Sovereign Hydroseal Pty Ltd v Steynberg [2020] FCA 1084

An application for preliminary discovery of documents relating to the constituents of a ‘sealing composition’ and methods of using it to seal passages was granted in circumstances where an exclusive licensee of the asserted patent suspected infringement by a third party based on past employment, access to confidential information, information from a private investigator, and the similarities of the processes being carried out by both parties. The scope of the discovery order was limited due to the financial circumstances of the respondent.

Background

Sovereign Hydroseal Pty Ltd (Sovereign) is the exclusive licensee of Australian Patent No. 2012216392 (392 Patent) which relates to a method and composition for sealing passages such as cracks, joints and voids in concrete structures and geological formations using a sealing composition. The sealing composition, which includes a mix of latex and additional components, is delivered into a passage under pressure in order to seal the structure from water ingress.

Together with the joint patentees, Relborgn Pty Ltd and Triomviri Pty Ltd, Sovereign sought an order for preliminary discovery of documents to be produced by Mr Johannes Steynberg (Steynberg), a former employee of Sovereign operating a business called ‘H2O Seal’, pursuant to which a process was being used for sealing cracks and joints involving a ‘liquid rubbery substance’ injected by pumps. Sovereign contended that it required production of these documents on the basis that it did not have sufficient information to decide whether to start a proceeding against Steynberg in respect of causes of action for patent infringement, breach of confidence, breach of contract, and contempt.

During the period July 2008 to June 2009, when Steynberg was employed by Sovereign, he had received training on how to seal a passage in a body such as a geological formation with a seal composition, including insight into types of equipment as well as details of the materials and compositions used. For the purposes of his work, Steynberg had access to Sovereign’s confidential information including details of product specifications and formulations, processes involving those products, customer records and customer information.

Since cessation of his employment by Sovereign in 2009, Steynberg had held multiple business interests in Queensland in relation to waterproofing and water sealing. On two separate occasions in 2009 and 2011, Steynberg established businesses which were subsequently deregistered after settlements with Sovereign. On both occasions, Steynberg was alleged to have infringed on the intellectual property of Sovereign, which he denied. Justice McKerracher declined to take into account material from these previous disputes, other than in a general sense by way of common background. However, his Honour noted that it was relevant to showing that Steynberg had some opportunity to acquire relevant information.

In September 2019, Sovereign became aware of Steynberg’s involvement in H2O Seal by way of a ‘flyer’ on the H2O Seal business, internet-based searches, and enquiries made by a private investigator. The investigator obtained information that indicated Steynberg was using a product called ‘N-LICS’, and that H2O Seal used ‘a natural nano-technology rubber grout injected under pressure into the voids sealing cracks and joints’. Concerned that Steynberg was using at least one method of sealing cracks and joints that infringes the method claimed in the 392 Patent, Sovereign applied for preliminary discovery under Rule 7.23 of the Federal Court Rules 2011 (Cth). Other related issues included Steynberg’s alleged contraventions of contractual obligations and injunctive orders entered, as part of earlier proceedings in 2011.

Arguments

Steynberg did not contest that Sovereign subjectively believed that it may have a right to obtain relief, but argued that the belief was not reasonably held. Steynberg argued against Sovereign’s allegations as follows.

  1. The photos on the flyer did not ‘reveal any confidential information of Sovereign’ and ‘it would be difficult to conclude that [Sovereign] has a reasonable belief’ based on them.
  2. The material filed by Sovereign included evidence of Steynberg employing a blend of rubber emulsions injected under pressure into a passage, which convert from liquid to solid via coagulation, but did not reveal whether Steynberg was using the same formula as Sovereign. Accordingly, Steynberg argued, the evidence and Sovereign’s contentions were insufficient to ground a reasonable belief as defined in subrules 7.23(1)(c) that he may be using the same method, process or composition as Sovereign such that a potential patent infringement claim may arise.
  3. Steynberg further alleged that Sovereign had engaged in misleading or deceptive conduct by accusing him of using ‘very similar chemicals and methods’ previously used in his H2O Control Systems business, but that the present proceedings had not revealed he had been doing so.
  4. Finally, Steynberg pressed the point that Sovereign’s right to discovery under Rule 7.23 needs to be weighed against Steynberg’s interest in protecting his own intellectual property rights with respect to the methods he had developed and was using from disclosure to Sovereign (his competitor).

Decision

In considering subrule 7.23(1)(a) and (c), the Court found that the evidence established the following.

  1. Even though none of the information provided by Sovereign proved that Steynberg was employing the same method or chemical compositions, the processes being carried out by both parties appeared on their face to be very similar.
  2. It was not clear how more detailed information regarding the precise constituent element of Steynberg’s sealing composition could be obtained outside of the preliminary discovery orders sought, and therefore Sovereign was entitled to test that composition.
  3. Neither a lack of awareness of the 392 Patent, nor the fact that others were apparently using the same process in the market, provided an adequate response to Sovereign’s patent infringement allegation or an answer to Sovereign’s discovery orders.
  4. Steynberg held documents regarding the methods and chemical compositions he used to seal passages which were directly relevant and could help Sovereign in deciding whether to seek relief.

Justice McKerracher concluded that Sovereign had established an adequate foundation for a ‘reasonable belief’ that it may have had the right to obtain relief from Steynberg, and that Steynberg may have had documents directly relevant to that question. In relation to subrule 7.23(b), the Court ruled that in combination with prior enquiries including web-based searches and an investigation, the contested discovery notice served by Sovereign to Steynberg constituted a sufficiently reasonable enquiry.

Considering the requirements for an order to be fulfilled, McKerracher J allowed Sovereign’s application for preliminary discovery subject to the provision of security for the costs of compliance. The order to provide security for costs was made in response to the expansive terms of discovery sought by Sovereign, taking into account concerns regarding Steynberg’s financial capacity to comply.

Significance

This case highlights how preliminary discovery applications can be used by a patentee or exclusive licensee to inform its decision-making in relation to whether to commence a proceeding in respect of potential patent infringement.

The case also confirms the observations made by the Full Court in Pfizer Ireland Pharmaceuticals v Samsung Bioepis Au Pty Ltd (2017) 257 FCR 62 (which we previously analysed here). In terms of subrule 7.23(1)(a), the main point of consideration when granting preliminary discovery orders is not whether the belief in the applicant’s rights to relief is based on speculation, but rather whether the belief resulting from that speculation is a reasonable one. Potential applicants should bear in mind, however, that the scope of discovery sought can be restricted as a result of factors such as the financial capacity of the third party to comply with the order.

This decision is another illustration of the relatively low thresholds for obtaining preliminary discovery in connection with suspected infringement of an Australian patent, particularly for patents that claims compositions or manufacturing processes that cannot otherwise be readily discerned from public information or inspection of product samples (even if such samples can be obtained).

Authored by Chris Byrnes and Duncan Longstaff

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

In the recent decision, CSIRO v BASF Plant Science GmbH [2020] FCA 328, the Federal Court of Australia considered the allowability of amendments to patent specifications under s 102(1) of the Patents Act 1990, as amended by the ‘Raising the Bar’ Act[1]. In overturning a decision of the Commissioner of Patents, Beach J decided that BASF’s proposed amendments were impermissible because they claimed and disclosed matter that extended beyond the specification as filed. In so doing, the Court decided that the same strict test used by UK Courts should also be applied in relation to added matter in Australia.

The Background

At issue is a patent application filed by BASF Plant Sciences GmbH (BASF) entitled “Process for the production of polyunsaturated fatty acids in transgenic organisms”, which relates to genes from a species of unicellular algae that code for enzymes which can be employed for the recombinant production of polyunsaturated fatty acids (PUFAs) in plants. Specifically, the invention relates to a pathway for the synthesis of long-chain PUFAs, that involves a sequence of enzymatic reactions to convert shorter-chain PUFAs into commercially desirable long-chain PUFAs. The claims relate to isolating the genes for those enzymes in a species of unicellular algae, Ostreococcus lucimarinus, and introducing those genes into suitable oil-producing crops. Performing the invention enables the production of the valuable fatty acids in transgenic commercial crops.

CSIRO opposed BASF’s accepted application, and during the opposition proceedings BASF applied to amend its patent and introduce new dependent claims. The Australian Patent Office initially refused the proposed amendments on the basis that, as a result of the proposed amendments, the specification would not comply with the requirements of s 40(3). However, a second set of proposed amendments was submitted, which a Delegate of the Commissioner of Patents subsequently allowed. CSIRO then lodged an appeal to the Federal Court against that decision under s 104(7) of the Patents Act 1990.

The amendments

In a passage referred to by the parties as the “bridging paragraph”, the specification as filed stated that:

      “The invention, the subject of the present application, is directed to the following:

  • a CoA-dependent delta-6 desaturase having the substrate specificity of the delta-6 desaturase shown in SEQ ID NO:14 [referred to by Beach J as Feature A]and
  • the above CoA-dependent delta-6 desaturase which has a preference for conversion of alpha linolenic acid compared to linoleic acid [referred to by Beach J as Feature B].” (emphasis added)

The experts agreed that the words “the above” in the statement in the second bullet point of the bridging paragraph meant that this statement (i.e., the “conversion preference”) must be read together with the statement in the first bullet point of the bridging paragraph (i.e., the “substrate specificity”). In other words, the invention is directed to the claimed enzyme having the substrate specificity shown in amino acid “SEQ ID NO:14”, and having a certain conversion preference. The bridging paragraph is the only place in which a conversion preference is disclosed in the body of the specification of the application as filed. The invention described in each bullet point of the bridging paragraph is claimed in claims 1 and 2 respectively of the application as filed.

BASF removed the bridging paragraph and deleted corresponding claims 1 and 2 by amendment during prosecution and replaced it with a description that defines the invention as:

  • a process for the production of a substance of general formula I … wherein the process comprises the cultivation of (i) a host cell … or (ii) a transgenic non-human organism comprising … “an isolated polynucleotide comprising a nucleic acid sequence coding for a CoA-dependent delta-6 desaturase having at least 75% identity to a nucleotide sequence which codes for a polypeptide as shown in SEQ ID NO: 14” [referred to by Beach J as “Feature C”]; and
  • use of an isolated polynucleotide … (or vector, host cell, or transgenic non-human organism comprising said nucleic acid sequence) … for the production of an oil, lipid or fatty acid composition.

In light of the amendments to the bridging paragraph and the deletion of the corresponding claims, the application as accepted did not refer to Feature A, Feature B or Feature A combined with Feature B.

As Beach J noted at [130], Feature C captures a broader range of polypeptides than Feature A. That is, Feature A (substrate specificity of the Δ6-desaturase shown in SEQ ID NO:14) is a subset of Feature C (at least 75% identity to SEQ ID NO:14).

In a further round of post-acceptance amendments BASF sought to insert new dependent claims, to a process for production of, and use of, a CoA-dependent Δ6-desaturase:

a) having at least 75% identity to a nucleotide sequence which codes for a polypeptide as shown in SEQ ID NO:14 [Feature C]; and

b) that preferentially converts alpha linolenic acid compared to linoleic acid [Feature B].

The amendments also sought to introduce the following description after the consistory clause:

“According to an embodiment of the abovementioned process and use, the CoA-dependent desaturase preferentially converts alpha-linolenic acid compared to linoleic acid.” [Feature B]

CSIRO argued (at [166]) that the post acceptance amendments were not allowable as they would introduce a claim combining Feature C with Feature B, when the only disclosure of Feature B in the specification as filed was in the context of Feature A (a much narrower subset of Feature C) in the bridging paragraph.

Issues and Decision

Section 102(1) relevantly provides:

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:

(a) the complete specification as filed;

(b) other prescribed documents (if any).

Beach J noted that that the Raising the Bar provisions were intended to mirror other jurisdictions, such as the UK and Europe, and that it was intended that Australian courts would have regard to the developments of case law in those jurisdictions when interpreting the Raising the Bar provisions. More specifically, he noted the intention disclosed in the explanatory memorandum to the Raising the Bar amendments that the operation ss40(2) and (3) as amended (which deal with sufficiency and support) be as close as practicable to that given to the corresponding provisions in the UK Patents Act and the European Patent Convention,

Beach J therefore commenced a review of the UK authorities and in coming to his decision, noted two “conceptual themes permeate the UK authorities”, namely “added matter” and “intermediate generalisation”.

In terms of the former, and with reference to several landmark UK decisions on added matter (including Bonzel[2]Richardson-Vicks[3], and European Central Bank[4]), it was noted that subject matter will be impermissible added matter “unless it is clearly and unambiguously disclosed in the application as filed”, having reference to what has been disclosed both explicitly and implicitly.

As to intermediate generalisations, it is useful to consider the EPO guidelines[5], which explain:

“…the content of the application as filed must not be considered to be a reservoir from which individual features pertaining to separate embodiments can be combined in order to artificially create a particular combination.

When a feature is taken from a particular embodiment and added to the claim, it has to be established that

  • the feature is not related or inextricably linked to the other features of that embodiment and
  • the overall disclosure justifies the generalising isolation of the feature and its introduction into the claim.

… it has to be ensured that the skilled person is not presented with information which is not directly and unambiguously derivable from the originally filed application, even when account is taken of matter which is implicit to a person skilled in the art using his common general knowledge”

In other words, the concept of “intermediate generalisation” requires that an amendment is not allowable if it takes a feature which is only disclosed in a particular context and seeks to introduce it into a claim deprived of that context.

Beach J found that there was “no good reason not to follow the UK authorities” to apply these analogous concepts for the purposes of construing the present form of s 102(1) of the Act.[6] In doing so, Beach J confirmed that, after Raising the Bar “the test is a strict one” in Australia, and that the concept of intermediate generalisation applies to s 102(1).

BASF argued that the relevant amendments, including the addition of new claims, were narrowing amendments. Beach J accepted this insofar as the comparison was with the accepted claims, however he noted that this did not resolve the issue of whether the amended specification would claim or disclose matter extending beyond that disclosed in the specification as filed.

BASF further argued that there was disclosure of Feature C in a particular paragraph of the specification as filed. However, Beach J decided that this paragraph could only be read in the context of the description of ‘the invention’ in the bridging paragraph. In this regard, Beach J considered that the bridging paragraph did not provide disclosure of a delta-6 desaturase with Feature B (the “conversion preference”) in the absence of Feature A (the “substrate specificity”).  As mentioned above, Justice Beach also considered that Feature A was not the same as the 75% homology requirement that BASF sought to introduce into the claims (Feature C).  This was because two enzymes can have different substrate specificities and still have 75% homology to each other at the DNA level.

Justice Beach concluded that BASF’s amendment sought to remove Feature B from the context in which it was disclosed in the application as filed (namely, in conjunction with Feature A) and introduce it into the specification and the claims deprived of that context.  The amendments generalised the originally disclosed technical information (applying Feature B in the broader context of Feature C, as opposed to Feature A), thereby introducing subject-matter extending beyond the content of the application as filed. This was an example of an impermissible intermediate generalisation.

As a result, BASF’s amendment was refused, and CSIRO’s appeal was upheld.

Commentary

In the first Federal Court decision on “added matter” under the Raising the Bar Act, Beach J has confirmed that the test in Australia for added matter is strict, and that subject matter will be impermissibly added “unless it is clearly and unambiguously disclosed in the application as filed”. Importantly, until now it has not been clear whether the prohibition on “intermediate generalisation”, a familiar concept in European patent law, would be adopted in Australia. Beach J has confirmed that an intermediate generalisation is not permissible, where a feature which is only disclosed in a particular context (e.g. a particular example) is introduced into a claim deprived of that context.

At the time of filing a patent application, it is important to provide a full disclosure of your invention as adding subject matter later will not be allowable. It is also important to ensure that your patent application discloses your invention in terms that encompass all variants of the invention that you may later wish to claim.

Such limitations should also be borne in mind if seeking to limit granted claims in pre-litigation or litigation to avoid prior art brought to the attention of the patentee.

Shelston IP is well placed to advise its clients on how to best draft a patent specification to satisfy these important requirements and on related issues in a litigation context. If readers have any questions, please do not hesitate to contact any of our Shelston IP patent attorneys or lawyers.


[1] Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the Raising the Bar Act)

[2] Bonzel v Intervention Ltd (No 3) [1991] RPC 553 (Bonzel)

[3] Richardson-Vicks Inc’s Patent [1995] RPC 568 (Richardson-Vicks)

[4] European Central Bank v Document Security Systems Inc [2007] EWHC 600 (European Central Bank)

[5] https://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_v_3_2_1.htm

[6] Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2020] FCA 328 at [214]

Authored by Michael Christie, PhD and Katrina Crooks

26 April is World Intellectual Property Day, WIPO’s annual celebration of all things IP.  This year, the theme is “innovate for a green future”.  WIPO’s website perhaps sums it up best: “World IP Day 2020 puts innovation – and the IP rights that support it – at the heart of efforts to create a green future. Why? Because the choices we make today will shape our tomorrow. The earth is our home. We need to care for it”.

Cleantech patents “101”

It is broadly accepted that climate change cannot be redressed by means of existing non-renewable technologies. Environmental consciousness – especially as it pertains to climate change is increasing exponentially throughout the world. Climate change has gained significant attention recently with Australia having recently endured its worst bushfire season on record.  “Cleantech” – technologies that may lessen, nullify or even reverse the environmental impact of an existing product or process is a thereby a buzzword in many aspects of society – including patent law.

In this article, we look at the patent system in general, cleantech patents in focus – and consider a few “tricks of the trade” particular to (although not unique to) cleantech patents.

The essential quid pro quo of the “patent bargain” is that in exchange for providing the public with a new invention, a patentee is afforded a twenty-year exclusive period in which to exploit it. Exclusive, in the context of patent law, refers to the exclusion of third parties from being able to use the patented technology. This is “IP101” – and history has generally shown it to be sufficient inducement with which to stimulate inventive activity.  This is especially true of the cleantech industry where the strategic management of IP is underpinning rapid growth throughout the sector.

Patent issues particular to cleantech

i)      Compatibility with the “patent bargain”

Whereas new inventions are typically patented with a view to profiting the patentee, there may be some cross-over into the realm of also providing a great benefit to the public. However, what happens when an invention is of such outstanding public benefit that the patentee’s right to exclude others is arguably contrary to the interests of society? In such circumstances, the patent bargain does not fit well with the advancement of the species and gives rise to a real tension between the two.  Indeed, we’ve seen this tension play out very recently in respect of the COVID-19 pandemic and proposed Crown use of patented inventions under the banner of “the public interest”.

Pharmaceutical patents are the “classic” example of the tension between private rights and public good – and this dovetails quite nicely into another salient COVID-19 issue: the search for a vaccine.  However, it can be argued that patent exclusivity for pharmaceuticals is a necessary evil given the enormity of both R&D and clinical trials costs associated with getting a product onto the market. Moreover, while the respective definitions of “happy” may be somewhat different, a lifesaving drug sold under patent generally makes for both a happy patentee and a happy consumer/patient.

Another example – one not quite so easily reconciled, is that of cleantech. For instance, a patent for a “cleaner” method of manufacturing cement or battery technology. Clearly, it is in a patentee’s best interests to exploit the exclusivity conferred by the patent in working or licensing the invention. On the other hand, it is in society’s best interests that such an invention is placed immediately in the public domain. To generalise (perhaps unfairly), cleantech doesn’t invite the same R&D costs as pharmaceuticals. As such, it could be argued that the case of cleantech, society’s need may actually be greater than the patentee’s right – which is, of course, completely at odds with the original patent bargain.

ii)    Patent versus publish

A feature of the cleantech sector (although by no means unique to it) is the high level of industry-academia collaboration when it comes to R&D.  As will be appreciated, academics are under publication pressure and are often required to produce x-number of publications (journal articles, abstracts, oral presentations) each year (“publish or perish”) as part of their performance review.  Industry, on the other hand, is driven more by the prospect of obtaining monopoly rights via the patent system to capitalise on profit growth.

“Patent versus publish” is an age-old conundrum which, in my experience, is not all that well understood.  Many think it’s necessarily a case of one or the other.  It’s not – you can have both – on the simple condition that filing a patent application comes first (even if by just one day).

Although some countries have idiosyncratic grace period provisions that may, under certain circumstances still allow a patent application to be filed validly, these vary greatly from country-to-country and require resource expenditure (time/money) that may be better allocated elsewhere.

In short, why take the risk?  File a patent application first before proceeding via the traditional publication route.

iii)   Expedited examination platforms for cleantech patents

The national patent offices of several major jurisdictions have facilitated the expedited examination of applications relating to cleantech. For instance, the USPTO, UKIPO and IP Australia, among others, each now offer (or have offered) such a scheme. While these programs each have subtle differences, the fundamental principle is that a cleantech patentee has means to jump the queue with respect to “unclean” applications. In the case of small or start-up patentees, expedited examination may be attractive such that a granted patent is often required in order to attract investment. On the other hand, the associated legal costs may not have been budgeted for so early in the lifecycle of the patent. Moreover, the many companies who file patents for defensive reasons generally have less motivation to proceed via this route.

Expedited examination is an option, although not essential, for cleantech patentees.  As always, a decision to proceed or not to proceed should be based on a thorough consideration of all commercial/legal factors, made in conjunction with the best professional advice.

iv)   Other issues

There have been other recent developments toward establishing a more efficient cleantech community within the existing patent system. For instance, in 2010, WIPO launched the IPC Green Inventory – an online tool intended to assist users in identifying existing and emerging cleantech, as well as isolating potential commercial partners. The most recent iteration is simply named WIPO Green.

Further, certain other measures may be adaptable to cleantech. For example, a fair dealing defence, perhaps analogous to that found in copyright law is largely self-explanatory. However, it is worthwhile noting that the judicial parameters of “fair” would possibly invite a significant amount of otherwise-avoidable litigation.

Next, the patent pools model purports to facilitate the efficient trading of patent rights. In this respect, a significant impediment to any potential developer of cleantech has been the emergence of patent thickets which cover every foreseeable twist and turn along the path to a new technology; such thickets have arisen in respect of fuel cells, wind energy, and carbon sequestration technologies, to name but a few. Accordingly, money initially earmarked for cleantech R&D risks being siphoned off to pay for infringement opinions and cross-licensing arrangements.  Significantly, however, the various competition authorities have placed stringent conditions on such patent pools in recent years, which may have restricted their uptake and appeal.

Bringing all the pieces together

The intrinsic nature of cleantech means that whilst patenting is essential, it is nonetheless a somewhat imperfect fit.  During the initial R&D phase, IP will often be a cleantech company’s most valuable asset. Moreover, patenting creates opportunities for cross-licensing deals and strategic use to negotiate joint venture arrangements. Finally, patents can be instrumental in a cleantech company’s exit strategy, by way of going public or being acquired.

That said, the somewhat uneasy marriage between cleantech and the patent system has never been better reflected than in 2009, when patents (in combination with the closely related field of technology transfer) effectively torpedoed a global climate treaty being agreed at the United Nations Climate Change Conference (COP15) in Copenhagen.  Cleantech and patents need to be linked, but do not mesh easily.

The above discussion represents what is likely only the opening stanza in what is sure to be a fascinating period in patent law. Cleantech will continue to poke and prod the patent system in ways that were probably never envisaged – and it will be interesting to see if, when and how any changes eventuate so as to better accommodate “public” clean technologies within the “private” patent system. While the cynic may suggest that an agreement in Copenhagen would have materialised if the climate change issue was perceived as real, the pragmatist would likely counter that if a genuine fix was apparent from within a short, 1500-word article, it would have been adopted long before now.

Three takeaway tips

  • Interpret “cleantech” broadly. A “dirty” technology can still be “clean” if it’s cleaner than competitors’ existing technologies – it’s all relative.
  • To expedite or not to expedite (examination). There are pros and cons depending upon where a cleantech organisation is at legally, financially and commercially – one size certainly doesn’t fit all.
  • Patent versus publish. You can have both, provided filing a patent comes first (even by one day).

2020 – A World IP Day with a difference

In light of the coronavirus pandemic, and the need to keep everyone safe and well, WIPO will not organise any physical events this year, and encourages the World IP Day community to move celebrations to virtual channels – something most of us have had to get used to very quickly over the past few weeks.

David Hvasanov, PhD and Gareth Dixon, PhD

Welcome to Shelston’s wrap-up of the most notable patent decisions in Australia and New Zealand delivered during 2019. It was a busy year for patent jurisprudence with some interesting themes emerging – in particular, it has been a banner year for decisions on the “manner of manufacture” requirement for patentable subject matter.

Read our full report

  • An expanded Full Federal Court clarified the “manner of manufacture” test for computer-implemented methods to be patentable (Encompass), a topic that was also central to several other Federal Court (TettmanRepipeWatson) and Patent Office (Apple) decisions.
  • There were also important “manner of manufacture” decisions in the life sciences space, with single judges finding both a diagnostic method involving a process of detecting genetic material (Sequenom) and use of genetic information to infer traits (Meat & Livestock Australia) to be patentable subject matter.
  • The Full Court confirmed there is no doctrine of patent exhaustion in Australia, the critical distinction being between repairs permitted by implied or express licence terms brought home to the purchaser of a product, and the impermissible re-making of the product beyond the scope of any licence (Calidad (No. 1)).
  • The Full Court confirmed that a permanent injunction framed in general form by reference to the claims of an infringed patent is generally appropriate and may be ordered in addition to a specific injunction describing products or conduct found to infringe (Calidad No. 2).
  • The Full Court overturned an award of additional damages for flagrant patent infringement on the basis that the infringer had believed, on objectively reasonable grounds, that its conduct did not infringe the patent (Oxworks).
  • The tide continued to turn against pharmaceutical patentees being granted interlocutory injunctions (MylanSanofi-Aventis).
  • Patentees learned some harsh lessons as the Full Court dismissed infringement claims based on the construction of the terms “contains” (construed exhaustively in Nichia) and “recognise” (construed broadly in Davies).
  • There were several applications by patentees to amend patent claims and specifications after commencing infringement proceedings (Meat & Livestock AustraliaNeurimBlueScope), with mixed success.
  • Consideration was given in the Patent Office to Australia’s “raised bar” requirements for support and sufficiency (Gary CoxUniversal Polymers).
  • Both clinical trial patient consent forms (InterPharma) and academic conference posters (Regeneron) were considered prior art documents in life sciences cases.
  • There were further decisions regarding families of patents that have been litigated for a decade or more (GlobaltechSNF).
  • There were also decisions regarding the admissibility of “WayBackMachine” evidence (Dyno Nobel), summary dismissal of an infringement case (Pilkin), a successful application for preliminary discovery (MMD), a failed cross-claim for unjustified threats (Liberation), a failed attempt to withdraw admissions relating to infringement (Juno), a “strawman” opponent to a patent application having to pay security for costs in an appeal despite winning the opposition (Toolgen) and a party commencing infringement proceedings despite not being a proper exclusive licensee having to pay indemnity costs (Vald).
  • Two recent decisions issued by the Intellectual Property Office of New Zealand provide new hope that, in certain circumstances, it may be possible to obtain an extension of time to file a divisional patent application (PrimapakMagic Leap).

As 2020 gets underway, we hope this provides a useful and practical resource and, of course, please do not hesitate to take the opportunity to contact our authors, all subject-matter experts in their respective fields, for advice on the issues raised by these important decisions.

Authored by Dr Roshan Evans, Duncan Longstaff and Onur Saygin

It seems the abolition of Australia’s second-tier patent system, the innovation patent, (as detrimental as this will be for Australian business) could be considered a high-profile distraction to divert attention away from new laws that will potentially render patents claiming chemical compounds, with reference to a structural formula, vulnerable to invalidation.

This issue relates to new laws that apply to Section 40(3A) of the Patents Act 1990, which was originally introduced in 2013 to remove the use of claims that refer to examples in a specification, i.e. omnibus claims. At that time, Section 40(3A) recited that “the claim or claims must not rely on references to descriptions or drawings unless absolutely necessary to define the invention”. More recently, the Intellectual Property Bill (Productivity Commission Response part 1 and other Measures) Bill 2018, expanded the scope of Section 40(3A) to cover claims referring to “drawings, graphics or photographs”.

Relevantly, Section 40(3A) does not refers to “parts” of the specification – it simply refers generally to “descriptions, drawings, graphics and photographs”. Thus, current Section 40(3A) appears to go beyond its initial purpose of removing the use of omnibus claims and potentially renders claims that include drawings, graphics and photographs unacceptable. This arguably includes frequently used chemical claims that refer to a structural formula as a graphic representation of the molecular structure of a chemical compound, or an X-ray diffraction pattern, i.e. drawings or graphics.

Currently, Section 40(3A) can only be considered during examination and, in our experience, the Patent Office is only enforcing it against claims that refer to parts of the specification. However, when the Intellectual Property Bill (Productivity Commission Response part 2 and other Measures) Bill 2019 comes into force, most likely at the end of November 2019, Section 40(3A) will become a ground for re-examination, opposition and revocation.

At the very least the new laws, as they relate to Section 40(3A), introduce considerable uncertainty as it is not clear how they will be interpreted judicially. The explanatory memorandum to the Bill is not helpful because it only considers Section 40(3A) as covering omnibus claims. Moreover, as there is a reasonable argument that reference to a structural formula in a claim is not absolutely necessary to define the invention because compounds can be defined by chemical names, future patentees of chemical compounds have a right to feel nervous. For this reason, it may be prudent for applicants of chemical compound applications to cover their most commercially relevant embodiments in independent claims that define a chemical compound by its IUPAC name, in addition to relying on claims that define a structural formula. Notwithstanding, that a claim that refers to a chemical structure is more succinct than one that refers to a long and potentially unclear chemical name.

Shelston IP will, of course, continue to monitor the introduction of the new laws and provide necessary updates.

Authored by Gareth Dixon, PhD

In recent years, IP “buzzwords” have included superconductors, gene patents, business methods and computer software.  Society’s ever-increasing environmental awareness now dictates that “cleantech” is the latest vogue.  The Australian Patent Office offers the facility to request expedited examination of any patent application if the applicant provides good reason (this may be as vague as “commercialisation”).  However, the Office singles out cleantech-related applications by not requiring a reason other than that the invention is in the (somewhat imperfectly-defined) area of “green [clean] technology (climate ready)” research.  In this article, we consider some of the pros and cons of proceeding toward accelerated patent grant in Australia for cleantech inventions.

Cleantech and the “patent bargain”

Unlike gene patents, business methods and computer software (each of which have been uniquely polarising) there is a general acceptance that clean technologies should be patentable.  The minority dissenters who argue that such technologies should be in the public domain appear to overlook the basic quid pro quo of the “patent bargain” – being that without the prospect of patent protection, researchers would have no incentive to develop such technologies in the first place.  In this respect, any patentability issues surrounding clean technologies are more closely akin to those experienced a quarter century ago in relation to superconductors – in other words, how can the patent system be poked and prodded in order to better accommodate these technologies?

How clean is “clean”?

Any special treatment for clean technologies of course first requires a standard definition of precisely how “clean” (or “green”) any new technology must be in order to qualify.  On the one hand, a technology that must be shown to mitigate an environmental problem or provide a solution sets the bar rather high – and excludes “net-red-relative-green” technologies that although “cleaner” than existing competitor technologies, may still cause some degree of environmental damage.  On the other hand, it could be argued that these technologies (for instance, a more environmentally-friendly method for manufacturing cement) are just as deserving.  Accordingly, at least in the patent world, the term “cleantech” appears to be interpreted fairly broadly.

Expedited examination for cleantech applications in Australia

Notwithstanding any posturing as to what is or isn’t properly “cleantech”, the Australian Patent Office offers to expedite the examination of patent applications on the grounds that it relates to clean technologies.  Of itself, this is nothing new – indeed, expedited examination has been offered for many years, irrespective of technology.  However, as a reason must be given in order to have examination expedited, this platform has largely been the domain of applicants wishing to expedite grant of their application with a view to commencing infringement proceedings as soon as possible thereafter – or those requiring a granted patent as a condition of obtaining investor funding.  At present throughputs, expedited examination typically saves the applicant around 12 months of waiting for a first examination report to issue – and the potential benefits are clear in this regard.  As such, literally checking a box asserting that an application relates to clean technology will be just as valid any reason typically employed in the past.  The Office then makes a fairly subjective assessment as to whether the technology is clean enough to qualify under the scheme.

Faster isn’t necessarily better…

On the other hand, proceeding in the “regular” manner and not applying for expedited examination provides an applicant with additional time in which to determine whether their invention is commercially viable; this is important on a cost-basis given that a decision to proceed with patent prosecution is sometimes akin to a “commitment to pay”.  Of course, as with everything in the patent game, how best to proceed is a delicate balancing act and will vary from applicant to applicant, country to country and technology to technology.

Claim scope and eventual validity

Another aspect that must be considered when deciding whether to request expedited examination of a cleantech patent application – especially in Australia, relates to claim scope.  Australian patent examiners frequently draw upon the prosecution history of any US or EP counterpart applications.  Accordingly, there is the potential to obtain relatively broad coverage in Australia by first requesting expedited examination – and relying on the possibility that the corresponding US/EP prosecutions are not yet significantly advanced.  Of course, this must be counterbalanced against the likelihood – and with it, expense, of later needing to file post-acceptance voluntary amendments to the Australian claims in order to keep them “valid” in view of prior art later uncovered elsewhere.  The facility to file divisional patent applications is another means of maintaining pendency, and with it, flexibility.

The international picture

Australia is not the only country to offer expedited examination for cleantech patent applications – indeed, the United Kingdom, United States, South Korea, Japan, China, Israel and Canada (amongst others) offer (or have offered in the recent past) such a platform.  Although the respective rules and eligibility criteria may be slightly different from those of Australia, the above-noted “pros and cons” are just as applicable in an international context.

There is evidence – both anecdotal and tangible, that patent applicants are making good use of the expedited examination platform.  For instance, the United Kingdom Intellectual Property Office has granted well over 100 patents under the Clean Channel Patent Examination Acceleration scheme, which was purported to reduce the average pendency of a UK patent application from around 36 months to less than eight.

Furthermore, in 2013, the International Centre for Trade and Sustainable Development published an empirical analysis of several fast-track examination programs. It concluded that such platforms for cleantech applications reduced the average grant time of a patent by up to 75%.  It further concluded there was strong demand for such programs, especially from SMEs (small-to-medium enterprises), and that fast-tracked patents were of good commercial value.

Cleantech and the Patent Prosecution Highway

Another way in which expedited examination of cleantech patents may be attractive is that it allows applicants to take advantage of the various Patent Prosecution Highway (“PPH”) agreements that exist between certain countries.  For instance, one may look to invoke the AU-US PPH by using a quickly-granted Australian cleantech patent as the basis for expedited examination in the USPTO.  However, anecdotal evidence suggests that proceeding via the dedicated route for cleantech patents is likely to be the quicker option.  Nonetheless, the various PPH mechanisms remain useful supplementary options for the expeditious grant of a cleantech patent in certain foreign jurisdictions.

So I’ve got a fast-granted Australian (cleantech) patent – now what?

A quickly-granted Australian patent is actually quite a powerful prosecution tool when it comes to our little corner of the world.  For instance, an Australian allowance opens up the GPPH route in Singapore and the modified examination procedure in Malaysia.  A fast-granted Malaysian or Singaporean patent in turn unlocks the ASPEC pathway, which includes Brunei Darussalam, Cambodia, Indonesia, Laos, Myanmar, the Philippines, Thailand and Vietnam (and Malaysia or Singapore, if not actioned earlier).  Net result: much of Asia-Pacific is taken care of with an absolute minimum of fuss and bother.  Of course, our attorneys are well-versed in managing this sort of filing program and the potential benefits, which include from our end, bulk purchasing power and compatible time zones should not be underestimated.

What about New Zealand?

Expedited examination is also offered in respect of New Zealand patent applications where “good and substantial reasons” exist (Reg.77(1)(b)) and where the request is accompanied by evidence in support of the request (Reg.77(2)).  Experience suggests that the evidentiary bar has been set rather high.  However, on the other hand, proving that an application relates to clean technology shouldn’t be especially onerous given that much of the “hard work” (IPC codes and the like) has been done already.

Any decision to request expedited examination in New Zealand should be offset against the fact that even if proceeding via the “regular” route, a first examination report typically issues from IPONZ within about 6 months.  Jumping through a few extra hoops in order to save only a couple of months wait time may not be to everyone’s taste.

Shelston IP’s cleantech team

In response to the increasing recognition being afforded to clean technologies throughout the patent world, Shelston IP has in place a “cleantech IP Team” comprising professional staff from varying scientific, engineering and legal backgrounds.  We are well placed to advise clients as to how best to prosecute their clean technologies by making best use of the various facilities available under the Australian and international patent systems.

Authored by Gareth Dixon, PhD

Shelston IP congratulates its valued client Finisar Australia on being the recipient of the Prime Minister’s Prize for Innovation. The team at Finisar, which included Dr Simon Poole, Mr Andrew Bartos, Dr Glenn Baxter and Dr Steven Frisken, were awarded the prize at a ceremony on 17 October 2018 for their development of wavelength selective optical switches in the early 2000s. The switches use a dispersive prism to separate different colours of light and a liquid crystal on silicon chip to switch the different colours between optical fibres. The optical switches are now in use across the globe and have helped to increase the capacity and reliability of communications networks.

Shelston IP is proud to have assisted Finisar with the protection of their IP around the wavelength selective switch technology and many other inventions.

Authored by Peter Treloar

This article was published originally in the LexisNexis Australian Intellectual Property Law Bulletin, Volume 31, Number 6, pp.111-114 (2018), and is republished here with permission. The published article can be found here.

This article was has also been republished in Wolters Kluwer’s The Licensing Journal, January 2019; the republished article can be found here.

It is generally accepted that climate change cannot be redressed by means of existing technologies. “Cleantech” – technologies that may lessen, nullify or even reverse the environmental impact of an existing product or process is thereby a buzzword in many aspects of society – including patent law. However, what happens when a patented cleantech invention is of such outstanding public benefit that the patentee’s right to exclude others is arguably contrary to the interests of society? In such circumstances, the patent bargain does not fit well with the advancement of the species and gives rise to a real tension between the two.

Cleantech101 and IP101

Environmental consciousness – especially as it pertains to climate change is increasing exponentially throughout the world. Moreover, it is generally accepted that pollution cannot be stabilised with existing technologies.[1] “Cleantech”[2] – technologies that may lessen, nullify or even reverse the environmental impact of an existing product or process is a thereby a buzzword in many aspects of society – including patent law.[3]

The essential quid pro quo of the “patent bargain” is that in exchange for providing the public with a new invention, a patentee is afforded a twenty-year exclusive period in which to exploit it. This is “IP101” – and history has generally shown it to be sufficient inducement with which to stimulate inventive activity.

Whereas new inventions are typically patented with a view to profiting the patentee, some cross-over into the realm of also providing a great benefit to the public. However, what happens when an invention is of such outstanding public benefit that the patentee’s right to exclude others is arguably contrary to the interests of society? In such circumstances, the patent bargain does not fit well with the advancement of the species and gives rise to a real tension between the two.

Pharmaceutical patents are one example of this tension. However, it can be argued that patent exclusivity for pharmaceuticals is a necessary evil given the enormity of both RD&E and clinical trials costs associated with getting a product onto the market. Moreover, while the respective definitions of happy may be somewhat different, a lifesaving drug sold under patent generally makes for both a happy patentee and a happy consumer.

“Public” benefits versus “private” rights

Another example – one not quite so easily reconciled, is that of cleantech. For instance, a patent for a “cleaner” method of manufacturing cement. Clearly, it is in the patentee’s best interests to exploit the exclusivity conferred by the patent in working or licensing the invention. On the other hand, it is in society’s best interests that such an invention is placed immediately in the public domain. To generalise, cleantech doesn’t invite the same RD&E costs as pharmaceuticals. As such, it could be argued that the case of this cleantech, society’s need may actually be greater than the patentee’s right – which is, of course, completely at odds with the original patent bargain. At first glance, there appear two main ways in which this impasse may be reconciled.

First, governments may provide for a non-commercial use exception to infringement (NCUE), under which a third party is able to exploit a patented clean technology if it can be shown that their motives are not commercial in nature; and/or second, provide for a compulsory licensing regime allowing governments to commandeer patented clean technologies and exploit them for the good of the environment.

Of course, these alternatives – and indeed any other “altering” in favour of the public, erode a patentee’s basic right to exclusivity. Erode the right and you lessen the incentive to invent in the first place. Clearly, some measure of compensation is due. Perhaps the most obvious include making cleantech patents easier to obtain by, for instance, lowering the inventive step threshold; and/or making the effective life of cleantech patents longer than the standard twenty years.[4]

Unfortunately, neither of these measures is satisfactory. Lowering the bar on inventive step may result in more cleantech patents being granted at the lower end of the spectrum – but it would fail to adequately stimulate the high-end inventions that would more likely be subject to the above-suggested NCUE or compulsory licensing (and would be more likely to save the planet). Moreover, extending the patent term necessarily ignores the fact that much cleantech is likely to be short-lived or incremental in nature.

On this basis, there appears no obvious statutory tweak that would provide adequate compensation for a cleantech patent being effectively hijacked in the name of the public good.

Copenhagen 2009 – Things come to a head

This theoretical tension actually played out a few years ago in real life. At the Copenhagen Summit[5] of December 2009, China sought special exemptions so that it could exploit certain cleantech patents for hybrid cars without paying license fees. Acceding to the Chinese requests would have altered the patent bargain for the patentees, ultimately affecting their bottom lines – and threatening the future development of hybrid technologies. On the other hand, the environmental good that could be accomplished through making hybrid cars accessible to the Chinese population is staggering. In the alternative, pass on a license fee to consumers and you limit the uptake of the related cleantech, which will be ultimately to the detriment of the environment. Which answer is correct?

Of course, what China was asking for was the introduction of a compulsory licensing regime. However, the fact that a final binding agreement required the consensus of all countries party to the Copenhagen negotiations effectively sounded the death-knell for any form of compulsory licensing based on the “government takes what it wants” model.

In cases where no solution is apparent, it is commonplace to call for government intervention. The simplest way in which cleantech patents may adequately benefit both the patentee and the public is for the relevant government/s to step in and pay an appropriate royalty in exchange for its compulsory license. However, it is improbable that any government would wish to match the free market value of a breakthrough cleantech invention. This again undermines the incentive to invent – or alternatively, provides almost a reverse-incentive to invent mediocrity that will not risk being subjected to a compulsory license. An alternative is that cleantech investors simply alter their focus – their RD&E dollar is directed elsewhere; a “eureka-type” invention in pharmaceuticals could net billions on the free market.

A non-commercial use exemption?

The NCUE is perhaps best considered an adaptation of the experimental use exception (EUE) to patent infringement. It is widely accepted throughout much of the world that experimenting with a patented invention is permissible to the extent that such actions are not commercial in nature. However, any NCUE must necessarily go beyond mere experimentation and provide for actual use of the patented product or process. This of course, conflicts with TRIPs,[6] which confines exceptions to a patentee’s rights to circumstances that are “limited” and do not “unreasonably conflict with a normal exploitation of the patent”. For instance, if one vendor offers a product or service for free (or a nominal cost-neutralising fee) – and another charges a premium for the exact same thing, who’s going out of business first?

Another clear drawback of the NCUE is that it could become susceptible to abuse. With the EUE, the differing social, political and economic climate of individual countries necessitates a unique line in the sand as to precisely where experimentation ends and exploitation begins. However, with any proposed NCUE, presumably all that would need to be shown is a zero on an alleged infringer’s balance sheet – and there are various ways and means to this end.

Notwithstanding, the principle shortcoming of the NCUE has already been alluded to above. A patentee cannot make a return on their investment where another is allowed to undersell them in the market. Moreover, government compensation to redress this disparity is probably more readily administered through a compulsory licensing regime than via the NCUE. On this basis, the NCUE is ultimately an unworkable ideal.

Other measures

While somewhat less extreme than the measures proposed above, there have been other recent developments toward establishing a more efficient cleantech community within the existing patent system. For instance, in 2010, WIPO[7] launched the IPC Green Inventory[8] – an online tool intended to assist users in identifying existing and emerging cleantech, as well as isolating potential commercial partners. The most recent iteration is simply named WIPO Green.[9]

Further, the national patent offices of several major jurisdictions have facilitated the expedited examination of applications relating to cleantech. For instance, the USPTO,[10] UKIPO[11] and IP Australia,[12] among others, each now offer (or have offered) such a scheme. While these programs each have subtle differences, the fundamental principle is that a cleantech patentee now has means to jump the queue with respect to “unclean” applications. In the case of small or start-up patentees, a granted patent is often required in order to attract investment. On the other hand, the associated legal costs may not have been budgeted for so early in the lifecycle of the patent. Moreover, the many companies who file patents for defensive reasons generally have less motivation to proceed via this route.

As highlighted in the ACIP Review,[13] certain other measures may be adaptable to cleantech. For example, a fair dealing defence, largely analogous to that found in copyright law[14] is largely self-explanatory. However, it is worthwhile noting that this would necessarily overlap to some degree with the NCUE – and that the judicial parameters of “fair” are likely even more of a minefield than the proposed zero profit criterion for the NCUE.

Next, the patent pools model purports to facilitate the efficient trading of patent rights. In this respect, a significant impediment to any potential developer of cleantech has been the emergence of patent thickets which cover every foreseeable twist and turn along the path to a new technology; such thickets have arisen in respect of fuel cells, wind energy, and carbon sequestration technologies. Accordingly, money initially earmarked for cleantech RD&E risks being siphoned off to pay for infringement opinions and cross-licensing arrangements.

One such pool is the CleanXchange,[15] based on the Creative Commons[16] project for copyright. A variant is the Eco-Patent Commons,[17] which requires members to forego suing other members who exploit commons patents for environmentally-beneficial uses. However, the various competition authorities have placed stringent conditions on such patent pools in recent years, which could be argued to have restricted their uptake and appeal.

While it appears – at least for now – as though cleantech may be a square peg within the round hole of the existing patent system, studies have suggested that any barriers patents provide to the adoption of cleantech are not insurmountable.[18] For instance, a study of the solar and biofuels sectors revealed that each is sufficiently competitive as to allow developing countries to take advantage of the respective technologies without paying crippling licensing fees.[19]

A square peg in a round hole?

As discussed above, cleantech RD&E may be cheap only by comparison with pharmaceuticals. This hints at the desirability of maintaining the regular patent bargain for cleantech, given that during the initial RD&E phase, IP will often be a cleantech company’s most valuable asset. Moreover, patenting creates opportunities for cross-licensing deals and strategic use to negotiate joint venture arrangements. Finally, patents can be instrumental in a cleantech company’s exit strategy, by way of going public or being acquired. The argument therefore, is that any diminution of a cleantech patentee’s rights may amount to a distortion of the free-market principles that are a staple of the various competition authorities. However, the counterargument is likely just as applicable.

For completeness, it is also worth noting that patents weren’t the only spanner in the works of a global climate treaty in Copenhagen; the related field of technology transfer appears to have been equally implicated.[20] To a large extent, improving technology transfer will ultimately be reliant upon the incentives offered for the sharing of cleantech, which leads immutably to the same issues faced – and ultimately unaddressed in respect of cleantech patents.

The above discussion represents what is likely only the opening stanza in what is sure to be a fascinating period in patent law. Cleantech will continue to poke and prod the patent system in ways that were probably never envisaged – and it will be interesting to see if, when and how any changes eventuate so as to better accommodate “public” clean technologies within the “private” patent system. While the cynic may suggest that a Copenhagen Agreement would have materialised if the pollution issue was perceived as real, the pragmatist would likely counter that if a genuine fix was apparent from within a 2000-word article, it would have been adopted long before now.

Three takeaway tips

  • Interpret “cleantech” broadly: A “dirty” technology can still be “clean” if it’s cleaner than competitors’ existing technologies – it’s all relative.
  • To expedite or not to expedite (examination): There are pros and cons depending upon where your client is at legally, financially and commercially – one size certainly doesn’t fit all.
  • Cleantech is a “feelgood” industry: Combining making a living with cleaning up the planet is a win-win situation.

[1]See, e.g., Wiley’s Remediation Technologies Handbook: Major Contaminant Chemicals and Chemical Groups, Jay H. Lehr, Wiley-Interscience, 2004; and Handbook of Pollution Control Processes, Robert Noyes, Noyes Publications, 1991.

[2]a.k.a., “greentech”, “envirotech”, “environmentally sound technologies (ESTs)”, etc.

[3]See, e.g., http://www.inhabitat.com/2010/04/29/green-techs-big-patent-problem

[4]Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”), Article 33.

[5]United Nations Climate Change Conference, Copenhagen, Denmark, 7-18 December 2009, incorporating the 15th Conference of the Parties (COP15) to the United Nations Framework Convention on Climate Change and the 5th Meeting of the Parties (MOP5) to the Kyoto Protocol.

[6]Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”), Article 30.

[7]The World Intellectual Property Organisation, see, http://www.wipo.int

[8]http://www.wipo.int/classifications/ipc/en/green_inventory/

[9] http://www.wipo.int/policy/en/climate_change/

[10]United states Patent and Trademark Office, see, http://www.uspto.gov/patents/init_events/green_tech.jsp

[11]The United Kingdom Intellectual Property Office, see, https://www.gov.uk/guidance/patents-accelerated-processing#green-channel

[12]https://www.ipaustralia.gov.au/patents/applying-patent/standard-patent-application-process/examination-standard-patent/expedited-examination-standard-patents

[13]The Advisory Council on Industrial Property, “Patents and Experimental Use”, October 2005, see, https://www.ipaustralia.gov.au/sites/g/files/net856/f/acip_final_report_patents_and_experimental_use_archived.pdf

[14]Copyright Act 1968 (Cth), ss.40-43(2) and 103A-C.

[15]https://en.wikipedia.org/wiki/GreenXchange

[16]http://creativecommons.org

[17]http://www.corporateecoforum.com/welcome-to-the-eco-patent-commons/

[18]See, e.g., https://www.theglobeandmail.com/report-on-business/rob-commentary/patents-are-no-barrier-to-innovation-despite-the-myths/article29663542/

[19]John H. Barton, World Intellectual Property Organisation Magazine, March 2009, see, http://www.wipo.int/wipo_magazine/en/2009/02/article_0005.html

[20]See, e.g., http://www.dw.com/en/assessing-the-role-of-patents-in-combating-climate-change/a-6299080

Authored by Gareth Dixon, PhD

The purposes of the claims of a patent are to define the metes and bounds of an invention, and to place the public on notice of what constitutes an infringement. Generally speaking, the requirements for patent claims are that they must:

  • define the matter for which protection is sought, preferably in terms of the “technical features of the invention”,
  • be clear and concise/succinct, and
  • supported by matter disclosed in the specification, and enabled across their full scope.

There are arguably only 2 basic types of patent claim:

  1. claims to a physical entity (e.g., compound, product, apparatus) and,
  2. claims to an activity (e.g., process, use).

For many inventions, claims in more than one category are needed for full protection. In the field of chemical sciences (meaning chemical compositions such as those arising in the fields of chemistry, materials science, petrochemicals, pharmaceuticals, and biotechnology), to properly protect the invention a patent may protect any one or more of the following subject matter:

  • a compound, which may be defined as a class of compounds, as a specific compound, or group of specific compounds,
  • a composition containing the compound,
  • an article made from, or containing the compound,
  • a process for preparing the compound (and the compound when prepared by the process),
  • a composition when used in a particular manner or under some defined circumstances (generally understood as a pseudo method claim),
  • a compound for treating a medical condition,
  • a method of using a compound for a specific purpose (e.g., for curing a polymer composition), or for treating a medical condition (a method of treatment claim), and
  • the use of a compound in the manufacture of a medicament for treating a medical condition (known as “Swiss style” claims).

Another common claim type is a claim to a kit, which either comprises a novel component (compound or composition), or is constructed to ensure that the kit components are applied simultaneously/sequentially to produce a new product or synergistic affect, or the kit limited to use in a novel and inventive method.

In the field of biotechnology, patentable subject matter includes isolated naturally-occurring micro-organisms, peptides, or proteins, and (under some limited circumstances) gene sequences. Patent claims can therefore be directed to one or more of these categories, too. For protein-type inventions claims can be directed to a nucleic acid encoding the protein, a vector containing the nucleic acid, and a host cell comprising the nucleic acid or vector.

Depending on the circumstances, there are a myriad of other claim types that can be pursued. For example, claims to a precursor or an intermediate (e.g., such as a pre-polymer) may be appropriate. In another example, claims could be directed to a solution that has some specific use. For example, a copper electroplating solution that comprises a solution of copper sulfate, sulphuric acid, and wherein the pH has been adjusted to a specific range.

In another example, the invention may lie in methods of identifying compounds that achieve a certain technical effect (e.g., A binding assay for detecting one or more specific analyte(s) in a sample), or may lie in the particular spatial configuration of entities of a mixture (e.g., one entity may be an immediate release phase and the other entity may be a prolonged release phase).

Closing comments

In the field of chemical sciences (e.g., chemistry, materials science, petrochemicals, pharmaceuticals, biotechnology, etc) to protect an invention one or more different types of patent claims may be required.  The choice of claim types depends on the invention at hand, under what circumstances there may be infringement, who may license the patent, and should ultimately align with the applicant’s commercial objectives.

Outlined in this article is a summary of the main types of claims that are pursued when drafting a patent application in the chemical sciences field. It is impossible to foreshadow all the types of patent claims that may be pursued, and thus when an idea is an important commercial asset, it is wise to engage a qualified patent attorney to assist in the generation of relevant intellectual property rights that suitably protect that commercial asset. At Shelston IP, we have a number of highly experienced attorneys who can assist in navigating these complexities.

The content of this article is general in nature and must not be relied on in lieu of advice from a qualified professional in respect of your particular circumstances.

Authored by Michael Christie, PhD