28 September 2009

Words, Words & Foreign Patent Applications

I have recently been involved in the prosecution of a Chinese patent application. The complete specification was prepared in Australia a number of years ago and has found itself translated and in the Chinese patent office. The Chinese patent examiner has rejected the application. According to him, the broad description in claim 1 reads on to the prior art. The specification only has the broad terminology and a specific example. I tried to amend the claim to introduce a feature that is narrower than the broad terminology, but broader than the words used for the specific example. I don't want to use the specific example, because client would have a unacceptably narrow scope of protection. This tactic can work in Australia, the US and even Europe provided the terminology chosen is clearly a generic of the specific example. Not so in China, though. The examiner wants to force me to choose the specific example. So I'm looking at the possibility of a divisional application. Any tips would be appreciated!

My colleagues in Europe advise me that I have to be very careful with amendments and divisional applications in their jurisdiction, as there is a strict policy against adding new material.  Apparently, even the use of different words describing effectively the same thing can land you in trouble.

The problem is that here in Australia the patent office is very flexible when it comes to amendments and divisional applications. So its easy for us to develop bad habits. I've developed the hopefully good habit of using varying terminology in the specifications I prepare. One has to be careful not to be confusing though, because you could end up with a patent having validity problems. The technique I use is to incorporate as many generics and "sub-generics" as possible in the specification. For example, I might use the phrase "the planks are fastened together with a connector in the form of a threaded connector such as a coach bolt". So, I end up with three different terms for the same thing without losing clarity. If I need to amend in China I can amend from "connector" to "threaded connector" without having to end up with "coach bolt" which could be too narrow.  Also, I try to put that terminology in the description of the drawings as opposed to the summary, because some jurisdictions don't regard the summary as part of the description.

Hopefully I can work something out with the Chinese examiner...

24 September 2009

Re-examination of granted patents - worth it?

I recently requested re-examination of a granted patent. This is a procedure governed by section 97(2) of the Patents Act. That section allows you to request IP Australia to re-examine a patent that has been granted in the hope that the patent is either revoked or the patentee is forced to make amendments that narrow the scope of protection afforded by the patent. The request needs to be based on documents published before the priority date of the patent in question. The procedure is ex-parte. That means that once you've lodged the request, your involvement is terminated.

The process sounds good in theory. And in this particular case, the invention defined in the patent was clearly anticipated by at least one of the documents that was submitted. The examiner (a senior examiner, no less) initially reported that the patent should be revoked. The patentee, rightfully, always has a chance to respond. In this case, extensive argument was set out by the patent attorney. In what was a triumph of verbosity over legality, the examiner buckled and agreed that the broadest claim defined a patentable invention in light of the submitted documents.

No-one wants to go to court. However, one has to question a system in which examiners are clearly out-gunned by patent attorneys. If you're ever threatened with patent infringement and you have access to information that clearly invalidates the patent, it may very well be better to call the other side's bluff. In this particular case, an outcome has been delayed unnecessarily for almost a year.

Cold comfort for the allegedly infringing party, but this is exactly why clever people register their intellectual property.

15 September 2009

Trade mark registration - keep it simple

I attended a networking breakfast this morning. Striking up a conversation with a small business owner, I heard that she had visited a firm in an attempt to get some advice regarding trade mark protection. Apparently, she'd been told to "get protection" for the words, the logo, another logo, etc, etc. Clearly, what was going on here was a classic case of milking. Instead of getting fees for one trade mark application, she would have had to pay for a number of trade mark applications. Of course, she baulked. The delay may have cost her an advantage in the market place.

My advice was to keep it simple. Protect the words first, you can worry about the rest later. It's important to remember that a plain word registered trade mark will protect your reputation as it grows by word of mouth. Logos and images are only visual and cannot be conveyed by word of mouth. Also, use of logos and images together with the word may only serve to dilute your message - read this article: http://www.beagar.com.au/Brand%20Name%20Selection%20Notes.htm.

Give me a call or drop me a note if you want to hear more about a simple, straightforward approach to trade mark registration.

14 September 2009

Innovation Patent - Use it or lose it

Here's a good article from Phillips Ormonde Fitzpatrick - http://www.shelstonip.com/news_story.asp?m=9&y=2009&nsid=118#page=1.

I have discussed the innovation patent and its advantages a number of times in this blog. As set out in that article, the innovation patent is indeed at odds with the Australian authorities' oft-stated intentions to work towards international alignment. Innovators need to act before the system is removed.

Simply put, the system gives you a quick and simple way of getting a form of patent that could be even more effective than a standard patent. It's quick because protection can be in place in less than 6 months, as opposed to the 2 or 3 years you'd usually wait for standard patent protection. It could be even more effective because you don't have to comply with the often difficult requirement of inventive step associated with standard patents. Read more here: http://www.beagar.com.au/Innovation%20Patent.htm

More and more of my clients are using the innovation patent, especially for inventions that are simple, but commercially valuable. Please don't hesitate to call me on +61 7 5529 9396 or drop me a note - barry@beagar.com.au - for some complimentary advice on this very effective tool.

12 September 2009

Thinking of a software patent? Who are the inventors?

You have an excellent idea for a new web 2.0 product. You need to file a patent application so that your potential investors will take you seriously. Your patent attorney tells you (or he should) that you need to provide enough information so that a person skilled in the field can recreate a preferred embodiment of the invention using that information.

Problem is, you've contracted with a software company to build the product for you. The Patents Act sets out that only the inventors have the right to apply for a patent in the absence of an agreement. As a result, employees of the software company may be entitled to the grant of a patent for the product.

This is a situation that arises regularly in my practice. My advice is that it's not enough to just have an agreement with the software company. It's very important that each employee or subcontractor, in their personal capacity, be obligated to transfer any intellectual property to either you or the software company.

There is a problem with many standard agreements, though. They don't take into account the fact that some jurisdictions, notably the United States, require that the patent application actually be filed in the names of the inventors. By the time you need to file in the United States one or more of the inventors may have been fired or resigned. Where the relationship has broken down, it may be difficult to get them to cooperate, even if they have assigned their rights to the company or to you. So it really does help where the agreement sets out that they are obligated to execute any documents necessary for the filing of foreign patent applications.

Make sure that you are in a position to give your patent attorney a copy of the employment agreement used by the company. If necessary, your patent attorney can prepare a confirmation of assignment document to be signed by the relevant employees. That document should obligate the employees to cooperate. Usually, if it is not possible to get the employee to cooperate, the United States Patent Office will accept such a document as evidence that you are entitled to be granted the US patent.

Please don't hesitate to give me a call on +61 7 55299396 or Skype me: "Blennerhasset" if you have any questions or require assistance in connection with your software product.

02 September 2009

Will the ACIP proposals really speed up patent enforcement?

ACIP (Advisory Council on Intellectual Property) has just released an Interim Report on "Post-Grant Enforcement Strategies". The 65 page document is available here.

As most of my readers will know, enforcing a patent is very expensive. There are a number of reasons for this that are canvassed in the report. In my experience, there are four main reasons:

1. Professional Charges

Hourly rates for legal professionals engaged in a court case are generally over $400. That may be reasonable depending on the actual tasks performed. But many professionals charge that rate for time spent attending to tasks more suited to paralegals. Firms that set billing targets encourage this sort of behaviour.

Patent cases are complex and time-consuming. But professionals need to be mindful of the danger of wasting time by pursuing and charging for ill thought-out options.

Unfortunately, there's a mindset amongst many professionals that if a client has the money to litigate, that client shouldn't worry too much about receiving invoices. This attitude feeds the perception that litigation is expensive.

2. Delay

I realise that there are often good reasons for delay, particularly in complex matters. For example, many patent cases require witnesses representative of the nominal skilled person as at a particular date. Where the effective date of the patent is many years ago, such a person can be difficult to find.

But long delays result in the parties having to have more correspondence and meetings to make sure that they all have a good understanding of the matter. Unfortunately, there is no way around this. Patent cases are generally just too complex for parties to maintain an understanding even after a few months' interruption. All that extra time costs money.

3. The requirement that three professionals are usually required to represent each party

These professionals would include a barrister who has the right of appearance in the Federal Court, the solicitor who runs the case and the patent attorney who provides most of the substantive legal advice. The problem with this arrangement is not so much that more than one party is required by law, but rather that the nature of patent cases requires three parties.

Patent cases usually require three levels of expertise. These include the ability to present oral argument and to have a good understanding of the various rules of court. The barrister and solicitor together should be able to deliver. An experienced patent attorney should have the necessary understanding of patent law.

4. Financial leverage

A principal of mine once told me that initiating legal action is like grabbing hold of a tiger’s tail. You can win if you stay the distance, but if you let go, the tiger is likely to turn around and eat you. Sadly, litigants often have to withdraw from litigation because of a shortage of funds. As a result, cases are often settled irrespective of the merits. This means that the system does favour those litigants with financial resources.

The ACIP Paper

The paper lists 11 proposals but I won’t discuss them all. However, a number of them involve the establishment of an IP dispute resolution centre that I will consider briefly.

Broadly, it is proposed that IP Australia establishes an IP dispute resolution centre along the lines of WIPO’s Arbitration and Mediation Center, which in the first instance focuses on patent disputes. Funding for the centre should be on a “user pays” basis. The centre will be able to provide a validity and infringement service, a register of independent experts for alternative dispute resolution by way of expert appraisals, mediation or a patent tribunal. Another proposal is that the centre provides support services for alternative dispute resolution in the form of accommodation, training and guidelines.

It is important to bear in mind that a patent is a proprietary right. It follows that revocation of a patent or narrowing patent rights effectively divests ownership. This is no mean action. I’m not sure that it’s appropriate for any non-judicial body to have such authority. In any event, any decision by a non-judicial body is usually readily appealable.

Following on from that, it is important to distinguish revocation of a patent from an opposition proceeding. An opposition proceeding is run to determine whether or not an applicant should be granted a patent. A revocation is the removal of ownership. It is appropriate for the former to be handled by IP Australia. However, in my experience, oppositions can be interminably slow and quite expensive, which doesn’t bode well for a dispute resolution centre.

Clearly, the centre will really only be effective if the parties agree to abide by its ruling. One must then ask the question that if that’s the case, would the parties not have settled the matter anyway, on the opinion of their respective counsels? I cannot see how such a centre will prevent a litigant who is not prepared to settle from simply appealing the matter into the court system anyway.

So in my view, adding such a layer has the distinct danger of increasing the complexity of patent disputes. Complexity means expense and delay.

Some of the proposals relate to raising the level of awareness of IP amongst the public. This is commendable. I’ve come to realise that while it is improving, there is generally a low level of public understanding of IP. However, it’s not clear how that would address the reasons for the high costs I’ve identified.

The solution

Our Patents Act is poorly drafted – to put it bluntly.

Many litigants are forced into the court system because the Act simply does not provide sufficient guidance. For example, in my post of 13 July 2009, I commented on the interpretation of “effective filing date” for divisional applications. I’m not privy to what the litigants paid, but I’m reasonably sure that it was significant. All that expense could have been saved if the Act had been clearer.

Another simple example is the determination of novelty. It is necessary to consider no less than two sections and one definition to understand how we decide whether or not an invention is novel.

Cases are won or lost depending on the interpretation of the Patents Act. It stands to reason that cleaning it up would save time and money for litigants.

Speed things up

Delay is a major factor in creating expense. While I am not intimately involved with the court system, I can clearly see that some work is required to get things moving along.

Perhaps stricter cost penalties should be considered for parties who consistently require extensions. It’s not uncommon for busy practitioners to be heard explaining that a missed deadline is no problem because they’ll just get an extension.

Consistent judgements

Litigants are often forced into the court system because of inconsistent precedents. Unfortunately, there are only a handful of judges that can be considered patent experts. Judges that are tasked with hearing matters have a duty to ensure that they draw on the expertise of others that have developed a reputation as specialists in this area.

Professional Fees

Litigants need to ensure that they understand how their money is being spent. Professionals can help by ensuring that cases are run efficiently and tasks are allocated to the appropriate personnel at the appropriate rate. Firms could go a long way to help by looking at alternatives to blindly setting billing targets.


There is no reason to create even more bureaucracy. The goal should be to reduce bureaucracy by cleaning up the Act, getting consistent judgements and making a concerted effort to speed things up. Unfortunately, patent law is complex. That creates expense and delay. But we practitioners should also consider ways in which we can save our clients money by becoming more efficient and charging appropriately.