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Category: Intellectual Property News

Business as usual at Wadeson

Here at Wadeson, it’s business as usual as we remain fully operational during the worldwide COVID-19 crisis. All principals and staff now have remote working capability, and we have the systems and processes in place to provide continued service and support to all our clients and associates throughout this difficult time.

Rest assured that all deadlines are being monitored and met, and our team is working hard to provide the same high standard of service you expect from us.

We remain available by telephone as per usual, and can arrange client meetings using video conferencing platforms as appropriate.

As we will be working from our homes (on Government advice), we request that for the time being you do not send us any documentation in hard copy by post – please forward all communications by email instead.

As far as Australian deadlines are concerned, IP Australia’s current position is as follows:

 

IP Australia recognises that the effects of the COVID-19 outbreak is an unprecedented situation that may have an impact on the ability of applicants and their representatives to process applications.

Where an applicant cannot carry out an action within time due to the COVID-19 outbreak an extension of time may be available. Requests for extensions of time will need to be made in the normal way, accompanied where required by a declaration setting out how the COVID-19 outbreak interfered with responding in time. Requests for waiver or refund of the fee for the extension of time will be considered on a case by case basis as per our current practice.

 

We sincerely hope that you, your colleagues and families stay safe and well, and your businesses remain strong.

Innovation into Profit Program

A series of experts discuss the route from a new idea to a commercial return and the tools available to make it easier and improve the prospects of success.

View the flyer

Learn more

Attend the event (free)

Register Here

Event Details

17 MARCH 2020

William Buck
Level 20, 181 William Street Melbourne VIC 3000
8:30am to 1 :30pm

Presenters

  • Dr Mal Clark
  • Dr Kevin Thomson
  • Lauren Morcom
  • Ian Cattanach
  • Ben Mott
  • Joe Barber
  • Belinda Sigismundi
  • Dr Rite Choueiri
  • David Menzies

Description

Experts from a wide range of backgrounds will bring their unique perspectives, panel discussions and Q&A will draw it all together.

Topics covered include:

  • Patents, designs and trade marks – pros, cons and costs
  • Confidentiality and protecting your trade secrets
  • How to maximise the value of your business
  • Lessons from experience at the coal face
  • Using R&D and Export Market Development grant to boost your business
  • Other government support programmes
  • Cash flow management and product costing

At this free workshop, participants will access the key drivers for a profitable business and the opportunity to discuss with industry experts.

Taking another swing for charity

We are again proud supporters of the City of Greater Dandenong’s ‘Take a Swing for Charity‘ golf day.

Every year the City of Greater Dandenong, through its business networking unit South East Business Networks (SEBN), and together with key corporate sponsors, holds an annual afternoon of golf followed by dinner and a charity auction to raise funds for local beneficiaries. Over the past decade, the event has raised over $400,000 in support of local charities.

The day is not just lots of fun, but also offers an opportunity to build and strengthen relationships between local manufacturers and other businesses whilst raising money for worthy causes.

This year’s primary recipient is Taskforce we will also ‘share the love’ with the Bushfire Appeal. Taskforce’s core services focus on addressing social issues of drug and alcohol dependency, unemployment, mental health and high risk taking behaviours.

We wish you a Merry Christmas, and a safe and happy holiday season.

Thank you for your continued support over the last year. We value it highly.

Best regards
Belinda Wadeson and Ben Mott

HOLIDAY OPENING HOURS

Our offices will close at 5pm on Tuesday 24 December 2019 and
reopen on Thursday 2 January 2020.

Any urgent matters will be attended to over the holiday period.
Please ensure any such matters are marked accordingly, and copied to mail@wadesonip.com.au.

New Zealand patent fees to increase in 2020

New excess claim fees and how to avoid them

The Intellectual Property Office of New Zealand (IPONZ) has announced significant patent fee increases to take effect in 2020 as detailed here.

Most of the changes take effect 13 February 2020, although the new maintenance and renewal fee rates apply to fees due on or after 13 May 2020.

The fee increases are enormous in percentage terms – New Zealand’s patent fees are currently modest, whilst the increases are significant in absolute terms, e.g.:

  • the final renewal fees increase from 350 NZD to 1000 NZD – a 186% increase, and
  • the fee for restoring a patent application increases from 100 NZD to 500 NZD – a 400% increase.

Excess claim fees will be introduced. The new fees will:

  • apply if examination is requested on or after 13 February 2020,
  • cost 120 NZD for each 5th claim after the 25th based on the maximum number of claims at any point during the examination process, and
  • be payable after acceptance (allowance).

Filing a voluntary amendment to reduce the number of claims prior to requesting examination would avoid the fees and may well be economic if there are 40 claims or more – a 150 NZD fee and professional charges are applicable to voluntary amendments. IPONZ has confirmed that filing a voluntary amendment and then requesting examination on the same day will avoid the fees (unless of course the claims are subsequently reinstated).

AU & NZ patent attorney services for the world.

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