Intellectual PropertyLPAB Summer Session 2012-13

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Every person who shall build any new and ingenious device in this City not previously made in our Commonwealth shall notice of it to the office of our General Welfare Board when it has been reduced to perfection so that it can be used and operated. It is forbidden to every other person in any of our territories and towns to make any further device conforming with and similar to said one without the consent and licence of the author for the term of 10 years…

We have among us men of great genius, apt to invent and discover ingenious devices… more such men come to us every day from diverse parts. Now if provision were made for the works and devices discovered by such persons so that others who may see them could both build them and take the inventor’s honour away, more men would then apply their genius, would discover, and would build devices of great utility and benefit to our Commonwealth.

Venice Statute 1474

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A monopoly being a derogation from the common right of freedom of trade could not be granted without consideration moving to the public .. In the case of new inventions the consideration was found either in the interest of the public to encourage inventive ingenuity or more probably in the disclosure made to the public of a new and useful article or process

Attorney General (Cth) v Adelaide Steamship Co

[1913] AC 781 at 394 per Lord Parker

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The main purpose of a patent system is to stimulate industrial invention and innovation by granting limited monopoly rights to inventors and by increasing public availability of information on new technology

Second Reading Speech, Patent Amendment Bill 1981

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Pharmaceutical products and processes Engineering products and processes Medical and therapeutic devices Micro-organisms Computer technology Chemical compounds Consumer electronics

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1992, 1996 - CSIRO Radio-Physics team develop technique to to cut through atmospheric distortion and “unsmear” the signal to measure the pulses emanating from exploding black holes

1994 - IEEE 802.11 telecommunications standard allows an electronic device to exchange data wirelessly (using

radio waves) over a computer network, including high-speed Internet connection

1998 - CSIRO assert rights in 802.11 standard

April 2009 - CSIRO royalties $250 million (Dell, HP, Microsoft, Intel, Nintendo and Toshiba)

total royalties $440 million

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Venice 1474 – privileges for inventors of new arts and machines

Elizabeth I –royal prerogative to grant privileges

Darcy v Allin – monopoly for foreign playing cardsCourt declared monopoly void because monopolies raise prices, debase quality, cause unemploymentbut could grant monopoly for inventions

James I - Statute of Monopolies 1624declare monopolies void except for inventions“sole working or making of any manner of new manufacture …[granted] to the true and first inventor Therese Catanzariti

Standard patents Innovation patents (introduced 2001) Patents of addition

◦ protect improvements and modifications of granted patent

Standard patents may be Standard Selection patents

◦ Select member/s from previously known class and find new uses and qualities

Combination patents◦ elements or integers in claim interact with each other

to produce new result or product

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Replace petty patents Only require “innovative step” (not inventive step) Up to 5 claims Max term 8 years Presumed valid – formality check only no extensive examination tho can’t enforce unless certifed after examination not plants or animals or biological processes for

their generation

Dura-Post v Delnorth Pty Ltd

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Provisional ◦ Describe invention◦ Secure priority date◦ 12 months to file full application

Complete – s40(2) – (4) and Sched 3, Regulations◦ Fully describe inventionincluding best method for performing it known to A◦ claims defining invention and delineating monopoly◦ claims must be clear, succinct and fairly based on

matter described

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patent subsist from priority date prior art base examined from priority date

date file complete specification date file provisional specification if – s43, r3.12-3.13

◦ file complete specification within 12 months◦ complete specification fairly based on provisional specification

for amendments, date file amendments – s114, r3.14 date file application in Paris Convention countryprovided file in Australia within 12 months – s94-96, r3.12 date file Patent Co-operation Treaty application – s88-93

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Mond Nickel Company has claimed invention been broadly described in provisional

specification Does provisional specification contain anything which is

inconsistent with claimed invention Does claim include a feature which the provisional

specification is silent

CCOM v Jiejing not over-meticulous verbal analysis

Rehm v Webster Security System International Specification contained a real and reasonably clear disclosure

of invention Alleged invention as claimed is broadly, in a general sense,

described in specification

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Preliminary processing and publish details – s53 After 18 months from priority date, publish specification for

open public inspection (OPI) s54 – 55, r4,2, 4.3 Request examination (lapse if no request within 5 years) – s44

◦ Applicant must disclose foreign documentary searches◦ Person eligible under s15◦ Application satisfy formal requirements s29◦ Specification complies s40 ◦ Invention is manner of new manufacture, novel and inventive (balance

of probabilities)◦ Invention not excluded from patentability – s18, 50◦ Application not “double patenting”

Acceptance – s49or adverse report – can amend application – s104, 107 3 months for opposition – s59, r5.3

◦ Applicant not entitled◦ Invention not patentable – s18◦ Specification not comply s40

Sealed grant – s61 -62 Re-examination (on request) – s97 - 98

◦ Novelty and inventive stepTherese Catanzariti

20 years from date of complete specification – s65 and r6.3(date), s67 (term)

extend max +5 yrs for pharmaceutical substance – s70◦ included in Register Therapeutic Goods◦ at least 5 years between patent date and first

regulatory approval date for substancebecause health and safety laws reduce effective

term because need provide extensive trial and test data

3rd party can use pharma patent for non-therapeutic or making application to get marketing approval – s119A

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Patentee not entitled Not patentable invention Patent obtained by fraud or

misrepresentation Specification not comply s40

Infringer can counter-claim revocation – s121

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“manner of manufacture” within Statute of Monopolies

Novel Involves an inventive step Useful Not been the subject of secret use not human beings and biological processes

for their generation

distinct requirements of a patentable invention – CCOM v Jiejing

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refer to 1624 Statute so import caselaw – NV Phillips v Mirabella

Products or processes that have an industrial application

If follow specification, produce product or produce results

A27 TRIPS – capable of industrial application

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"a method or process is a manner of manufacture if it

(a) results in the production of some vendible product or

(b) improves or restores to its former condition a vendible product or

(c) has the effect of preserving from deterioration some vendible product to which it is applied

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new method of killing weeds (thistle, nettle) in broadleaf crops (celery, parsnip, clover, lucerne) using known product

Word “manufacture” used not to reduce patentability but as part of general title for whole category of patentability

May be discovery without invention – discovery of some piece of abstract information without any suggestion of a practical application of it to a useful end

method’s end result is artificially created effect the result possesses its own economic utility

consisting in an important improvement in the conditions in which the crop is to grow, whereby it is afforded a better opportunity to flourish and yield a good harvest.

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The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art - that its value to the country is in the field of economic endeavour.

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“what is meant by a "product" in relation to a process is only something in which the new and useful effect may be observed. Sufficient authority has been cited to show that the "something" need not be a "thing" in the sense of an article; it may be any physical phenomenon in which the effect, be it creation or merely alteration, may be observed: a building (for example), a tract or stratum of land, an explosion, an electrical oscillation.

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discovery is only patentable when embodied in practical, technical or industrial application

Diamond v Diehr Process for molding raw, uncured rubber into

cured precision products Arrhenius equation (rubber burning point) - not

patentable Use Arrhenius equation in a computer program

to open the press and remove the rubber - patentable

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Computer program is algorithmbut if applied for a particular result

IBM v Commissioner of Patentsimproved method for producing curved images in computer graphics

Controlling computers to operate in a particular way CCOM v JiejingAssemble text in Chinese characters on computer

screen

mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour

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Welcome Real Time SA v Catuity Inc method involving credit smart cards that included computer

chip that recorded loyalty points from multiple distinct retailers onto a computer file on chip

No physically observable end result in the sense of a tangible product, but tangible result from POS terminal writing information into computer file and print coupon

Grant v Commissioner of Patents 2005 Method to protect assets against unsecured creditor’s claims –

create trust, gift to trust, trustee loan sum from trust, secure loan by charge

“the method of his patent does not produce any artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect”

Physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required.

Mere scheme, abstract idea, intellectual information

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Some countries expressly exclude – TRIPS A27 exception Initially excluded as essentially non-economic Joos v Commissioner of Patents – strengthen hair and

nails commercial application in hairdressing

Anaesthetic Supplies v Rescare – method and device for reducing sleep apnoea

Bristol Myers Squibb v Faulding – method of administering drug to treat cancer

Patient may be denied medical treatment but no distinction in principle between product treating

human and method of treating human but encourage research especially new uses of existing

drugs – eg aspirin

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Is novel when compared to prior art base at priority date

New – not been done before

even if the reason that it has not been done before is because it is silly or obvious

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whether prior art base anticipates the invention prior art base reveal essential features of invention

Hill v EvansA person of ordinary knowledge of the subject would at once perceive, understand, and be able to practically to apply the discovery without necessary of making further experiments and gaining further information… Whatever is essential to the invention must be read out of the prior publication

Meyers Taylor v Vicarr IndustriesReverse infringement test – if the patent was valid, would the prior art infringe the patent

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System of using “tilt up walls” device to quickly build concrete walls

Ramset – essential feature was extended length of lever arm, designed to prevent premature release of clutch not provision of cable

Advanced – essential feature are hoisting cable, shackle, anchor in wall section, ring clutch and a release cable

Release cable is essential because specification emphasis that invention is quickly releasable

prior art does not disclose release cable so not anticipated

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Information in document that is publicly available Information made publicly available through doing an act Information in complete specification with earlier priority date

even if unpublished at date of application

Information in single document Information in single act information in documents or acts if relationship between

documents and acts that person skilled in the relevant art would treat as a single source of information – s7(1)

Can’t mosaic if information is not otherwise cross-referenced or connected

“the picking out of individual items from prior publications… and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed… not a permissible process” - 3M v Bieirsdorf

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If the public has access to it, free to use information

Even if disclosed to one w/o obligation confidentialityFomento v Mentmore – ballpoint pen given to govt deptMerck v Arrow Pharmaceuticals – Lunar News given to

some hospitals/universities and not catalogued

Even if no-one but an expert can understand it

Even if in a foreign languageDennison Manufacturing v Monarch Marketing Systems –

specification about plastic tags to attach price labels“document resting quietly in French language in

Canberra”

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Distribute samples Manufacture devices and products Display at public event Offers to sell Description in obscure publication Information on internet Images on internet

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http://www.youtube.com/watch?v=JQ8pQVDyaLo

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must file within 12 months (some 6 months)

Publication without patentee’s consent Disclosure to public authorities Showing or use at recognised exhibition Publication in paper and read or published

by learned society Working in public of invention for reasonable

trial if necessary for working to be in public◦ Newall & Elliott – laying submarine telegraph cable

Patentee’s use or disclosure in the previous 12 months (general grace period)

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can’t be novel if method uses known substances for purposes consistent with known properties

Only if method uses unknown or unsuspected property of the material so that it serves a new purpose

NRDC v Commissioner Patents

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real advance and more than an obvious extension, variation or combination of prior art

invention involves inventive step – s7(2)unless obvious to person skilled in art in light of ◦ common general knowledge in Australia ◦ certain prior art(from April 2013 – common general knowledge

anywhere, any prior art) certain prior art – s7(3)

prior art information / combination of prior art information skilled person reasonably expected to have ascertained, understood, regarded as relevant and combined

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Identify relevant art Construct hypothetical skilled person

Skilled but non-inventive ,not particularly imaginative worker in relevant field – 3M v Beiersdorf

Identify scope ◦ common general knowledgecommon general knowledge of person skilled in art, information known or used by those in relevant trade, background knowledge and experience – 3M v Beiersdorfmay not include all public knowledge, published specsstandard textbooks, technical manuals, trade magazines ◦ prior artnotional skilled reasonably expected to ascertain, understand,

regard as relevant, and combine if separateEmperor Sports – not reasonably expect ARL coach, referee,

umpire or administrator to conduct USPTO search

Would hypothetical skilled person knowing the information have found it obvious to take the step

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even if simple not merely skill, tenancy, managerial

efficiency using familiar theory not if difference plain or very plain not if take routine steps/experiments that

try as matter of course

Aktiebolaget Hassle v Alphapharm – active ingredient coated to allow tablet to pass through stomach but dissolve in intestine

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solution to a problem (but inventiveness may be in articulating the

problem) Satisfy long felt need Commercial success of the invention(but may be good workmanship, price or other

qualities) Willingness of rivals to create imitation

may be slow and laborious or brilliant coup

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Results promised in the specification can be achieved by following the instructions in the specification

Does what the patentee intended, achieves intended result

not if the apparatus does not work as claimed read in light of specification as a whole according to

what an intelligent person skilled in art and desirous of making use of invention would do

from April 2013 - a specific, substantial and credible use for the invention is disclosed in the Patent specification – s7A

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Prevent patentee effectively prolonging monopoly

Whether patentee obtained a commercial benefit from activity before priority date – Azuko v Old Digger

exceptions – s9 reasonable trial and experiment Use by a public authority Use solely in course of confidential disclosure

(eg to patent attorney, potential investor) Other uses for purpose other than trade or

commerce

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“manner of manufacture” exclude patents that are contrary to law or generally inconvenient

A27 TRIPS – members may exclude patentability …to protect human life

Re Woo-Suk Hwang No patent for method of producing hybrid

embryo created by transferring nucleus of human cell into bovine ovum and activating the ovum

Fertilitescentrum AB and Luminis Pty Ltd Method of growing pre-blastocyst human

embryos in a specifed medium

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Describe invention fully, including the best method known to the applicant of performing the invention

claims must be clear and succinct and fairly based on the matter described in the specification

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sufficiency - describe invention fully describe fully enough to allow informed reader

with reasonable skill in trade to perform

disclose best method known of carrying out invention

from April 2013 - specification discloses invention in manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art

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public has right to know what may/may not do

define clearly and with precision the monopoly claimed so that others know the exact boundaries of area

Skilled addressee applying common sense and common knowledge

ambiguous if claims lack clarity

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Compare claims with invention disclosed in specification

Lockwood Security Products v Doric Productspatent for a key controlled latch

Whether real and reasonably clear disclosure in body of specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say, in a general sense, described in the body of the specification

from April 2013 - claims are fully supported by the description

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Eligible person – s15◦ inventor ◦ assignee of inventor (person who would be

entitled to have patent assigned to them)◦ Successor to inventor or assignee◦ Legal personal representative

Joint owners – s16◦ own as tenants in common ◦ can work patent without accounting◦ can’t grant licence or assign without other’s

consent

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objectively assess contributions - if person’s contribution had a material effect on the final concept of the invention

concept of invention from whole of specification in claims

don’t look at inventiveness of the contribution

Polwood v Foxworth –method and apparatus for producing potting mix from waste organic materialsPolwood – steam treatment and de-watering procesFoxwood – extended range of materials, design and build apparatus to put process into effect

joint inventors

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Employers not automatically entitled Only if entitled to be assignee – s15(2)

Employment contract◦ Express term◦ Implied termUWA v Gray – UWA professor research use of

microspheres for treatment of cancerous tumours especially liver

not necessary to imply termobliged to conduct research but no duty to invent

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Nature of invention Duties employee engaged to perform Employee’s position in the company Circumstances invention made

◦ Whether made during working hours◦ Whether useful to employer business◦ Whether employee responding to employer

instructions

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Exclusive right to exploit invention and authorise others to exploit – s13(1)

Exploit – Sched 1 Product - make, use, sell or otherwise

dispose, import or keep for purpose of exploiting

Process – use the method, and exploit any resulting product

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Assignment◦ capable of assignment – s13(2)◦ assign in writing signed by assignor – s14

Security interests◦ Register interests Register of Patents – s187,

r19.1◦ Personal Property Securities Act

Licence ◦ register interest Register of Patents – s187,r19.1◦ Co-owners must all consent to licence – s16

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Implied licence◦ Purchaser’s right to use product◦ right to repair product

Compulsory licence – s133, r12.1Person may apply to Federal Court for licence to work invention◦ Patentee fail to satisfy reasonable requirements of public

trade or industry unfairly prejudiced or demand not met because fail manufacture to adequate extent, supply on reasonable terms or grant licences on reasonable terms – s135

applicant made reasonable efforts for reasonable time to obtain licence on reasonable terms

Patentee no satisfactory reason for failing to exploit◦ Patentee using exclusivity to act anti-competitively

contravening Consumer and Competition Act Crown use for services of Commonwealth or State – s163Exploitation necessary for proper provision of servicesMust pay remuneration – s165

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applicant is registered proprietor or exclusive licensee

patent in force defendant perform act in Australia after date of publication act within patent owner’s exclusive rights

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Claims determine legal limits of monopoly construe claims then compare infringing article

Decor Corporation v Dart Industries Kinabulu Invstments v Barron and Rawson Purposive construction Read specification as whole Don’t confine claims by limitations in specification(tho specifications may define or qualify words in

claims, may resolve ambiguity and provide background

Court construe not expert Terms given ordinary English meaning(tho evidence from experts on scientific or technical

terms)

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purposive construction rather than literal construction essential requirements of invention – essential integers of

claimstill infringe if replace inessential with mechanical equivalents

Catnic Components v Hill & Smith lintel in spanning space above window and door openings Claim – supporting back plate extending vertically Infringer – back plate 6o from vertical, with no significant

change of strength or function whether persons with practical knowledge and experience of

kind of work in which invention intended to be used would understand that strict compliance with a particular descriptive word was intended to be essential requirement so any variation was outside monopoly

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must complete finished article including all integers Dunlop Pneumatic Typre v David Moseleybicycle wheel – hub, spoke, rim, tubeless tyrenot infringe to manufacture tyre onlyeven if intend consumers to combine with other

integers

include if manufacture product in course of manufacturing non-infringing product

Bedford Industries v Pinefairgarden edging product including pine logs arranged side by side and connected by two strands of bandschanged product by severing strip so secured by hinges

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not if merely possess, purchase, own not if merely warehouse or transport

infringe even if selling components that consumer must assemble

Windsurfing International v Petitsale sailboard in kit of parts

esp because common way of selling sailboard

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use Product – unauthorised commercial use Process – any unauthorised use

import Patentee may control importbut only where patentee imposes conditionsotherwise exhaustion of rights

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supply integer knowing that recipient will combine with other integers

supply unpatented product with instructions to recipient to use in infringing way

=>supplier not infringing=>supplier may not be joint tortfeasor because merely facilitating not participating because no common design

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If use of product would infringe patentthen supply of product is infringement Use of product

◦ Use if only one reasonable use◦ Any use if supplier reason to believe that person

would put to use (unless staple commercial product)

◦ Use of product in accordance with supplier’s instructions

◦ Use of product pursuant to any inducement by supplier

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Bristol Myers v Faulding method of administering anti-cancer drug Faulding provide hospitals with product information

guides and protocols If the doctor’s use of drug would infringe BM

patents, F’s supply to doctor infringes patent

NT v Collins method for producing blue essential oils ffrom

cypress pine NT grant licence to ACOC to enter NT land and take

timber Product is any product - not limited to product from

use of patented method

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Authorisemore than countenance or enable

Misleading and Deceptive – s18 ACL Advanced Building Systems v Ramset

Fastenerssupplier may be guilty of misleading and deceptive conduct for failing to warn customers of real possibility that use of products infringe patentee’s patent

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act to include therapeutic goods on Register of Therapeutic Goods s 119A

act to obtain approval required by Cth / State law to exploit a non-pharma product, method or process - s119B

(eg conduct research and trials necessary to gain regulatory approval)

experimental uses of the patented invention

– s119C

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foreign vessels temporarily in patent area – 118

prior use – s119person exploiting, or taken definite steps to exploit product or process before priority datenot if stop exploiting or abandon steps to exploit before priority date except temporarily

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Apple claim Samsung Galaxy infringe claims in two Apple patents

touch screen patent heuristic patent

Samsung seek revocation◦ Leeper article◦ Mulligan patent application

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