15 March 2014

Tramanco v BPW - The Claims and Description Connection

Here's your link. And here's a link to the patent in question

This judgement has some interesting snippets. It is useful to read as a lesson in claim construction. Some well-known rules are emphasized.

A practice note for litigators is set out in paragraphs 125 to 127.

This case reinforces the principle that the claims must always be interpreted in light of the specification read as whole. See for example paragraphs 144 to 152. Four very useful points of claim construction are set out in paragraph 175.

Here's an example (paragraph 201): "In my view, the skilled addressee would understand the description of the invention to relate to the measurement of loads or forces at the suspension, and would apply that understanding to his or her reading of claim 1.  In cross-examination Dr Blanksby gave evidence which indicates that he approached the claim in precisely this way, that is to say, having read the Specification as a whole, he formed the view that it was “not the intention of the patent” to measure loads or forces at the tyre/road interface.  I think Dr Blanksby’s reading of the claim is fully borne out by the description of the invention in the Specification."

08 March 2014

International Applications - Don't Rely on the IPRP

Humans are fallible. Nowhere is this more so than in a government department. Bearing this in mind, you need to think very carefully before making the significant financial commitment that is required when entering national phase.

When filing and prosecuting an international application in Australia, you should bear in mind that the application is examined by an Australian examiner. The examiner represents the International Search Authority but is not actually a member of WIPO sitting in Geneva or The Hague. As such, the search is carried out to Australian standards. It is a terrible thing to generalise. And I am sure that most Australian examiners are competent. But my understanding is that the examiners are directed to work under certain constraints. For example, an examiner cannot simply follow his or her nose and keep digging up relevant prior art. The search fee component of the international filing fees is a healthy $2200, so you would think that the search results would be adequate. However, more often than not either a European, Japanese or US examiner finds prior art not uncovered by the Australian examiner. This can be devastating.

Let's consider national phase in 4 or 5 countries. That's between $20K and $30K, depending on various factors. What would you pay for some assurance that the first report issuing out of one of those countries does not blow your entire portfolio out of the water? Even 20 percent is $4000 minimum. You could have a very useful search carried out for that amount. It would not be unreasonable to consider more, particularly for more national phase countries.

You should note that an adverse examination report in one country can be just as relevant in all the other countries. It happens regularly that a Japanese report, which is usually delayed, ends up making a big hole in a portfolio. In other words, you could spend literally tens of thousands of dollars before finding out that it is not, after all, possible to achieve patent protection in most countries.

So, searching must remain on top of your list of priorities. You may have searched before filing the provisional patent application. But you should still not assume that all is well. Searches are usually carried out to a budget. The more you spend, the more thorough the search.

13 February 2014

Public and Private Interests in Extensions

Here's an interesting little matter - Innovia Security Pty Ltd v JDS Uniphase Corporation [2014] APO 5

In this hearing, the Commissioner's Delegate decided that it was against the public interest to grant an extension where "it had been almost a year since the initiation of settlement negotiations, and that it appeared there had been a decision not to bother collecting evidence because of the settlement negotiations." The Delegate further supported this on the basis that the evidence did not suggest that there was a "serious opposition".

On the other hand, both parties were in favour of the extension. The balance of the considerations lay against allowing the extension of time. A short period of one week was allowed for filing any evidence readily available.

11 February 2014

Evidence for Inventive Step

Case: Cronk v Commissioner of Patents [2014] FCA 37

10 February 2014

"A locating mechanism for a pair of reflector sheets from which the reflector of a doubly arched luminaire is assembled, said mechanism comprising at least one mushroom-shaped stud on one of said sheets and a corresponding keyhole shaped aperture on the other of said sheets, said stud comprising a stalk and a cap and said aperture comprising a main opening and a smaller extension wherein each said stud and aperture are dimensioned so that said cap can pass through said main opening but not said extension and said stalk can be retained in said extension with a friction fit."

  1. Problem solution approach appears to be discussed?
  2. Attributes of nominal "person skilled in the art"
  3. Good short review of "inventive step" and meaning of "obvious" - List of cases
  4. "Common general knowledge"
  5. An example of a good expert witness

04 May 2013

Patent Valid - Innovation Patent Invalid

Delnorth Pty Ltd v Commissioner of Patents [2013] FCA 165

This case illustrates the types of prior art information available for determining "innovative step" for innovation patents and "inventive step" for patents. In some case the difference can mean that a standard patent can be found valid while its counterpart innovation patent is found invalid.

Assessment of prior art information must be made in the shoes of the skilled addressee. That is, "the person skilled in the relevant art in the light of the common general knowledge".

The recent Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) has allowed greater leeway for combining 2 or more pieces of prior art information for testing inventive step - see this post on my website. However, the previous test is applicable in this case and will remain so for all patents with an effective date earlier than 15 April 2013. The previous test requires that the skilled person be reasonably expected to have ascertained, understood, regarded as relevant and combined the 2 or more pieces.

For innovative step, the assessment of prior art information includes determining whether or not prior art information made "publicly available in 2 or more related documents or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information." This provision has not changed.

As you can see, it is conceivable that the test for combining documents can be stricter for standard patents than for innovation patents.

In Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225, it was found that 2 counterpart innovation patents were invalid, having failed the "innovative step" test in light of 2 patents that fell within the definition of "prior art information".

In this case, however, the court held that the evidence did not justify a finding that a skilled person would reasonably expected to have ascertained, understood, regarded as relevant and combined the 2 patents. The evidence made no reference to the 2 patents. The court held that even "if they were known to him, they do not appear to have been perceived by him as relevant to the issues to which his affidavit was directed."

This matter appears to indicate that it is not enough to show that the skilled person would have carried out patent searches. Rather, it should show that the skilled person would carry out searches published in a particular period for the purpose of solving the problem to which the patent is directed.

06 February 2013

Novozymes v Danisco

Link:  Novozymes A/S v Danisco A/S [2013] FCAFC 

Date: 4 February 2013

  • Requirement of clarity in patent claims
  • Whether claims not novel when compared with prior art base - inevitable outcome and understanding of skilled person
  • Manner of Manufacture - requirement that invention appear new on face of specification

24 January 2013

The Problem with Apps

I have recently received a number of enquiries from inventors looking for patent protection to cover an app. Theoretically, there is no reason, at least in Australia and the US, that you should not be able to cover your app with a patent application. However, there are practical and legal implications that could result in you throwing good money after bad.

In this post, I am considering Australia and the US only.

An app is a software product and so does fall within the category of products that can be covered by a patent. But what does your app actually do? As a general rule, if you're just receiving information, re-arranging it and then presenting it, then it might be difficult to convince an examiner or a court that your invention is "proper subject matter" for a patent. But proper subject matter aside, you need to bear in mind that changing information and not structure or the manner in which that information is manipulated could result in the invention falling foul of the "novelty" and "inventive" step requirements. That's because you can't get patent protection for information per se.

How clever is your app? A patent examiner or a court is more likely to favour an invention in which the mobile device is used to perform some relatively complex or clever algorithms. So, for example, if your app is a directory-type app, it is less likely to attract patent protection than an app that is capable of predicting stock price changes using heuristic algorithms.

Then there's the timing. It could take up to 4 to 5 years from the date of our first meeting before you achieve patent protection. Some apps have been around for that long and are proving to be very successful. Others tend to fizzle out after a few years, even if they have generated significant cash flow during that time. While it is possible to put competitors on notice once a patent application is published, it might be difficult to obtain a damages award for the period that the patent application was pending. Of course, many investors will require that you file a patent application. But if that's not your model, then you do need to bear the time factor in mind.

How will you enforce the patent, if and when it is granted? A patent application must set out a full disclosure of the invention and how it is to be enabled. However, an infringer does not have the same obligation. The app may be of the type that would indicate clear infringement just from executing the copy. But there may be cases in which you simply cannot determine whether or not your invention is being copied, even though you are losing market share.

And never forget the cost. It can be very expensive to have a patent application prepared and filed for a software product. Not only that, but the cost of prosecuting the application through to grant of a patent can also be extremely costly. This is a function of the difficulty in writing software patent specifications. It is also a function of the fact that there seems to be a large amount of prior art out there which is difficult to filter and analyse. While the examiners are improving, it can be difficult to convey an understanding of the invention to an examiner.

So, at the end of the day, think carefully before going down this route. As a general rule, unless you have a good budget or keen investors and a product that is relatively sophisticated from an algorithmic point of view, the journey will more than likely be harrowing.

20 January 2013

R&D Tax Incentives

Almost all my clients are involved in R&D according to the definition of that term by the Australian Tax Office.

In short, investigative and experimental activities qualify for the R&D tax incentive if:

  • their outcome is uncertain
  • the outcome can only be determined by experiment
  • the activities are for the purpose of acquiring new information
It is important to understand that you may be overlooking activities that you consider routine. The scheme provides a net after-tax benefit of 10 cents and up to 15 cents for companies with a group turnover of less than $20 million. Here is the link to the AusIndustry website: http://www.ausindustry.gov.au/programs/innovation-rd/rd-taxincentive/Pages/default.aspx

I'm no tax expert, but this is surely not an opportunity to be overlooked. Please do contact me if you're interested. I would be delighted to point you in right direction - barry@beagar.com.au

19 December 2012

China Leads Global Patent Filings

Here's an interesting article from SIPO.

I still have clients thinking that there's no point in filing Chinese patent applications. This perception is fast becoming outdated. China is continually improving its patent systems. Given that the life of a patent is 20 years, it is imperative that you consider filing in China.

Utility models are particularly popular amongst Chinese filers. They can be very useful for relatively simple mechanical devices.

I will try to write more about this rapidly evolving jurisdiction. In the meantime, don't forget to make China part of your IP Strategy. 

11 December 2012

Chinese-English Translation at the EPO

As I've mentioned before on this blog, China is rapidly becoming the largest filer of patent applications. This means that the body of prior art developing in China is significant.

The ability to carry out even just a machine translation will be most useful when searching. It appears that the EPO is taking steps to put such a tool into place. Here is the link.

26 November 2012

Kappos on Software Patents

Here's an excellent speech by David Kappos, the Director of the USPTO.

I particularly liked this excerpt: "Software patents, like all patents, are a form of innovation currency. They are also ecosystem enablers, and job creators. The innovation protected by software patents is highly integrated with hardware. All of it must remain eligible for protection. The current software patent “war” is hardly the first patent war—and unlikely to be the last in our nation’s patent history. Whenever breakthrough technologies come onto the scene, market players find themselves joined in the marketplace by new entrants. The first instinct of the breakthrough innovators is to bring patents into play. This is not only understandable, it is appropriate. Those who invest in breakthrough innovation have a right to expect others to respect their resultant IP. However, in the end, as history has shown time and time again, the players ultimately end up agreeing to pro-consumer solutions via licenses, cross-licenses or joint development agreements allowing core technologies to be shared."

Indeed. Of course I'm biased. But the fact remains that without at least one patent application (preferably more) in play, you're not going to get far in generating serious commercial interest in your new software product. And it remains baffling to me why Europe and the other software naysayers don't get on board with this. The future is software and preventing innovators from protecting it adequately by way of patents is short-sighted.

So why the pic? Don't forget that without some meaty algorithms you're going to have troubles...

22 November 2012

Inventor? - Write it Down

In all my years of practice, a consistent frustration has been engaging with inventors that are reluctant to write down their thoughts and ideas. It is very important to understand that the scope of protection afforded by a patent can only be found within that patent itself. In other words, neither a patent examiner nor a court is interested in material that is not within the specification, as filed, when attempting to interpret the patent.

Of course, in some jurisdictions, such as the US, a court may very well consider actions taken during the prosecution of a patent application as narrowing the scope of protection. However, those actions are reflected in documents filed during prosecution.

Patent attorneys can spend hours mulling over documents provided to them by inventors in an attempt to draft a decent patent specification. You don't want to have them mulling over hastily written telephone messages and trying to recall things that you may have told them during a meeting. You should be able to write down everything that you need to tell your patent attorney. You can then hand that material to him or her so that there is no misunderstanding as to what should appear in the patent specification. Apart from ensuring that your thoughts and ideas are properly described, your patent attorney’s time can be more efficiently spent and this can save you money.

It is far more effective for you to spend an hour crafting an email to your patent attorney then it is for you to phone and to ramble on for half an hour while he or she tries to scribble down bits and pieces of what you're saying. Invariably, half of it is lost and another quarter is misunderstood. The same applies to meetings. Don't arrive with just the ideas in your head, expecting to convey all of them to your patent attorney over the boardroom table. Rather spend a day or two putting together some decent written material, including sketches and photographs, if necessary. Also, remember that we can't file your prototype. Drawings and photographs are far better than prototypes. Personally, the first thing I do when I receive a prototype is to take photographs. If these are taken on a white background and altered into black and white images, they can be quite effectively used for a provisional patent application.

Remember that simple notes and sketches will often suffice provided they represent all the information that you have. Sketches can be very important especially when annotated. There's a lot of truth in that old saying "a picture tells a thousand words".

When preparing your notes and your sketches, you should try to think of other uses that your product might have. Also, think of possible variations in materials, dimensions and other characteristics. For example, you don't want to be limited to a particular material that might be replaced in a few years’ time. Of course, unless it's absolutely necessary, your patent attorney should not limit you in this way. However, in many jurisdictions, you might find it difficult to enforce your patent against an alleged infringer that is making use of characteristics not specifically described in the specification.

The world of patents revolves about information and how it is presented. Your likelihood of success is inextricably tied to your ability to communicate your invention in writing.

17 November 2012

Differing Examination Practices

One of the biggest challenges faced by a practitioner is to prepare founding patent documents that are suitable for applications filed in a number of different countries. For example, the rules concerning amendments of patent specifications can vary between major jurisdictions. European law sets out that an amendment must remain strictly within the scope of the specification as filed. This means that even a departure from the wording of the specification as filed can result in an application for amendment being rejected. Both Australia and the United States are more lenient. As a result, we have to prepare patent specifications with a view to what might happen during prosecution. That means we have to do our best to provide enough information in the specification in case we need to make an amendment. A typical response to an objection to a patent application by an examiner would involve some form of amendment of the claims, for example, to narrow the scope to avoid prior art. The strict application of the European patent office (EPO) to the exclusion of "new matter" is also followed by the Chinese patent office (SIPO). Inadequate disclosure could result in an application being ultimately rejected.

Another difference is the approach taken to divisional applications. In some cases, an applicant might wish to seek protection for a different aspect of the invention to that covered by the pending application. In a number of jurisdictions, including that of Europe, the United States and Australia, it is possible to file what we call a divisional application (in the US, a "continuation application"). However, again in Europe, the specification for the divisional must be contained wholly within the specification as filed in support of the pending application. The exclusion rule is as strict as that for amendment. In the United States and in Australia, it is possible to file divisional applications that introduce new matter. If that new matter is covered by one or more claims then those claims will have a priority date that is the date of filing the divisional applications. In the United States, such an application is referred to as a "continuation-in-part application".

It is important to bear in mind that an international application is effectively an application in all the countries automatically designated by the international application. It follows that the specification filed with the international application should, as far as possible, comply with the "best practice" requirements of those countries that take the strictest approach. Here is a link to a list of countries that are members of the Patent Cooperation Treaty (PCT) in terms of which an international application is filed: http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf.

So the lesson is to provide your patent attorney with as much information as possible as early as possible. You must always bear in mind the golden rule that it is possible to remove material after the application is filed but it is not possible to add material of any significance after filing in the major jurisdictions.

15 November 2012

More Moves Towards the Elusive Harmonization

For those of you who wonder why we can't just file an application for a worldwide patent, I guess the time will eventually come. Here's a snippet from the European Patent Office: http://www.epo.org/news-issues/news/2012/20121108a.html. As you can see, the wheel is turning slowly.
This will of course change the landscape significantly for us patent practitioners. Personally, however, I am happy to continue working with my local clients. I doubt that it will ever be possible to automate the drafting of an effective patent specification. That said, given Europe's other problems, don't hold your breath waiting for the world patent.

11 November 2012

What to take to the meeting?

You have finally decided to visit a patent attorney. But what should you take to the meeting?

It's important that you do your best to explain the state of the art. You should have been doing quite a bit of research yourself. If not, here's a link to a post with some searching tips.

This is important, because it can help your patent attorney to distinguish your invention properly. Not only that, but the advice that you receive should be directed to the unique features of your invention. Investigate novelty searching with your patent attorney. The more you know about the prior art before embarking, the better.

You need to bear in mind that patent attorneys need to define and describe the invention in a document consisting of A4 pages. It can be very useful to have a set of drawings as a starting point. The drawings don't need to be technical. They can simply be hand sketches. The patent documents must contain a description of the invention that is sufficient for a person of ordinary skill in the field to understand how to replicate an example of the invention. Drawings are a good place to start.

The golden rule is to put as much information as possible into the specification. It is generally not possible to add material at a later stage. So you will need to make sure that your patent attorney is given all the information that you have at your disposal. Rather prepare too much material as opposed to too little. Let your patent attorney decide what to omit or include.

You need to make sure that the inventor(s) is correctly identified. This is not a matter of choice. The identity of the inventor is a question of fact. Failure to identify the inventor(s) can be a ground for revoking a granted patent. So it's important that you provide the patent attorney with accurate details of the inventor. It is better to be conservative here. Anyone who has contributed to the invention in some material way should be named as an inventor. You should make sure that there is an agreement as to the identity of the person or legal entity that is to own the intellectual property associated with the invention if the owner(s) is not the inventor(s). In such a case, your patent attorney will need the inventor(s) to execute an assignment form.

The question of ownership can create real problems, especially once the invention starts to generate cash flow. I strongly recommend that a company be formed when there are two or more inventors involved. The inventors can then assign their rights as inventors to the company and can hold shares in the company.

And, finally, never forget the importance of confidentiality until such time as the patent application has actually been filed.

13 October 2012

Consider further searching before International Application

All practitioners should strenuously encourage searching before a patent application is filed. That goes without saying. However, filing an International Application can be expensive. Not only that, but an International Search Report (ISR) can found a decision for investment and for entering national phase all over the world.

This is usually the stage where the amounts of money involved are significant. So, it's at this point where things can go badly wrong. "Hidden" prior art that would affect the applicant's ability to achieve registration will usually only reveal itself at least 18 months after the ISR is received. By that time, the applicant may have spent tens of thousands of dollars paying for national phase entry. Here's a flowchart for International Applications. Not only that, but investors may have committed or may be thinking of committing significant sums of money to development and commercialisation.

Sadly, the amount of effort put in by a patent examiner with IP Australia does not  offset the risk taken by the applicant. This is not the fault of the examiner or IP Australia. As examiners, they would treat each matter without consideration of the circumstances of the applicant. It is really up to us practitioners to ensure that the applicant is made aware of this imbalance and to suggest appropriate measures. Of course, further searching will cost more. However, it is often the case that the extra cost will justify the added security.

There's really no excuse. There are many specialised service providers capable of performing thorough patent searches.

28 September 2012

Happy Birthday, David!

Happy birthday, David Ngunaitponi (Unaipon) (28 September 1872 – 7 February 1967)

Today, I pay homage to a great Australian inventor.

What a fascinating piece of history. Sadly many great ideas fail to make it past the provisional patent application stage. David's story is not uncommon, but that does not lessen the poignancy.

I will leave you to read the link above to the Wikipedia article.

A truly great man. Pause for a moment to consider the strength of character that it must have taken to succeed as an aboriginal in those days.

I'm sorry I was too late for him to knock on my door. Rest in glory, David.

19 September 2012

The Value of Searching

It is good practice to carry out a patent search before erecting a patent portfolio. These days patent attorneys routinely advise clients to carry out a patent search before filing a patent application. Usually the reason given is that such patent searches can anticipate any problems clients may encounter during prosecution.

 But a number of other benefits of a patent search should also be considered.

 Trend analysis - Are you moving in the wrong direction?

The first of these can be called "trend analysis". For example, I have been called upon to investigate the value of a patent for a continuously variable transmission (CVT). The patent covered certain principles governing the operation of the CVT. The search revealed a large number of patents owned by various vehicle manufactures. I quickly ascertained that the principles described in the patent in question had long since been abandoned by these manufactures. The patents even described certain problems associated with those principles. Clearly, the patent in question had very little value because the potential investors would more than likely be aware of those problems.

So you can save yourself a lot of time and disappointment by using patents to understand the trends in your field of endeavour.

Getting your patent strategy right

The second of these has to do with your patent strategy. Your patent attorney will do his or her best to cover all the principles associated with your invention. A patent search can provide a guide. It can identify those aspects of your invention that have already been protected. That allows your patent attorney to focus effort on those aspects of your invention that can be protected. It also allows you to identify those aspects that make your invention unique at an early stage.

Attracting Investors

The third of these has to do with investment. Most patent filers are looking for investors. Most investors carry out some form of due diligence before making a financial commitment.

A professionally executed search as part of an investment proposal will help to convince the investor that the product is indeed unique. Not only that, it presents a professional approach and indicates that you have an understanding of the importance of the role played by intellectual property.

When to search?

The search should be carried out as soon as possible. In fact, if you are considering a new concept with a view to obtaining patent protection,  a search should be the first thing you do. In fact, even if you are just developing a product, a patent search can be very useful. But that's for another post.

26 August 2012

Apple Gets $1.05 Billion Verdict

Here's a good article. And here is Patently-O's report.

I won't comment since I haven't read the patents and the decisions. Too busy keeping track of things this side of the Pacific. Those two articles should put you in the picture.

At this stage, I'm not sure whether to feel guilty about having my Samsung (r) phone. As some of my closer friends know, I'm no fan of Apple (r). But that's because of their corporate personality rather than their products or Intellectual Property. I also really like the Android (r) operating system.

As for the judgement - I have been practising for 25 years and I still find aspects of the law difficult to grasp, particularly since it is constantly changing and is full of nuances and subtleties. Indeed, I often find US practice illogical and a bit baffling. So I am extremely skeptical of the effectiveness of a jury in cases like this. Could there be a bit of bias going on? A Korean upstart against an American darling? But that's unqualified, so I won't say more.

I do look forward to following this story. And no, I won't be switching to Apple (r). Perhaps Google (r) will release a phone soon with all that Motorola (r) IP that it purchased. That would be cool.

25 August 2012

Computerised Calendaring not Proper Subject Matter

We often get enquiries relating to software products that perform well-known functions.

Here's another case from the US in which such a product was found to lack subject matter. This is thanks to Dennis Crouch's Patently-O blog, and the link is here.

For those of you interested in the claim that was rejected:

A device for automatically delivering professional services to a client comprising:
a computer;
a database containing a plurality of client reminders, each of the client reminders comprising a date field having a value attributed thereto;
software executing on said computer for automatically querying said database by the values attributed to each client reminder date field to retrieve a client reminder;
software executing on said computer for automatically generating a client response form based on the retrieved client reminder;
a communication link between said computer and the Internet;
software executing on said computer for automatically transmitting the client response form to the client through said communication link; and,
software executing on said computer for automatically receiving a reply to the response form from the client through said communication link.

As you can see, it's no longer enough just to have a computer and the Internet involved. It is important that the computer/s actually does something significant, like execute code representing an algorithm that is essential to the invention and cannot be performed practically with a pen and paper.