19 December 2012

China Leads Global Patent Filings

Here's an interesting article from SIPO.

I still have clients thinking that there's no point in filing Chinese patent applications. This perception is fast becoming outdated. China is continually improving its patent systems. Given that the life of a patent is 20 years, it is imperative that you consider filing in China.

Utility models are particularly popular amongst Chinese filers. They can be very useful for relatively simple mechanical devices.

I will try to write more about this rapidly evolving jurisdiction. In the meantime, don't forget to make China part of your IP Strategy. 

11 December 2012

Chinese-English Translation at the EPO

As I've mentioned before on this blog, China is rapidly becoming the largest filer of patent applications. This means that the body of prior art developing in China is significant.

The ability to carry out even just a machine translation will be most useful when searching. It appears that the EPO is taking steps to put such a tool into place. Here is the link.

26 November 2012

Kappos on Software Patents

Here's an excellent speech by David Kappos, the Director of the USPTO.

I particularly liked this excerpt: "Software patents, like all patents, are a form of innovation currency. They are also ecosystem enablers, and job creators. The innovation protected by software patents is highly integrated with hardware. All of it must remain eligible for protection. The current software patent “war” is hardly the first patent war—and unlikely to be the last in our nation’s patent history. Whenever breakthrough technologies come onto the scene, market players find themselves joined in the marketplace by new entrants. The first instinct of the breakthrough innovators is to bring patents into play. This is not only understandable, it is appropriate. Those who invest in breakthrough innovation have a right to expect others to respect their resultant IP. However, in the end, as history has shown time and time again, the players ultimately end up agreeing to pro-consumer solutions via licenses, cross-licenses or joint development agreements allowing core technologies to be shared."

Indeed. Of course I'm biased. But the fact remains that without at least one patent application (preferably more) in play, you're not going to get far in generating serious commercial interest in your new software product. And it remains baffling to me why Europe and the other software naysayers don't get on board with this. The future is software and preventing innovators from protecting it adequately by way of patents is short-sighted.

So why the pic? Don't forget that without some meaty algorithms you're going to have troubles...

22 November 2012

Inventor? - Write it Down

In all my years of practice, a consistent frustration has been engaging with inventors that are reluctant to write down their thoughts and ideas. It is very important to understand that the scope of protection afforded by a patent can only be found within that patent itself. In other words, neither a patent examiner nor a court is interested in material that is not within the specification, as filed, when attempting to interpret the patent.

Of course, in some jurisdictions, such as the US, a court may very well consider actions taken during the prosecution of a patent application as narrowing the scope of protection. However, those actions are reflected in documents filed during prosecution.

Patent attorneys can spend hours mulling over documents provided to them by inventors in an attempt to draft a decent patent specification. You don't want to have them mulling over hastily written telephone messages and trying to recall things that you may have told them during a meeting. You should be able to write down everything that you need to tell your patent attorney. You can then hand that material to him or her so that there is no misunderstanding as to what should appear in the patent specification. Apart from ensuring that your thoughts and ideas are properly described, your patent attorney’s time can be more efficiently spent and this can save you money.

It is far more effective for you to spend an hour crafting an email to your patent attorney then it is for you to phone and to ramble on for half an hour while he or she tries to scribble down bits and pieces of what you're saying. Invariably, half of it is lost and another quarter is misunderstood. The same applies to meetings. Don't arrive with just the ideas in your head, expecting to convey all of them to your patent attorney over the boardroom table. Rather spend a day or two putting together some decent written material, including sketches and photographs, if necessary. Also, remember that we can't file your prototype. Drawings and photographs are far better than prototypes. Personally, the first thing I do when I receive a prototype is to take photographs. If these are taken on a white background and altered into black and white images, they can be quite effectively used for a provisional patent application.

Remember that simple notes and sketches will often suffice provided they represent all the information that you have. Sketches can be very important especially when annotated. There's a lot of truth in that old saying "a picture tells a thousand words".

When preparing your notes and your sketches, you should try to think of other uses that your product might have. Also, think of possible variations in materials, dimensions and other characteristics. For example, you don't want to be limited to a particular material that might be replaced in a few years’ time. Of course, unless it's absolutely necessary, your patent attorney should not limit you in this way. However, in many jurisdictions, you might find it difficult to enforce your patent against an alleged infringer that is making use of characteristics not specifically described in the specification.

The world of patents revolves about information and how it is presented. Your likelihood of success is inextricably tied to your ability to communicate your invention in writing.

17 November 2012

Differing Examination Practices

One of the biggest challenges faced by a practitioner is to prepare founding patent documents that are suitable for applications filed in a number of different countries. For example, the rules concerning amendments of patent specifications can vary between major jurisdictions. European law sets out that an amendment must remain strictly within the scope of the specification as filed. This means that even a departure from the wording of the specification as filed can result in an application for amendment being rejected. Both Australia and the United States are more lenient. As a result, we have to prepare patent specifications with a view to what might happen during prosecution. That means we have to do our best to provide enough information in the specification in case we need to make an amendment. A typical response to an objection to a patent application by an examiner would involve some form of amendment of the claims, for example, to narrow the scope to avoid prior art. The strict application of the European patent office (EPO) to the exclusion of "new matter" is also followed by the Chinese patent office (SIPO). Inadequate disclosure could result in an application being ultimately rejected.

Another difference is the approach taken to divisional applications. In some cases, an applicant might wish to seek protection for a different aspect of the invention to that covered by the pending application. In a number of jurisdictions, including that of Europe, the United States and Australia, it is possible to file what we call a divisional application (in the US, a "continuation application"). However, again in Europe, the specification for the divisional must be contained wholly within the specification as filed in support of the pending application. The exclusion rule is as strict as that for amendment. In the United States and in Australia, it is possible to file divisional applications that introduce new matter. If that new matter is covered by one or more claims then those claims will have a priority date that is the date of filing the divisional applications. In the United States, such an application is referred to as a "continuation-in-part application".

It is important to bear in mind that an international application is effectively an application in all the countries automatically designated by the international application. It follows that the specification filed with the international application should, as far as possible, comply with the "best practice" requirements of those countries that take the strictest approach. Here is a link to a list of countries that are members of the Patent Cooperation Treaty (PCT) in terms of which an international application is filed: http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf.

So the lesson is to provide your patent attorney with as much information as possible as early as possible. You must always bear in mind the golden rule that it is possible to remove material after the application is filed but it is not possible to add material of any significance after filing in the major jurisdictions.

15 November 2012

More Moves Towards the Elusive Harmonization

For those of you who wonder why we can't just file an application for a worldwide patent, I guess the time will eventually come. Here's a snippet from the European Patent Office: http://www.epo.org/news-issues/news/2012/20121108a.html. As you can see, the wheel is turning slowly.
This will of course change the landscape significantly for us patent practitioners. Personally, however, I am happy to continue working with my local clients. I doubt that it will ever be possible to automate the drafting of an effective patent specification. That said, given Europe's other problems, don't hold your breath waiting for the world patent.

11 November 2012

What to take to the meeting?

You have finally decided to visit a patent attorney. But what should you take to the meeting?

It's important that you do your best to explain the state of the art. You should have been doing quite a bit of research yourself. If not, here's a link to a post with some searching tips.

This is important, because it can help your patent attorney to distinguish your invention properly. Not only that, but the advice that you receive should be directed to the unique features of your invention. Investigate novelty searching with your patent attorney. The more you know about the prior art before embarking, the better.

You need to bear in mind that patent attorneys need to define and describe the invention in a document consisting of A4 pages. It can be very useful to have a set of drawings as a starting point. The drawings don't need to be technical. They can simply be hand sketches. The patent documents must contain a description of the invention that is sufficient for a person of ordinary skill in the field to understand how to replicate an example of the invention. Drawings are a good place to start.

The golden rule is to put as much information as possible into the specification. It is generally not possible to add material at a later stage. So you will need to make sure that your patent attorney is given all the information that you have at your disposal. Rather prepare too much material as opposed to too little. Let your patent attorney decide what to omit or include.

You need to make sure that the inventor(s) is correctly identified. This is not a matter of choice. The identity of the inventor is a question of fact. Failure to identify the inventor(s) can be a ground for revoking a granted patent. So it's important that you provide the patent attorney with accurate details of the inventor. It is better to be conservative here. Anyone who has contributed to the invention in some material way should be named as an inventor. You should make sure that there is an agreement as to the identity of the person or legal entity that is to own the intellectual property associated with the invention if the owner(s) is not the inventor(s). In such a case, your patent attorney will need the inventor(s) to execute an assignment form.

The question of ownership can create real problems, especially once the invention starts to generate cash flow. I strongly recommend that a company be formed when there are two or more inventors involved. The inventors can then assign their rights as inventors to the company and can hold shares in the company.

And, finally, never forget the importance of confidentiality until such time as the patent application has actually been filed.

13 October 2012

Consider further searching before International Application

All practitioners should strenuously encourage searching before a patent application is filed. That goes without saying. However, filing an International Application can be expensive. Not only that, but an International Search Report (ISR) can found a decision for investment and for entering national phase all over the world.

This is usually the stage where the amounts of money involved are significant. So, it's at this point where things can go badly wrong. "Hidden" prior art that would affect the applicant's ability to achieve registration will usually only reveal itself at least 18 months after the ISR is received. By that time, the applicant may have spent tens of thousands of dollars paying for national phase entry. Here's a flowchart for International Applications. Not only that, but investors may have committed or may be thinking of committing significant sums of money to development and commercialisation.

Sadly, the amount of effort put in by a patent examiner with IP Australia does not  offset the risk taken by the applicant. This is not the fault of the examiner or IP Australia. As examiners, they would treat each matter without consideration of the circumstances of the applicant. It is really up to us practitioners to ensure that the applicant is made aware of this imbalance and to suggest appropriate measures. Of course, further searching will cost more. However, it is often the case that the extra cost will justify the added security.

There's really no excuse. There are many specialised service providers capable of performing thorough patent searches.

28 September 2012

Happy Birthday, David!

Happy birthday, David Ngunaitponi (Unaipon) (28 September 1872 – 7 February 1967)

Today, I pay homage to a great Australian inventor.

What a fascinating piece of history. Sadly many great ideas fail to make it past the provisional patent application stage. David's story is not uncommon, but that does not lessen the poignancy.

I will leave you to read the link above to the Wikipedia article.

A truly great man. Pause for a moment to consider the strength of character that it must have taken to succeed as an aboriginal in those days.

I'm sorry I was too late for him to knock on my door. Rest in glory, David.

19 September 2012

The Value of Searching

It is good practice to carry out a patent search before erecting a patent portfolio. These days patent attorneys routinely advise clients to carry out a patent search before filing a patent application. Usually the reason given is that such patent searches can anticipate any problems clients may encounter during prosecution.

 But a number of other benefits of a patent search should also be considered.

 Trend analysis - Are you moving in the wrong direction?

The first of these can be called "trend analysis". For example, I have been called upon to investigate the value of a patent for a continuously variable transmission (CVT). The patent covered certain principles governing the operation of the CVT. The search revealed a large number of patents owned by various vehicle manufactures. I quickly ascertained that the principles described in the patent in question had long since been abandoned by these manufactures. The patents even described certain problems associated with those principles. Clearly, the patent in question had very little value because the potential investors would more than likely be aware of those problems.

So you can save yourself a lot of time and disappointment by using patents to understand the trends in your field of endeavour.

Getting your patent strategy right

The second of these has to do with your patent strategy. Your patent attorney will do his or her best to cover all the principles associated with your invention. A patent search can provide a guide. It can identify those aspects of your invention that have already been protected. That allows your patent attorney to focus effort on those aspects of your invention that can be protected. It also allows you to identify those aspects that make your invention unique at an early stage.

Attracting Investors

The third of these has to do with investment. Most patent filers are looking for investors. Most investors carry out some form of due diligence before making a financial commitment.

A professionally executed search as part of an investment proposal will help to convince the investor that the product is indeed unique. Not only that, it presents a professional approach and indicates that you have an understanding of the importance of the role played by intellectual property.

When to search?

The search should be carried out as soon as possible. In fact, if you are considering a new concept with a view to obtaining patent protection,  a search should be the first thing you do. In fact, even if you are just developing a product, a patent search can be very useful. But that's for another post.

26 August 2012

Apple Gets $1.05 Billion Verdict

Here's a good article. And here is Patently-O's report.

I won't comment since I haven't read the patents and the decisions. Too busy keeping track of things this side of the Pacific. Those two articles should put you in the picture.

At this stage, I'm not sure whether to feel guilty about having my Samsung (r) phone. As some of my closer friends know, I'm no fan of Apple (r). But that's because of their corporate personality rather than their products or Intellectual Property. I also really like the Android (r) operating system.

As for the judgement - I have been practising for 25 years and I still find aspects of the law difficult to grasp, particularly since it is constantly changing and is full of nuances and subtleties. Indeed, I often find US practice illogical and a bit baffling. So I am extremely skeptical of the effectiveness of a jury in cases like this. Could there be a bit of bias going on? A Korean upstart against an American darling? But that's unqualified, so I won't say more.

I do look forward to following this story. And no, I won't be switching to Apple (r). Perhaps Google (r) will release a phone soon with all that Motorola (r) IP that it purchased. That would be cool.

25 August 2012

Computerised Calendaring not Proper Subject Matter

We often get enquiries relating to software products that perform well-known functions.

Here's another case from the US in which such a product was found to lack subject matter. This is thanks to Dennis Crouch's Patently-O blog, and the link is here.

For those of you interested in the claim that was rejected:

A device for automatically delivering professional services to a client comprising:
a computer;
a database containing a plurality of client reminders, each of the client reminders comprising a date field having a value attributed thereto;
software executing on said computer for automatically querying said database by the values attributed to each client reminder date field to retrieve a client reminder;
software executing on said computer for automatically generating a client response form based on the retrieved client reminder;
a communication link between said computer and the Internet;
software executing on said computer for automatically transmitting the client response form to the client through said communication link; and,
software executing on said computer for automatically receiving a reply to the response form from the client through said communication link.

As you can see, it's no longer enough just to have a computer and the Internet involved. It is important that the computer/s actually does something significant, like execute code representing an algorithm that is essential to the invention and cannot be performed practically with a pen and paper.

22 August 2012

Patent First, Prototype Later

Here's a fascinating article - http://mobile.businessweek.com/articles/2012-08-09/startups-new-creed-patent-first-prototype-later.

Indeed, if you have a good product, the patent application/s may very well end up bringing you more money than the product itself. Even if you use a patent attorney, it's a whole lot cheaper to file a patent application than it is to build a prototype that is ready for production.

Also, the longer you wait before filing, the more risk there is of information "leakage" prior to filing. That could be devastating to a patent filing program.

21 August 2012

Google Improves Patent Search Engine

I often encourage my clients to carry out some searching of their own. Not only can this help them to understand what a patent looks like, but it can be an empowering experience.

Of course, searching is a task best left to a professional, but there is no reason you can't have a dig around yourself. You can then approach your patent attorney with some understanding of what is happening in your field of endeavour. In some cases, you may even save yourself a significant sum of money, if your search has been thorough.

Google (r) has recently upgraded their search engine. You can read more about it here. When you open a page containing details of a patent, there is now a button labelled "Prior Art Finder" that allows you to search multiple sources for related content that existed at the time the application for the patent was filed.

One of the sources is the European patent office which stores the details of over 70 million patents. At this stage, the Google Patent Search is not a viable alternative to Espacenet, but it is becoming an excellent place to start your adventure. For more on searching read this post.

15 August 2012

High Court Rules Against Big Tobacco

Well, it looks as if the High Court has ruled in favour of the Government. Here's the decision. There are no reasons given at this stage.

It appears that the tobacco companies were relying on the argument that it was unconstitutional for the government to appropriate intellectual property. However, the High Court has found that there was no acquisition of intellectual property.

It is always difficult to find decent articles when it comes to controversial, high profile decisions. But here's one from the ABC website.

I will keep an eye out for the reasons.

11 August 2012

What is a Patent Anyway?

This is a surprisingly tricky question to answer. But in my view the best way of doing so is to go back to the reasoning behind the patent systems of the world.

An effective patent system is based on a quid pro quo. The governments of most countries agree to provide an inventor/s with a monopoly in the invention for a certain period of time. In return, the inventor/s agrees to provide enough information to the public to permit a skilled person to put a working embodiment of the invention into practice once the patent expires.

Some form of instrument is required to facilitate the quid pro quo. That instrument is a written document and is called a patent. Or, to use the jargon, a Letters Patent.

The government must carry out some form of investigation to assess whether or not it should enter into such an agreement with the inventor/s. A patent can effectively prevent the entire population of a country from exploiting the invention. It follows that the government, in the form of its patent office, carries out an examination, on behalf of its public, of the application for the patent to assess whether or not the public should be so burdened. This examination is an essential part of establishing the quid pro quo and should therefore be carried out diligently and professionally on behalf of the public and the inventor/s.  In Australia, the patent office is known as IP Australia.

10 July 2012

PCT - 3rd Party Observations

WIPO has decided to let third parties submit observations electronically through Patentscope (reg). These must be filed within 28 months of the priority date. For an overview of the PCT have a look here.

The observations will be limited to novelty and inventive step.

I think that this is a great way to head off potential problems. The PCT is the gateway to multiple foreign filings. Jamming up a competitor at an early stage could save a fortune in litigation fees. I recommend a regular check on published PCT applications for those rolling out or developing technologies across multiple jurisdictions.

Timing is an issue. PCT applications are published about 18 months after the priority date. So there's about a 10 month window to submit the observations.

05 July 2012

Not so fast unitary patent....

The tweeters at Managing Intellectual Property have just advised me that the vote on the unitary patent has just been postponed. So my post was premature...apologies.

The postponement has to do with Articles 6 to 8 that contain provisions on direct and indirect infringement of patent rights. They allow the European Court of Justice (ECJ) to function as an appeals court within the scope of the patent law. Here's a link to the horse's mouth, as it were.

A Sort of European Agreement

It seems like decades. Finally, the members of the European Union today agreed to create a single patent system.

Intellectual Property Watch  reports that the patent system will cover 25 EU member states. Paris, Munich and London will share a unified patent court. Spain and Italy chose not to join the agreement in protest of the absence of their languages. This is a bit precious. On the other hand, the way those two countries are going at the moment...

Hopefully, this will see a reduction in the massive fees that slug patent applicants. The agreement is available here.

03 July 2012

International IP Mediation and Arbitration

I am delighted to announce that I will be moderating a seminar presented by a panel of experts. The seminar is part of the American Bar Association's (ABA) annual meeting.

This year it's been held in Chicago from 2 August 2012 to 7 August 2012. I can't wait to visit that magnificent city again.

My seminar deals with the rapidly growing field of arbitration and mediation. The full brochure can be obtained here. The seminar in on Friday, 3 August 2012, and is entitled "WIPO Mediation and Arbitration - An Alternative to Global Litigation"

I think that the seminar is particularly relevant given the very public patent wars going on between Apple, Samsung, Google and others.

I very much look forward to working with the speakers who are incredibly well qualified.

More to follow....

18 June 2012

Distinction - The Keystone to Successful Trade Mark Registration

I often receive requests for quotes to file trade mark applications together with a copy of the trade mark in question. In many cases, filing the application would more than likely raise an objection that the trade mark in question was not not capable of distinguishing the applicant's goods/services from those of his or her competitors.

According to our Trade Marks Practice Manual, the "primary consideration under the Act is the extent to which the trade mark is inherently adapted to distinguish". Section 41 of the Act provides that if a trade mark is not capable of distinguishing the applicant's goods and services from those of others, the trade mark must be rejected.

There are circumstances that can result in a trade mark being registrable if, at first, it is judged not capable of being distinctive. But I won't go into that in this post. I want to set out some basic guideline here for those readers who are considering protection for trade marks that have not been used to any significant extent in Australia.

We have to go back to the Act to understand this concept of distinctiveness. Section 17 defines a trade mark as "a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person".

In short, a trade mark must serve as a badge that consistently identifies the origin of the goods/service in connection with which the trade mark is used. One or more words that might reasonably be required by a competitor to describe similar goods/service cannot be such a badge.

I'm going to be lazy here and simply paste in the relevant section of Clark Equipment Co v Registrar of Trade Marks [(1964) 111 CLR 51, in which Kitto J said:

"In Registrar of Trade Marks v W. and G. Du Cros Ltd. (1913) AC 624 at 634, 635) Lord Parker of Waddington having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of  R. J. Lea, Ltd. (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

I have underlined the important part of the above excerpt. You should take the time to study and understand the above passage.

In short, this means that your trade mark should in no way describe your product or service.

Another way of looking at the test has been nicely set out by Kitto J in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537, who summarised the appropriate inquiry as follows:

"The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods."

So, when selecting a trade mark, you should always ask yourself the above question.

There are a number of advantages associated with getting this right:

  1. The trade mark should proceed to registration without too much fuss - saving time and money.
  2. There is a reduced chance of infringing trade mark rights of a third party
  3. Domain name registration is easier
  4. Distinctiveness can enhance recall - an important aspect of effective marketing

13 June 2012

US Patent System Dysfunctional?

Here's an interesting article I came across recently. Apparently the patent system is "dysfunctional" according to this judge.

He makes a good point. The types of patents that are being filed in this field are often really difficult to understand and are often granted for inventions that are dubious at best. In my experience, it can be much easier to get a patent for a software/electronic type invention than for a mechanical invention. The reason is simply that there is a huge amount of prior art easily available for use against mechanical inventions.

On the other hand, it can be extremely difficult to locate and assess software/electronics prior art. If you think this is inaccurate, just go to Google Patents and run a random keyword search, like "Database". You'll have a headache after reading 3 patents.

So my sympathies do lie, to some extent with patent examiners. We should also not forget that patent examiners do not get paid a fortune and are usually not as seasoned as the patent attorneys representing these serial patent filers.

What irks me are judges such as Robart (see article) that lambast companies like Microsoft and Motorola for doing what any company should do with whatever tools it has available. These people should be focussing on establishing better search and examination protocols for examiners, instead of lashing out at companies. After all, Microsoft, Motorolla, Apple and Google etc. have a duty to their employees and shareholders. It is not incumbent on them to improve the patent system.

Just my two cents....

12 June 2012

New Penalties for Counterfeiting

The Intellectual Property Laws Amendment Act 2012 provides some new penalties for counterfeiting and stronger enforcement powers.

I like that that the maximum penalty for trade mark infringement will be 5 years imprisonment.

Here's the media release from the Australian Government.

17 May 2012

IP Australia - Official Fee Increases

On 1 July 2012, IP Australia will increase the majority of its official fees. Here's the link: http://www.ipaustralia.gov.au/about-us/news-and-media/latest-news-listing/?doc=fee-review-update&view=Detail

The first renewal fee will be payable by the fourth anniversary of the filing date instead of the fifth. This applies to all patent applications filed on or after 1 July 2008.

Application fees will increase on 1 October 2012.

30 April 2012

Pre-Empting the Raising of the Bar

As I have mentioned, most of the provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 will come into effect on 15 April 2013.

The new requirements will apply to all new applications, including divisionals, filed on or after 15 April 2013. They will also apply to applications that are pending on that date for which examination requests have not been filed. It follows that you should act before that date if you would like your application to be subject to the current, more lenient requirements.

Actions could include the following:

  • Entering national phase and requesting examination before the deadline
  • Filing a standard patent application and requesting examination before the deadline
  • Filing a convention standard patent application and requesting examination before the deadline
  • Filing one or more divisional applications and requesting examination before the deadline
  • Requesting examination before the deadline

In some cases, it may even be advisable to file a standard patent application instead of a provisional patent application and request examination before the deadline.

The new Act introduces a number of important changes. Thank you to IPTA for providing the following summary:

  • Removal of the territorial limitation for common general knowledge (raising the "inventive step bar")
  • Removal of the words "ascertained, understood and regarded as relevant" from s7(3) (raising the "inventive step bar since widens the examiner's discretion to combine documents)
  • Specification must disclose a "specific, substantial and credible" use for the invention
  • Increased "sufficiency" of description requirement
  • Replacement of "fair basis" requirement with "support" requirement (raises specification bar)
  • Expansion of privilege provisions to include foreign attorneys, and to extend to communications with third parties in certain instances
  • Removal of "benefit of the doubt" standard and introduction of "balance of probability" standard for all grounds considered during examination, re-examination and prosecution
  • Examination to extend to utility and usefulness
  • Omnibus claims no longer allowed
  • Commissioner to have discretion to refuse application to defer acceptance
  • Modified examination no longer available
  • Entitlement issues can be corrected after grant of a patent
  • Withdrawal of requirement to request that earlier withdrawn, abandoned or refused applications be disregarded so that priority can be claimed from a later application
  • The grace period provision will be amended to extend to publication of information, rather than publication of the invention, and the grace period will extend to secret use
  • No longer possible to add matter to specifications after filing, except when correcting a clerical error or obvious mistake
  • Commissioner's consent required to withdraw an opposed application
  • Deadline for filing all divisionals and to convert previously filed applications to divisionals will be 3 months from the date of advertisement of acceptance of the parent

The new Regulations will probably be published in June or July this year. I will post when that happens.

28 April 2012

Innovation, Provisional - Both?

The innovation patent system allows for the protection of inventions that would perhaps not qualify for the protection afforded by a standard patent. It is quite a remarkable tool for a number of reasons. These include fast grant without substantive examination and the ability to file divisional applications for innovation patents with the benefit of the filing date of the parent standard application. They can be used as a last resort when prosecution becomes difficult and for efficient enforcement. Here are number of posts on innovation patents.

But as with most things in life, timing is critical. You might think that your "simple" invention is ideal for an innovation patent. That doesn't necessarily mean that you should apply for one straight away. This is particularly so if you are still maintaining confidentiality. Why? It has all to do with the manner in which innovation patents are regulated.

Once you have filed an application for an innovation patent, it is not possible to file an application for a standard patent based on the innovation patent application. That means that upgrading the protection to 20 years from the filing date would not be available. This can be a problem if you make improvements or developments that you feel may support a standard patent.

A way of addressing this would be to file both a provisional and an innovation patent application at the same time. Such an approach is often useful, especially when you believe that it may be necessary to enforce your rights soon after you enter the market. However, filing an application for an innovation patent can still be unduly prejudicial to your rights.

As little as 3 to 4 weeks after your application for the innovation patent is filed, it will be granted. This might sound like a good thing. But with that grant comes publication and the novelty of your invention is destroyed. See here for novelty and other requirements. This removes a number of options.

It is possible to file further applications or an international application with the benefit of the date of filing the first application for a patent in any countries that are members of the Paris Convention for the Protection of Industrial Property. It follows that you can file first in, say, Australia. Then you can file in any of the member countries within 12 months and the novelty of your invention will be tested in those countries as at the Australian filing date. It can be very expensive to file in a number of different countries, so this is a way of delaying those costs.

However, you may realise that you need more time to develop the invention and would like to withdraw the application and file a new application. That resets the 12 month deadline, giving you more time. This option would not be available had you filed for and been granted an innovation patent. The early publication of the innovation patent would destroy the novelty and any patent granted on a subsequent application would be invalid.

When should an application for an innovation patent be filed?

Of course, many decisions concerning patent strategy are budget-driven. Innovation patents are granted quickly and only need to be examined if certification is required for enforcement. It follows that an application for an innovation patent would be justified if your budget is tight and you don't envisage further developments and improvements.

However, I do recommend that you consider filing an application for a standard patent at the same time. This need not add significantly to the cost, since the specification for the innovation patent can be used. It should just be a matter of the official fees and administrative charges levied by your patent attorney.

A pending application for a standard patent will allow you to file any number of divisional applications for innovation patents. It can take up to four years for a standard patent to be granted. During that time divisional applications for innovation patents can be used to achieve early enforcement.

On the other hand, if you only have an innovation patent, then there is a limitation on the use of the divisionals. In particular, it is only possible to file a divisional application in the period that commences on the date that the examination of the parent begins and finishes 1 month after the date on which certification of the parent is advertised. For more information see this link.

It may very well be the case that the only real value of the innovation patent is the ability to use it to achieve early enforcement. I am sure that this is not what the drafters of the legislation intended.

21 April 2012

Entrepreneur Wealth Cycle

A message for my entrepreneurial clients. Don't forget the basics!

Here's a nice little article from IP Frontline to remind you: http://www.ipfrontline.com/depts/article.aspx?id=26792&deptid=2

I like the bit about enjoying your business more. That's what it's all about.

20 April 2012

Jam not used on Clothing

Case: Kerrie Boylett v Jan Scherrer [2012] ATMO 30 (19 March 2012)

Non-use proceedings were instituted against the registered trade mark shown on the left. Some of the goods in respect of which the trade mark was registered was clothing.

In an attempt to show use as a trade mark in respect of clothing, the owner submitted this image:

However, the Delegate, citing CSL Ltd v Hong Kong CSL Ltd [2008] ATMO 23, said that the expression "JAM presents" showed that the use of the JAM trade mark was to promote a music festival rather than clothing.

19 April 2012

A Note on Modified Patent Examination

Are you a foreign associate interested in modified examination? Here are a few things that you should bear in mind.

It is important to bear in mind that a request for modified examination does not remove the examiner's duty to examine the application. Rather, it results in what the examiner's manual refers to as a "truncated search". This means that a report is issued much quicker since the examiner does not carry out a full search. Also, there are no s40 considerations, which relate to intrinsic issues, such as sufficiency of description, proper invention definition and the requisite "fair basis" relationship between the claims and the description.

It follows that the examination is limited, in terms of s48, to subject matter, novelty and inventive step.

Potentially, the biggest disadvantage with modified examination is that the Australian patent specification must be amended to bring it into conformity with the specification of the allowed, corresponding patent. As a result, it will not be possible to amend the Australian specification for compliance with Australian best practice.

Some amendments that I usually make for best practice compliance are:

  1. Paraphrasing the claims in a summary portion to ensure compliance with our fair basis requirements
  2. Adding multiple dependencies (note that multiple dependencies do not add to the claim count)
  3. Adding omnibus claims
  4. Adding a defining paragraph for "comprise" and its derivatives to ensure that it is not given a narrow meaning

18 April 2012

The One-Stop Shop - Our Nemesis?

My profession is stirring with tales of doom. There are a few organisations out there, for example, Innovia and Applied Patents Inc who are offering low cost national phase entry services. Having just seen a quote, I can certainly see why the profession is nervous.

Here is a flowchart of the international (PCT) application process. Here's a link to my web page explaining the process. We practitioners often file the International Application within 12 months of filing a provisional patent application. Here's another flowchart in case you're interested. In other words, there is usually an established relationship with a client at the time of filing the International Application.

WIPO, via their Patentscope portal, publishes all International Applications. It follows that details of the Applicant are readily available to any member of the public. For these organisations, it's a simple matter of scraping the applicant details and making contact.

Entering national phase is largely procedural. It follows that there is no reason why an entrepreneurial spirit should not be able to build a profitable business with a well built system.

All good? Well, not quite.

There has been much talk of harmonisation. But the reality is that most patent jurisdictions guard their requirements and specific procedures quite jealously. In fact, to enter national phase in most countries, an address-for-service is required in that country. This is an opinion piece and I am not privy to the inner workings of these organisations. However, it must be the case that these organisations have selected certain firms to represent their clients in the various jurisdictions.

It would seem to follow that there should be little reason why they should be cheaper than us. It is important to bear in mind, though, that achieving patent protection is a process. The initial steps of national phase entry are indeed mainly procedural. However, there remains the prosecution. These are the stages where the patent authorities issue examination reports (office actions for some countries). It is at this point that practitioners are tested. It is here when we draw upon our knowledge of the client's unique situation and needs. This knowledge is often gleaned over a period of 3 to 4 years since that first meeting when the invention was all that mattered.

That knowledge is relevant because we can draw on it to argue our clients' case before the examiner. Not only that, but we are familiar with the patent specification and its often subtle nuances, strengths and weaknesses. This is important because failure to convince an examiner will elicit a further report or office action, easily doubling the cost of the prosecution. Alternatively, a practitioner looking for quick patent allowance could have the client ending up with a patent that is too narrow to be effective.

Once the matter is transferred to one of these organisations, that knowledge and the leverage it represents is lost. The file will arrive on an allocated desk and the specification and various communications will be foreign to whoever has to deal with it. The ability to hone in on various aspects or simply to pick up the phone and communicate efficiently with the client will be lost.

The prosecution stages usually cost clients significantly more than the national phase entry itself. That's because a professional service is required, at professional rates. I can only assume that this is the bait used by these organisations to achieve the required business relationship with the firms in the various jurisdictions.

If you are considering transferring your International Application to one of these organisations, you should ask the following questions:

  1. What firm will be handling the matter for you in the various countries?
  2. What is the hourly rate of that firm?
  3. What sort of costs can be expected during the 2 years following national phase entry?
  4. Who is your main contact at one of these organisations and what experience and qualifications does he or she have?
  5. Will the organisation be transparent with its downstream charges - for example, will it provide copies of invoices generated by the various firms?

Never forget that each patent application is, by its very nature, unique. At the end of the day, some practitioner is going to be sitting at a desk scratching his or her head over your application. You will want to know as much as possible about that person, since he or she will determine, to a large extent, what sort of protection your patent, if granted, will provide. In other words, the value of your patent can depend on the quality of work generated by that person.

17 April 2012

Raising the Bar Act Passed into Law

The Intellectual Property Laws Amendment (Raising the Bar) Act passed into law on 15 April 2012. Here is the link from IP Australia - http://www.ipaustralia.gov.au/about-us/what-we-do/ip-reforms/

I'll do my best to provide useful snippets of this over the coming months.

Most of the provisions in the Act come into effect on 15 April 2013. However, exemptions from patent infringement for researchers and regulatory use apply immediately - http://www.ipaustralia.gov.au/about-us/news-and-media/latest-news-listing/?doc=researchers-news&view=Detail.

Twitter Enforces its Brand

Case: Twitter Inc. v Jason Boyce [2012] ATMO 31 (23 March 2012)

The image on the left is an attempt by Jason Boyce at registration. "Twitter" is an internationally renowned brand. But Twitter Inc. didn't have to go down that road. It has registered trade mark 1206941 for TWITTER.

This one got all my cynical juices flowing. Fortunately, the Delegate upheld Twitter's opposition and the image will not see registration.

16 April 2012

The Facebook v Yahoo Saga

Some of my readers might know that Yahoo has sued Facebook for patent infringement. Here's an interesting article from the excellent LoTempio Law Blog. It discusses Facebook's answer that Yahoo is infringing 10 of Facebook's patents.

I found this article particularly useful since it has links to the ten patents (on Google Patents) that are the subject of Facebook's counterclaim. Those of you wondering what an effective software patent in the social media field might look like, should find them interesting reading.

While software patents are traditionally quite controversial, we should not lose sight of the fact that they can be extremely valuable. I wonder what FB would pay for a key patent right now?

13 April 2012

AusPat Hints and Tips

Here's a useful note from AusPat on searching through their records. 

Australia's patent search system is becoming quite user-friendly and is now an important tool for us patent attorneys. I recall the days of having to go down to the local branch of IP Australia to carry out manual searches on microfiche readers. Not only was this time consuming, but it also created complications for those of us distant from the local branches. 

AusPat also has a subscription service that anyone can use to be notified of any changes in the patent register. This is very helpful and any tool that helps us to avoid missing critical dates is to be welcomed.

12 April 2012

Great White Shark Protects its Brand

Federal Court:
Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 3) [2010] FCA 1162

Full Federal Court:
Paul’s Retail Pty Ltd v Sporte Leisure Pty Ltd [2012] FCAFC 51

  • S123 of the Trade Marks Act sets out that a person does not infringe a trade mark if the trade mark has been applied by or with the consent of the registered owner of the trade mark.
  • Infringement takes place when the alleged infringing use is use as a trade mark. 
  • It was doubted that an infringer could claim that "use as a trade mark" had not taken place because the trade mark had been applied with the consent of the owner, even though distribution resulted in breach of the license agreement because of non-compliance with territorial provisions. A final opinion was not expressed.
  • In any event, application in terms of a license agreement so breached was found to be without the consent of the registered owner.

USPTO Offers IP Awareness Tool

I came across this interesting tool that is being offered by the US Patent and Trade Mark Office. It appears quite substantial and should be useful. The US market is usually a target for my clients, so you should give it a go and see how you stack up.

In my 12 years of practice here in Australia, I have found that many businesses are woefully ill-informed when it comes to Intellectual Property. This is dangerous, particularly when taking on foreign markets such as those of the US.

11 April 2012

Software - Don't forget the Algorithms

Gene Quinn,  the founder of that excellent US patent blog, IPWatchdog posted this article recently. It's well worth a read for clients working in the software space and for practitioners that prepare specifications covering software.

I will jump to the "lessons". It appears that the description should set out how a general purpose computer is transformed into a "specific use computer". This means, to quote the author, "...applications should include an abundance of disclosure, diagrams and images providing as much tangible description of everything you mention in the claims, particularly if you are going to rely on means-plus-function claiming as is frequently done in the computer software area." This includes algorithms. It is the algorithms that will perform the necessary transformation of the computer. Without them, a judge or examiner may fail to see how the computer is transformed, even thought that would be clear to a person "skilled in the art", the intended addressee of the patent.

All of this extra work seems to be required to convince US judges and, yes, AU examiners that exploitation of the invention results in the required transformation of the computer.

In my recent experience, the attitude of AU examiners has been simply to object based on lack of subject matter without careful consideration of our landmark case: National Research Development Corporation v Commissioner of Patents (" NRDC  case") [1959] HCA 67. In a sense, this attitude has not been helped by those applicants who have attempted to "push the envelope" in cases such as: Grant v Commissioner of Patents [2006] FCAFC 120 (18 July 2006)Peter Szabo and Associates Pty Ltd [2005] APO 24 (5 May 2005) and the almost ridiculous attempt in Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010). I have commented on these and others here. Examiners invariably refer to the latest case, disregarding hierarchical precedent. Where the latest case is something like the Invention Pathways case, the applicant can be prejudiced.

Unfortunately, this all ends up costing more for clients. In fact, it would not be unusual for a patent application for a software product to cost up to twice as much as a patent application for even a complex mechanical product.

04 April 2012

Unsolicited IP Services

A timely warning from IPAustralia.

This kind of thing has been going on for a while, but seems to have developed more momentum lately.

Please remember to contact your patent attorney if you receive an offer of IP services before spending any money. Such an offer will invariably be a scam of some sort.

The above link is very useful because it sets out a list of companies known to send offers of IP services. But just because the company is not listed, don't think it's not some sort of scam.

03 April 2012

CSIRO's WI-FI Patent

Here's a good news snippet from IP Australia.

Our CSIRO is having some success in the US with a recent $220 million settlement.

29 March 2012

APO - Determination of Allowable Amendments

Case: Richard Thomas Ross as trustee for Clear Focus Australia Trust [2012] APO 39

Determination of Allowable Amendments After Patent Acceptance

  1. After acceptance, an amendment must pass three tests to be allowable. As a result of the amendment: (a) it must not claim matter not in substance disclosed in the filed specification; (b) a claim of the specification must not fall outside the scope of the claims before amendment; (c) the specification must comply with s 40(2) and (3)
  2. For (a), the test for whether an amended claim would claim matter not in substance disclosed in the specification  as filed (and thus not be allowable) is essentially the same "real and reasonably clear" test for whether the claims are fairly based on the matter described in the specification
  3. For (b), nothing should become an infringement of the patent which would not have been an infringement of the patent before the amendment (AMP Incorporated v Commissioner of Patents (1974) 3 ALR 283)

28 March 2012

Examination Reports - The Cost of Inadequacy

I recently received an examination report from IP Australia. The Examiner made a few basic errors. Basic, because those errors could easily have been avoided by reference to the Examiner's Manual.

Why is this a big deal? Well, clients pay for our time. Now I am forced to spend unnecessary time pointing out the Examiner's errors to him. While you may point out that this is all grist for the mill, I still don't like having to charge clients for work that is unnecessary.

Another type of examination report that I really don't like goes something like this: "Claim 1 lacks novelty and inventive step in light of at least the following documents:..." followed by a list of citations. How am I supposed to respond fully to that? Since I cannot argue specific points, I have to make use of the shotgun approach. Again, this incurs unnecessary expenses. I have on occasion argued that the report is inadequate. But not only does this incur a charge, it also wastes time.

Generally, I find IP Australia an excellent government organisation. However, there have been complaints about  excessive costs and lengthy delays. Well-considered and complete examination reports would go a long way to alleviating these problems.

27 March 2012

APO - Reflector Lacks Inventive Step

Case: Paul Andrew Cronk [2012] APO 28


  1. Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12
  2. Aktiebolaget Hassle v Alpharpharm Pty Ltd [2002] HCA 59
  3. Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19


  1. It is clear that any potential solution to a problem will not be obvious unless it would have been a matter of routine to try that solution, but with the significant caveat that there must be an expectation that the potential solution "might well" solve the problem. It is not necessary that success is guaranteed.
  2. Commercial success can never of itself be decisive of inventiveness but it is a material matter, the weight of which must be determined by reference to all the surrounding circumstances.
  3. Cannot draw inferences from evidence of an inventor who was not addressing the same problem.

23 March 2012

Tivo v Vivo

Case - Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252

  1. Whether "Vivo" (see pic) deceptively similar to word trade mark TIVO. 
  2. Honest Concurrent Use
  3. Acquisition of reputation sufficient for deception or confusion
  4. Infringement
  5. Non-use

22 March 2012

PCT Applications - Foreign Requirements

It is worthwhile remembering that prosecution during the international phase of a PCT application is effectively national prosecution of the application in countries designated by the PCT application.

This means that amendments made in an attempt to achieve a "clear" written opinion can subsequently be rejected during national phase in countries such as China and in Europe. Those jurisdictions have strict prohibitions on the introduction of new material by amendment.

For example, the PCT application may have a broad generic description of an aspect of an invention while the description of the preferred embodiments may have a specific description of an embodiment of that aspect. In such a case, an amendment introducing an aspect that is broader than the embodiment but narrower than the broad description may lead to a clear report here, but may very well be rejected when the application is examined by the Chinese and European authorities.

Thus, the specification filed with the PCT application should include as much description of alternatives as possible. Use of generic language of varying scope is important. The attitude of your patent attorney should be one of anticipating and expecting the need for amendments two to four years after the PCT application is filed.

10 February 2012

Patent Troll Struck Down

Here's a story from Wired that readers might find interesting. The anti-software patent crowd will probably be cooing with delight, not to mention those suffering from troll-paranoia. Of course, that's not to say that there is anything wrong with the decision. I am sure a Texas Jury would have no problems interpreting a software patent...

But the reason that this article captured my attention was that it so clearly illustrates how inaccurate public perception can be. The article is entitled "Texas Jury Strikes Down Patent Troll's Claim to Own the Interactive Web". But one of the independent claims defining the invention reads as follows:

 A method for running an application program in a computer network environment, comprising:
 providing at least one client workstation and one network server coupled to said network environment, wherein said network environment is a distributed hypermedia environment;
executing, at said client workstation, a browser application, that parses a first distributed hypermedia document to identify text formats included in said distributed hypermedia document and for responding to predetermined text formats to initiate processing specified by said text formats; utilizing said browser to display, on said client workstation, at least a portion of a first hypermedia document received over said network from said server, wherein the portion of said first hypermedia document is displayed within a first browser-controlled window on said client workstation, wherein said first distributed hypermedia document includes an embed text format, located at a first location in said first distributed hypermedia document, that specifies the location of at least a portion of an object external to the first distributed hypermedia document, wherein said object has type information associated with it utilized by said browser to identify and locate an executable application external to the first distributed hypermedia document, and wherein said embed text format is parsed by said browser to automatically invoke said executable application to execute on said client workstation in order to display said object and enable interactive processing of said object within a display area created at said first location within the portion of said first distributed hypermedia document being displayed in said first browser-controlled window.
Interesting how Wired appears to think that the above passage is the same as providing an Interactive Web. If only patent practice were that simple. Perhaps I'm being pedantic or even silly, but people reading Wired are voters and voters drive decisions.

Also, the diagram used by Wired (see above) is actually a diagram of the prior art. That means that it does not actually form part of the invention and is just provided by way of background. So for Wired to hint that the diagram represents the cover that Eolas was trying to achieve, then hopefully it is doing so out of ignorance. Anything else would be dishonest.

There's a lot of hullabaloo about patent trolls. Frankly, I don't get it. Improve the examination process and half the battle is won.

OK, rant over. My main point is that the interpretation of patents is highly complex and to reduce the above claim into two words is disingenuous at best. I won't even start with juries...