To celebrate International Women in Engineering day (23 June 2020), Shelston IP would like to highlight our outstanding female patent attorneys and patent engineers qualified in this field.

With 30 years of experience in the patent profession, Caroline Bommer is the female engineer that we aspire to be. She provides a wonderful example of the possibilities for our young female attorneys and is appreciated by all of her clients, particularly in her effective communication and her ability to understand their business strategies. Caroline’s mechanical engineering expertise is also extensive, including practical knowledge acquired prior to joining the patent profession in the industries of building, transport, aerospace, and defence. She has a keen interest in green technologies, with many years of personal involvement in solar car racing. Ask her to take you for a spin!

Tam Huynh works in the fields of electrical engineering and information technology patents. Growing up, Tam would find any excuse to integrate electronics into her arts and crafts projects. This included raiding her Dad’s electronics kit to make LED greeting cards for her family. She went on to study Computer Engineering at University and undertook a project exploring the use of solar power technologies and their application with mobile devices. Tam now assists with the ongoing management of patent portfolios in a range of fields, including electrical power systems, information and software systems, mining and automation, and medical devices. Tam also holds a Bachelor of Commerce degree and her accounting background adds additional depth to her handling of financial-system related inventions.

With childhood memories of jumping off a red billy cart and yelling “Newton’s third law”, Allira Hudson-Gofers brings her enjoyment of physics and engineering into her role as the head of Shelston IP’s Engineering and ICT Patents Group. Allira studied both mechatronics and biomedical engineering at University, going on to develop particular expertise in research, product development, regulatory affairs, and intellectual property in the medical technology space. She now applies this expertise, together with her recent MBA studies, to help her clients protect and commercialise their innovations.  

Connie Land had her interest in the human body and medical devices sparked in high school, which lead her to pursue a degree in Biomedical Engineering. Connie started her career with hands-on experience maintaining, repairing, and programming medical devices.  Last year, after discovering that the role of a patent attorney was a career option for engineering graduates, she hung up her tools and joined Shelston IP as a Patent Engineer. Connie now works with medical devices in a different capacity and uses her passion and knowledge of medical devices and technology to help her clients navigate the path to obtaining patent and design protection. She is currently studying a Masters in Intellectual Property and is looking forward to becoming a registered patent attorney in Australia and New Zealand. 

Authored by Allira Hudson-Gofers, Caroline Bommer, Tam Huynh and Connie Land

Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138

Summary

  • Applicants should include the best method(s) of performing the invention known at the time of filing a patent application, withholding better or superior embodiments or features can result in invalidity of the granted patent.
  • Novelty destroying prior use does not always need to be corroborated by contemporaneous documentary evidence.
  • Experts need to be carefully selected as an unsuitable expert will be less persuasive on inventive step issues.
  • Claims are invalid for inutility where they include embodiments that are not useful.

Background

This is a decision of the Full Federal Court of Australia (FFC) on an appeal from a judgement at first instance on the validity of Australian Patent Number 744870 (the Patent) in the name of Sandvik Intellectual Property AB (Sandvik) and its alleged infringement by Quarry Mining & Construction Equipment Pty Ltd (Quarry).  The Patent and claims were directed to an extension drilling system for drilling holes to insert cable bolts in underground mines.

At first instance, it was held that claims 1 to 4, 6 and 7 of the Patent were not infringed and were invalid on the grounds of failing to describe a best method of performing the invention, lack of novelty, lack of inventive step and inutility.  Sandvik appealed on all grounds.

The appeal decision

In respect of best method, the claims of the Patent did not define a water seal.  However, evidence indicated that a water seal was a “real issue that needed to be overcome” for the invention to work.  The Patent had only described a horizontal type seal member, whereas at the time of filing of the Patent, Sandvik had developed a superior seal member having upper and lower sections.

Sandvik submitted that the best method requirement should be assessed against the claimed invention or having regard to the “promise” of the invention relative to the problem to be solved.  The FFC disagreed with both submissions, holding that the best method relates to the invention as described in the Patent.  On this basis, the embodiments of the invention as described (not as claimed) omitted the superior seal member.  Thus, the Patent was invalid for not meeting the best method requirement.

On novelty, three witnesses for Quarry provided evidence of invalidating prior use based on their personal recollection of a system 25 years before the priority date.  No supporting evidence was provided, such as drawings, photographs, samples or documents.  The FFC held that the absence of supporting evidence did not render the prior use evidence unreliable and referred to the trial judge’s opinion that the witnesses were credible under examination and cross-examination.  Thus, the claims of the Patent in suit were also invalid for lack of novelty.

Sandvik was successful on the inventive step ground.  The FFC held that the trial judge gave too much weight to one of Quarry’s experts, where that expert was shown not to be aware of information the parties had agreed was common general knowledge in the art and had mischaracterised other information as being common general knowledge when it in fact was not.

Dependent claim 4 recited that an extension rod could have a hexagonal or round cross-section that is driven by a chuck or an adaptor.  However, evidence showed that if the extension rod had a round cross-section, it could not be driven either way to make the invention work.  Accordingly, the trial judge held it lacked utility.  On appeal, Sandvik sought to rely on a person skilled in the art would construe the claim using the principle of purposive construction in order to exclude this non-working embodiment.  The FFC held that the proposed purposive construction could not overcome the plain and unambiguous meaning of the words in the claim.  Thus, claim 4 was invalid for inutility.

Conclusion

This case provides a warning to applicants to ensure that the description of embodiments in a patent specification is updated prior to filing, especially when the application is claiming priority to an earlier patent application.  Sandvik’s failure to include the superior sealing member rendered the Patent invalid even the sealing member was not claimed.

The case also demonstrates the importance of witnesses and experts.  A credible witness can enable prior use evidence to invalidate a patent even where it is not corroborated by other contemporaneous documentary evidence. Similarly, an expert shown not to be a suitable person skilled in the art will undermine any inventive step arguments relying on that expert’s evidence.

The finding of inutility of claim 4 demonstrates that Applicants should be careful in drafting claims that include within their scope embodiments that do not work; otherwise the entire claim will be rendered invalid.

Authored by Andrew Lowe

In a significant decision, the Full Federal Court has overturned an earlier single judge Federal Court decision regarding the date from which infringement of an innovation patent can occur. One of the unusual implications of the earlier decision was that a divisional innovation patent could be infringed before it was published, or even filed. The Full Court has now determined that infringement cannot occur until grant of the innovation patent.

Key points

  • An innovation patent is a short-term patent available under Australian patent law. It has a lower patentability threshold, as there is no requirement for an inventive step. Rather the invention need only involve an “innovative step” – that it varies from the prior art in a way which makes a substantial contribution to the working of the invention. Other usual requirements for patentability such as novelty, support, clarity etc. still apply.
  • An innovation patent is granted without substantive examination. However to assert it against an infringer it must be certified, which requires examination. An innovation patent runs for 8 years from the “date of the patent”. The date of the patent is the filing date, other than in the case of a divisional application where the date of the patent is the filing date of the parent, grandparent or earlier generation patent.
  • Following the latest Coretell decision, an innovation patent cannot be infringed before its date of grant and so no damages are available for this period. This is in contrast to a standard patent, which can be infringed from the date of publication.

Background

Innovation patents are commonly sought in Australia in conjunction with a standard patent application, often a national phase PCT filing. This is achieved by entering PCT national phase and filing a divisional innovation patent application within 3 months of the date of advertised acceptance of the standard patent. Innovation patents can generally be granted and certified within 6 months, providing a useful weapon against infringers in the short term while the standard application is still under examination and awaits the opposition period.

In Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019 (Britax), the Federal Court considered alleged infringement of a number of divisional innovation patents filed in these circumstances. The question arose as to the date from which infringement of the innovation patents could occur. The alleged infringer argued that liability for infringement could not arise before certification of an innovation patent. However the judge concluded that infringement could run from the “date of the patent” (being the date of filing of the parent application).

This decision substantially increased the value of innovation patents, particularly when filed as a divisional application, as they could be infringed before the divisional application was even filed, let alone its claims published. In Britax, this resulted in potential infringement from June 2005, notwithstanding that the latest innovation patents had only been filed as recently as 2009.

Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 (Coretell)

The issue has now been revisited by the Full Federal Court in Coretell which has overruled the decision in Britax. Giving the sole judgment, with which two other Federal Court judges agreed, Justice Burley outlined in detail his reasoning.

The key respect in which he differed from Britax was in finding that whilst the “date of the patent” (the filing date or in the case of a divisional application, the filing date of the parent/grandparent etc) determines the term of a patent, infringement is determined by reference to the date of grant. In reaching this conclusion, Justice Burley referred to the infringement provisions of the Patents Act 1990 (Cth), noting that they refer to infringement of “a patent”, inferring a granted patent. Further, section 57(1), which provides that an applicant for a standard patent has the same rights from the date of publication as if a patent had been granted, does not ‘move forward’ the date from which infringement would otherwise run from the filing date, but rather ‘moves backwards’ the relevant date from the date of grant. As section 57 does not apply to innovation patents (and nor is there any equivalent provision for innovation patents), infringement can only occur from grant. Justice Burley also noted the central significance of the claims in determining infringement. He confirmed that there is no infringement of an invention as such, there can only be infringement of the claims. In that context, publication of a specification forms a necessary part of allowing rivals to understand the scope of the monopoly, and it is out of keeping with this scheme to allow infringement before the claims are published.

Conclusion

In its recent Inquiry Report on Intellectual Property Arrangements, the Productivity Commission commented on the fact that divisional innovation patents could be infringed before they were made public, in context of its recommendation to abolish the innovation patent system entirely. The Coretell decision alleviates at least that concern with respect to the innovation patent system, providing a common sense interpretation in line with the framework of the Patents Act generally, and in particular, the provisions relevant to infringement. It also provides certainty to businesses, which can at least be assured that they will not liable for patent infringement damages in respect of a patent which has not yet been filed.

Authored by Katrina Crooks