31 August 2011

Tilting at Windmills?

A meeting I had the other day prompted me to write this post. My prospective client was a bright young man who appeared to have done quite a bit of research himself. His source was the IP Australia website. There's no doubt that IP Australia's website is extremely useful, both for practitioners and inventors.

But let us go back to the principles of our Patents Act. As you will see, there are clearly two sides to the patent system. One side is the government, represented by IP Australia. The other side is the Applicant, being that person or organisation attempting to acquire a granted patent.

Why this need for two sides? It's important to understand the answer. The patent system is based on a quid pro quo. The government will give the inventor/s the right to exclude all other Australians from exploiting the invention for the life of the patent. In return, the inventor/s must give sufficient information to the public so that, when the patent expires, the public can exploit the invention. The instrument for enabling this quid pro quo is the patent specification.

It is the role of IP Australia to investigate whether or not the government should enter into the quid pro quo. It is not the role of IP Australia to enable the quid pro quo. In other words, IP Australia is not obligated to act in favour of the inventor/s. On the contrary, IP Australia's role is simply that of a proposed party to an agreement. The fact that IP Australia ostensibly encourages the filing of patent applications is contrary to the spirit of the Patents Act, even though it is admirable.

So you need to bear in mind that dealing with IP Australia yourself is akin to entering into an agreement with another party without professional assistance. Of course, this sounds like a plug for the profession and perhaps you have reason to be jaundiced. But please at least phone around and do some homework before dismissing the option of consulting a patent attorney.

17 August 2011

A Rough Guide to Patent Searching

I often meet prospective clients that have a simple, but clever concept.  It is invariably mechanical and he or she is not sufficiently cashed up to add the cost of a professional search to patent application costs, product development costs, marketing costs, etc. However, a search is mandatory, in my opinion.

So, what to do? Well, it is possible to carry out your own search, quite effectively.  There are a number of free patent searching websites. I describe a few below. The list is not exhaustive and you should do your own investigations as well.

12 August 2011

Patent Prosecution Highway - Update

A number of countries have entered into bilateral agreements in an attempt to speed up patent prosecution. This is an excellent initiative and one that I support wholeheartedly.

WIPO has some news about this system in its latest newsletter: http://www.wipo.int/pct/en/filing/pct_pph.html.

10 August 2011

Seafood Innovations enforces innovation patents

Case:  Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2011] FCAFC 83


The fish stunning machine covered by the patents had a fish stunning device, a fish guide and a trigger. The fish is moved in one direction from an entrance to an exit.

Relevantly, one of the claims set out: "the fish guide includes a floor being pivotally mounted between a first position and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit".

The Bass devices included a pivotally mounted floor which moves from the first position to the second position. But they also included a cheek plate and a top plate.  So the three devices acted together as a sphincter  to allow the fish to pass unidirectionally.  Bass contended that the devices did not infringe the claim because it was not the floor alone that allowed the fish to pass.

A common sense construction was adopted. There was evidence from a skilled addressee that the Bass devices and the apparatus of the claims of the first innovation patent operated in the same way and that there is no practical difference in terms of the purpose of the apparatus in this context. 

Fair Basis

Bass pointed out that the pivotally moveable floor was the only description of the fish guide in the specification.  The description stated that the fish guide “comprises” (in the sense of consists of) the floor. Bass said that that made the pivotally moveable floor an essential integer of the invention which must, therefore, be included in the claims. On the other hand, Seafood Innovations said that the description of such a fish guide is but one embodiment of the apparatus broadly described, without any such limitation.

Bass followed the incorrect approach of seeking to isolate essential integers from the body of the specification in understanding the claimed invention.  As held in Lockwood Security v Doric Products [2004] HCA 58, a narrow embodiment of a broad claim does not render the claim invalid for lack of fair basis.


Perhaps the most important message to come out of this decision is the reference to "common sense".  It is always necessary to adopt a common sense construction.  In order to do so, we always need to refer back to the skilled addressee and how he/she might read the document.

09 August 2011

Canberra and Big Tobacco

Here is an excellent discussion from ABC Radio National: http://www.abc.net.au/rn/lawreport/stories/2011/3287889.htm

I found the discussion regarding the extinguishing of trade mark owners' rights and possible compensation by the Australian government particularly interesting.  Also, it appears that the plain packaging legislation could be in breach of an investment treaty we have with Hong Kong that specifically protects IP rights.

It will be intriguing to watch how this plays out.