28 July 2011

Raising the Patent Bar - Part I

In a previous post, I said that I would make some comments on the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011. In this post, I comment on the issues relating to standard patent applications. In a further post, I will continue with some further discussions, time permitting.

In the meantime, it may be useful to read the material available here.

As I work my way through this material, I am realising that an interesting future awaits us patent attorneys. Part of this will be explaining to our clients why our charges have increased. Alternatively, those patent attorneys who tend to "overreach" can possibly justify their invoices.

The proposed changes certainly place a heavy onus on us. Whether or not this is passed on in the way of increased charges awaits to be seen. I can safely say that it would indeed be foolhardy for innovators to attempt to go down the path of self-filing once the Bill is passed.

Also, I find it sad that such rich interpretations of phrases such as "fair basis" handed down by our courts over the years will become largely redundant as we are obliged to turn to guidelines handed down by foreign jurisdictions. Perhaps I'm being romantic, but to me, that's simply un-Australian.

Our profession is not immune from the effects of globalisation. However, I fail to understand why our courts are not permitted to simply and firmly direct interpretation towards the global norm, if such a thing exists.

Furthermore, there appears to be much focus on the law in the US and in Europe. Personally, the massive growth of filings in China and Korea (while ours has remained relatively stagnant - much to my irritation) would tend to indicate that we should perhaps be collaborating with those jurisdictions to a larger extent when developing new law.

Technical Disclosure - E-Commerce and Software

I have recently been dealing with a number of matters related to e-commerce platforms and associated software.

Many applicants are entrepreneurs who have conceived of a plan to achieve some or other efficiency using a customised e-commerce platform.

Such platforms are often defined by various "bolt on" modules that interact to produce the platform or application. This can make a patent attorney's task very difficult. There are usually two reasons for this. Firstly, the client has largely contracted the task out to some developer or development company. Secondly, neither the client nor the developer can easily explain the particular technical difficulties which have been overcome to achieve the product. As a result, we are often presented with a list of advantages or potential outcomes.

Such information is of little use to a patent attorney, apart from perhaps embellishing various technical features of the product. Our Patents Act and equivalents in most countries require that a patent specification must disclose at least one embodiment of the invention. That disclosure needs to be "sufficient". In other words, a reasonably skilled person (whose identification is no easy task) should be able to recreate that embodiment without having to employ inventive faculties.

Clearly, therefore, a list of outcomes or advantages is simply inadequate.

It follows that if you are such an entrepreneur, you need to ensure that some form of communication is set up between your developer and a patent attorney. This will ensure that the patent attorney can be availed of the proper technical information required to prepare an adequate patent specification.

The fact that you may be using a developer may in itself create complications, but that's for another post.