Patents(Weeks 10 and 11)

Beth Oliak

Intellectual Property Winter Session 2015

Beth Oliak

• 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

Beth Oliak

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

Beth Oliak

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

Beth Oliak

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

Scope

Beth Oliak

• 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

CSIRO wi-fi patent

Beth Oliak

method of exercising a cat with a laser pointerhttp://www.google.com/patents/US5443036

Beth Oliak

Apparatus for facilitating the construction of a snow manhttp://www.google.com/patents/US8011991

Beth Oliak

• Venice 1474 – privileges for inventors of new arts and machines

• Elizabeth I –royal prerogative to grant privileges

• Darcy v Allin – monopoly for foreign playing cards

• Court declared monopoly void because monopolies raise prices, debase quality, cause unemployment

• but could grant monopoly for inventions

• James I - Statute of Monopolies 1624

• declare monopolies void except for inventions

• “sole working or making of any manner of new manufacture …[granted] to the true and first inventor

Background

Beth Oliak

• Standard patents

• 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

• Innovation patents (introduced 2001)

• Patents of addition

• protect improvements and modifications of granted patent

Types of patents

Beth Oliak

• 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)

• BUT can’t enforce unless certifed after examination

• not plants or animals or biological processes for their generation

• Dura-Post v Delnorth Pty Ltd

Innovation patents

Beth Oliak

• Provisional

• Describe invention

• Secure priority date

• 12 months to file full application

• Complete – s40(2) – (4) and Sched 3, Regulations

• Fully describe invention

• including 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

Application – s40

Beth Oliak

• 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 country

• provided file in Australia within 12 months – s94-96, r3.12

• date file Patent Co-operation Treaty application – s88-93

Priority date

Beth Oliak

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

Complete fairly based on provisional

Beth Oliak

• 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”

Process – flowchart s4

Beth Oliak

• Acceptance – s49

• or 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 step

Process – flowchart s4 (cont)

Beth Oliak

• 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 substance

• because 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

Term

Beth Oliak

• Patentee not entitled

• Not patentable invention

• Patent obtained by fraud or misrepresentation

• Specification not comply s40

• NOTE: Infringer can counter-claim revocation – s121

Revocation – s138

Beth Oliak

Requirements:

(1) “manner of manufacture” within Statute of Monopolies (1(a))

(2) Novel (1(b)(i))

(3) Involves an inventive step (1(b)(ii))

(4) Useful (1(c))

(5) Not been the subject of secret use (1(d))

(6) not human beings and biological processes for their generation (for innovation patents – (2))

Validity – patentable invention – s18

Beth Oliak

• Refers 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

Manner of new manufacture – s18(1)(a)

Beth Oliak

“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.”

Re GEC Application (UK)

Beth Oliak

• 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

NRDC v Commissioner of Patents

Beth Oliak

• 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.

NRDC v Commissioner of Patents

Beth Oliak

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.

NRDC v Commissioner Patents

Beth Oliak

“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.”

NRDC v Commissioner of Patents

Beth Oliak

• 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

Product, result, effect, application

Beth Oliak

Computer program is algorithm except if applied for a particular result:

IBM v Commissioner of Patents

• improved method for producing curved images in computer graphics

• controlling computers to operate in a particular way

CCOM v Jiejing

• assemble 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

Computer programs

Beth Oliak

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

Business methods

Beth Oliak

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

Business methods

Beth Oliak

Research Affiliates LLC v Commissioner of Patents

method for calculating an Index for using in financial investing akin to a mere scheme, abstract idea or mere information and

not resulting in a physical effect

the index generated is nothing more than a set of data. The index is simply information: it is a set of numbers. It is no more a manner of manufacture than a bank balance, whether represented as data in a bank’s computer, written on a piece of paper or kept in a person’s memory

the method of the claimed invention does not involve a specific effect being generated by the computer.

Business methods

Beth Oliak

• 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

Human treatment

Beth Oliak

Cancer Voices Australia v Myriad Genetics Inc

• Patent for isolated gene sequences relating to BRCA1 (breast cancer gene)

• The nucleic acid or gene sequence in its isolated form was sufficient to qualify as an artificially created state of affairs

• The nucleic acid did not exist in isolated form in the cell

Gene sequences

Beth Oliak

• 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

Novelty - s18(1)(b)(i)

Beth Oliak

Prior art base anticipates the invention if it reveals essential features of invention:

Hill v Evans

A 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 Industries

Reverse infringement test – if the patent was valid, would the prior art infringe the patent

Anticipation

Beth Oliak

• 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

Advanced Systems v Ramset

Beth Oliak

• 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)

Prior art base – Sched 1 (definitions)

Beth Oliak

• 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 – No Mosaic

Beth Oliak

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

• Even if disclosed to one w/o obligation confidentiality

• Fomento v Mentmore – ballpoint pen given to govt dept

• Merck 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 language

• Dennison Manufacturing v Monarch Marketing Systems –specification about plastic tags to attach price labels

• “document resting quietly in French language in Canberra”

Publicly available

Beth Oliak

• Distribute samples

• Manufacture devices and products

• Display at public event

• Offers to sell

• Description in obscure publication

• Information on internet

• Images on internet

Publicly available - examples

Beth Oliak

• 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)

Exceptions – s24, r2.2

Beth Oliak

• 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

Novelty - methods

Beth Oliak

• 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

Inventive step – s18(1)(b)(ii)

Beth Oliak

• Identify relevant art

• Construct hypothetical skilled person (skilled but non-inventive ,not particularly imaginative worker in relevant field – 3M v Beiersdorf)

• Identify scope of common general knowledge (of person skilled in art, information known or used by those in relevant trade, background knowledge and experience – 3M v Beiersdorf)

• may not include all public knowledge, published specs

• standard textbooks, technical manuals, trade magazines

• Identify prior art

• notional skilled reasonably expected to ascertain, understand, regard as relevant, and combine if separate

• Emperor 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

Beth Oliak

• 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

Would skilled person find obvious?

Beth Oliak

• 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

Evidence

Beth Oliak

• 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

Useful – s18(1)(c)

Beth Oliak

• 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

Not secretly used – s18(1)(d)

Beth Oliak

• “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 specified medium

Not human beings – s18(2)

Beth Oliak

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

complying specification – s40

Beth Oliak

• 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

Full description – s40(2)

Beth Oliak

• public has right to know what it 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

Claims clear and succinct – s40(3)

Beth Oliak

• Compare claims with invention disclosed in specification

Lockwood Security Products v Doric Products

• patent 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

Fairly based – s40(3)

Beth Oliak

• 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

Who

Beth Oliak

• 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

Inventor

Beth Oliak

Polwood v Foxworth

• Method and apparatus for producing potting mix from waste organic materials

• Polwood – steam treatment and de-watering proces

• Foxwood – extended range of materials, design and build apparatus to put process into effect

• Court found they were joint inventors

Inventor

Beth Oliak

• Employers not automatically entitled

• Only if entitled to be assignee – s15(2)

• Employment contract

• Express term

• Implied term

UWA v Gray

• UWA professor research use of microspheres for treatment of cancerous tumours especially liver

• not necessary to imply term

• obliged to conduct research but no duty to invent

Employees

Beth Oliak

• 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

Employee contract

Beth Oliak

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

Exploit – Schedule 1:

• Product - make, use, sell or otherwise dispose, import or keep for purpose of exploiting

• Process – use the method, and exploit any resulting product

Rights – s13

Beth Oliak

• 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

Personal property

Beth Oliak

• 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 – s163• Exploitation necessary for proper provision of services• Must pay remuneration – s165

Other licences

Beth Oliak

• 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

Infringement

Beth Oliak

• claims determine legal limits of monopoly• construe claims then compare infringing

article (identify required elements of claim and determine whether they are present in infringing article)

Scope of invention

Beth Oliak

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)

Scope of invention

Beth Oliak

• purposive construction rather than literal construction

• essential requirements of invention – essential integers of claim

• still 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

Purposive approach

Beth Oliak

• Must complete finished article including all integers

Dunlop Pneumatic Typre v David Moseley

• bicycle wheel – hub, spoke, rim, tubeless tyre

• not infringe to manufacture tyre only

• even if intend consumers to combine with other integers

Make product

Beth Oliak

• Include if manufacture product in course of manufacturing non-infringing product

Bedford Industries v Pinefair

• garden edging product including pine logs arranged side by side and connected by two strands of bands

• changed product by severing strip so secured by hinges

Make product

Beth Oliak

• not if merely possess, purchase, own

• not if merely warehouse or transport

• infringe even if selling components that consumer must assemble

Windsurfing International v Petit

• sale sailboard in kit of parts (esp because common way of selling sailboard)

Hire, sell or otherwise dispose

Beth Oliak

Product – unauthorised commercial useProcess – any unauthorised use

Use

Beth Oliak

• Patentee may control import but only where patentee imposes conditions

• otherwise exhaustion of rights

Import

Beth Oliak

• 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

Contributory infringement

Beth Oliak

• If use of product would infringe patent then 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

Contributory infringement – s117

Beth Oliak

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

Contributory infringement – s117

Beth Oliak

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

Contributory infringement – s117

Beth Oliak

• Authorise (more than countenance or enable)

• Misleading and Deceptive – s18 ACL

Advanced Building Systems v Ramset Fasteners

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

Contributory infringement

Beth Oliak

• 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

Exemption - regulatory/experimental use

Beth Oliak

• foreign vessels temporarily in patent area – s 118

• prior use – s119

• person exploiting, or taken definite steps to exploit product or process before priority date

• not if stop exploiting or abandon steps to exploit before priority date except temporarily

Exemptions