Three-month extensions of time for COVID-19 related delays are now freely available for most Australian patent and trade mark deadlines.
Deadlines that cannot be met due to COVID-19 related ‘circumstances beyond the control of the person’ can now be extended with a simple electronic request via an electronic portal and without official fees.
Justifying the extension is now a matter of ticking a box. From the electronic portal:
These new arrangements apply to requests for extension filed by 31 May 2020 and this date may well be extended in due course. IP Australia (our Intellectual Property Office) plans to regularly review the new arrangement considering the severity of the COVID-19 disruptions.
In addition to these new arrangements, Australia’s (generous) ordinary extension provisions remain in place (see here).
Three-month extensions of time for COVID-19 related delays are now freely available for most Australian patent and trade mark deadlines.
For now, IP Australia (the Australian Patent and Trade Marks Office) has:
provided standard text to be used in support of requests for extension of time;
agreed to refund the usual $100 per month extension fees (see here).
The standard text includes a range of options, each to the effect that the deadline cannot be met “due to the disruptive effects of the COVID-19 pandemic”. The Institute of Patent and Trade Mark Attorneys (IPTA) has circulated an email suggesting that the standard text will be deemed to justify an extension.
These new arrangements will apply until at least 31 May 2020. Currently the new arrangements apply to requests for extension filed by 31 May 2020 and it seems that this date may well be extended in due course.
The extension process should be streamlined in the coming days. IP Australia plans to upgrade its IT systems by the end of April to enable extensions to be requested without paying the fee. IPTA suggests that at the same time the standard text will be replaced by a simple online tick-box.
In addition to these new arrangements, Australia’s (generous) ordinary extension provisions remain in place (see here).
IP Australia (the Australian Patent and Trade Marks Office) has not yet announced any measures specific to COVID-19.
Fortunately, most* Australian patent and trade mark deadlines can be extended if they are missed, or cannot be met, “because of:
a) an error or omission by the person concerned or by his or her agent or attorney;
or
b) circumstances beyond the control of the person concerned…”.
Official extension fees of A$100 (about US$62) per month are payable. A request for extension should be filed promptly once the failure (or inability) to meet the deadline is recognised.
Securing an extension typically requires a “full and frank” declaration evidencing an intention to meet the deadline and a causal connection between an error, omission or circumstance resulting in the failure (or inability) to meet the deadline. Traditionally, a shortage of funds has not been enough to secure an extension.
Whilst measures specific to COVID-19 are yet to be announced:
no doubt an extension could be secured if, for example a deadline was missed because relevant people were suddenly hospitalised; and
we would also expect to secure an extension if a deadline was missed due to a miscommunication related to an urgent shift to employees working from home; although
we would be surprised if an extension could be secured for reasons that essentially boiled down to a lack of business confidence.
A series of experts discuss the route from a new idea to a commercial return and the tools available to make it easier and improve the prospects of success.
We are again proud supporters of the City of Greater Dandenong’s ‘Take a Swing for Charity‘ golf day.
Every year the City of Greater Dandenong, through its business networking unit South East Business Networks (SEBN), and together with key corporate sponsors, holds an annual afternoon of golf followed by dinner and a charity auction to raise funds for local beneficiaries. Over the past decade, the event has raised over $400,000 in support of local charities.
The day is not just lots of fun, but also offers an opportunity to build and strengthen relationships between local manufacturers and other businesses whilst raising money for worthy causes.
This year’s primary recipient is Taskforce we will also ‘share the love’ with the Bushfire Appeal. Taskforce’s core services focus on addressing social issues of drug and alcohol dependency, unemployment, mental health and high risk taking behaviours.
The Intellectual Property Office of New Zealand (IPONZ) has announced significant patent fee increases to take effect in 2020 as detailed here.
Most of the changes take effect 13 February 2020, although the new maintenance and renewal fee rates apply to fees due on or after 13 May 2020.
The fee increases are enormous in percentage terms – New Zealand’s patent fees are currently modest, whilst the increases are significant in absolute terms, e.g.:
the final renewal fees increase from 350 NZD to 1000 NZD – a 186% increase, and
the fee for restoring a patent application increases from 100 NZD to 500 NZD – a 400% increase.
Excess claim fees will be introduced. The new fees will:
apply if examination is requested on or after 13 February 2020,
cost 120 NZD for each 5th claim after the 25th based on the maximum number of claims at any point during the examination process, and
be payable after acceptance (allowance).
Filing a voluntary amendment to reduce the number of claims prior to requesting examination would avoid the fees and may well be economic if there are 40 claims or more – a 150 NZD fee and professional charges are applicable to voluntary amendments. IPONZ has confirmed that filing a voluntary amendment and then requesting examination on the same day will avoid the fees (unless of course the claims are subsequently reinstated).
The boundaries of the monopoly provided by an Australian patent are fixed by the wording of the patent’s claims. We do not have a doctrine of equivalents. Hence the interpretation of the claims is critical, perhaps even more so than in some other jurisdictions.
A welcome degree of certainty
The Australian approach to claim interpretation has enjoyed a period of stability in recent years. Despite a few aberrant first-instance decisions, our Courts have long been consistent as to the principles of construction. This provides a welcome degree of certainty, albeit that there is always scope for argument as to how the principles should be applied on a case by case basis.
Principles of construction
As Australian law now stands, the primary requirement is for the specification to be read as a whole, in light of common knowledge in the art (before the priority date) and from the point of view of the notional non-inventive person skilled in the art (also before the priority date).[1]
Authority setting out and illustrating these principles
A recent appeal[2] centred on claim construction although the applicable principles of construction were not in dispute.[3] In the absence of dispute, the Court simply summarised the relevant principles That summary, across paragraphs 92 to 96 (available here), is highly recommended.
The invention as described and claimed
The invention related to ‘core orientation’ – that is, the rotational orientation of a core sample, e.g. taken when exploring for minerals or petroleum. As one expert witness explained:[4]
The process of orientating drill samples [cores] allows geologists to correlate recovered samples with one another to reveal trends in rock strata and predict whether resource mining is worthwhile.
The invention was an advance over earlier mechanical technologies and entailed recording orientation at time intervals, then relating this information to the time when the core sample was separated from the body of material. There was much discussion of two timers (an above-ground timer and a below-ground timer) although it was noted[5] that the claim does not refer to these timers. The key claim in question read as follows:
A method of providing an indication of the orientation of a core sample relative to a body of material from which the core sample has been extracted, the method comprising:
drilling a core sample from a body of material with a core drill having an inner tube;
recording the orientation of the inner tube at predetermined time intervals during said drilling, the time intervals being referable to an initial reference time;
inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material;
removing the inner tube, with the core sample held therein in fixed relation to it, from the body of material; and
relating the inputted specific time to the recorded time intervals to obtain an indication of the orientation of the inner tube and consequently the core contained therein at the specific time. [our emphasis]
The preferred embodiment described in the patent specification entailed above- and below-ground timers mutually synchronised by being contemporaneously started to count time forward from a common initial reference time. The specification did not explicitly suggest that the invention was limited to this synchronicity, nor did it explicitly suggest any version of the invention that did not entail this synchronicity.
The impugned product
The impugned product[6] entailed above- and below-ground timers that counted time forward from different starting points:
the time of the core break is recorded by pressing a ‘Mark button’ on the above-ground device; then
after a wait period of 33 seconds, the elapsed time is transmitted to the downhole tool; then
the elapsed time is subtracted from the below-ground timer to establish at what time, on that timer, the core break happened.
The outcome
The lower Court’s finding of infringement on the basis that ‘beyond’ means no more than ‘after’ or ‘later’ was affirmed.
The importance of amendments to suit Australian practice
When prosecuting foreign-originating patent specifications, Australian patent attorneys routinely make minor amendments for strict consistency with the independent claims and to moderate the promise of the invention. Very often specifications proclaiming ‘the invention achieves…’ are amended to specify that ‘a preferred embodiment of the invention achieves…’. This latest decision illustrates the potential importance of such amendments.
The infringing party argued that the lower Court erred by failing to construe the claim in the context of the specification, and emphasised that the one embodiment described in the specification involves two timers being contemporaneously started.[7] The Appeal Court affirmed the lower Court’s rejection of the argument on the basis that the specification discussed contemporaneous starting only in the context of the embodiment.[8] An extract of the patent specification is reproduced below.
From the forgoing (sic), it is evident that the present invention provides an orientation device which does not require physical marking of a core sample prior to extraction thereof from the ground. Indeed, the orientation device according to the embodiment is particularly convenient for an operator to use. All that is required is for the operator to start the orientation device prior to the inner tube assembly 36 being inserted into the drill hole, and contemporaneously start a timer for recording the time duration before the drilling operation ceases to allow the generated core sample to be retrieved. (our emphasis)
Support
The preceding discussion begs the question as to whether the claim lacks support to the extent it embraces methods that do not entail synchronicity.
Whilst in 2013 the Australian support requirements were harmonised with the corresponding requirements of the European Patent Office, the patent in suit did not need to pass this test (because examination of the application on which the patent was granted was requested prior to 15 April 2013). Rather, the claim faced (and passed) the ‘fair basis’ test which can be passed with little more than textual conformity with a consistory clause.
Final thoughts
The patentee ultimately won the day although, as is so often the case, in the full glare of hindsight there are some lessons for draftsmen in this latest decision – the patentee faced the challenges of litigation in part because there was an issue of construction to litigate.
Whilst of course we all strive to draft crystalline claims that leave no scope for argument (and perhaps there is room for improvement in the language of the claims of the present case), the impact of the descriptive text is not be forgotten.
A specification mentioning an unsynchronised version of the invention in terms consistent with the claim language would have assisted with the construction of the claim. In the context of newer Australian patent applications (and applications to be prosecuted elsewhere), mentioning such other examples of the invention would also help support the claims.
The patent-eligibility of a computer-implemented business method was recently before an Australian Court. The Court emphasised that mere ‘generic computer implementation’ is not sufficient to render abstract ideas patentable, but declined to provide comprehensive guidance on the patent-eligibility of computer-implemented inventions (CIIs).
In Australia:
patent protection is available for ‘manners of manufacture’ and it is this requirement that gives rise to subject matter considerations akin to section 101 considerations in the US;
business innovation in the form of mere schemes, intellectual information and abstract ideas has long be regarded as inherently unpatentable (regardless of how inventive or valuable that innovation might be); and
generic computer implementation is not sufficient to turn such business innovation into (potentially patentable) technical innovation.
The borderline between (unpatentable) business innovation and (potentially patentable) technical innovation in connection with certain CIIs is a challenging area of our law. There is no clear template that can be applied to assess whether an invention in the vicinity of this borderline is patentable. Indeed, our Courts have explicitly rejected formulaic approaches to this assessment.
It was hoped that a recent decision [1] of the Full Federal Court [2] would provide guidance. Five judges, rather than the usual three, were assigned to the case and the invention was a good example of an invention in the vicinity of the borderline. The Patent Office and the Institute of Patent & Trade Mark Attorneys also weighed in with submissions.
The invention related to ‘A method displaying information relating to one or more entities [e.g. people or companies], the method including, in an electronic processing device’ performing certain steps which the Court summarised [3] in the following terms:
(a) generating a network representation by querying remote data sources;
(b) causing the network representation to be displayed to a user;
(c) in response to user input commands, determining at least one user-selected node corresponding to a user-selected entity;
(d) determining at least one search to be performed in respect of the corresponding entity associated with the (at least one) selected node;
(e) performing at least one search to determine additional information regarding the entity from at least one of a number of remote data sources by generating a search query; and
(f) causing any additional information to be presented to the user.
An apparatus, that includes an electronic processing device that performs these steps, was also claimed.
The Court affirmed the lower Court’s decision that this invention was not a ‘manner of manufacture’ and was therefore unpatentable. Unfortunately, the decision did not lay down any new statement of principle to clarify the borderline. Indeed, the Court opined [4] that:
This appeal does not provide the occasion for this Court to set out the metes and bounds of patentable computer-implemented inventions…
Whilst declining to provide comprehensive guidance, the Court commenced its ‘analysis by noting certain propositions which are not, and cannot be, in dispute’. [5] In broad summary those propositions include:
‘in the context of considering whether a claimed invention is a manner of manufacture, the inquiry is not into the meaning of words but into the breadth of a concept which the law has developed…’ [6]
‘when determining whether a claimed invention is a manner of manufacture’ the invention must be characterised ‘as a matter of substance, not merely as a matter of claim form’ [7]
an “artificially created state of affairs of economic significance” [an oft cited passage from earlier authority] is not a definition of ‘manner of manufacture’ but may well be a sufficient formulation ‘for a large class of cases’.
accept ‘that the method claims in suit are, in truth, no more than an instruction to apply an abstract idea (the steps of the method) using generic computer technology’;
emphasise that mere ‘generic computer implementation’ is not sufficient to render abstract ideas patentable; and
demonstrate the primacy of substance over form by extending the conclusion to the apparatus claims.
The abolition of the Australian innovation patent will likely be confirmed in late 2019.
The Australian innovation patent is an 8 year patent intended to protect lower level inventions that do not qualify for 20 year patents. There have long been criticisms that innovation patents are too easy to get and can validly cover too much.
After much discussion and a few false starts (see e.g. here), a bill[1] to abolish the innovation patent was introduced to Parliament 25 July 2019 and was today referred to the Senate Economics Legislation Committee. The committee is due to report 4 September 2019. The progress of the bill can be tracked here.
There is a good chance that the bill will pass. Even so, innovation patents will not immediately disappear. The bill provides for an orderly phase-out that protects existing rights holders (in line with draft legislation discussed here). The timing will depend on when the bill passes and receives royal assent, although it seems likely that the last innovation patents:
will be linked back to an initial patent application filed by about late 2020; and
will expire by about late 2028.
Accordingly:
it may well be prudent to modify patent filing strategies as late 2020 draws near; and
innovation patents will no doubt remain controversial features of the Australian patent landscape for years to come.
[1] the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019
All day ride – Friday
Morning ride – Saturday