29 April 2008

University Lacks Entitlement

On 17 April 2008, the Federal Court handed down University of Western Australia v Gray (No 20) [2008] FCA 498.

It's a turgid case of 1,618 paragraphs. So that means I haven't read it all yet.

In short, the Court said: "Absent an agreement to the contrary, rights in relation to inventions made by academic staff in the course of research and whether or not they are using university resources, will ordinarily belong to the academic staff as the inventors under the 1990 Act. The position is different if staff have a contractual duty to try to produce inventions. But a duty to research does not carry with it a duty to invent."

That's just the sort of anachronistic thinking the infuriates me. Surely carrying out research includes inventing? I'm thinking that anyone doing research at UCLA (for example) would consider that there was an implied duty to invent. What's the research for then? Fun?

Hopefully this case will be appealed.

It's effect will probably not be that dramatic. Most universities involved in productive research have proper contracts in place dealing with IP.

I will make an attempt to get to grips with the Court's reasoning. Something might even be posted...

22 April 2008

Federal Court Recaps Claim Interpretation

The matter of Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCA 314 was handed down by the Federal Court of Australia on 11 March 2008.

There is some useful material on how the claims of a patent should be interpreted. The case can be downloaded from the above link. Have a look at paragraphs 40 to 45.

Spender J. cited Hely J. in Flexible Steel Lacing Co v Beltreco Ltd (2001) 49 IPR 331:
  • As a general rule, the terms of a specification should be accorded their ordinary English meaning.
  • Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning.
  • However, the construction of the specification is for the court, not for the expert witness. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.
The term "mounted on" is used often by us practitioners. In short, the court held that A is "mounted on" B even though there is an intervening component interposed between A & B. Of course, that conclusion was reached in the light of the above rules.

If a reading of the specification indicates that A should always be directly mounted on B, then it might be necessary to limit the interpretation of "A mounted on B" to direct mounting.

So, if you're looking for broad protection, make sure that the language of the specification does not indicate that it is essential for A to be mounted directly on B.

17 April 2008

World Intellectual Property Day

It pleases me to see that Australia is promoting World IP Day on 26 April 2008. Here is Senator Carr's media release.

I particularly liked this statement: "IP can develop into a significant business asset which often is worth more to a business than all the tangible assets such as factories and machinery combined." But it's a concern to me that such a small proportion of Australian patent applications are actually owned by Australians. In fact, in 2006, only 15% of Australian patent applications were filed by locals.

We regularly hear how manufacturing companies in Australia are taking their operations offshore. At least the clever people are staying here. But if this carries on, we'll only have our minerals to sell. I hope that the Minister's message reaches all those clever business leaders out there.

As Senator Carr says:

"On this day when IP and innovation is being celebrated across the world, let’s be proud of what Australia has contributed to the global pool of innovation, but let’s also look forward.

"I urge all Australians to think about this country and how we can do things better via innovation – remember, every new product started as someone’s good idea."

I would add to this by saying that registered IP, such as patents are an effective way of securing our future, regardless of the demand for our mineral wealth. With the statistics on International Patent Applications described in my post of 15 February 2008, we could find that future vulnerable.

12 April 2008

Missed your National Phase Deadline?

Most proceedings under our Patents Act are extendible after the deadline has passed.

The failure to meet the national phase deadline must be either the result of:
  • An "error or omission" by the agent or the applicant/patentee.
  • Circumstances beyond the control of the applicant/patentee.

Some examples of errors or omissions presented in extension of time applications are:

  • Failure to make a diary entry.
  • A date error in connection with the deadline.
  • A misunderstanding of instructions.
  • Failure to seek instructions from applicant/patentee.
  • Failure by applicant/patentee to provide instructions.

The circumstance provision is essentially a "force majeure" provision. Delays by post and courier constitute the major source of extensions under this category. Anticipation of a Court judgement has been held to be a circumstance beyond a person's control. However, lack of funds is not considered to be a circumstance beyond a person's control.

Drop me an email if you've missed a deadline. Just remember, you need to apply as soon as you realize the deadline is missed. An undue delay could be grounds for a refusal. You can file the evidence in support of the application later on.

Australia Climbs on to the Patent Prosecution Highway

Not too long ago, the Australian Patent Office (IP Australia) decided to lend our cousins in the USPTO a hand. That was to help with the backlog there, which I'm sure all us professionals have felt.

That's not to say there wasn't a backlog here. But let's not get into that now...

Anyway, the help is in the form of our Examiners getting involved in the USPTO examination process.

That's had an interesting side-effect in the form of an adoption of a trial of the patent prosecution highway program between IP Australia and the USPTO. Information from the USPTO is available here: http://www.uspto.gov/web/patents/pph/pph_ipau.html. Information from IP Australia is available here: http://www.ipaustralia.gov.au/patents/international/pph_uspto.shtml.

The trial starts on April 14 this year and will be similar to the PPH that is currently in place between the US, Canada, Japan, Korea and the United Kingdom.

All the information about this process is readily available at both the above links. But to summarize:

Where the USPTO is the office of first filing and the US Application contains claims that the USPTO considers allowable, then the applicant can request accelerated examination at IP Australia of the corresponding application. Likewise, where IP Australia is the office of first filing and considers claims to be allowable, the applicant can petition to make the US application special. This sounds like a helpful attempt to ease the interminable delays at both offices. Hopefully, it will be a roaring success.

Any comments about the success of the other PPH's run between the USPTO and other countries?

03 April 2008

Wising up in the Clever Country

I'm delighted to announce that my business partner and I have just finalized a White Paper on intellectual property for businesses in Australia.

Sadly, most Australian business owners could be better managers of their intangible assets. It's a concern that 85% of Australian patent applications originate overseas (source: IP Australia). It would appear that leaders of innovative companies are in danger of giving our future away!

The White Paper includes:
  • Numerous case studies illustrating the use and misuse of IP.
  • Guidelines to implementation of an intellectual asset management program.
  • How to identify hostile competitor IP positioning before it causes financial loss.
  • IP checklist before launching a new product or brand.
  • How to stop employees leaving with critical IP assets.
Email me at beagar@enb.com.au if you would like a copy of the White Paper.