30 August 2015

Case: Orion Corporation v Actavis Pty Ltd [2015] FCA 909 (21 August 2015)

Judge: Rares J

  1. A combination of three known active pharmaceutical ingredients (APIs) called levodopa, carbidopa and entacapone, and methods of producing that combination and tablets comprising it used in the treatment of Parkinson’s disease.
  2. Drafting tip: Court referred to a paragraph in the specification that referred to "comprises". This was used in the construction of the claims.
  3. Skilled addressee - a legal construct whose appreciation must draw upon expertise in more than one field, discipline or art. That will reflect the likely reality that the claimed invention will have involved an inter-disciplinary team of various skilled persons. The legal standard for the degree of expertise that the skilled addressee will bring to the problem at hand, in light of the common general knowledge, is, again, an objective one of a non-inventive skilled worker in the field: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 
  4. The question of what the invention described in the specification was must be decided first, before considering arguments as to the validity of the individual claims: Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91.
  5. Claims should be construed in a way in which the invention will work in preference to one in which it will not - Pfizer Overseas Pharmaceuticals v Eli Lilly & Co [2005] FCAFC 224
  6. A skilled addressee will take a commonsense approach and would therefore assume certain characteristics in order for the definition to make sense.
  7. Relative expressions that require the exercise of judgment can be used in a claim but must be understood in a practical commonsense manner: Stena Rederi Aktiebolag v Austal Ships Sales Pty Ltd [2007] FCA 864.
  8. Utility - Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19.
  9. Inventive step - Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21. A “scintilla of invention” remains sufficient in Australian law to support the validity of a patent.” Ingenuity may lie in an idea for overcoming a practical difficulty in circumstances where a difficulty with a product consisting of a known set of integers is common general knowledge.

16 August 2015

Britax v Infa-Secure

Case: Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651 (30 June 2015) 

Date: 30 June 2015

Middleton J.


  1. Claim Construction
  2. Expert witnesses
  3. External fair basis (note that the new Act makes this less relevant now)
  4. Internal fair basis ( " )
  5. Novelty - Some really good basic principles.
  6. Interpretation of various words and phrases.
  7. "Adapted to" means "Capable of". Be careful of functional phrases like this. Check utility.
  8. "Highly qualified experts, even if they have a capacity for original research, should not on that basis be disqualified from assisting the Court".
  9. Definition of a skilled addressee.
  10. Use of expert evidence in determining validity issues.
  11. Hindsight and Common General Knowledge.
  12. Innovative Step.
  13. Inventive Step.
  14. Meaning of obvious - "very plain".
  15. The need to lead evidence that prior art "would have been reasonably able to have been ascertained, understood and regarded as relevant in Australia by a person skilled in the art when seeking a solution to the problem the invention seeks to overcome."
  16. Utility - to be established by evidence. Some good case law here. Read the section entitled "Expert Evidence".
  17. Clarity - use of imprecise terms. Skilled address must be able to resolve ambiguity.

03 August 2015

Exit Business Method Patents

I've spent some time reviewing the latest material from the USPTO concerning subject matter eligibility. In case you want to have a look, here is the link: http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0.

Business method and e-commerce type applications tend to be reviewed by particular art units. Here are some dismal statistics: http://cpip.gmu.edu/2015/06/27/the-one-year-anniversary-the-aftermath-of-alicestorm/.
The Supreme Court, in the case now known as "Alice" (http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf), set out that advances in non-technological disciplines such as business, law or the social sciences, simply do not count. Any claims that are directed to an entrepreneurial objective, such as a method for increasing revenue, minimising economic risks or structuring commercial transactions, as opposed to a technological method, would not be patent eligible.
You will see from the above link that the USPTO has provided a large number of different examples, both of eligible and ineligible subject matter. It has become practice to review each of those examples and attempt to provide or find analogies between the eligible cases and the invention that is under examination and has been rejected. That said, a golden thread that appears to run through the examples is that any form of economic practice, no matter how complex, or how beneficial to society, is simply rejected because the relevant claim defines an invention that attempts an entrepreneurial outcome as opposed to a technological outcome.
Also, no matter how complicated the economic practice is, it is generally carried out by "generic" computers performing "generic" processes or functions. That would stand to reason, otherwise the commercial model may be flawed. In other words, there is usually no improvement in the operation of the computer or some other aspect that would take the invention beyond what is referred to as an "abstract idea". For example, one may design algorithms that improve the operation of a processor. A processor, so improved, would more than likely be patent eligible. However, designing an algorithm that can be executed by a standard, "generic" processor would more than likely not be the designing of eligible subject matter, particularly if that algorithm were designed to achieve some form of economic outcome, as opposed to a technological one.
It follows that, for rejected applications, the task that we face is to extract some material from the specification that describes some technological advance.

One path out of this morass could be the filing of a continuation-in-part application based on the rejected application. The purpose of doing so would be to rewrite the patent specification in such a way as to emphasise, and seek protection for, the technological aspects of the invention, as opposed to the economic aspects.

Such technological aspects might include the generation of material in a technical manner. For example, one invention that was held to be patent eligible described the generation of a hybrid or composite webpage using information from two other webpages (DDR Holdings LLC v Hotels.com - http://caselaw.findlaw.com/us-federal-circuit/1685815.html). This was deemed to be primarily technical as opposed to economic. In this case, I understand that the resultant composite webpage was actually intended to be used in financial transactions. However, the way that the patent specification was prepared provided basis for a claim directed to the technical achievement of obtaining the composite webpage. In other words, this invention was not regarded as an "abstract idea". Another invention that was held to be patent eligible involved the transformation of data, using encryption.

One of the benefits of preparing and filing a continuation-in-part application is that the specification can be somewhat amplified, although to a limited extent. This can be done by way of clarification. Also, if certain technical aspects are not yet in the public domain, then those aspects can be introduced and built into the claims in the specification. However, in order for the claims to retain the earliest priority date, the claims would have to find basis in the specification as originally filed. That said, the further material added into the continuation-in-part application may very well provide the examiner with the idea that the claims are directed to something more than just an algorithm that achieves an economic outcome when executed by generic computers acting in a generic manner. The reason for this is that the claims are interpreted in light of the specification, not in light of the parent application, even though they take their priority from the earlier application.

Another benefit of the continuation-in-part application is that the application could be directed or allocated to a different art unit. For example, it could be allocated to an art unit that deals with electronics/software as opposed to e-commerce. I believe that this would help significantly. This would require that the application be prepared with a title and an abstract that do not hint at all to economic practices.

A possible example of such new material would be the generation of a tangible product, such as a web page or electronic report, that was more than simply the display of data. Another example might be the generation of a complex database in a dynamic manner, where we introduce material related to the building of the database that is specific to your product and is not merely a "plug-on" which would be regarded as generic.

A potential risk with this is that it may open up further fields of searching for the examiner. This may raise the risk of "inventive step" objections.

Another issue with this approach is that it extends the prosecution process significantly. This may be disappointing if you were hoping for a resolution sooner rather than later. However, there is a chance that, with further time, the USPTO may become a little more accepting of such applications.

Unfortunately, the preparation and filing of a continuation-in part application is, as far as costs are concerned, are similar to the filing of a fresh application. In this case, there would be further costs associated with actually preparing the patent specification that is to form the basis of the continuation-in-part application.