promise of the invention. Very often specifications proclaiming ‘the invention achieves…’ are amended to specify that ‘a preferred embodiment of the invention achieves…’. This latest decision illustrates the potential importance of such amendments.

The infringing party argued that the lower Court erred by failing to construe the claim in the context of the specification, and emphasised that the one embodiment described in the specification involves two timers being contemporaneously started.[7] The Appeal Court affirmed the lower Court’s rejection of the argument on the basis that the specification discussed contemporaneous starting only in the context of the embodiment.[8] An extract of the patent specification is reproduced below.

From the forgoing (sic), it is evident that the present invention provides an orientation device which does not require physical marking of a core sample prior to extraction thereof from the ground.  Indeed, the orientation device according to the embodiment is particularly convenient for an operator to use.  All that is required is for the operator to start the orientation device prior to the inner tube assembly 36 being inserted into the drill hole, and contemporaneously start a timer for recording the time duration before the drilling operation ceases to allow the generated core sample to be retrieved. (our emphasis)

Support

The preceding discussion begs the question as to whether the claim lacks support to the extent it embraces methods that do not entail synchronicity.

Whilst in 2013 the Australian support requirements were harmonised with the corresponding requirements of the European Patent Office, the patent in suit did not need to pass this test (because examination of the application on which the patent was granted was requested prior to 15 April 2013). Rather, the claim faced (and passed) the ‘fair basis’ test which can be passed with little more than textual conformity with a consistory clause.

Final thoughts

The patentee ultimately won the day although, as is so often the case, in the full glare of hindsight there are some lessons for draftsmen in this latest decision – the patentee faced the challenges of litigation in part because there was an issue of construction to litigate.

Whilst of course we all strive to draft crystalline claims that leave no scope for argument (and perhaps there is room for improvement in the language of the claims of the present case), the impact of the descriptive text is not be forgotten.

A specification mentioning an unsynchronised version of the invention in terms consistent with the claim language would have assisted with the construction of the claim. In the context of newer Australian patent applications (and applications to be prosecuted elsewhere), mentioning such other examples of the invention would also help support the claims.

 

 

[1] See for example SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2012] FCAFC 95, paragraph 32

[2] Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162

[3] Paragraph 92

[4] Paragraph 43

[5] At paragraph 120

[6] Detailed across paragraphs 52 to 54

[7] Paragraphs 108 and 109

[8] Paragraph 110

The ‘metes and bounds of patentable computer-implemented inventions’ remain undefined

The patent-eligibility of a computer-implemented business method was recently before an Australian Court. The Court emphasised that mere ‘generic computer implementation’ is not sufficient to render abstract ideas patentable, but declined to provide comprehensive guidance on the patent-eligibility of computer-implemented inventions (CIIs).

In Australia:

  • patent protection is available for ‘manners of manufacture’ and it is this requirement that gives rise to subject matter considerations akin to section 101 considerations in the US;
  • business innovation in the form of mere schemes, intellectual information and abstract ideas has long be regarded as inherently unpatentable (regardless of how inventive or valuable that innovation might be); and
  • generic computer implementation is not sufficient to turn such business innovation into (potentially patentable) technical innovation.

The borderline between (unpatentable) business innovation and (potentially patentable) technical innovation in connection with certain CIIs is a challenging area of our law. There is no clear template that can be applied to assess whether an invention in the vicinity of this borderline is patentable. Indeed, our Courts have explicitly rejected formulaic approaches to this assessment.

It was hoped that a recent decision [1] of the Full Federal Court [2] would provide guidance. Five judges, rather than the usual three, were assigned to the case and the invention was a good example of an invention in the vicinity of the borderline. The Patent Office and the Institute of Patent & Trade Mark Attorneys also weighed in with submissions.

The invention related to ‘A method displaying information relating to one or more entities [e.g. people or companies], the method including, in an electronic processing device’ performing certain steps which the Court summarised [3] in the following terms:

(a)   generating a network representation by querying remote data sources;

(b)   causing the network representation to be displayed to a user;

(c)   in response to user input commands, determining at least one user-selected node corresponding to a user-selected entity;

(d)   determining at least one search to be performed in respect of the corresponding entity associated with the (at least one) selected node;

(e)   performing at least one search to determine additional information regarding the entity from at least one of a number of remote data sources by generating a search query; and

(f)   causing any additional information to be presented to the user. 

An apparatus, that includes an electronic processing device that performs these steps, was also claimed.

The Court affirmed the lower Court’s decision that this invention was not a ‘manner of manufacture’ and was therefore unpatentable. Unfortunately, the decision did not lay down any new statement of principle to clarify the borderline. Indeed, the Court opined [4] that:

This appeal does not provide the occasion for this Court to set out the metes and bounds of patentable computer-implemented inventions…

Whilst declining to provide comprehensive guidance, the Court commenced its ‘analysis by noting certain propositions which are not, and cannot be, in dispute’. [5] In broad summary those propositions include:

  • ‘in the context of considering whether a claimed invention is a manner of manufacture, the inquiry is not into the meaning of words but into the breadth of a concept which the law has developed…’ [6]
  • ‘when determining whether a claimed invention is a manner of manufacture’ the invention must be characterised ‘as a matter of substance, not merely as a matter of claim form’ [7]
  • an “artificially created state of affairs of economic significance” [an oft cited passage from earlier authority] is not a definition of ‘manner of manufacture’ but may well be a sufficient formulation ‘for a large class of cases’.

The Court [8] then went on to:

  • accept ‘that the method claims in suit are, in truth, no more than an instruction to apply an abstract idea (the steps of the method) using generic computer technology’;
  • emphasise that mere ‘generic computer implementation’ is not sufficient to render abstract ideas patentable; and
  • demonstrate the primacy of substance over form by extending the conclusion to the apparatus claims.

 

 

 

[1] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161

[2] The Court of first appeal for Australian patent matters.

[3] At paragraph 28

[4] At paragraph 77

[5] Paragraph 78

[6] Paragraph 79

[7] Paragraphs 80 & 81.

[8] At paragraph 99

Abolition of the Australian innovation patent

The abolition of the Australian innovation patent will likely be confirmed in late 2019.

The Australian innovation patent is an 8 year patent intended to protect lower level inventions that do not qualify for 20 year patents. There have long been criticisms that innovation patents are too easy to get and can validly cover too much.

After much discussion and a few false starts (see e.g. here), a bill[1] to abolish the innovation patent was introduced to Parliament 25 July 2019 and was today referred to the Senate Economics Legislation Committee. The committee is due to report 4 September 2019. The progress of the bill can be tracked here.

There is a good chance that the bill will pass. Even so, innovation patents will not immediately disappear. The bill provides for an orderly phase-out that protects existing rights holders (in line with draft legislation discussed here). The timing will depend on when the bill passes and receives royal assent, although it seems likely that the last innovation patents:

  • will be linked back to an initial patent application filed by about late 2020; and
  • will expire by about late 2028.

Accordingly:

  • it may well be prudent to modify patent filing strategies as late 2020 draws near; and
  • innovation patents will no doubt remain controversial features of the Australian patent landscape for years to come.

 

 

[1] the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019

Meet with us at INTA Boston!

I would be very pleased to meet you at the 141st INTA Annual Meeting in Boston,
18 to 22 May 2019.

If you are attending, kindly send us an email with times you may be available for a discussion.

I am staying at the Boston Marriott Long Wharf, near the Boston Convention and Exhibition Centre (BCEC) and can meet you at either location, or somewhere else.

I look forward to meeting you soon in Boston!

Drafting patents ‘with reasonable skill and knowledge’

A recent Full Federal Court[1] decision[2] sheds light on what’s required for a patent specification to be drafted ‘with reasonable skill and knowledge’.

The Court rejected the notion that ‘the scientific justification for or substantiation of’ the original form of the claims must be known to the drafter and their instructor. On the other hand, the decision is not carte blanche for reciting arbitrary features and must be understood in view of the case-specific facts, including that:

  • there was a scientific justification for the original form of the claim; and

  • an earlier iteration of the Australian Patents Act applied (and differs from newer iterations in ways that may well be relevant).

Subsequent decisions may well hold that scientific justification and substantiation are required to draft newer patent applications ‘with reasonable skill and knowledge’.

Background

Whether damages are payable in respect of infringements prior to an amendment of a patent specification can turn on whether ‘the specification without the amendment was framed in good faith and with reasonable skill and knowledge’.[3]

The decision

The Court concluded that the relevant specification was framed in good faith and with reasonable skill and knowledge. On its way to this conclusion, the Court surveyed the predecessors to the relevant Australian provisions and cited[4] with approval[5] comments made in the UK parliament in 1883:

The principle of this provision was that the inventor who knowingly or carelessly claimed bad matter was not an object of sympathy.  On the other hand, an infringer who knowingly infringed the good and valid part of a patent because he had discovered some portion, perhaps unimportant, which was bad or invalid, was not entitled to sympathy or protection…

Whilst it appears that this broad statement of principle will continue to provide useful guidance, there is good reason to believe that the more specific aspects of the decision may be less relevant to newer patent applications.

After setting out the requirements of the applicable pre-2013 iteration of the Patents Act, the Court explains[6]:

It is not, however, an obligation of the patent applicant to explain how the invention was made or the theoretical basis underlying any stipulated integer:  NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1992] FCA 493; 24 IPR 1 at 27.  It follows, necessarily, that the patent applicant does not need to supply the proof that the invention works.  And if the patent applicant does not need to supply that proof, it does not need to have that proof for the purposes of drafting the specification. (Our emphasis.)

Newer iterations of the Patents Act incorporate enablement and support requirements, inviting consideration as to whether the specification discloses general principles commensurate with the scope of the claims and whether the claims are broader than is justified by the extent of the description, drawings and contribution to the art.

It is difficult to see how these newer requirements can be met without disclosing the theoretical basis underlying the invention and/or proving (that the invention works) through examples.

 

 

[1] The court of first appeal for Australian patent matters

[2] Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2018] FCAFC 183

[3] Section 115 of the Patents Act 1990

[4] At paragraph 28

[5] At paragraph 136

[6] At paragraph 133

Meet with us at INTA Seattle!

I am attending the INTA Annual Meeting in Seattle, 19 to 23 May 2018, and would be very pleased to meet you there.

If you are attending, kindly send us an email with times you may be available for a discussion.

I am staying at the Sheraton Hotel, near the Washington State Convention Centre (WSCC) and can meet you at either location, or somewhere else.

I look forward to meeting you soon in Seattle!

Innovation patents are to remain available…for now

In November 2017, we foreshadowed the demise of the Australian innovation patent in The end is nigh for innovation patents. That article was based on draft legislation including clauses for phasing out innovation patents from about July 2019.

At the time, all signs pointed towards Parliament passing the legislation in 2018. Sentiment had been turning against the innovation patent for some years. In 2015 we wrote The death knell for the Australian innovation patent? in response to official economic analysis.

On 28 March 2018, the legislation was introduced to Parliament without the abolishing clauses. So for now innovation patents remain available as powerful tools for guarding against imitators in the Australian market.

The omission of the relevant clauses was accompanied by very little official comment. IP Australia[1] simply notes (here) that:

The Government has decided to undertake further consultation targeted at better understanding the needs of innovative SMEs before the phase out of the innovation patent occurs.

It remains to be seen just how long innovation patents are to remain available. The arguments for abolition remain, and new legislation may not be too far away.

 

 

[1] The Australian Patent Office