Intellectual Property
LPAB Winter Session 2012
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Every person who shall build any new and ingenious device in this City not previously made in our Commonwealth shall notice of it to the office of our General Welfare Board when it has been reduced to perfection so that it can be used and operated. It is forbidden to every other person in any of our territories and towns to make any further device conforming with and similar to said one without the consent and licence of the author for the term of 10 years…
We have among us men of great genius, apt to invent and discover ingenious devices… more such men come to us every day from diverse parts. Now if provision were made for the works and devices discovered by such persons so that others who may see them could both build them and take the inventor’s honour away, more men would then apply their genius, would discover, and would build devices of great utility and benefit to our Commonwealth.
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Venice Statute 1474
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A monopoly being a derogation from the common right of freedom of trade could not be granted without consideration moving to the public .. In the case of new inventions the consideration was found either in the interest of the public to encourage inventive ingenuity or more probably in the disclosure made to the public of a new and useful article or process
[1913] AC 781 at 394 per Lord Parker
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The main purpose of a patent system is to stimulate industrial invention and innovation by granting limited monopoly rights to inventors and by increasing public availability of information on new technology
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Second Reading Speech,
Patent Amendment Bill 1981
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Pharmaceutical products and processes
Engineering products and processes
Medical and therapeutic devices
Micro-organisms
Computer technology
Chemical compounds
Consumer electronics
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1992, 1996 - CSIRO Radio-Physics team develop technique to to cut through atmospheric distortion and “unsmear” the signal to measure the pulses emanating from exploding black holes
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1994 - IEEE 802.11 telecommunications standard allows an electronic device to exchange data wirelessly (using radio waves) over a computer network, including high-speed
Internet connection
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1998 - CSIRO assert rights in 802.11 standard
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April 2009 - CSIRO royalties $250 million (Dell, HP, Microsoft,
Intel, Nintendo and Toshiba) total royalties $440 million
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Venice 1474 – privileges for inventors of new arts and machines
Elizabeth I –royal prerogative to grant privileges
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Darcy v Allin – monopoly for foreign playing cards
Court declared monopoly void because monopolies raise prices, debase quality, cause unemployment but could grant monopoly for inventions
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James I Statute of Monopolies 1624 declare monopolies void except for inventions
“sole working or making of any manner of new manufacture …[granted] to the true and first inventor
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Standard patents
Innovation patents (introduced 2001)
Patents of addition
◦ protect improvements and modifications of granted patent
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Standard patents may be
Standard
Selection patents
◦ Select member/s from previously known class and find new uses and qualities
Combination patents
◦ elements or integers in claim interact produce new result or product with each other to
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Replace petty patents
Only require “ innovative step ” (not inventive step)
Up to 5 claims
Max term 8 years
Presumed valid – formality check only no extensive examination tho can’t enforce unless certifed after examination not plants or animals or biological processes for their generation
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Dura-Post v Delnorth Pty Ltd
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Provisional
◦ Describe invention
◦ Secure priority date
◦ 12 months to file full application
Complete – s40(2) – (4) and Sched 3,
Regulations
◦ Fully describe invention including best method for performing it known to A
◦ claims defining invention and delineating monopoly
◦ claims must be clear, succinct and fairly based on matter described
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 patent subsist from priority date prior art base examined from priority date
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 date file complete specification date file provisional specification if – s43, r3.12-3.13
◦ file complete specification within 12 months
◦ complete specification fairly based on provisional specification for amendments, date file amendments – s114, r3.14
date file application in Paris Convention country provided file in Australia within 12 months – s94-96, r3.12
date file Patent Co-operation Treaty application – s88-93
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Mond Nickel Company has claimed invention been broadly described in provisional specification
Does provisional specification contain anything which is inconsistent with claimed invention
Does claim include a feature which the provisional specification is silent
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CCOM v Jiejing not over-meticulous verbal analysis
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Rehm v Webster Security System International
Specification contained a real and reasonably clear disclosure of invention
Alleged invention as claimed is broadly, in a general sense, described in specification
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Preliminary processing and publish details – s53
After 18 months from priority date, publish specification for open public inspection (OPI) s54 – 55, r4,2, 4.3
Request examination (lapse if no request within 5 years) – s44
◦ Applicant must disclose foreign documentary searches
◦ Person eligible under s15
◦ Application satisfy formal requirements s29
◦ Specification complies s40
◦ Invention is manner of new manufacture, novel and inventive (balance of probabilities)
◦ Invention not excluded from patentability – s18, 50
◦ Application not “double patenting”
Acceptance – s49 or adverse report – can amend application – s104, 107
3 months for opposition – s59, r5.3
◦ Applicant not entitled
◦ Invention not patentable – s18
◦ Specification not comply s40
Sealed grant – s61 -62
Re-examination (on request) – s97 - 98
◦ Novelty and inventive step
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20 years from date of complete specification – s65 and r6.3(date), s67 (term) extend max +5 yrs for pharmaceutical substance
– s70
◦ included in Register Therapeutic Goods
◦ at least 5 years between patent date and first regulatory approval date for substance because health and safety laws reduce effective term because need provide extensive trial and test data
3 rd party can use pharma patent for nontherapeutic or making application to get marketing approval – s119A
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Patentee not entitled
Not patentable invention
Patent obtained by fraud or misrepresentation
Specification not comply s40
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Infringer can counter-claim revocation – s121
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“manner of manufacture” within Statute of
Monopolies
Novel
Involves an inventive step
Useful
Not been the subject of secret use not human beings and biological processes for their generation distinct requirements of a patentable invention
–
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– refer to 1624 Statute so import caselaw
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Products or processes that have an industrial application
If follow specification, produce product or produce results
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A27 TRIPS – capable of industrial application
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"a method or process is a manner of manufacture if it
(a) results in the production of some vendible product or
(b) improves or restores to its former condition a vendible product or
(c) has the effect of preserving from deterioration some vendible product to which it is applied
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 new method of killing weeds (thistle, nettle) in broadleaf crops (celery, parsnip, clover, lucerne) using known product
Word “manufacture” used not to reduce patentability but as part of general title for whole category of patentability
May be discovery without invention – discovery of some piece of abstract information without any suggestion of a practical application of it to a useful end
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 method’s end result is artificially created effect the result possesses its own economic utility consisting in an important improvement in the conditions in which the crop is to grow, whereby it is afforded a better opportunity to flourish and yield a good harvest.
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The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is materia l, in the sense that the process belongs to a useful art as distinct from a fine art - that its value to the country is in the field of economic endeavour.
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“what is meant by a "product" in relation to a process is only something in which the new and useful effect may be observed. Sufficient authority has been cited to show that the
"something" need not be a "thing" in the sense of an article; it may be any physical phenomenon in which the effect, be it creation or merely alteration, may be observed: a building (for example), a tract or stratum of land, an explosion, an electrical oscillation.
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 discovery is only patentable when embodied in practical, technical or industrial application
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Diamond v Diehr
Process for molding raw, uncured rubber into cured precision products
Arrhenius equation (rubber burning point) - not patentable
Use Arrhenius equation in a computer program to open the press and remove the rubber patentable
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Computer program is algorithm but if applied for a particular result
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IBM v Commissioner of Patents improved method for producing curved images in computer graphics
Controlling computers to operate in a particular way
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CCOM v Jiejing
Assemble text in Chinese characters on computer screen mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour
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Welcome Real Time SA v Catuity Inc method involving credit smart cards that included computer chip that recorded loyalty points from multiple distinct retailers onto a computer file on chip
No physically observable end result in the sense of a tangible product, but tangible result from POS terminal writing information into computer file and print coupon
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Grant v Commissioner of Patents 2005
Method to protect assets against unsecured creditor’s claims – create trust, gift to trust, trustee loan sum from trust, secure loan by charge
“the method of his patent does not produce any artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect”
Physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required.
Mere scheme, abstract idea, intellectual information
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Some countries expressly exclude – TRIPS A27 exception
Initially excluded as essentially non-economic
Joos v Commissioner of Patents – strengthen hair and nails commercial application in hairdressing
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Anaesthetic Supplies v Rescare – method and device for reducing sleep apnoea
Bristol Myers Squibb v Faulding – method of administering drug to treat cancer
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Patient may be denied medical treatment but no distinction in principle between product treating human and method of treating human but encourage research especially new uses of existing drugs – eg aspirin
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Is novel when compared to prior art base at priority date
New – not been done before
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the reason that it has not been done before is because it is silly or obvious
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 whether prior art base anticipates the invention prior art base reveal essential features of invention
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Hill v Evans
A person of ordinary knowledge of the subject would at once perceive, understand, and be able to practically to apply the discovery without necessary of making further experiments and gaining further information… Whatever is essential to the invention must be read out of the prior publication
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Meyers Taylor v Vicarr Industries
Reverse infringement test – if the patent was valid, would the prior art infringe the patent
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System of using “tilt up walls” device to quickly build concrete walls
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Ramset – essential feature was extended length of lever arm, designed to prevent premature release of clutch not provision of cable
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Advanced – essential feature are hoisting cable, shackle, anchor in wall section, ring clutch and a release cable
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Release cable is essential because specification emphasis that invention is quickly releasable
 prior art does not disclose release cable so not anticipated
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Information in document that is publicly available
Information made publicly available through doing an act
Information in complete specification with earlier priority date even if unpublished at date of application
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Information in single document
Information in single act information in documents or acts if relationship between documents and acts that person skilled in the relevant art would treat as a single source of information – s7(1)
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Can’t mosaic if information is not otherwise cross-referenced or connected
“the picking out of individual items from prior publications… and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed… not a permissible process” 3M v Bieirsdorf
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If the public has access to it, free to use information
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Even if disclosed to one w/o obligation confidentiality
Fomento v Mentmore – ballpoint pen given to govt dept
Merck v Arrow Pharmaceuticals – Lunar News given to some hospitals/universities and not catalogued
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Even if no-one but an expert can understand it
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Even if in a foreign language
Dennison Manufacturing v Monarch Marketing Systems
–specification about plastic tags to attach price labels
“document resting quietly in French language in
Canberra”
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Distribute samples
Manufacture devices and products
Display at public event
Offers to sell
Description in obscure publication
Information on internet
Images on internet
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 http://www.youtube.com/watch?v=JQ8pQVD yaLo
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 must file within 12 months (some 6 months)
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Publication without patentee’s consent
Disclosure to public authorities
Showing or use at recognised exhibition
Publication in paper and read or published by learned society
Working in public of invention for reasonable trial if necessary for working to be in public
◦ Newall & Elliott – laying submarine telegraph cable
Patentee’s use or disclosure in the previous
12 months
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 can’t be novel if method uses known substances for purposes consistent with known properties
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Only if method uses unknown or unsuspected property of the material so that it serves a new purpose
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 real advance and more than an obvious extension, variation or combination of prior art invention involves inventive step – s7(2) unless obvious to person skilled in art in light of
◦ common general knowledge in Australia
◦ certain prior art
(from April 2013 – common general knowledge anywhere, any prior art) certain prior art – s7(3) prior art information / combination of prior art information skilled person reasonably expected to have ascertained, understood, regarded as relevant and combined
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Identify relevant art
Construct hypothetical skilled person
Skilled but non-inventive ,not particularly imaginative worker in relevant field –
Identify scope
◦ common general knowledge
3M v Beiersdorf common general knowledge of person skilled in art, information known or used by those in relevant trade, background knowledge and experience – 3M v
Beiersdorf may not include all public knowledge, published specs standard textbooks, technical manuals, trade magazines
◦ prior art notional skilled reasonably expected to ascertain, understand, regard as relevant, and combine if separate
Emperor Sports – not reasonably expect ARL coach, referee, umpire or administrator to conduct USPTO search
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Would hypothetical skilled person knowing the information have found it obvious to take the step
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simple
merely skill, tenancy, managerial efficiency using familiar theory
if difference plain or very plain
if take routine steps/experiments that try as matter of course
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active ingredient coated to allow tablet to pass through stomach but dissolve in intestine
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( solution to a problem bu t inventiveness may be in articulating the problem)
Satisfy long felt need
Commercial success of the invention
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( but may be good workmanship, price or other qualities)
Willingness of rivals to create imitation
 may be slow and laborious or brilliant coup
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Results promised in the specification can be achieved by following the instructions in the specification
Does what the patentee intended, achieves intended result
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 not if the apparatus does not work as claimed read in light of specification as a whole according to what an intelligent person skilled in art and desirous of making use of invention would do
 from April 2013 - a specific, substantial and credible use for the invention is disclosed in the Patent specification – s7A
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Prevent patentee effectively prolonging monopoly
Whether patentee obtained a commercial benefit from activity before priority date – Azuko v Old
Digger
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 exceptions – s9 reasonable trial and experiment
Use by a public authority
Use solely in course of confidential disclosure (eg to patent attorney, potential investor)
Other uses for purpose other than trade or commerce
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“manner of manufacture” exclude patents that are contrary to law or generally inconvenient
A27 TRIPS – members may exclude patentability
…to protect human life
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Re Woo-Suk Hwang
No patent for method of producing hybrid embryo created by transferring nucleus of human cell into bovine ovum and activating the ovum
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Fertilitescentrum AB and Luminis Pty Ltd
Method of growing pre-blastocyst human embryos in a specifed medium
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Describe invention fully, including the best method known to the applicant of performing the invention claims must be clear and succinct and fairly based on the matter described in the specification
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 sufficiency - describe invention fully describe fully enough to allow informed reader with reasonable skill in trade to perform
 disclose best method known of carrying out invention from April 2013 - specification discloses invention in manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art
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 public has right to know what may/may not do
 define clearly and with precision the monopoly claimed so that others know the exact boundaries of area
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Skilled addressee applying common sense and common knowledge
if claims lack clarity
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Compare claims with invention disclosed in specification
Lockwood Security Products v Doric Products patent for a key controlled latch
Whether real and reasonably clear disclosure in body of specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say, in a general sense, described in the body of the specification
 from April 2013 - claims are fully supported by the description
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Eligible person – s15
◦ inventor
◦ assignee of inventor (person who would be entitled to have patent assigned to them)
◦ Successor to inventor or assignee
◦ Legal personal representative
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Joint owners – s16
◦ own as tenants in common
◦ can work patent without accounting
◦ can’t grant licence or assign without other’s consent
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 objectively assess contributions - if person’s contribution had a material effect on the final concept of the invention concept of invention from whole of specification in claims don’t look at inventiveness of the contribution
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Polwood v Foxworth –method and apparatus for producing potting mix from waste organic materials
Polwood – steam treatment and de-watering proces
Foxwood – extended range of materials, design and build apparatus to put process into effect joint inventors
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Employers not automatically entitled
Only if entitled to be assignee – s15(2)
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Employment contract
◦ Express term
◦ Implied term
UWA v Gray – UWA professor research use of microspheres for treatment of cancerous tumours especially liver not necessary to imply term obliged to conduct research but no duty to invent
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Nature of invention
Duties employee engaged to perform
Employee’s position in the company
Circumstances invention made
◦ Whether made during working hours
◦ Whether useful to employer business
◦ Whether employee responding to employer instructions
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Exclusive right to exploit invention and authorise others to exploit – s13(1)
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Exploit – Sched 1
Product - make, use, sell or otherwise dispose, import or keep for purpose of exploiting
Process – use the method, and exploit any resulting product
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Assignment
◦ capable of assignment – s13(2)
◦ assign in writing signed by assignor – s14
Security interests
◦ Register interests Register of Patents – s187, r19.1
◦ Personal Property Securities Act
Licence
◦ register interest Register of Patents – s187,r19.1
◦ Co-owners must all consent to licence – s16
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Implied licence
◦ Purchaser’s right to use product
◦ right to repair product
Compulsory licence – s133, r12.1
Person may apply to Federal Court for licence to work invention
◦ Patentee fail to satisfy reasonable requirements of public
 trade or industry unfairly prejudiced or demand not met because fail manufacture to adequate extent, supply on reasonable terms or grant licences on reasonable terms – s135
 applicant made reasonable efforts for reasonable time to obtain licence on reasonable terms
 Patentee no satisfactory reason for failing to exploit
◦ Patentee using exclusivity to act anti-competitively contravening
Consumer and Competition Act
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Crown use for services of Commonwealth or State – s163
Exploitation necessary for proper provision of services
Must pay remuneration – s165
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 applicant is registered proprietor or exclusive licensee patent in force defendant perform act in Australia after date of publication act within patent owner’s exclusive rights
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Claims determine legal limits of monopoly construe claims then compare infringing article
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Decor Corporation v Dart Industries
Kinabulu Invstments v Barron and Rawson
Purposive construction
Read specification as whole
Don’t confine claims by limitations in specification tho specifications may define or qualify words in
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 claims, may resolve ambiguity and provide background
Court construe not expert
Terms given ordinary English meaning tho evidence from experts on scientific or technical terms)
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 purposive construction rather than literal construction essential requirements of invention – essential integers of claim still infringe if replace inessential with mechanical equivalents
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Catnic Components v Hill & Smith lintel in spanning space above window and door openings
Claim – supporting back plate extending vertically
Infringer – back plate 6 o from vertical, with no significant change of strength or function whether persons with practical knowledge and experience of kind of work in which invention intended to be used would understand that strict compliance with a particular descriptive word was intended to be essential requirement so any variation was outside monopoly
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 must complete finished article including all integers
Dunlop Pneumatic Typre v David Moseley bicycle wheel – hub, spoke, rim, tubeless tyre not infringe to manufacture tyre only even if intend consumers to combine with other integers
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 include if manufacture product in course of manufacturing non-infringing product
Bedford Industries v Pinefair garden edging product including pine logs arranged side by side and connected by two strands of bands changed product by severing strip so secured by hinges
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if merely possess, purchase, own
if merely warehouse or transport
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 infringe
selling components that consumer must assemble
sale sailboard in kit of parts
because common way of selling sailboard
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 use
Product – unauthorised commercial use
Process – any unauthorised use import
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Patentee may control import
only where patentee imposes conditions otherwise exhaustion of rights
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 supply integer knowing that combine with other integers
will
 supply unpatented product with instructions to
to use in infringing way
=>supplier not infringing
=>supplier may not be joint tortfeasor
merely facilitating not participating
no common design
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If use of product would infringe patent then supply of product is infringement
Use of product
◦ Use if only one reasonable use
◦ Any use if supplier reason to believe that person would put to use (unless staple commercial product)
◦ Use of product in accordance with supplier’s instructions
◦ Use of product pursuant to any inducement by supplier
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Bristol Myers v Faulding method of administering anti-cancer drug
Faulding provide hospitals with product information guides and protocols
If the doctor’s use of drug would infringe BM patents,
F’s supply to doctor infringes patent
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NT v Collins method for producing blue essential oils ffrom cypress pine
NT grant licence to ACOC to enter NT land and take timber
Product is any product - not limited to product from use of patented method
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Authorise more than countenance or enable
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Misleading and Deceptive – s18 ACL
supplier may be guilty of misleading and deceptive conduct for failing to warn customers of real possibility that use of products infringe patentee’s patent
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 act to include therapeutic goods on Register of Therapeutic Goods s 119A
 act to obtain approval required by Cth / State law to exploit a non-pharma product, method or process - s119B
(eg conduct research and trials necessary to gain regulatory approval)
 experimental uses of the patented invention – s119C
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 foreign vessels temporarily in patent area –
118 prior use – s119 person exploiting, or taken definite steps to exploit product or process before priority date
if stop exploiting or abandon steps to exploit before priority date except temporarily
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Apple claim Samsung Galaxy infringe claims in two Apple patents touch screen patent heuristic patent
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Samsung seek revocation
◦ Leeper article
◦ Mulligan patent application
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