03 February 2018

Blockchain Patents - Hope or Hype?

According to the Wikipedia, a blockchain is "a continuously growing list of records, called blocks, which are linked and secured using cryptography. Each block typically contains a hash pointer as a link to a previous block, a timestamp and transaction data. By design, blockchains are inherently resistant to modification of the data." And "for use as a distributed ledger, a blockchain is typically managed by a peer-to-peer network collectively adhering to a protocol for validating new blocks. Once recorded, the data in any given block cannot be altered retroactively without the alteration of all subsequent blocks, which requires collusion of the network majority." The Harvard Business Review also has an interesting article about blockchain technology.

But how does this relate to patents?

13 January 2018

What is a patent?

The answer to this question is not that simple. I think the best way of thinking about a patent is to think of it as a document or Deed, if you will, that reflects an agreement between you, the inventor, and the state.

The state’s side of the agreement is to grant you an exclusive right, or monopoly, to the invention for a certain amount of time. Your side of the agreement is to provide enough information to the public so that, once the agreement expires, the public can use that information to put the invention into practice.

The agreement is memorialised in a patent specification that your patent attorney will prepare for you. So, the specification has two functions. It must define the invention so that the reader will understand the scope of your protection. And it must provide a description of one or more examples of your invention so that the reader can practice the invention.

Patents legislation around the world is based on this basic principle. For example, it is self-evident that the state should only contract with you if the invention is not already available to the public. This is covered by the novelty requirement. It also follows that what you are contributing must be of technical value to society. This is covered by the inventive step requirement. Another important issue is ownership. It is also self-evident that the state should only contract with the true inventor. This is covered by the ownership provisions in the patent legislation.

We do see a practical implementation of this principle in the pharmaceutical industry. Once a patent on a certain drug expires, the generic manufacturers often get stuck in and start producing it at a fraction of the price. After all, the testing has been done and there is a full description in the patent.
So, a patent application is a formal request to the state to enter into that agreement. It follows that the patent specification must be filed with the application. It is that document that the state, via an examiner employed by the official patent office, will examine to see if the invention does comply with the novelty and inventive step requirements.

It is possible that you could disqualify yourself from entering into that agreement with the state. For example, a public disclosure, such as a sale, before filing a patent application could destroy the novelty of the invention. In that case, there is no motivation or reason for the state to enter into that agreement with you, because the invention is already available to the public. 

03 December 2017

Getting the timing right for patent filing

Securing effective patent rights is all about timing and information. The first patent application must contain enough information to permit a person of ordinary skill in the field to put the invention into practice. But that information must be novel when the patent application is filed.

It follows that you need to have enough information to enable the invention when you see your patent attorney. It won't be very useful if you spend the money filing the application only to find out later on that the patent specification does not properly enable the invention.

It follows that you may need to go so far as building a prototype or having a prototype built before seeing your patent attorney. Then, once the patent application is filed, you need to be sure that you keep your patent attorney apprised of any changes or developments to ensure that those are covered before they are disclosed without an obligation of confidentiality.

Note that you should still speak to your patent attorney as soon as possible. Your patent attorney may be able to prepare a non-disclosure agreement that you can use when speaking to product development experts.

02 December 2017

Elot - Playing electronic lottery games unpatentable

Elot, Inc. [2017] APO 55 (7 November 2017):


The Delegate of the Commissioner of Patents applied rules set out in Aerotel to determine the substance of the invention.

The patent specification does not reveal any information that could be regarded as "technical". It follows that the Delegate could not find such a contribution and the patent was revoked.

18 November 2017

It's All About the Information

It is a general rule that you can't add further material to a patent application once the application is filed. This is particularly the case with international applications.


So, if you are thinking of instructing your patent attorney to file an international application, I strongly suggest that you review the provisional patent application to make sure that it covers all the technical information. Make sure that you do that as early as possible so that your patent attorney will have enough time to prepare the documentation. You should also be thinking about alternative examples that might be used by competitors to compete against you. If possible, include sketches and as much technical information as possible concerning these alternative examples. Usually, you can only get patent protection for material that has been "enabled" in the patent documentation. This has to do with the basic premise of patent law, which sets out that your monopoly is a reward for the technical contribution that you make to a particular field.


You should be proactive. Time and time again I remind clients to read the provisional specification to make sure that it covers all the information that they consider relevant. Any information that is not included in the provisional specification on which the international application is to be based must be novel on the date of filing the international application if it is to form the basis of your protection. Remember that you paid for the preparation of that documentation and you need to take ownership and have a full understanding of that documentation. This means that you need to understand the definition of the invention, set out in the claims, even if it does seem complicated. Remember that your protection is defined by that material.


I like to think of the information in a patent specification as a ball of Play-Doh. You can do much with Play-Doh, but you can't add to your ball it once the patent application has been filed.

17 November 2017

Getting the Patent Applicant Right

It is important remember that in some jurisdictions, such as Europe and Canada, the authorities can get a bit pedantic about the proper identification of the applicant.

Here in Australia, we tend to get a little cavalier about ensuring that the applicant really does have the right to file the application. That's because our system has been built around the concept of entitlement. That system allows an application to be filed in the name of a party that is not really entitled to the grant of a patent, provided this condition is corrected at some point. Before recent changes to our Patents Act it was necessary to ensure that the condition was corrected before grant of the patent. We are even more liberal now allowing the condition to be corrected after grant of the patent.

A number of jurisdictions are not that forgiving. This is relevant because an international application (a PCT application) is regarded in most jurisdictions as an initial application in their jurisdiction. Thus, getting it wrong when you file the international application can have unfortunate implications.

16 November 2017

The IPKat: Special interview with DG of IP Australia

This is a hopeful interview. I do like the acknowledgement that Australia in moving to a knowledge-based economy: "As a country that fundamentally relies on exports and which is transitioning away from a reliance on commodities towards more knowledge-based products and services, Australia, or more accurately Australian businesses, would benefit from a simpler, more harmonised global system."

The IPKat: Special interview with Patricia Kelly, Director Ge...: The IPKat recently had the privilege of submitting written questions to Patricia Kelly, Director General of IP Australia, in connection wi...

05 November 2017

Two Way Media v Comcast - s101

Here is the case: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2531.Opinion.10-27-2017.1.PDF.

This claim ineligible under § 101:

A method for transmitting message packets over a communications network comprising the steps of: 

converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol, 

for each stream, routing such stream to one or more users, 

controlling the routing of the stream of packets in response to selection signals received from the users, and 

monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection. 

31 October 2017

The IPKat: Does the doctrine of equivalents apply to novelty?...

The IPKat: Does the doctrine of equivalents apply to novelty?...: Patent practitioners have been speculating in recent weeks about what the Actavis v Eli Lilly Supreme Court judgment means in practice....

31 July 2016

CQMS v Bradken Resources

Case: CQMS Pty Ltd v Bradken Resources Pty Limited [2016] FCA 847.

Judge: Dowsett J.


  1. Construction of mechanical claims
  2. Wear assemblies and ground engaging tools for mining and construction
  3. Patent Attorneys should not be sending out Letters of Demand

30 August 2015

Case: Orion Corporation v Actavis Pty Ltd [2015] FCA 909 (21 August 2015)

Judge: Rares J

  1. A combination of three known active pharmaceutical ingredients (APIs) called levodopa, carbidopa and entacapone, and methods of producing that combination and tablets comprising it used in the treatment of Parkinson’s disease.
  2. Drafting tip: Court referred to a paragraph in the specification that referred to "comprises". This was used in the construction of the claims.
  3. Skilled addressee - a legal construct whose appreciation must draw upon expertise in more than one field, discipline or art. That will reflect the likely reality that the claimed invention will have involved an inter-disciplinary team of various skilled persons. The legal standard for the degree of expertise that the skilled addressee will bring to the problem at hand, in light of the common general knowledge, is, again, an objective one of a non-inventive skilled worker in the field: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 
  4. The question of what the invention described in the specification was must be decided first, before considering arguments as to the validity of the individual claims: Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91.
  5. Claims should be construed in a way in which the invention will work in preference to one in which it will not - Pfizer Overseas Pharmaceuticals v Eli Lilly & Co [2005] FCAFC 224
  6. A skilled addressee will take a commonsense approach and would therefore assume certain characteristics in order for the definition to make sense.
  7. Relative expressions that require the exercise of judgment can be used in a claim but must be understood in a practical commonsense manner: Stena Rederi Aktiebolag v Austal Ships Sales Pty Ltd [2007] FCA 864.
  8. Utility - Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19.
  9. Inventive step - Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21. A “scintilla of invention” remains sufficient in Australian law to support the validity of a patent.” Ingenuity may lie in an idea for overcoming a practical difficulty in circumstances where a difficulty with a product consisting of a known set of integers is common general knowledge.

16 August 2015

Britax v Infa-Secure

Case: Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651 (30 June 2015) 

Date: 30 June 2015

Middleton J.


  1. Claim Construction
  2. Expert witnesses
  3. External fair basis (note that the new Act makes this less relevant now)
  4. Internal fair basis ( " )
  5. Novelty - Some really good basic principles.
  6. Interpretation of various words and phrases.
  7. "Adapted to" means "Capable of". Be careful of functional phrases like this. Check utility.
  8. "Highly qualified experts, even if they have a capacity for original research, should not on that basis be disqualified from assisting the Court".
  9. Definition of a skilled addressee.
  10. Use of expert evidence in determining validity issues.
  11. Hindsight and Common General Knowledge.
  12. Innovative Step.
  13. Inventive Step.
  14. Meaning of obvious - "very plain".
  15. The need to lead evidence that prior art "would have been reasonably able to have been ascertained, understood and regarded as relevant in Australia by a person skilled in the art when seeking a solution to the problem the invention seeks to overcome."
  16. Utility - to be established by evidence. Some good case law here. Read the section entitled "Expert Evidence".
  17. Clarity - use of imprecise terms. Skilled address must be able to resolve ambiguity.

03 August 2015

Exit Business Method Patents

I've spent some time reviewing the latest material from the USPTO concerning subject matter eligibility. In case you want to have a look, here is the link: http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0.

Business method and e-commerce type applications tend to be reviewed by particular art units. Here are some dismal statistics: http://cpip.gmu.edu/2015/06/27/the-one-year-anniversary-the-aftermath-of-alicestorm/.
The Supreme Court, in the case now known as "Alice" (http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf), set out that advances in non-technological disciplines such as business, law or the social sciences, simply do not count. Any claims that are directed to an entrepreneurial objective, such as a method for increasing revenue, minimising economic risks or structuring commercial transactions, as opposed to a technological method, would not be patent eligible.
You will see from the above link that the USPTO has provided a large number of different examples, both of eligible and ineligible subject matter. It has become practice to review each of those examples and attempt to provide or find analogies between the eligible cases and the invention that is under examination and has been rejected. That said, a golden thread that appears to run through the examples is that any form of economic practice, no matter how complex, or how beneficial to society, is simply rejected because the relevant claim defines an invention that attempts an entrepreneurial outcome as opposed to a technological outcome.
Also, no matter how complicated the economic practice is, it is generally carried out by "generic" computers performing "generic" processes or functions. That would stand to reason, otherwise the commercial model may be flawed. In other words, there is usually no improvement in the operation of the computer or some other aspect that would take the invention beyond what is referred to as an "abstract idea". For example, one may design algorithms that improve the operation of a processor. A processor, so improved, would more than likely be patent eligible. However, designing an algorithm that can be executed by a standard, "generic" processor would more than likely not be the designing of eligible subject matter, particularly if that algorithm were designed to achieve some form of economic outcome, as opposed to a technological one.
It follows that, for rejected applications, the task that we face is to extract some material from the specification that describes some technological advance.

One path out of this morass could be the filing of a continuation-in-part application based on the rejected application. The purpose of doing so would be to rewrite the patent specification in such a way as to emphasise, and seek protection for, the technological aspects of the invention, as opposed to the economic aspects.

Such technological aspects might include the generation of material in a technical manner. For example, one invention that was held to be patent eligible described the generation of a hybrid or composite webpage using information from two other webpages (DDR Holdings LLC v Hotels.com - http://caselaw.findlaw.com/us-federal-circuit/1685815.html). This was deemed to be primarily technical as opposed to economic. In this case, I understand that the resultant composite webpage was actually intended to be used in financial transactions. However, the way that the patent specification was prepared provided basis for a claim directed to the technical achievement of obtaining the composite webpage. In other words, this invention was not regarded as an "abstract idea". Another invention that was held to be patent eligible involved the transformation of data, using encryption.

One of the benefits of preparing and filing a continuation-in-part application is that the specification can be somewhat amplified, although to a limited extent. This can be done by way of clarification. Also, if certain technical aspects are not yet in the public domain, then those aspects can be introduced and built into the claims in the specification. However, in order for the claims to retain the earliest priority date, the claims would have to find basis in the specification as originally filed. That said, the further material added into the continuation-in-part application may very well provide the examiner with the idea that the claims are directed to something more than just an algorithm that achieves an economic outcome when executed by generic computers acting in a generic manner. The reason for this is that the claims are interpreted in light of the specification, not in light of the parent application, even though they take their priority from the earlier application.

Another benefit of the continuation-in-part application is that the application could be directed or allocated to a different art unit. For example, it could be allocated to an art unit that deals with electronics/software as opposed to e-commerce. I believe that this would help significantly. This would require that the application be prepared with a title and an abstract that do not hint at all to economic practices.

A possible example of such new material would be the generation of a tangible product, such as a web page or electronic report, that was more than simply the display of data. Another example might be the generation of a complex database in a dynamic manner, where we introduce material related to the building of the database that is specific to your product and is not merely a "plug-on" which would be regarded as generic.

A potential risk with this is that it may open up further fields of searching for the examiner. This may raise the risk of "inventive step" objections.

Another issue with this approach is that it extends the prosecution process significantly. This may be disappointing if you were hoping for a resolution sooner rather than later. However, there is a chance that, with further time, the USPTO may become a little more accepting of such applications.

Unfortunately, the preparation and filing of a continuation-in part application is, as far as costs are concerned, are similar to the filing of a fresh application. In this case, there would be further costs associated with actually preparing the patent specification that is to form the basis of the continuation-in-part application.

30 July 2015

European Claim Amendments

Remember that in Europe, it is possible to use what could be regarded as ambiguous terms in claims. For example, words such as "optionally" and "or" can be used to reduce the number of claims to 15 or below.

01 September 2014

Eagar & Martin Launch

I'm delighted to announce the launch of Eagar & Martin! Please visit my new firm here: www.emip.com.au

22 May 2014

Grace Period - Australia

This is the first in a series of posts concerning grace periods around the world. Australia is a good place to start.

But first of all, let's consider what is meant by "grace period". This is not the convention period governed by the Paris Convention. I see that confusion often. Rather, it is a period of grace for a public disclosure made by the inventor(s) before filing the first patent application covering the invention. Usually, such a disclosure would result in the invention no longer complying with our novelty and inventive step requirements. More here in connection with those requirements.

In Australia, that grace period is 12 months. However, there are some important considerations:

  • The patent application must be accompanied by a complete specification. This means that it will be necessary to file either a standard or an innovation patent application. International applications are regarded as standard patent application, so the filing of an international application can also be effective. 
  • A third party who takes definite steps to exploit the invention before the application is filed has a defence to an infringement proceeding brought once the patent is granted.

You should never rely on the grace period, unless you have no choice. The grace period does not apply in most other countries. The public disclosure will prevent you from obtaining valid patent rights in those countries.

14 May 2014

Particulars for Patent Opposition

In this matter, the delegate of the Commissioner of patents dismissed multiple grounds of opposition. He did so, requiring further and better particulars for the ground of novelty raised with regards to the allegations of prior use.

Of interest here are the principles that were set down by the delegate, citing various cases and the Federal Court rules.

  • An opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed. An opposition may be dismissed if it is considered to have no reasonable prospects of success.
  • In determining whether or not there is a real prospect of success, consideration is given as to whether there is a real rather than fanciful issue to be decided. The onus will initially be on the applicant to show that the opposition has no reasonable prospects of success, but the onus may shift to the opponent to explain its case if a real issue is not self-evident. This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established.
  • A dismissal will generally be inappropriate where expert evidence is required to determine an issue. However, this does not preclude dismissal of an opposition where there is a clear deficiency in the case to be argued, such as a technical divergence of a citation and the application or where an opposition involves issues of construction and expert evidence is not necessary to clarify technical terms or other matters that are in doubt.
  • Evidence of an “ambivalent character” will generally be sufficient to establish a reasonable prospect of success. However, if the evidence is only one-way, or can clearly lead only to a single conclusion, then a proceeding may be dismissed. If no particulars have been provided in relation to a ground of opposition then it may be considered to have no reasonable prospects of success.
  • Care must be taken not to cause an injustice to a party by dismissing an opposition.

The following points regarding the nature of the particulars are also useful:

  • for documents, the relevance of the reference to the ground together with page and line references to direct the reader to the specific part of the document that is to be relied on. Also, where patent documents have been published in more than one version, then the version being relied on should be identified and if reference is made to patent family members then material facts relevant to the family member should also be clearly identified;
  • for common general knowledge, a brief description of the alleged common general knowledge and identification of the person skilled in the art including brief details of any material facts needed to establish a prima facie case;
  • for manner of manufacture, a brief description of the particular type of manner of manufacture, eg. a mere mixture of known ingredients, together with brief details of material facts to establish a prima facie case;
  • for matters such as prior knowledge, sale, prior use, a brief description of their relevance to the ground together with a brief details of the material facts to support a prima facie case, for example, (a) the date and place of any use, (b) the person or persons to whom the invention was allegedly disclosed or sold;
  • for trade marks or trade names, a brief description of the nature of the material together with a description of its relevance to the opponent's case. Of themselves, references to trade marks or trade names are meaningless particulars; it is quite possible for the constituents of a product to be changed and for the product to continue to be sold under the same trade mark or trade name;
  • for section 40 matters, a brief description of the specific subject matter causing section 40 not to be satisfied, a clear statement of the specific statutory requirement and the identification of the deficient part of the specification (by reference to page and line and/or claim numbers).

13 May 2014

Game not Patentable in the United States

I came across the interesting case of Gametek LLC v Zynga, Inc (25 April 2014) recently. This matter was heard in the US District Court, San Francisco Division.

Gametek sued Zynga and some other defendants for the infringement of US Patent 7,076,445.

The relevant claim reads as follows:

1. A method of managing the operation of a game which includes a game environment, and is programmed to control a gaming action for at least one of a plurality of users, said managing method using a programmed computer to effect the following steps:
a) tracking the activity of the at least one user in the course of the gaming action;
b) permitting the at least one user to create an account for receiving a consideration of the at least one user, the at least one user having a set of demographics;
c) determining the eligibility of the at least one user to purchase at least one of a plurality of game objects, said eligibility determining comprises the following sub steps:
i) permitting the at least one user to select the at least one game object,
ii) setting the purchase price of the at least one game object, and
iii) comparing the account balance of the at least one user's consideration with the set price of the at least one game object and, determining if the balance of the user's consideration is not less than the set price, determining the at least one user to be eligible to purchase the at least one game object;
d) displaying in the game environment a purchase price of the at least one game object;
e) presenting to the at least one user an offer to purchase the game object dependent upon a group of game parameters comprising the tracked activity of the at least one gaming action of the at least one user and, the one game environment or the one set of demographics of the least one user
f) permitting the at least one user to purchase the at least one game object at the set purchase price without interrupting the gaming action of the at least one user; and
g) supplying the at least one purchased game object to the at least one user without interrupting the gaming action of the at least one user and incorporating the game object into the game.

Notable is the court's statement that "the specification suggests the method may be performed with or without a computer,...". Also neither "the claim nor the specification provides any details on the "programmed computer" or how implementation of the method steps by means of a computer would differ substantively from non-computer practice."

Gametek did try to make something of the 12 steps in the above claim. However, the court held that "these twelve steps are nothing more than a teased-out version of the basic steps of any commercial transaction:  a
seller offers an item for sale to an interested and able buyer, the buyer accepts that offer, and the seller then provides the item in exchange for valuable consideration." While the practice of these steps might be facilitated by use of a computer, a computer is not necessary. The court cited CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), in which it was held that “methods which can be performed manually, or which are the equivalent of human mental work, are unpatentable abstract ideas”.

The Machine-or-Transformation test was also applied. In short a "claim in meaningfully limited if it requires a particular machine implementing a process or a particular transformation of matter". To cite the famous Bilski decision: "When assessing computer implemented claims, while the mere reference to a general purpose computer will not save a method claim from being deemed too abstract to be patent eligible, the fact that a claim is limited by a tie to a computer is an important indication of patent eligibility.”

Gametek contended that the processes in the claim cannot be, and never were, performed by a human absent a computer. But Gametek offered no explanation of "why these seemingly obvious steps have never been and could never be performed by a computer.

The court concluded that the claims were unpatentable.

The message here is clear. You are going to have problems in the United States (and probably in Australia as well) if your invention does not depend on the operation of some form of data processing apparatus. You need to be sure to provide your patent attorney with plenty of technical information to support an argument that a some form of machine plays an important and significant role in the exercise of your invention,