Islamic Republic of Iran becomes the Latest Contracting State to the PCT

On 4 July 2013, the Islamic Republic of Iran became the latest addition as a PCT Contracting State. The PCT will come into force for Iran from 4 October 2013. This brings the current total of countries applicable to the PCT system to 148.

Earlier this year, Saudi Arabia also became a PCT Contracting State and will become bound on 3 August 2013.

Hopefully, we are seeing a trend in the so-called Gulf States to join the PCT system.

All full list of PCT Contracting States is available here:
http://www.wipo.int/pct/en/pct_contracting_states.html


by Simon Ellis

U.S. Supreme Court hand down Myriad Genetics decision

The U.S. Supreme Court has handed down its unanimous decision today in relation to the patentability of naturally occurring DNA sequences. It has determined that merely isolating and determining the functions of a naturally occurring DNA sequence does not entitle the discoverer to a patent on that sequence. However, application and derivatives of that sequence, for example cDNA, are patentable subject matter.

In my humble opinion, the court has got this completely right. Merely isolating something from nature is not invention, although there is a level of case law which suggests that it is, in relation to pharmaceuticals. This case has significant implications in other areas of technology, for example for patents on any naturally occurring but isolated substances. Unless a ‘non-naturally occurring manufacture or composition of matter’ is brought into existence, there is no patentable subject matter.

This case was specifically concerned with patents around, inter alia, the BRCA1 and BRCA2 genes which indicate an increased risk of breast and ovarian cancer.

The court went to some lengths to be clear that they has no decided anything about non-naturally occurring DNA sequences, nor about methods for sequencing, nor about applications of the newly discovered knowledge. This case concerned the patents directed to the cDNA and DNA per se.

For those interested, the full decision is available here:
http://www.supremecourt.gov/opinions/12pdf/12-398_8njq.pdf

The equivalent Australian case found for Myriad at first instance, and is currently on appeal to the Full Court of the Federal Court.


by Peter Franke

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

The road ahead: changes in patent systems, surprisingly, help applicants

Over the past couple of years, major amendments have been made to the European, Australian and U.S. systems, and these will be implemented over the next year or so. The Australian and U.S. changes will be fully implemented (apart from the inevitable transition provisions) within a month or so. So what do these changes mean for an Australian technology developer? As I will explain below, if the promise and intention of the changes is realised, the international system will get cheaper, probably faster, and probably more predictable. This is because of changes on several important fronts.


Patentability Rules

The U.S. has moved to a first inventor to file system, in line with the rest of the world. Directly, this avoids a whole raft of disputes, and improves certainty in transactions. The U.S. substantive rules on novelty and obviousness have been clarified and are now closer to other major patent offices, and also to Australia. Overall, a lot of idiosyncratic U.S. rules have been either removed or limited.

In Australia, we have removed some of the restrictions on the type of material that can be used to mount an inventive step attack, and also increased the requirements for disclosure to support valid claims. The latter brings us consciously more in line with the U.S. and Europe.

Aligning with everyone else allows work product from the USPTO to be more readily used by other patent offices, as well as allows the USPTO to more readily use the Examiner’s work done in other patent offices. This should, over time, reduce the extent to which each Examiner approaches each national version of the same patent application as if it has never been seen by an Examiner before.


Burden of Proof

In Australia, it is currently difficult for a patent to be ultimately refused by the Examiner. The amendments mean that it is now up to the applicant to show that, on the balance of probabilities, the patent is valid. Additional grounds for re-examining granted patents are also now available.

U.S. law applies two different standards to assessing validity, depending upon the stage of the patent’s life and the process being undertaken. At the patent office, the standard is preponderance of evidence – that is, that there is a preponderance of evidence suggesting that on each of the various grounds, the patent should be granted. In court proceedings, in relation to validity, a much higher standard applies of ‘clear and convincing evidence’. As a result, there are situations where on the same evidence, a patent would be held invalid in Australia, Europe or Japan, but not in the U.S. There are several new ways to challenge patent validity at the patent office in the U.S., which rely on the ‘preponderance of evidence’ standard.

Overall, the effect of these changes is to ensure that it is less likely that dubious patents will be granted, and that there are better avenues for challenge at the patent office level, avoiding the expense and delay of court proceedings.


One European patent (sort of)

The EU has had a patent system for 35 years. The European Patent Convention imposes common laws on most aspects of patent validity and infringement. However, the grant stage requires translations in many countries, and formalities to be undertaken to achieve effective grant in each member country. This is time consuming and inefficient, making an EU patent many times more expensive than a U.S. patent, despite covering a similar market size. Another problem relates to enforcement - this has to be country by country at present, with no common appeal court, so that there is divergent law in each country.

A treaty has been agreed allowing for the option of a unitary European Patent, covering the EU except for Spain and Italy, who have opted out. This will be able to be enforced using a unified patent court system. Hence, if a party is infringing in France, Germany and Finland, one court action can address all of these, obtain enforceable judgements, and provide a common set of procedures no matter where the case is heard.
In combination, these measures will lower the cost of obtaining a patent across Europe, as well as increase the value of the patent as it can be centrally enforced across the EU.


Conclusion

The process of harmonisation continues within the patent system, and is hugely beneficial to applicants from countries such as Australia who need protection in much larger export markets. There are also moves towards a treaty on substantive patent law, to further align the law particularly in the developed countries.
As the cost and complexity of international filings are reduced, and their  effectiveness is improved, the benefits for Australian technology developers are clear. There are good prospects for even greater harmonisation just around the corner.

by Peter Franke

The clock is ticking on the new Australian patent law …

In November 2012 we reported on the detail of some of the changes that are going to come into effect on 15 April 2013 in the examination of Australian patent applications. As these changes are now only two months away, we thought it would be useful to give an ‘in-a-nutshell’ guide to what applicants and potential applicants need to do NOW to give their applications the most favourable future in light of the changes.

To recap: for applications where examination is requested after 15 April 2013, it will be more difficult to get a patent. More stringent conditions will be applied to (among other things) the level of inventiveness in light of the prior art, the level of disclosure of all of the aspects and advantages of the invention in the priority application, and the degree to which the examiner needs to be convinced that the invention is patentable.

The old ‘lower’ standards will apply for the life of your patent if you request examination before that date.


If you have a pending PCT application and you will be entering national phase in Australia:

• Consider entering national phase early in Australia, and requesting examination before 15 April.

If you have a pending Australian complete application:

• Consider voluntarily requesting examination prior to 15 April, regardless of whether a direction to request examination has been issued by IP Australia.

If you have filed a priority application (such as a provisional application) and you have continued development of your invention:

• Don’t wait for the full 12 months from the priority date to file your complete (standard or PCT) application, update your specification to the latest development and file a further priority application.

If you are developing a technology and considering filing a priority application:

• Consider postponing the filing of that application until your technology is more fully understood/trialled so all of the details can be captured; or
• Consider a program of filing multiple priority applications to achieve the earliest priority for each of the aspects of the invention as they are developed.

by Adam Hyland

Update on Integrated Patent Examination of Australian and New Zealand Patents

Further to our blog dated 16 May 2011, in which we announced the joint Australia and New Zealand initiative to integrate examination of Australian and New Zealand patent applications within a three year period, there has been the official announcement of the completion of the first stage in the in initiative.

The initiative is intended to provide a harmonisation of examination for patents which are applied for in both New Zealand and Australia. Consequently, both the New Zealand and Australian patent applications could be examined by a single Examiner, albeit under the respective different rules and regulations.

This first stage entailed a gathering of Examiners from both IP Australia and IPONZ to undertake a three month pilot skills and knowledge program to assess what training needs may be required to allow Examiners from each jurisdiction to examine patent applications from the other jurisdiction.

The next planned stages in the initiative pertain to designing and allowing a filing system in which an Australian and New Zealand patent application can be simultaneously filed as a single application. Each country has expended considerable advances in electronic filing capabilities over the last few years. The next stage will concentrate upon how to provide a harmonious electronic filing capability.

The last (and final) stage will be to determine an appropriate harmonious examination initiative to allow both a New Zealand and a corresponding Australian patent application to be examined by a single Examiner from either jurisdiction.


by Simon Ellis