03 February 2018
But how does this relate to patents?
16 January 2018
13 January 2018
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
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
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 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
16 November 2017
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
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
31 July 2016
Judge: Dowsett J.
- Construction of mechanical claims
- Wear assemblies and ground engaging tools for mining and construction
- Patent Attorneys should not be sending out Letters of Demand
30 August 2015
Judge: Rares J
- 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.
- Drafting tip: Court referred to a paragraph in the specification that referred to "comprises". This was used in the construction of the claims.
- 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 .
- 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  HCA 91.
- 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  FCAFC 224
- A skilled addressee will take a commonsense approach and would therefore assume certain characteristics in order for the definition to make sense.
- 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  FCA 864.
- Utility - Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd  HCA 19.
- Inventive step - Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2)  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.
23 August 2015
16 August 2015
Date: 30 June 2015
- Claim Construction
- Expert witnesses
- External fair basis (note that the new Act makes this less relevant now)
- Internal fair basis ( " )
- Novelty - Some really good basic principles.
- Interpretation of various words and phrases.
- "Adapted to" means "Capable of". Be careful of functional phrases like this. Check utility.
- "Highly qualified experts, even if they have a capacity for original research, should not on that basis be disqualified from assisting the Court".
- Definition of a skilled addressee.
- Use of expert evidence in determining validity issues.
- Hindsight and Common General Knowledge.
- Innovative Step.
- Inventive Step.
- Meaning of obvious - "very plain".
- 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."
- Utility - to be established by evidence. Some good case law here. Read the section entitled "Expert Evidence".
- Clarity - use of imprecise terms. Skilled address must be able to resolve ambiguity.
03 August 2015
30 July 2015
01 September 2014
22 May 2014
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
- 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.
- 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
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,