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  • Withdrawal of requirement to request that earlier withdrawn, abandoned or refused applications be disregarded so that priority can be claimed from a later application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.