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.