29 June 2010

USPTO's Memo to Examiners - Bilski

According to Gene Quinn at IPWatchdog, the USPTO has sent a memo to US Patent Examiners in response to the Bilski decision. Part of the memo reads as follows:

"Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea."

Note - Section 101 is the relevant US statute dealing with patentable subject matter.

Here's the article:
USPTO Sends Memo to Examiners Regarding Bilski v. Kappos | IPWatchdog.com | Patents & Patent Law

Bilski - Business as Usual

 Courtesy of Dennis Crouch's Patently-O blog.

It appears that it is business as usual. The Court has refused to state any particular rule or categorical evaluation. So the issue of patentable subject matter has been pushed to the background in patent prosecution and litigation in the US.

As far as "Business Methods" per se are concerned, the US statute does not categorically exclude such inventions. According to the Court, a prior use defence in the US contemplates the existence of at least some business method patents.  By allowing this defence, the statute itself acknowledges that there may be business method patents.

Software will largely remain patentable.  At minimum, this decision does not allow the categorical exclusion of software patents.  That is to say that the court neither endorsed nor rejected previous decisions in connection with software as subject matter.

In this case, Bilski was related to a method of hedging risk and it was not patentable because it is an abstract idea.

It appears to me that the US and Australia are largely aligned.  Here, the Full Federal Court said that an asset protection method was not patentable subject matter. See my post of 25 July 2006.
Here is the decision - http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

26 June 2010

Will Bilski be decided on Monday (Tuesday in AU)?

IPWatchdog reports that Monday, 28 April, (Tuesday in AU) may very well be the day that we get the Bilski decision from the US Supreme Court. This may or may not render a large portion of software inventions as not being proper subject matter for a patent in the US. Of course, this will have enormous consequences for us here in Australia.

22 June 2010

No Bilski Decision Yet

As Gene Quinn reports, we're still waiting for the Supreme Court to hand down their decision. As I've mentioned before, this decision may have a big influence on the way we here in Australia advise our clients on software inventions.

There's an off chance that we might get the decision this month. Otherwise we may have to wait until the next term, which will take us into October or perhaps even into 2011.

Monday June 21, Another No Bilski Day for the Supremes | IPWatchdog.com | Patents & Patent Law

17 June 2010

LED Designs - Treatment of Prior Art

(2 lens combination)

Venue: Full Federal Court

Judges: Emmett, Besanko and Jessup JJ

The Main Design Issues

Does the Designs Act 2003 change the manner in which a court is to have regard to the state of the development of the prior art base?

No, there is nothing in the wording of the report of the commission set up to investigate the 1906 Act that would suggest that there was anything wrong with the approach developed under the 1906 Act.

Does the Designs Act 2003 alter the task of the Court to compare Designs individually with each relevant piece of prior art? 

No, it is not permitted to mosaic or produce a hypothetical amalgam of a number of prior designs in order to defeat the registration of the design in issue.  That is impermissible under the Designs Act 2003.

10 June 2010

The Power of the Innovation Patent

A while ago I reported on the successful enforcement of an Innovation Patent - "Innovative Step Confirmed".

This morning while I was driving my son to school (the joy of working from home!), I saw the very reflector posts that were the subject of the Innovation Patent upheld by the Full Court. There they were, clearly of sprung steel, with the concave surface facing the oncoming traffic. Interestingly, interspersed between them was an example of the prior art cited against the innovation patent. The prior art examples look a bit broken and battered. Clearly, council (or whoever looks after the roads) is replacing them with an embodiment of the invention covered by the innovation patent. Given the amount of roadwork going on around here, someone must be making some good money out of the reflector posts. They are also being used on all the new roads I've seen.

Now, I'm not sure of what the real commercial story is here. But if it wasn't for the innovation patent, I'm pretty sure that someone else, or perhaps a whole bunch of people, would be putting those reflectors in the ground.

Sometimes the simple ideas are the best, and that's when you want to consider the Innovation Patent.

08 June 2010

Food Channel - Opponent Fails to Discharge Onus


                                                  Case: Food Channel Network v Television Food Network GP [2010] FCAFC 58

Venue: Full Federal Court of Australia

Judges: Keane CJ, Stone and Jagot JJ

Intent to Use - Onus
Ownership of a trade mark
Deceptive Similarity

Main Issue

In opposition proceedings, does the evidentiary onus shift back to the applicant for registration where an opponent has made out a prima facie ground of opposition to registration?


If the evidence is not sufficiently clear to enable a finding to be made about whether a ground of opposition has been established, then the opponent must fail on that ground. It bears the onus of proof.