I recently had the pleasure of attending the AIPLA annual meeting in Washington DC. The main focus of the sessions was, as expected, around the impact of the changes to U.S. patent law brought about by the America Invents Act (AIA). There were also a number of sessions dealing with the practicalities of Chinese patent law. This is an interesting, but not unexpected development as U.S. companies seek to engage with the Chinese IP system more seriously. It also indicates the evolution of the Chinese patent system and the importance of the Chinese market to U.S. businesses.
Some other thoughts from the AIPLA meeting include:
• U.S. attorneys expect to be making much more use of provisional applications as establishing a first-to-file priority disclosure becomes more important.
• A possible increase in requests for Supplemental Examination (basically a re-examination requested by the patentee based on new newly uncovered prior art), including using the process to cure possible instances of ‘inequitable conduct’ where the full range of relevant prior art may not have been notified to the Examiner. However, it is an expensive process to engage in - official fees of USD 21,260 with no small entity discount - meaning it is likely to only be used where a substantial litigation is expected.
• ‘Functional’ patent claims are still valid under the AIA, provided there is sufficient disclosure of the structure to meet the function.
• Most U.S. attorneys I spoke to said their clients are adjusting well to the AIA, and to the first-to-file system. In most cases, U.S. patent applicants who were interested in overseas patent protection were operating to the system in any case.
I am also pleased to report that the mood around the U.S. economy is much more positive than I had encountered in the last 2 to3 years. Many attorneys saw a big spike in new applications in April prior to the AIA being implemented, much as we had seen in Australia preceding the Raising the Bar Act. However, the expected slump afterwards has not eventuated, meaning the rate of filing new applications has taken a consistent step upwards.
I enjoyed catching up with U.S. associates in Minnesota and Colorado. Both of these states’ history is not unlike that of Australia, with their economies being originally built on mining and agriculture. But now as water resources become a significant issue, both regions are looking to technology developers to be the mainstay of future economies. It turns out that both value-added agrifood processing and medical device design & manufacture have found favour in these regions, which fits well with Franke Hyland’s focus and capabilities.
by Adam Hyland
03 December 2013
11 November 2013
A new way to get faster international grant
IP Australia announces new Global Patent Prosecution Highway pilot
One of the keys to a faster, more efficient and less repetitive international patent system is for various patent offices to better use the work of their peers. The old paradigm is that each patent office is an island, and behaves as if the same invention had never been examined by any other patent office, starting at the beginning and working through to the end, regardless of the work done elsewhere.
A major change was the first patent prosecution highway (PPH) agreements reached by the USPTO with various patent offices, including IP Australia. In essence, if you had a final decision from IP Australia to allow at least one claim, and the claims in the US matched, you can go to the front of the examination queue. By using this with expedited examination in Australia, we have been able for several clients to achieve grant of a US patent in less than a year from the first Australian filing. While this is not the best strategy for everyone, in the case of a company seeking funding based on its IP, a granted US patent is a lot more valuable than an application.
The new scheme will allow this process to occur with 12 other patent offices, including Japan, Korea, US, Canada, the UK, Spain, Russia, Denmark, Norway, Portugal, Nordic Patent Institute, and Finland. It is likely that other countries and regional offices will join. While at this stage this is a pilot program, it is open to Australian applicants to apply to use the scheme in those patent offices after 6 January 2014. For countries that are notoriously slow, for example Japan, this could be a very great advantage. This is no guarantee of a patent, or of any preferential treatment in the substantive outcome. However, it is a way to accelerate consideration where that is going to be helpful.
Please contact us for a discussion if you think this program would be of interest.
One of the keys to a faster, more efficient and less repetitive international patent system is for various patent offices to better use the work of their peers. The old paradigm is that each patent office is an island, and behaves as if the same invention had never been examined by any other patent office, starting at the beginning and working through to the end, regardless of the work done elsewhere.
A major change was the first patent prosecution highway (PPH) agreements reached by the USPTO with various patent offices, including IP Australia. In essence, if you had a final decision from IP Australia to allow at least one claim, and the claims in the US matched, you can go to the front of the examination queue. By using this with expedited examination in Australia, we have been able for several clients to achieve grant of a US patent in less than a year from the first Australian filing. While this is not the best strategy for everyone, in the case of a company seeking funding based on its IP, a granted US patent is a lot more valuable than an application.
The new scheme will allow this process to occur with 12 other patent offices, including Japan, Korea, US, Canada, the UK, Spain, Russia, Denmark, Norway, Portugal, Nordic Patent Institute, and Finland. It is likely that other countries and regional offices will join. While at this stage this is a pilot program, it is open to Australian applicants to apply to use the scheme in those patent offices after 6 January 2014. For countries that are notoriously slow, for example Japan, this could be a very great advantage. This is no guarantee of a patent, or of any preferential treatment in the substantive outcome. However, it is a way to accelerate consideration where that is going to be helpful.
Please contact us for a discussion if you think this program would be of interest.
by Peter Franke
04 November 2013
New Zealand Patents Act 2013
It has been a long time coming, but finally New Zealand has a new Patents Act. The Patents Act 2013 received Royal assent on 13 September 2013. While a few administrative provisions took immediate effect, the majority of the provisions are not expected to take effect until 13 September 2014. Patent applications or national phase entries made before the new provisions take effect will remain subject to the current Patents Act.
Supporting Regulations for the new Act are not expected until mid-2014.
There are a lot of changes made by the new Act, some of the more interesting ones are as follows:
- an expansion of the prior art base applicable for assessing novelty and inventive step
- increasing the applicable grounds for examination with a higher standard being on ‘balance of probabilities’ (previously ‘benefit of doubt’)
- an invention must be ‘useful’ by having ‘a specific, substantial and credible utility’
- complete specifications must disclose ‘best method’ and the invention in a ‘clear and complete enough manner’ to be performed by a person skilled in the art
- claims to be ‘clear and concise’ and ‘supported by matter’ disclosed in the complete specification
express exclusions from patentability
- re-examinations available on all grounds between post-acceptance/pre-grant period for patent applications and at any stage after grant for granted patents
- post-acceptance/pre-grant opposition available on all grounds
- revocation of granted patents available before Patent Office or Court
- no extensions of patent term are available
- particular exclusions to infringement provided for seeking regulatory approval, prior use and experimental research
It has to be said that there is significant borrowing and influence from European patent law, particularly in respect to the substantive patentability tests and the use of particular exclusions. The computer programs exclusion was a particular sticking point in the lead up to the new Act and contributed to quite a few years delay. The fact that it is ‘computer programs as such’ smells very strongly of the European influence and it will be interesting to see how this develops given that the European development has not resulted in a blanket ban on software implemented inventions. Similarly, it will be interesting to see if New Zealand examiners adopt a European style approach to assessing inventive step, given that until now inventive step was not an examinable criterion.
The new Patents Act also introduces a Maori advisory committee who will have the power to veto inventions which, if commercially exploited in New Zealand, would be offensive to the indigenous culture. Similar powers have existed under the New Zealand Trade Mark law and appear to have worked very effectively and practically.
All in all, the new Act significantly raises the patentability standard in New Zealand, albeit to a standard more consistent with other countries. Until the new provisions come into force, the lesser standard of the current patent law applies. Hence, to take advantage of the current law, it may be worth considering filing or entering national phase in New Zealand early.
by Simon Ellis
Supporting Regulations for the new Act are not expected until mid-2014.
There are a lot of changes made by the new Act, some of the more interesting ones are as follows:
- an expansion of the prior art base applicable for assessing novelty and inventive step
- increasing the applicable grounds for examination with a higher standard being on ‘balance of probabilities’ (previously ‘benefit of doubt’)
- an invention must be ‘useful’ by having ‘a specific, substantial and credible utility’
- complete specifications must disclose ‘best method’ and the invention in a ‘clear and complete enough manner’ to be performed by a person skilled in the art
- claims to be ‘clear and concise’ and ‘supported by matter’ disclosed in the complete specification
express exclusions from patentability
- contrary to public order or morality (e.g. cloning of human beings, commercial use of human embryos, modifying germ line genetic identity of animals likely to cause suffering without substantial medical benefit)
- human beings and biological processes for their generation
- methods of medical treatment of humans by surgery or therapy
- methods of diagnosis practiced on humans
- ‘computer programs as such’
- re-examinations available on all grounds between post-acceptance/pre-grant period for patent applications and at any stage after grant for granted patents
- post-acceptance/pre-grant opposition available on all grounds
- revocation of granted patents available before Patent Office or Court
- no extensions of patent term are available
- particular exclusions to infringement provided for seeking regulatory approval, prior use and experimental research
It has to be said that there is significant borrowing and influence from European patent law, particularly in respect to the substantive patentability tests and the use of particular exclusions. The computer programs exclusion was a particular sticking point in the lead up to the new Act and contributed to quite a few years delay. The fact that it is ‘computer programs as such’ smells very strongly of the European influence and it will be interesting to see how this develops given that the European development has not resulted in a blanket ban on software implemented inventions. Similarly, it will be interesting to see if New Zealand examiners adopt a European style approach to assessing inventive step, given that until now inventive step was not an examinable criterion.
The new Patents Act also introduces a Maori advisory committee who will have the power to veto inventions which, if commercially exploited in New Zealand, would be offensive to the indigenous culture. Similar powers have existed under the New Zealand Trade Mark law and appear to have worked very effectively and practically.
All in all, the new Act significantly raises the patentability standard in New Zealand, albeit to a standard more consistent with other countries. Until the new provisions come into force, the lesser standard of the current patent law applies. Hence, to take advantage of the current law, it may be worth considering filing or entering national phase in New Zealand early.
by Simon Ellis
27 September 2013
Latest WIPO Innovation Data Shows Australia is Lagging
Recently I attended the World Intellectual Property Organisation (WIPO) information roadshow, where WIPO officials updated us on their latest international IP statistics.
Firstly, overall PCT patent applications continue to grow strongly, after a brief setback in 2008-2010 due to the GFC, etc.
Australia ranks as the 14th most common source of PCT applications, with the U.S. and Japan the most common. China is now ranked fourth, just behind Germany.
The U.S. is still the most popular place to file national patent applications out of the PCT. China is now the third most popular place to file patent applications, moving past Japan. Relatively strong growth in patent applications is still being experienced in the USA, India, Brazil and Russia all growing at >7% over 2010-2011. However, interest in filing patent applications in Australia has declined in the same period.
Most interestingly, there are now two Chinese companies in the top four individual filers of PCT applications, with ZTE Corporation remaining way out in front as the top filer for 2012:
1. ZTE Corporation—CN (3906)*
2. Panasonic—JP (2951)
3. Sharp—JP (2001)
4. Huawei—CN (1801)
5. Bosch—DE (1775)
6. Toyota—JP (1652)
7. Qualcomm—US (1305)
8. Siemens—DE (1272)
9. Philips—NL (1230)
10. Ericsson—SE (1197)
11. LG Electronics—KR (1094)
12. Mitsubishi Electric—JP (1042)
13. NEC—JP (999)
14. Fujifilm Corporation (891)
15. Hitachi—JP (745)
16. Samsung Electronics—KR (683)
17. Fujitsu—JP (671)
18. Nokia—FI (670)
19. BASF—DE (644)
20. Intel—US (640)
In all, the PCT system continues to grow strongly overall, with the USA and Europe leading but with the developing economies making up ground. Australia remains a middling player in the global IP market, and appears to be gradually losing ground since 2008.
Firstly, overall PCT patent applications continue to grow strongly, after a brief setback in 2008-2010 due to the GFC, etc.
Australia ranks as the 14th most common source of PCT applications, with the U.S. and Japan the most common. China is now ranked fourth, just behind Germany.
The U.S. is still the most popular place to file national patent applications out of the PCT. China is now the third most popular place to file patent applications, moving past Japan. Relatively strong growth in patent applications is still being experienced in the USA, India, Brazil and Russia all growing at >7% over 2010-2011. However, interest in filing patent applications in Australia has declined in the same period.
Most interestingly, there are now two Chinese companies in the top four individual filers of PCT applications, with ZTE Corporation remaining way out in front as the top filer for 2012:
1. ZTE Corporation—CN (3906)*
2. Panasonic—JP (2951)
3. Sharp—JP (2001)
4. Huawei—CN (1801)
5. Bosch—DE (1775)
6. Toyota—JP (1652)
7. Qualcomm—US (1305)
8. Siemens—DE (1272)
9. Philips—NL (1230)
10. Ericsson—SE (1197)
11. LG Electronics—KR (1094)
12. Mitsubishi Electric—JP (1042)
13. NEC—JP (999)
14. Fujifilm Corporation (891)
15. Hitachi—JP (745)
16. Samsung Electronics—KR (683)
17. Fujitsu—JP (671)
18. Nokia—FI (670)
19. BASF—DE (644)
20. Intel—US (640)
In all, the PCT system continues to grow strongly overall, with the USA and Europe leading but with the developing economies making up ground. Australia remains a middling player in the global IP market, and appears to be gradually losing ground since 2008.
by Adam Hyland
13 September 2013
ACIP Releases Options Paper on Review of the Innovation Patent System
In a previous blog, we reported that ACIP had initiated a review of the innovation patent system.
Further to the review, ACIP have now issued an options paper and have invited public submissions on the paper by 4 October 2013. The options paper can be viewed here.
At its heart, the innovation patent system offers a second-tier patent enforcement regime to the standard patent system. The innovation patent requires the satisfaction of an 'innovation step' test, which is considered and intended to be a lower threshold than the 'inventive step' test required for a standard patent. The trade-off for this lower threshold test being that the maximum term of an innovation patent is less than that for a standard patent – 8 years as opposed to 20 years. However, there have been criticisms that, while for a shorter term, the innovation patent offers the same level of infringement enforcement as a standard patent, although is much harder to counter due to its lower validity threshold requirements.
The innovation patent has been criticised as being overly generous to patent owners and open to abuse. The innovation patent is much more encompassing in terms of what subject matter it can provide patent protection for when compared with other second-tier patent mechanisms offered in some other countries (notably utility models provided in Germany, China, Japan and Korea).
In recent changes, the inventive step threshold for standard patents was raised in the ‘Raising the Bar’ amendments to the Patents Act. As a consequence, there is now a perception that the gap between the inventive step test and the innovative step test has widened.
The paper points to a variety of options available to consider. Interesting proposals are mentioned around possible limitations upon the monopoly afforded to the owner of an innovation patent or a reduction to the available remedies for infringement of an innovation patent.
The option which has generated most support is in somehow raising the innovative step threshold. However, opinions vary on what that should be or how it could be implemented, if the innovative step is still to be a lower threshold than the inventive step. There have been suggestions that the innovative step should just be the same as inventive step. Fortunately, ACIP have remarked that this would present a ludicrous outcome and would make the innovation patent a redundant system, in which case it would be more viable to simply abolish the innovation patent system.
ACIP intends to finalise and present its recommendations to the Australian Government later this year. It will be interesting to see what they do come up with. Having said that, regardless of the final recommendations, it is up to the Government as to whether anything is done and they have been dismissive in the past.
by Simon Ellis
23 July 2013
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
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
14 June 2013
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
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
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