The Bar Has Risen

Following from our previous blog posts on the ‘Raising the Bar’ legislation, you will be aware that the commencement date has passed for the various changes to patentability (and other) requirements in Australia. If you did not request examination before 15 April 2013,  your Australian patent application(s) will now be subject to the new and generally more stringent validity requirements.

IP Australia have received an avalanche of patent applications and examination requests in the weeks leading up to the change; estimated to be a normal year’s worth of requests in the month before the deadline. We suspect that this spike in activity will substantially affect the internal examination queue at IP Australia, resulting in longer delays before examination reports are issued.

Inventive Step Present, but Innovative Step Not?

The innovation patent is typically thought of as necessarily requiring a lower or lesser differentiation from the prior art (innovative step) than that required for the standard patent (inventive step). However, a recent case decided by the Federal Court of Australia shows that it is possible for virtually identical innovation and standard patent applications to be (respectively) rejected for lack of innovative step and found to have an inventive step.

Delnorth Pty Ltd v Commissioner of Patents [2013] FCA 165 was an appeal from a decision of IP Australia to revoke a granted standard patent following re-examination based on a number of prior art documents. These documents had not been considered during original examination, but had emerged later. They had also been considered during litigation of a separate Delnorth innovation patent having practically identical claims to the standard patent. Some of the innovation patent claims had been revoked by the Federal Court for lack of innovative step on by comparison with the same prior art.

A key difference between the legislation regarding ‘innovative step’ and ‘inventive step’ was that for any prior art document to be used in an assessment of inventive step, it had to pass three specific hurdles: that it would have been ‘ascertained’, ‘understood’ and ‘regarded as relevant’ by the patent addressee; while no such hurdles were applicable to inventive step.

In this case, some of the key prior art documents that were used to invalidate the innovation patent did not clear those hurdles, and so were excluded from the inventive step assessment. The judge made this decision on the basis that there was not convincing evidence that those documents would definitely have been looked for, nor that they would then have been found, by the patent addressee.

It has not been common for documents to be excluded in this way, as evidence is usually presented that the prior art documents will meet those requirements. However, when the technical field of a patent is fairly ‘low-tech’ (in this case it related to roadside posts) the possibility remains that a general lack of patent searching or patent awareness (or a lack of evidence of this) in an industry could lead to the exclusion of prior art used in assessing novelty from the assessment of inventiveness.

It should be noted that those ‘hurdles’ have now been removed from the Patents Act 1990; all applications coming under the post-‘Raising the Bar’ legislation will face a potentially tougher assessment of inventiveness. However, the old standards will still apply to a vast number of patents and applications existing and sent for examination prior to 15 April 2013.

by Adam Hyland

The U.S. Implementation of The Hague Agreement on Industrial Designs

In all the hype and profile of the changes introduced to U.S. patent laws by the America Invents Act, it has been easy to overlook another significant change that occurred in the U.S. with the signing of the Patent Laws Treaties (PLT) Implementation Act in December 2012 and, in particular, the sections pertaining to the implementation of The Hague Agreement. These sections are expected to become effective sometime in 2013.

The Hague Agreement relates to an international system for designs. In the U.S., legislation governing the protection of designs is provided within the U.S. patent legislation. The Hague system, administered by the World Intellectual Property Office (WIPO), is a procedural system that facilitates seeking design protection in multiple member countries through the filing of a single application. Whether design protection in each country is conferred remains at the discretion of the intellectual property office of each country. However, the purported benefits of the system come from the centralised filing approach. The Hague system can be readily compared to what the PCT system is to patents and to what the Madrid system is to trade marks.

Historically, the Hague system has suffered from a number of issues which has detracted from the potential benefits of using the system. A main issue is that, compared with the PCT system or Madrid system, the number of member countries is relatively small and the geographical spread of member countries is quite limited, notably to European and African countries. Hence, as an ‘international’ system it lacks a true international coverage.

There have been a few inherent sticking points to the Hague system which has hindered the attraction for countries to consider joining up. A main hurdle concerned an incompatibility between two schools of design regimes which exist in different countries. A number of countries adopt a fairly European–type of regime in which design protection is conferred without any form of substantive examination. The Hague system was originally conceived for this non-examination regime. Other significant countries (which include the U.S.) require a design to be subjected to substantive examination before protection can be conferred. The Hague system did not prove compatible for such examination regimes. However, in 1999, the Geneva Act amended the Hague system to make the system compatible to countries which adopt the examination regime.

Another flaw in the Hague system concerns the fact that member countries may (and, in fact, do) have different and incompatible formal requirements concerning the drawings that form the main basis of any design application. For example, some countries allow the use of ‘ghost’ lines (used to disclaim aspects of the design) while other countries forbid the practice; some countries allow and encourage the use of shading, while other counties forbid shading. In a centralised filing system, where only one set of drawings is submitted, how is this set of drawings able to satisfy the conflicting requirements of all the countries? Until a practical harmonisation of design practice is achieved, this remains a key flaw in the Hague system.

The fact that the U.S. has taken the step of effecting law change to adopt The Hague Agreement, it can be speculated that design law and practice is likely to be the hot topic for international change and harmonisation. Having a country as significant as the U.S. become a member country of the Hague system is likely to cause a number of other countries to consider following suit. The attraction to joining the Hague system would inevitably lead to a desire for international design harmonisation and change to make the Hague system effective.

One hopes that the U.S. has possibly instigated the seeds for international change towards harmonisation in design law and practice with the growth of membership of a consequentially effective Hague Agreement. Companies that do require design protection in multiple countries would find the benefits of being a user of an effective Hague system would be significant.


by Simon Ellis