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Category: Intellectual Property News

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

AIPPI 2019 in London – Come ride with me!

AIPPI 2019 London Tour invitation

 

13 September – Countryside Cruise

Long Wal;k Windsor CastleAll day ride – Friday

(Two days before AIPPI 2019)

This will be a fun day to see the countryside rather than just crank out kilometers.

The route is still to be confirmed and suggestions are welcome.

The current plan is:

  • the Deer Park – Richmond Park loop;
  • meeting at 7.30 am (for 8.00 am start) at On Your Bike (The Vaults, Montague Close, London Bridge, London, SE1 9DA); for a total of
  • about 120 km including the additional distance to and from the bike shop.

I have hired a bike and am told:

  • Deluxe means TREK with aluminium frame, carbon fork and 105 groupset; and
  • Super Deluxe means TREK with full carbon and Ultegra.

Electric bikes are available from the same shop.

Suggested jersey for the day.

 

14 SEPTEMBER – GUIDED CITY SIGHTSEEING

These rides suit all abilities. Easy rides to explore London before the business of AIPPI 2019 begins.

Bukinham PalaceMorning ride – Saturday

(The day before AIPPI 2019)

Grand London Bike Tour

Meeting point is the entrance to the Train Platform Numbers 1&2 inside Waterloo train station. Waterloo Station is ABOVE the underground station.

 

10.15 am for 10.30 am departure. 3.5 hour ride with no climbs, rated ‘easy’.

Sights include

  • London Eye
  • Big Ben
  • Houses of Parliament
  • Westminster Abbey
  • Buckingham Palace
  • Changing of the Guard
  • Horse Guards’ Parade
  • Cycle over the River Thames twice
  • Trafalgar Square
  • Benjamin Franklin’s Residence
  • Banksy’s legal street art tunnel
  • Statue to Hodge & Casper the cats
  • Covent Garden
  • St. Paul’s Cathedral

 

Tower Bridge LondonAfternoon ride – Saturday

(The day before AIPPI 2019)

Secret London Bike Tour

Meeting point is the entrance to the Train Platform Numbers 1&2 inside Waterloo train station. Waterloo Station is ABOVE the underground station.

 

2.45 pm for 3.00 pm departure. 3.5 hour ride with no climbs, rated ‘moderate’.

Sights Include

  • Tower Bridge
  • Tower of London
  • Diagon Alley & Leaky Cauldron from Harry Potter film
  • Cycle alongside a Hidden Canal
  • Shakespeare’s Globe Theatre
  • World Famous Street Art
  • Bike over the Thames on two occasions
  • Bank of England
  • A Central London Marina
  • Brick Lane
  • The Double Decker Bus’ ‘Leap of Faith’!
  • Bell Foundry of Liberty Bell infamy!
  • Old London Docks

I hope to see you there. Please drop me a line to let me know you’re coming.

Other rides

Costs plummet to get a trade mark in Canada and Brazil

Get a trade mark in Canada and Brazil photo of flags mountains

 

CANADA

Costs to get a trade mark in Canada recently plummeted. We also expect the time taken to registration of a trade mark in Canada for Australian early stage exporters to fall. New laws changed the requirements for registration, and also permit trade mark registration via the same system used to apply for protection in many other countries.

Canada’s new trade mark laws allowed it to join the Madrid Protocol International Registration system. Making a single application covering many countries is far cheaper than an application per country.

This change to trade marks in Canada has been much anticipated, but long delayed.

We expect savings of thousands of dollars per Canadian trade mark application. Most applications will no longer need help from a Canadian attorney.  Even for more complex cases, the new laws avoid expensive requirements under the old laws.

For example, making a Declaration of Use of the trade mark in Canada is no longer essential for registration. This avoids paying for years of extra time to start using the trade mark in Canada.

BRAZIL

Brazil also joins the Madrid Protocol International Registration system, on 2 October 2019. Costs will be significantly reduced. We also expect much faster processing of trade mark applications.

The international registration system allows the examiner in each country only 18 months to object to a trade mark application. This has noticeably improved time frames for many countries.

To discuss trade mark protection in Canada, Brazil or elsewhere please contact us at any time.  Our expert trade mark attorneys have many years experience assisting clients to protect their trade mark rights internationally.

Further reading

National phase translation requirements to be simplified & clarified

Australia patent translation requirements

On 25 September 2019 amendments to Australia’s patent regulations will take effect to simplify and clarify the requirements for translations when entering the national phase in Australia.

At present, if an international patent (PCT) application is not in English, a verified translation of the specification must be filed by the 31-month deadline. The current regulations are not entirely clear, although it is routine to proceed with:

  • a verified English translation of the specification as amended during the international phase; OR
  • separate verified English translations of the specification as filed and of any amendments filed during the international phase; OR
  • a verified English translation of the specification as filed (in which case the amendments during the international phase will be disregarded although corresponding amendments could be made to the Australian national phase application).

A verified translation is a translation accompanied by signed certificate confirming that the translation is a true and complete translation. The Australian Patent Examiner’s Manual includes a sample certificate.

From 25 September 2019, certificates of verification will not be required to enter the national phase:

  • a simple translation “of the specification of the PCT application as filed (with or without any rectifications under Rule 91 of the PCT)” will suffice; although
  • translations of any amendments filed during the international phase should also be filed if those amendments are to be taken into account in Australia.

The Australian Patent Office (APO) will have power to call for a certificate of verification, although:

  • we anticipate that this power will be used sparingly, most likely only when APO examiners have reason to suspect that a translation is inaccurate; and
  • such a call could be met with a corrected translation accompanied by a certificate of verification.

 

Further reading

Be.Bendigo Invention + Innovation Awards – Prizes and Deadlines

Ben Mott, patent attorney and mechanical engineer, is again judging the Be.Bendigo Invention + Innovation Awards. Wadeson is proud to be a Partner of the Bendigo Invention + Innovation Festival 2019.

Entries are now open and close on Monday, 15 July 2019, and the panel of judges will give feedback on all applications.  Shortlisted entries can attend a 4 day La Trobe Accelerator Program bootcamp program.

Bendigo Invention and Innovation Festival 2018

The Bootcamp provides intensive training and coaching on website design, entrepreneurial marketing, value proposition, business model canvas, sustainability, pricing, social entrepreneurship, global success, wellness, IT platforms and pitching. It also includes an opportunity to pitch for a place on the 12 week La Trobe Accelerator Program and up to $10,000 in non-equity seed funding.

The Be.Bendigo Invention + Innovation Awards and a pitch event will be held on Tuesday, 3 September 2019. Prizes up to $2,500 will be awarded across the categories of Youth, Environmental Sustainability, Health, and Open. The overall winner prize is $5,000 and direct access to the 12 week La Trobe Acclerator Program – Advanced Stream.

Established in 2010, the awards have given away over $100,000 in prizes and seen many entries go on to global success.

David Hughes, Project Director

Bendigo boasts a thriving manufacturing sector including key players in mining and industrial casting, rubber manufacturing and military vehicles. The Bendigo Invention + Innovation Festival is an initiative of Bendigo’s peak industry body, Be.Bendigo.

We look forward to seeing you at the Awards!

 

Patent attorney judging at the Bendigo Invention + Innovation Festival 2019

We are proud supporters of Bendigo and are pleased to be part the Bendigo Invention + Innovation Festival 2019 (BIIF).

Bendigo is Victoria’s fourth largest city and boasts a thriving manufacturing sector including key players in mining & industrial casting, rubber manufacturing and military vehicles.

The BIIF is an initiative of Bendigo’s peak industry body, Be.Bendigo. Festival Director David Hughes explains:

Our vision is that Bendigo is internationally regarded as an innovation hotspot that quickly identifies and offers solutions to issues with a social impact. A place where problems are shared, ideas are freely discussed and solutions are collaborated on. There is a strong entrepreneurial culture that is supported by local government policy, infrastructure, access to funding and networking opportunities. Ideas are supported to commercialisation through a strong talent pool and access to capital.

This year our Ben Mott is proud to be one of the judges. We look forward to seeing you there.

 

Further reading

Wadeson turns 10!

Many thanks to our wonderful clients and business partners

 

 

Many thanks to our wonderful clients and business partners for supporting us over the past 10 years.

Wadeson started with one woman and a vision of a vibrant, modern attorney firm providing inspired advice and outstanding service.

From one woman and a vision in 2009, we have grown to a staff of seven with a collective 140 years’ experience in Australian intellectual property. We remain proudly independent and 100% committed to our clients and our original vision.

Efficient workflows, robust business systems, experienced professionals and a fabulous business culture allow us to provide unparalleled responsiveness. We make Australian IP easy for our local clients and foreign instructors. Our professionals are pragmatic lateral thinkers who love nothing more than to craft a bespoke patent strategy when you need your Australian IP to perform.

 

Further reading

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!