23 November 2007

An Excellent Article on Software Patents

Thanks to Peter Zura's 271 Patent Blog, I came across an excellent article published in the US by Business Week.

Those of you who read my posts will know how I feel. What I like about this article is that it quite rightly points out that continued prejudice by the US Patent Office and pressure groups to de-value software patents only makes them more expensive to obtain. As a result, the benefits of such Intellectual Property will become limited to corporations able to afford the excessive legal costs associated with obtaining registration.

As the author points out, there is fundamentally no difference between software and hardware, as they are often expressed in terms of each other. It's time for the detractors to understand that there is no reason for an inventor of a software product to be treated any differently to an inventor of a product in any other field of engineering.

21 November 2007

Article on Early Patent Enforcement

IPFrontline have kindly published an article I wrote entitled "Early Patent Enforcement Down Under". It describes how a Divisional Application for an Innovation Patent can be used to achieve early enforcement of patent rights.

20 November 2007

Lockwood Recovers Costs

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No.2) [2007] FCAFC 172 (16 November 2007)

Those of you who have been following the Lockwood v Doric saga may be interested to learn that the Full Federal Court has awarded Lockwood costs on a party and party basis, subject to a discount of 15 per cent on the costs of the trial and 20 per cent on the costs of the second Full Court appeal.

Doric was successful in the second Full Court case in establishing that it did not infringe certain claims. That finding was not challenged by Lockwood in the second High Court appeal. Their honours held that Doric should have the benefit of its success on those issues, hence the discount.

See my posts of 14 July 2007 and 30 January 2006 related to this matter.

15 November 2007

Delegate Covers Some Key Patent Principles

On 8 November 2007, the Delegate of the Commissioner of Patents handed down Go 4 Mining Pty Ltd v CMTE Development Limited [2007] APO 37.

This case is useful because the Commissioner refers to a number of principles that have shaped Australian patent practice.

Clarity of Claims

The opponent, CMTE, said that the words "said outer boom sheave being supported by a boom sheave support arm to one side of a longitudinal axis of said excavator boom..." rendered claim 1 unclear. The Delegate called that feature "X".

The Delegate disagreed and said that it simply means that the axis does not pass through the sheave. The Delegate considered the other known constraints and decided that one of the possible interpretations would lead to an unlikely construction.

The lesson is that the claims are to be interpreted in the shoes of a person skilled in the art and applying common sense.

Fair Basis

CMTE said that there was no real and reasonably clear disclosure of X, which appears only in the claims and consistory clauses (i.e. paragraphs in a summarizing portion of the specification).

The High Court considered Fair Basis in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69. The test is:

(a) whether the claim travels beyond or is inconsistent with the disclosure of the specification as a whole; and

(b) whether there is a real and reasonably clear disclosure of the claimed invention in the specification.

The Delegate was unable to "detect anything in the specification that is inconsistent with respect to this feature". He also said that the drawings provided the necessary "real and reasonably clear disclosure".


The Delegate referred to some old classic cases when setting out the basic rules for novelty testing as follows:

To deprive a claim of novelty, the prior art document must:

(a) clearly teach all the essential features of the claim; and

(b) provide "clear and unmistakable directions" to do what is claimed.

It became necessary for the Examiner to assess which features of the claim were essential. He cited the well-worn British case of Catnic Components v Hill & Smith [1982] RPC 183. The judges in that case concluded that a feature is essential to a claim if:

(a) it was essential to the working of the invention or if it materially affected the way in which the invention worked; or

(b) the applicant or patentee regarded the feature as essential.


This matter is worth reading if only as a reminder of some of our basic principles.

09 November 2007

Is the USPTO being tougher on software?

Peter Zura's 271 Patent Blog has an interesting report. This appears to be in line with what we have recently been experiencing when dealing with the USPTO. Dennis Crouch's Patenly-O blog also comments here on the USPTO's hardline on business method/software inventions.

This is not surprising given the large number of software patent applications being filed at the USPTO. However, being busy is no excuse for prejudice against software inventions.

07 November 2007

Divisional Avoids Issue Estoppel

The Full Federal Court in E I Du Pont de Nemours & Co v Imperial Chemical Industries PLC [2007] FCAFC 163 has ruled that just because a Parent Patent was found invalid due to lack of novelty, it did not follow that a Divisional Patent based on the Parent was also invalid.

For those of you who might not be familiar with Divisional Patents, here's a quick lesson. Often, while a patent application is still pending, IP Australia may reject the application because it attempts to cover or define two inventions in the claims. The applicant will then have the option to delete the offending claims and to file a Divisional Patent Application with the deleted claims. In effect, the patent application is divided into a Parent and a Divisional. There are a number of other situations that can give rise to Divisionals, but I won't discuss them here.

In this case, Du Pont had been successful in opposing ICI's Parent Application which had been found to lack novelty. However, Du Pont had previously filed a Divisional Patent Application based on the opposed Parent. Du Pont argued that because the Parent Application had been successfully opposed, issue estoppel should apply effectively finding that the Commissioner of Patent should not have accepted the Divisional for grant.

In DSV Silo-und Verwaltungsgesellschaft mbH v Owners of The Sennar [1985] 2 All ER 104 Lord Brandon formulated the doctrine of issue estoppel as follows:

"...in order to create an estoppel of that kind... three requirements have to be satisfied. The first requirement is that the judgment in the earlier action relied on as creating an estoppel must be (a) of a court of competent jurisdiction, (b) final and conclusive and (c) on the merits. The second requirement is that the parties... in the earlier action relied on as creating an estoppel and those in the later action in which that estoppel is raised as a bar must be the same. The third requirement is that the issue in the later action in which the estoppel is raised as a bar must be the same issue as that decided by the judgment in the earlier action."

In this particular case, the Full Court found that the third requirement was not met.

02 November 2007

Limitation on U.S. Continuation Patent Applications on Hold

I am pleased to report that GlaxoSmithKline and an individual named
Triantafyllos Tafas have succeeded in persuading a court in Virginia
to stop the U.S. Patent and Trade Mark Office (USPTO) from
implementing its new rules concerning continuation applications

A continuation application is effectively a further application based
on an initial or parent application. The continuation application is
used to cover an invention that is described in the parent, but has
not been claimed in the parent. The Australian equivalent is called a
divisional application.

The USPTO rules would have limited the number of continuations that
could be filed from one parent application. However, many patent
specifications contain descriptions of multiple inventions. It is not
possible to cover more than one invention in a patent application. It
follows that a continuation application is a useful tool for
rightfully extending an inventor's rights.

I and many of my colleagues have maintained that the proposed rules
are arbitrary and capricious. Indeed, the USPTO is battling to cope
with its workload. But that is hardly a reason to limit fundamental
rights of inventors.

It will be fun to see the drama unfold...