Patentology

Apple’s Strategic Plans for Australian Litigation

2012-02-09T01:29:00.000+11:00

Last Friday, 3 February 2012, Apple and Samsung returned to Justice Annabelle Bennett’s Federal Courtroom in Sydney to resume hostilities for the new year.

While the main purpose of the most recent hearing was to set a timetable for a full trial on both parties various claims against the other, Apple has taken the opportunity to add new allegations of infringement to its case against Samsung, bringing the total number of patents asserted by the company in the Australian litigation to 22.

Computerworld’s Chloe Herrick has reported that Samsung’s legal team insisted at a second court appearance on Wednesday, 8 February 2012, that they would require most of this year to prepare their case, pointing out that there has probably never been a larger patent infringement case in Australia, and that at least 10 of the patents now asserted by Apple have not been raised by the company in any other country.

Justice Bennett has set down a further date for timetabling of Apple’s case against Samsung on 9 March 2012.

Meanwhile, it appears that a schedule for Samsung’s countersuit against Apple – a case involving the assertion of patents essential to the implementation of 3G mobile communications standards – is closer to finalisation, with an initial part of the trial likely to be held in July, and the remainder of the case to be heard in September.

APPLE’S AUSTRALIAN ASSAULT

As Samsung’s lawyers have argued, the scale of Apple’s patent infringement claims is unprecedented in Australia. A case involving the alleged infringement, and challenges to the validity, of 22 patents is a massive exercise for both parties, and for the court.

With the benefit of hindsight, however, it is clear that Apple has been building up its Australian patent arsenal for a number of years. It might therefore have been possible to anticipate that Apple would pick this country as one of its chosen venues for an assault on Android and – as it turns out – Samsung, should anyone have been looking for the signs.
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Apple vs Android – IP Supremacy and the Mobile Market

2012-02-05T20:00:00.000+11:00

The following is a heavily-edited extract from an article I wrote for IAM Magazine. The original, entitled ‘Apple vs Android – The Struggle for IP Supremacy in the Mobile Market’ is the cover story of the current issue (no. 52, March/April 2012).

The full version is around three times as long, covering many aspects of the story – such as the history between Apple and Microsoft, and between Apple and Samsung – in much greater detail. It also includes images and further discussion of patent themescape maps similar to those presented in Patentology’s most popular ever article, How Apple Punches Above Its Weight in Smartphone Disputes.

IAM Magazine is a subscription product, however a free trial is available upon registration. There is also much on the website that can be accessed permanently once you have registered. It is a great resource, and highly recommended!

Steve Jobs had already become a multi-millionaire by the age of 25, when Apple Computer, Inc (as it then was) went public in December 1980 on the back of having effectively launched the personal computer revolution with the Apple II. In January 1983, Apple launched the Lisa – featuring a graphical user interface (GUI) based on a ‘desktop’ metaphor – and though this machine would have limited commercial success, due to its high price-tag, Jobs was already leading the team at Apple which was working on something called the ‘Macintosh project’. Of course, the resulting product would go on, once again, to revolutionise the way humans interacted with computers.

Jobs was a child of the cold war, who grew up in the sixties and seventies and was strongly influenced by Zen Buddhism (he went on a spiritual journey to India in 1974). But he had, by all accounts, a complex personality, and he would probably have seen no irony or contradiction in his angry pronouncement to his biographer, Walter Isaacson, in 2010 that he was willing to ‘go thermonuclear war’ on Google’s Android operating system, and ‘to spend every penny of Apple’s $40 billion in the bank’, if necessary.

Opening Moves

Apple’s first-strike against Android was a complaint, filed in March 2010 in the US District Court for the District of Delaware and the US International Trade Commission (ITC), alleging infringement of 20 Apple patents – relating to the iPhone’s user interface, underlying architecture and hardware – by Taiwanese smart phone manufacturer HTC Corporation.

Since then, the face-off between Apple and its best-performing Android-based competitors has escalated. By December 2010 a further dispute with Motorola Mobility, Inc had coalesced into litigation over infringement and validity of 24 Apple patents, and 18 Motorola patents, across the ITC and the US District Courts of Delaware, the Western District of Wisconsin and the Southern District of Florida.
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Microsoft Once Again Heads Australian Patent Recipient List

2012-02-05T16:35:00.000+11:00

The chart to the left shows the total numbers of patents granted in Australia on an annual basis between 1992 and 2011. While there have always been fluctuations over time, the number of patents granted in the past two years has reached unprecedentedly high levels.

As we did around this time last year, we have once again taken advantage of our helpful colleagues in the Information Services Department at Watermark Intellectual Asset Management to obtain statistics on patents granted in Australia during the 2011 calendar year. And again, it is interesting to compare the results with the corresponding data for US patents issued during the year, as compiled by patent research company IFI CLAIMS Patent Services.

First and second places in Australia once again went to Microsoft and LG Electronics, although the total number of patents granted to both companies fell by nearly 40%. Pharmaceuticals and healthcare company Novartis gained two spots to come in at number three, only one patent behind LG!

However, both Microsoft and LG bucked the overall trend in Australia, with the total number of patents granted moving to 19471, up from 15877 (+22.6%) in 2010. This makes 2011 the fifth consecutive year of growth in patent grants. The increase over 2010 is the largest year-on-year gain since 1998. By contrast, the US Patent and Trademark Office (USPTO) issued only 2% more patents in 2011 than in 2010.
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Watermark Intellectual Asset Management Gets Social

2012-02-01T23:55:00.000+11:00

Regular readers will know that I do not generally use the Patentology blog for direct promotion of commercial interests. There are details of where I can be found in my professional capacity on the ‘about’ page, and a relatively unobtrusive logo/link at the top of the sidebar, which recognises the considerable support and license I have been given by my employers in developing this blog. Whatever goodwill I have managed to build up, some of it unquestionably belongs to them.

But I am a bit excited today about Watermark’s latest foray into social media, with the activation of an account on Twitter, @WatermarkIAM. I think the profile page looks great, making good use of some of the terrific graphics created for Watermark when the firm freshened up its image and approach in 2010. People following Watermark on Twitter will be able to keep up not only with what is happening with the firm, but also intellectual property and intellectual asset management news and opinions from Australia and around the world which catch Watermark’s attention as being worthy of sharing.

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‘Shades of Gray’ Moves Up to the Federal Court

2012-01-31T01:34:00.002+11:00

Last November we wrote about a dispute between Robert Alexander and the Royal Children’s Hospital (RCH) over ownership of an invention – and corresponding patent application – relating to improvements in a medium used to inoculate and grow viruses (see Shades of Gray as Dispute Over Invention Ownership Goes Viral).

At the relevant times, Dr Alexander was Head of Virology at RCH where his primary role was to maintain the Virology/Tissue Culture and Molecular Diagnostics service, which conducts viral diagnostic work on upwards of 10,000 clinical samples at the hospital each year. The dispute played out before the Australian Patent Office, where a Hearing Officer found that it was one of Dr Alexander’s duties to improve the viral diagnostic techniques used at the hospital, so as to enable RCH to better diagnose viral diseases. She also found that the ‘growth medium’ invention was made in the course of those duties, and thus belonged to his employer, RCH.

We wrote at the time that:

The decision is subject to appeal to the Federal Court. While this is an expensive option, if the RCH’s example of over 10,000 clinical samples per year is typical, there is potential for the invention of the ‘051 application to be quite valuable, and so an appeal by Dr Alexander may not be out of the question.

We can now confirm that Dr Alexander has indeed appealed to the Federal Court of Australia.

The appeal was filed in the Melbourne Registry on 1 December 2011, and was initially listed before Justice Jessup on 21 December 2011. A directions hearing is currently set down for 10 February 2012. The case is file no. VID1352/2011.

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IP Australia and US Courts Grapple with Computer-Implementation

2012-01-29T19:53:00.002+11:00

Sheng-Ping Fang [2011] APO 102 (20 December 2011)
Dealertrack, Inc. v. Huber No. 09-1566 (Fed. Cir. 20 January 2012).

Patentable subject matter – manner of manufacture – abstract ideas – whether computer-implementation sufficient to establish patent-eligibility

No matter what jurisdiction you are looking at, there are some things which are just not patentable. In some cases, such as the countries of the European Patent Convention, the subject matter that is not eligible for patentability is expressly codified. In others – such as Australia, New Zealand, the US and Canada – there is no definitive legislative list of ineligible subject matter, although over time the courts have identified those things for which patents cannot be granted, regardless of novelty or inventiveness.

In all of the jurisdictions in which patent-eligibility has been left to the courts, there is broad agreement on the unpatentability of certain subject matter that is regarded as the pre-existing legacy belonging to all, which cannot be monopolised by any one entity.

The US Supreme Court has established three exceptions to the broad principle that all machines, processes, manufactures and compositions of matter are patentable under 35 USC §101 – laws of nature, physical phenomena and abstract ideas.

In Australia, it is settled law that the ‘manner of manufacture’ test for patent-eligibility excludes laws of nature, mere discoveries, ideas, scientific theories, schemes and plans. Mathematical formulae and algorithms are also excluded, to the extent that claims are not meaningfully limited to their use as part of a patentable practical application.

It can therefore be seen that, while the precise terms used differ in the two countries, there is a broad similarity between the fields of excluded subject matter in Australia and the US.

However, decision-makers in courts and Patent Offices of both countries continue to grapple with the extent to which so-called ‘business methods’ should be patent-eligible. In particular, two recent decisions – one from the Australian Patent Office, and another from the US Court of Appeals for the Federal Circuit (CAFC) – illustrate the lack of any clear direction on one particular question:

If a patent application discloses a method or process which, in itself, falls outside the scope of patent-eligible subject matter, can it be rendered patentable by virtue of machine-implementation, i.e. in the form of a programmed computer?

Evergreening by Business Method? Patent Office Says ‘No’!

2012-01-26T17:01:00.000+11:00

Celgene Corporation [2012] APO 12 (17 January 2012)

Manner of Manufacture – whether a method of dispensing a drug with a ‘prescription approval’ step is patent-eligible – novelty – whether use of a ‘prescription approval code’ makes method new

We wrote back in June last year about Celgene Corporation’s unsuccessful application for an extension of term of a patent for the drug REVLIMID the active ingredient of which is lenalidomide, a close relative to thalidomide which is well-known as a ‘teratogen’, i.e. it causes horrific birth defects when used during pregnancy. (See Celgene Denied Term Extension on REVLIMID Patent.) That application failed because although a new indication for REVLIMID – for treatment of the class of genetic blood disorders disorders known as myelodysplastic syndromes (MDS) – has recently been added to the Australian Register of Therapeutic Goods (ARTG), an extension of term can only be based on the original registration date of a product, and not upon a later date of amendment to the ARTG.

Celgene has since been pursuing certification of an innovation patent directed to unusual subject matter for a pharmaceutical company – a business method. To be more specific, Celgene’s Australian innovation patent no. 2011100687 relates to a method of dispensing thalidomide to a patient.

As explained below, Celgene has thus far been unsuccessful. But its efforts nonetheless raise the question of why a pharmaceutical company should be pursuing a business method patent of this type. The specification notes that ‘the Australian Therapeutic Goods Administration (TGA) has approved an application by Celgene Pty Limited to market thalidomide for the treatment of erythema nodosum leprosum (ENL) and multiple myeloma in specified circumstances’, and that it is expected that it will be useful in the treatment of other conditions. ‘However,’ the specification continues, ‘due to the severe teratogenic risk of thalidomide, methods are needed to control the distribution of this drug so as to preclude administration to foetuses.’

We are therefore inclined to speculate that Celgene predicts growth in the prescription of thalidomide, and has come up with a creative ‘evergreening’-type strategy to benefit from this, irrespective of whether there are any patent rights relating to the treatments themselves, by securing a monopoly over a process for prescribing and dispensing the drug which reduces the risk of harm to patients and foetuses. If the process were to be mandated by the government, Celgene would stand to benefit from every prescription of thalidomide, either by operating the scheme itself, or by collecting patent license fees from a third-party operator.
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Australian Attorneys Receive Professional Development Report Card

2012-01-25T06:20:00.002+11:00

Clients of Australian patent and trade marks attorneys will no doubt be very pleased to know that we are subject to a regime of continuing professional education (CPE), as a condition of annual registration renewal.

This means that registered attorneys are required to undertake a minimum number of hours of professional development each year. For those of us registered as both patent and trade marks attorneys the minimum is 15 hours, of which at least five must relate to patents, and at least five to trade marks. Attorneys registered in only one discipline are required to undertake a minimum of ten hours of CPE activity relating to their practice.

This means that when you engage the services of a registered Australian attorney you can be confident that they are at least minimally up-to-date on developments in their area of practice. We would hope, however, that most practitioners are exceeding the minimum requirements.

The CPE regime has been in place since 1 July 2008, which makes the patent profession a relative newcomer to formal continuing education requirements. The system is designed to be generally self-regulating, with a degree of enforcement in the form of annual audits of a randomly-selected sample of attorneys seeking re-registration each year. After an initial grace period, to allow attorneys to adjust to the new regime, the first audit was conducted in the latter half of 2011, based on a selection of 50 attorneys from a range of backgrounds.
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Interwebs, Save Your Anger for Kim Dotcom

2012-01-22T14:23:00.002+11:00

For the second week running, I find myself feeling compelled to stray from the core subject matter of this blog to express a personal view outside my area of professional expertise.

It seems likely that anyone who is interested in intellectual property and the internet would be familiar with the events which took place last Thursday just outside Auckland, New Zealand, involving a dramatic raid on ‘Dotcom Mansion’ (pictured), the arrest of Megaupload founder Kim Dotcom (nee Schmitz), and the seizure of various allegedly ill-gotten gains, including guns, millions of dollars in cash, and luxury cars worth around US$5 million. If not, there is plenty of coverage to help you get up to speed, such as New Zealand Arrests Over Megaupload Shutdown and Kim Dotcom: Megaupload Founder Arrested In New Zealand from the Huffington Post.

Predictably, there has been a huge outcry from opponents of internet censorship, blaming everyone from the Hollywood movie studios, to an overzealous US Department of Justice, the US government, the FBI, the New Zealand authorities, and anyone else with a vested interest in not having their copyright works ripped off and distributed for free throughout the internet.

But if all of this ends badly for freedom on the internet – and it is entirely possible that, one way or another, it will – in my opinion the blame should be laid squarely at the feet of those actually responsible for the current situation, i.e. Kim Dotcom and his fellow principals at Megaupload.
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Australian Patent Attorneys Accused of ‘Crippling’ Entrepreneurs

2012-01-20T02:13:00.000+11:00

An article appeared this week on the news and information website startupsmart.com.au under the by-line of Michelle Hammond, entitled ‘Patent attorneys under fire over “crippling” fees’.

The article opens with the allegation that:

Australia’s patent attorneys have come under attack for charging too much for patent filing, with claims that some attorneys charge as much as $150,000 to file patents overseas.

Before we turn to the substantive issues raised by the article, we note that this opening raises (at least) the questions of who has launched this ‘attack’, which attorneys are charging ‘as much as $150,000’, and what exactly are these fees covering?

The answer to the first question is pretty clear from the remainder of the article, which shows all the hallmarks of modern media release ‘journalism’. The source of this particular story is the foreign filing service provider inovia, which is just one of a number of such companies that have emerged in recent times to compete directly with ‘traditional’ patent attorneys in the specific area of filing foreign patent applications, and particularly handling PCT national phase entry, European patent validation and patent translations.

The answers to the second and third questions are far less clear, and the StartupSmart article really serves only to muddy the waters further with claims that are in dire need of some sanity-checking.

In this article, we will look at the differences between the filing services provided by patent attorney firms, and those of companies like inovia. We will also address some of the other assertions in the StartupSmart article. And, despite our obvious potential for self-interest in these matters, we will endeavour to do so in a reasonably fair and balanced manner!
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‘Grace Periods’ – Consequences of Disclosure Before Filing

2012-01-16T00:51:00.000+11:00

As most readers will be aware, one of the cardinal rules of the patent system is that you should not tell anybody about your invention before you have an appropriate patent application filed. An invention must be novel and involve an inventive step at the date of first filing. These requirements are tested against the ‘prior art’, which is generally all information made available to the public, by anyone, at any earlier time. There is no general, internationally-recognised, exception to this rule just because a prior disclosure has been made by an inventor or applicant.

However, there are a number of countries in which the patent law provides for a ‘grace period’. For the purposes of this discussion, we define this term as follows:

grace period:- a period of time, prior to the filing of a patent application, during which any disclosures, intentional or unintentional, deriving from the inventor or a subsequent owner of the invention, are unconditionally excused from consideration as prior art against the application.

Our requirement that such disclosures be excused without condition (other than as to timing) is important. We sometimes see discussions of ‘grace periods’ which include references to provisions relating to unauthorised disclosures, or disclosures at recognised ‘international exhibitions’ or before ‘learned societies’. The laws of many countries – including many notoriously grace-period-free European nations – contain such provisions. We do not consider that there is much ‘grace’ in provisions that apply only in narrowly restricted circumstances.
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UK Court Allows Extradition of Alleged Copyright Criminal

2012-01-14T22:30:00.000+11:00

This is one of the rare postings in which I slip a little off-topic (and into the first person) to write about something which is outside my area of legal expertise, but nonetheless of particular personal interest.

You may have been following the news – or, at least, trying to, considering the poor quality of some of the coverage – about 23 year-old UK citizen Richard O’Dwyer, who is studying ‘games software development and interactive media’ at Sheffield Hallam University. He is also accused – with others – of operating a website, firstly from TVShack.net, and subsequently from TVShack.cc, which aggregated links to third party websites from which copyrighted first-run and other movies and television programs could be downloaded or streamed. It is not alleged that TVShack actually hosted any pirated content itself, however O’Dwyer appears to have admitted to earning approximately £15,000 per month from advertising on the site.

TVShack.net was one of the sites closed down when US Immigration and Customs officials ‘seized’ the offending domain names in June 2010 (the US Attorney’s media release is still available, in PDF format). If you attempt to access the site now, you will first be presented with the notice that heads this article, and then be redirected to this guilt-inducing YouTube video explaining the human consequences of piracy. The US authorities have since been tenaciously pursuing those said to be behind the seized domains. O’Dwyer has become the most high-profile target in recent days, as a result of an application by the US government for him to be extradited from the UK to face charges of copyright infringement in the United States. If he is extradited, and ultimately found guilty, he faces a sentence of up to ten years in a US Federal penitentiary, of which he would necessarily serve at least 85% under US ‘non-parole’ laws.

And things are not looking good for O’Dwyer, with District Judge Purdy in the Westminster Magistrates’ Court, issuing a ruling on 13 January 2012 finding no barrier to grant of the US Request for extradition. (Decision: The Government of the United States of America v Richard O’Dwyer – PDF).
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Canadian Patent Office Concedes, Allows Amazon ‘1-Click’ Claims

2012-01-10T00:45:00.001+11:00

After a mere 13 years, it appears that Amazon.com, Inc is finally to receive a Canadian patent on its famous ‘1-click’ ordering system. Although a formal notification of patent grant has yet to issue, various observers have noted status changes in Canadian application no. 2246933 in late December, indicating that the Canadian Intellectual Property Office (CIPO) has conceded defeat in its efforts to declare the Amazon claims ineligible for patenting (see, e.g., this report from Canadian intellectual property lawyer Barry Sookman).

In particular, the records show that on 22 December 2011 the status of the rejected Amazon application as ‘dead’ was reversed, and on 28 December 2011 a ‘final’ fee payment was made, which is only required once the application is found allowable.
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Don’t Let the Bed Bugs Bite (or ‘A Fool for a Client’)

2012-01-04T01:34:00.001+11:00

Abrahams v Biggs [2011] FCA 1475 (23 December 2011)

Confidential Information – disclosure of information regarding potential improvements to invention – whether use of information by recipient is a breach of confidence – whether ‘information’ or merely ‘idea’ – whether identified with sufficient specificity – whether information had necessary quality of confidence – whether circumstances of imparting information imported obligation of confidence

If there were ever a case to prove the hoary old chestnut that the person who acts as their own lawyer has a fool for a client, then this is it. Especially when they do so in a higher court, such as the Federal Court of Australia.

But we will return to the issue of self-representation towards the end of the article. Our interest in the case of Abrahams v Biggs, decided by Justice Jessup just before the holidays, lies not so much in the conduct of the parties before the Federal Court, but rather in the aspect of the dispute relating to an alleged breach of confidence. The case involves invention (and, peripherally, patent applications), and serves as a useful reminder that inventors need to be careful of what they disclose, to whom, and the circumstances in which they make disclosures, especially when potentially valuable ideas are involved.

And to add to the interest, the applicant in the proceedings, Tony Abrahams, was a winner in the episode of the ABC television program The New Inventors which aired on 20 May 2009.
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‘Tis the Season of Renewal, And ‘Top 10’ Lists!

2012-01-02T23:12:00.001+11:00

Happy 2012 to all Patentology Readers!

If this is your first time back since before the holidays, you will be noticing a few changes as you read this. In response to reader demands (you know who you are) we have refreshed the blog to give it a slightly tidier and more modern look. No doubt there is more that could be done, but for now we are subject to the limitations of time, as well as our graphic design and coding skills!

STAYING IN TOUCH

There have been a few changes behind the scenes as well. The most visible outcome of these is a new email address – we can now be reached at mail@patentology.com.au. The old address still works, and all email ends up at the same place, however we encourage use of the new address, in case we ever do move to a new underlying email provider.

The email button in the sidebar uses the new address, and you are also welcome to submit comments, questions or information anonymously via the ‘Ask Patentology’ link, which is always available in the menu bar above.

You can also follow us on Twitter, where we are becoming increasingly active in tweeting information and engaging in discussions, in addition to posting links to new articles. And you can subscribe to our RSS feed.

Finally, we remind all readers that each week we send out an email newsletter reviewing the articles posted in the previous week. We have created a page with more information about this newsletter, including an example so you can see what you would be signing up for! Currently there are 230 subscribers – why not join them (if you have not done so already)? Newsletters will recommence for the year on 9 January 2012.

Access to all of these services is always available in the ‘stay in touch’ box at the top of the sidebar.

WHAT YOU READ IN 2011

Top 10 (or 5, or 20, or whatever) lists are always popular at this time of year. So, clichéd though it may be, the following is a list of the most-read Patentology articles of 2011. These may bring back memories of the year past, but just remember that nostalgia is not what it used to be!
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Australian Taxpayers Dig Deep for ‘Trade Liberalisation’ in LDC’s

2011-12-31T14:13:00.001+11:00

Many Australian taxpayers – this one included – may be surprised to learn that we are collectively donating A$18 million for ‘trade facilitation to support the Least Developed Countries’ (LDC’s) in their endeavours to reduce or eliminate tariffs and ‘non-tariff barriers’ in order to benefit through global free trade.

You might have thought that our government would be loudly promoting this magnanimous gesture, but in fact we might not have found out about it if the World Intellectual Property Organisation (WIPO) had not issued a ~~thank you note~~ media release shortly before Christmas, announcing ‘an Australian donation of A$2 million for projects to help developing and least developing countries (LDC’s) build capacity in the field of intellectual property (IP) and ensure they were in a position to actively participate in the benefits of innovation and the knowledge economy.’

And we might not even have noticed the WIPO media release if it had not been kindly pointed out on the always-on-the-ball IPKat blog earlier this week.

The IPKat, and the WIPO release, both inform us that this is part of ‘a A$16 million contribution announced at the 8^th World Trade Organization Ministerial Conference’.

So, armed with this clue we went in search of further information about our significant financial contribution to global free trade and IP capacity-building…
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Why IP Australia is Clearly Wrong About Research Affiliates

2011-12-28T18:48:00.001+11:00

Research Affiliates, LLC. [2010] APO 31 (17 December 2010)
Research Affiliates, LLC [2011] APO 101 (5 December 2011)

Manner of manufacture – whether method, system and computer program product for generating a weighted securities index is patent-eligible

In this continuation of IP Australia’s ‘war on business methods’, a Delegate of the Commissioner of Patents has, for a second time, rejected claims directed to an invention directed to the construction and use of passive portfolios and indexes for securities trading.

A first set of claims was rejected in a decision issued on 17 December 2010, with that decision subsequently being appealed to the Federal Court of Australia. However, the applicant – originally the inventor Robert D Arnott, and subsequently the assignee, Research Affiliates LLC – had filed a divisional application with slightly different claims, and the appeal was placed on-hold pending a decision on this further application.

The outcome in the second case is unsurprising. The Delegate (who also issued the first decision) has not even bothered to provide full reasoning for his decision, instead settling for a comparison table to explain why the reasons in the first decision apply also to the revised claims of the divisional application. Indeed, he has gone a step further, stating that the divisional claims constitute ‘an even greater contravention’ of the requirement to define a manner of manufacture than the claims of the parent application.

Research Affiliates has now appealed the second decision also. We expect that the two appeals will be joined to a single proceeding, to be heard together.

We are hopeful that the appeals will be successful. IP Australia’s decisions in these cases are not merely wrong, they are demonstrably inconsistent with very clear statements made by the Full Court of the Federal Court of Australia (by which a single judge of the court is bound) plainly indicating that the subject matter of the Research Affiliates claims, in both the parent and divisional applications, is patent-eligible in Australia.
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Patent Attorney Sails to Hobart, Raising Money for MS Research

2011-12-23T00:14:00.001+11:00

Starting on Boxing Day – when many of us will be relaxing at home, and recovering from Christmas festivities, one of our colleagues at Watermark Intellectual Asset Management, Ian Lindsay, will be amongst the crew of the yacht Kiss Goodbye to MS battling whatever nature decides to dish up this year in the Rolex Sydney Hobart Yacht Race.

Ian is a regular crew member on the yacht here in Melbourne, which normally goes by the name Beyond Outrageous. However, for the Sydney-Hobart race it will be kitted out with sails bearing giant red lips in support of the Kiss Goodbye to MS campaign, which will run officially from May 2012. One of Ian’s fellow crew-members has MS (multiple sclerosis), and anyone who knows someone living with this disease – or is at least familiar with the work of Michael J Fox – will be aware of just how insidious it is.

Watermark is proud to be sponsoring Kiss Goodbye to MS in its efforts to raise money for MS research – and also, hopefully, to achieve success in the yacht race! IP Australia is also doing its bit, incorporating the efforts of Ian and the rest of the crew into its ‘IP on the High Seas’ feature.

You can sponsor Ian – who is already over half way to his target of raising A$5000.00 – through his fundraising page at EverydayHero.com.au. If you are a regular visitor to this blog, then you have, indirectly, already made a small contribution – we have donated 5 cents for each one of the 2327 ‘unique visitors’ that Google Analytics tells us have visited the site in the past month.

Many organisations are competing for your charity dollar at this time of year, all of them worthy and deserving causes. While some others may seem more specific to the time of year, the fact is that all charities work hard throughout the year, but rely on the extra generosity of spirit during the festive season for a large portion of their public financial support. Please consider helping Ian to reach his goal, and then track his progress via the Sydney Hobart Yacht Race web site.

That link for donations, again, is www.everydayhero.com.au/ian_lindsay.

And happy holidays to everyone! However you celebrate this time of year, please do so safely – we hope that you will continue to follow the blog in 2012.

IPWatchdog & Patently-O Neck-and-Neck in ABA BLAWG 100!

2011-12-22T10:49:00.000+11:00

In what is becoming something of an annual derby, the two blogs widely-recognised as leaders in US IP law, Dennis Crouch’s Patently-O and Gene Quinn’s IPWatchdog, are once again slugging it out for the title of top-blawg in the 2011 ABA Journal Blawg 100.

Indeed, the two IP law blogs are the clear leaders in their category – each having over ten times the vote of any other contender – but they are also currently numbers two and three overall, out of the 100 nominees, with only the New York Law School students’ blog Legal As She Is Spoke ahead of them (by some margin – one suspects on-campus campaigning might be partly responsible). But the China Law Blog is pretty hot on their heels.

So, have you considered voting in the poll? And if so, then for whom?

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Apple v Samsung Down Under – 2011 Redux

2011-12-22T06:39:00.001+11:00

The opening gambit in the Australian arm of the global dispute between Apple and Samsung finally drew to a close earlier this month, neatly typing up a few loose ends in what must surely be the biggest Australian patent story in recent memory. The stage is now set for the main event – full trials on infringement and validity of various Apple and Samsung patents – during the course of next year.

A review of the story so far is therefore timely, as the Australian courts close down for an extended break over the holiday season, before getting back into full swing for the new year in February 2012.

THE END OF THE BEGINNING

On 9 December 2011, the High Court of Australia refused Apple's request for special leave to appeal from a decision of a Full Bench of the Federal Court denying a preliminary injunction against the launch of the Galaxy Tab 10.1. (Article: Breaking: High Court Rejects Apple Appeal Bid.)

In what turned out to be a temporary win for Apple, an injunction had originally been granted by a single judge of the Federal Court, pending a full trial in relation to Apple’s claims of patent infringement. (Article: Samsung’s ‘Eyes Wide Open’ Sinks Australian Galaxy Tab 10.1.)

Samsung’s tablet is now on sale in Australia, just barely in time for Christmas, and four months after the originally-planned launch in mid-August.

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IP Australia’s Escalating War on ‘Business Methods’

2011-12-21T01:14:00.001+11:00

We would much prefer to be spreading Christmas cheer at this time of year, but unfortunately the time has come to address the elephant with which many Australian practitioners in the information technology space have been sharing a room for too long now.

The elephant in question is the alleged controversy over so-called business method patents.

We have written numerous articles about individual cases, and imagine that by now it is pretty clear that we are not in agreement with IP Australia’s current policies and practices in this area. Recent examples include Another Computer-Implemented Invention Struck Down, Australian Patent Office Shoots Down Another ‘Business Method’, Computer-Implementation No Insurance Against Rejection, and Computer-Implemented Invention Found Unpatentable.

We have now been quoted extensively in a current blog article by Joff Wild on the IAM Magazine web site, in relation to what is now clearly an intentional campaign by IP Australia to challenge the patentability of anything they consider to be a ‘business method’ invention.

Anybody – wherever they may be in the world, but Australian businesses in particular – who invests significant amounts in developing innovative new products and services which find application in the financial services sector, or are directed at improving the efficiency of organisational processes in any sector, needs to be aware of the current question-mark hanging over the availability of patent protection for such innovations in Australia.

You think maybe we are exaggerating? Sorry, but we no longer think that there is any scope to give IP Australia the benefit of the doubt here. We offer the following four examples as evidence that IP Australia is waging a deliberate campaign against ‘business methods’.
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Federal Court Notes Possible Drafting Error in Patents Act

2011-12-15T22:00:00.001+11:00

DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2011] FCA 1411 (7 December 2011)

Amendments – application to Federal Court for direction to amend patent – correction of claim dependency

In an otherwise unremarkable decision, directing the correction of a trivial error in the claims of a patent owned by Garford Pty Ltd, Justice Yates in the Federal Court of Australia has noted, in passing, a possible oversight in the drafting of the Australian Patents Act 1990 (‘the Act’).

In particular, on one interpretation of section 105 and section 102 of the Act, a court may be barred from directing an amendment to correct a clerical error or an obvious mistake. If this interpretation were correct, then it would also apply to correction of such errors by direct application to the Patent Office under section 104 of the Act. This would be a disturbing flaw in the drafting of the Act which could significantly complicate the making of certain amendments which should, in fact, be the simplest cases.
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IP Australia Proposes – Mostly – Modest Fee Increases

2011-12-13T23:59:00.001+11:00

Back in September we reported the announcement by IP Australia, which encompasses the Australian Patent, Trade Marks and Designs offices, that it was about to conduct a periodic review of the fees charged for various services (see IP Australia News – Fee Review and New Web Site).

The purpose of the review is to ensure that the existing IP Australia cost recovery arrangements, fees and charges are transparent and consistent with the Australian Government Cost Recovery Guidelines 2005 and the Australian Government cost recovery policy.

The first stage of the review process is now complete, and a Consultation Paper setting out the details of proposed fee changes has been published for comment on the IP Australia web site.

Two stages of fee increases are proposed to take place in 2012, with most changes taking place on 1 July 2012, and a few to follow later, on 1 October 2012. The later commencement date apples to those fees associated with services for which IP Australia plans to introduce new online or B2B service channels. In general, where both paper filing and online filing options are available, an incentive is provided to improve efficiencies by charging a lower fee for use of the online channel

Additionally, a new ‘preliminary search and opinion’ service, and associated fee, is expected to commence on or after March 2013.

The arrangements proposed in the Consultation Paper are intended to cover a period up until June 2016, at which time fees may again be adjusted following a review.
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Breaking: High Court Rejects Apple Appeal Bid

2011-12-09T11:33:00.001+11:00

Samsung has had a win today in Australia, where the High Court has refused Apple's application for 'Special Leave' to appeal from last week's decision of the Full Federal Court overturing the grant of a preliminary injunction against the launch of the Galaxy Tab 10.1 (see Samsung v Apple – A Closer Look at the Appeal Decision).

Samsung will now be free to sell its tablet in Australia, at least pending a full trial and decision in Apple's primary infringement case in the Federal Court before Justice Annabelle Bennett. Reportedly, we should see the galaxy Tab 10.1 in Australian stores before the end of next week, for those looking to pick up a last-minute Christmas present or two!

There is, at present, no date set down for the main infringement case to be heard. However, Samsung's counter-suit against Apple's iPhone 4S, and other 3G devices, is scheduled to be heard during March and April next year (see Samsung Drops Injunction Demands, Grabs Reins in Apple Dispute).

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Australian Government Improves Access to Commercialisation Grants

2011-12-07T20:52:00.001+11:00

The Australian Minister for Innovation, Industry, Science and Research, Senator Kim Carr, has announced changes to the governments Commercialisation Australia program which will make the grants more affordable and accessible to Australian businesses developing new products, processes or services.

From today (7 December 2011) Australian entrepreneurs will not have to repay the program’s Early Stage Commercialisation grants. Additionally, these grants will be available to more businesses, with the maximum annual turnover permitted by eligible applicants has risen from $20 million to $50 million.

In addition, growing businesses that can benefit from access to skilled managers will now be able to apply for an Experienced Executives grant of up to $350,000, increased from $200,000.

Announcing these changes to Commercialisation Australia's grants, Senator Carr said that they would give Australian inventions a better chance of flourishing in the market place.

Further changes appear to be in the air, with the Minister also announcing that, from early 2012, eligible expenditure guidelines for Early Stage Commercialisation grants will be amended to provide broader support for the development of pilot manufacturing plants and innovative manufacturing facilities.
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