15 January 2011

Filing and Prosecution - Best Practices - ABA Webinar

I'm delighted and privileged to announce that the American Bar Association's (ABA) IP Section will be hosting a webinar by Neal Schutte and me on the above topic.  Neal is senior IP Adviser at Rio Tinto. 

The webinar will be a practical and easily understood explanation of how to achieve the best out of the various prosecution options in Australia and New Zealand.  It also includes a discussion of the Innovation Patent System, an increasingly popular tool for early enforcement in Australia.

Here's the link: http://www.abanet.org/cle/programs/t11bpf1.html.

12 January 2011

Psychological analysis and therapy not a "manner of manufacture"

The Delegate has found that a method for "facilitating  a person to integrate an inconsistency by comparison" in order to enhance personal effectiveness was not proper subject matter. Here's the case.

The applicant attempted to argue that the method of the claims produced an "observable effect" because it resulted in a change in the emotional and, consequently, the physiological state of the subject.  But the Delegate said that this was not the sort of "physical phenomenon or effect" anticipated in Grant.  Also, it was not an "artificially created state of affairs" within the meaning of NRDC.

The method claimed appeared "to be merely a process of psychological analysis and therapy based on analysing the subject’s responses to questions. It solely concerns human interactions and behaviours and is distinguishable from, for example, a method of treating a psychological condition with a drug producing a particular physiochemical interaction with the human body."

The Delegate said that " the subject matter of the claims clearly falls within the fine rather than useful arts in the same way as legal analysis and reasoning was not found to be patentable in Grant."

See also my post of 11 August 2010.

11 January 2011

Patent Attorneys Expensive?

Here's an excellent article from IPWatchdog - You may think it has little relevance because it's a US-based article.  That would be dangerous.  Your Australian patent attorney is often tasked with preparing patent specifications that have to stand scrutiny in the US.  After all, most Australian entrepreneurs are looking for a berth in that massive market. 

In short, the article argues that you get what you pay for.  That's perenially true.  A decent patent attorney will attempt to wear many jurisdictional hats when preparing your patent specification.  If the job seems expensive remember that he or she is potentially trying to garner an exclusive international monopoly for you. That specification could find itself in front of a patent examiner in Europe, where the need for good drafting is perhaps more acute than in the US. And people pay half a million dollars for a house on an irrelevant patch of land...

Never forget the golden rule in drafting:  if it's not there when you file the International Application, you won't be able to add it later.  That means as much material as possible presented with great skill if you want a decent specification.

IP and Business Consultants

I had the misfortune of having my judgement questioned by a so-called business adviser. He was particularly interested in why I had bothered to file a patent application for a particular client of his when "it did not appear that the invention would qualify even for an innovation patent". I immediately went on to the offensive and asked whether or not he knew what it was that would allow an invention to "qualify" for an innovation patent.

Given that an innovation patent will always be granted subject to passing a formalities test, I was already using inaccurate language. However, I thought it was appropriate given the level of understanding held by this particular business adviser. In any event, it appeared that he was completely ignorant of the test for an "innovative step". For a discussion in connection with this requirement, see my post of 2 July 2009.

This altercation was a stark reminder of the need to select an appropriate expert. Patents can be extremely complicated, particularly when one is attempting to understand the rather nebulous principles of inventive and innovative steps. After all, questions concerning these principles regularly find themselves presented in the highest court of the land. For a business consultant to provide any sort of opinion as to whether or not an invention is patentable would be unethical to say the least, provided of course the business consultant is not an ex-patent attorney.

The business adviser’s call was made on the basis of an Internet search that he'd carried out. The result he so proudly presented to me had the physical appearance of a preferred example of the invention described in the patent application in question. Based on that he was prepared to advise his client that he thought that the invention was not patentable. Sadly, business advisers are not bound by the same code of ethics that bind us patent attorneys.

So, if you're sitting down with a business adviser and he or she begins prattling on about patents, please make sure that you check his or her credentials.

09 January 2011

Queensland Funding for Green Innovation

Happy New Year to all my readers.

I'm starting the New Year off with some good news from Queensland government. I recently received a letter advising me that the Queensland Sustainable Energy Innovation Fund (QSEIF) provides funding assistance for Queensland-based individuals or organisations to develop innovative technologies that reduce consumption of fossil fuels, water or greenhouse gas emissions.

According to the letter, QSEIF funding can offset up to 80% of external project costs. The cost of filing a patent application is recognised as eligible  project expenditure up to a level of 10% of the project costs or a maximum of $10,000.

The appropriate time to apply for funding might be immediately after the initial novelty search. See here for my post on searching.

Contact me if you want more information. Alternatively, the brochure can be downloaded here.