IAM Patent 1000: The World’s Leading Patent Professionals 2020 has again listed Shelston IP as Highly Recommended for their patent prosecution.

Congratulations to our ranked practitioners Paul Harrison, Chris Bevitt, Greg Whitehead and Michael Christie.

“The impeccably qualified team of patent attorneys and attorneys at law at Shelston IP has achieved great success in recent years, especially in tapping into the Chinese market. Processing one out of every 15 applications entering national phase in Australia already, the side now represents the greatest number of Chinese entities among Australian IP firms and files the most China-originating patent applications in Australia. Paul Harrison  and Greg Whitehead are fine examples of the group’s first-rate advisers. With a chemical engineering background, Harrison aptly handles building and construction products and systems, material separation, treatment and handling, metallurgy, food processing, medical equipment and process technology briefs. He is also the Asian Patent Attorneys Association Conference chair 2020. Head of the mining team, Whitehead is not just technically excellent, he also has a great track record building up and consolidating the patent portfolios of start-ups for commercialisation. Similarly, Michael Christie, a former senior associate at MinterEllison who joined the firm in May 2020 to head up the life science practice, specialises in molecular biology. Elsewhere, Chris Bevitt is the commercial law team leader who tackles transactional work effortlessly.”

Authored by Chris Bevitt, Greg Whitehead, Michael Christie, PhD and Paul Harrison

IAM Patent 1000: The World’s Leading Patent Professionals 2019 results have been announced.  Shelston IP have again been Highly Recommended for their patent prosecution.

Those who have been commended, are to be congratulated.

“Shelston IP is head and shoulders above the rest, for its holistic service and deep reserves of knowledge. The team is super proactive and always one step ahead of the opposition; they work around the clock, never missing a deadline and will go above and beyond to ensure the work is first-rate.” An example of the firm’s innovative tendencies is its recent launch of OneAsia, a business solution aimed at providing clients with seamless one-stop shop protection across the Association of Southeast Asian Nations. Paul Harrison leaves both clients and peers in awe. As one patron enthuses: “Paul fuses his technical knowledge in chemical engineering with his legal expertise and sound commercial thinking, to produce great work. He has strong patent searching and analysis skills and his overall strategic approach makes him a stand out. Paul is proactive and his ability to understand complex processes and distil it into simple and easily digestible language is extremely valuable.” Patent attorney Greg Whitehead has a broad mechanical engineering practice; he possesses detailed and unique knowledge of robotic systems, automation equipment and industrial drying and heating machine patents. Commercial law department spearhead Chris Bevitt comes “highly recommended for his finesse in transactional matters. He has the ability to take intricate commercial arrangements involving the past, present and future rights and obligations of parties and draft meticulous, concise and effective clauses to reflect them perfectly. Chris’ turnaround is fast and his communication extremely effective – he proposes alternative solutions to achieve the best possible outcome. He is courteous and always available to answer questions too.”

Authored by Paul Harrison, Greg Whitehead and Chris Bevitt

We handle the intellectual property (IP) portfolios for a diverse range of clients, many of whom are large multinationals. Their IP portfolios typically include all forms of registrable rights – patents, trademarks and designs. We also often find that certain clients have many IP service providers, each of which handle one or more of those registrable rights. Such a fractured vendor landscape can arise due to a variety of factors, such as historical reasons. For example, different IP Managers within the organisation have had different preferences for IP services providers and have spread the work around over time, or there may have even been an internal policy in this regard. Sometimes, a parent company may acquire smaller entities and will transfer any IP into the parent’s name, but will retain management of the IP with the existing service provider. This may be for perceived convenience, or simply due to a perceived cost for transfer of the portfolio. Whatever the reason, there are disadvantages to having the IP handled by plurality of service providers.

By reviewing the IP portfolios of the most successful organisations it is clear that industry best practice is to have the IP handled by a very limited number of service providers, and preferably consolidated to a single provider.

Industry best practice

There are many advantages of having your IP handled under one roof by a single dedicated IP team. For example, to enable the attorneys handling the IP to better understand:

  • the client’s commercial objectives,
  • the client’s existing technology, the technology currently under development, and what technology may be required in the future,
  • the client’s main competitors and their technologies, and
  • to gain a better understanding of the industry in general, including the common technical knowledge.

An understanding of the commercial objectives is important, as these objectives should frame the IP being developed now and into the future, and will assist the attorney to more comprehensively protect and enforce the IP. Consolidation of IP with a single service provider enables the attorneys to become more embedded in the organisation and fosters a more collaborative working relationship with the key people in the organisation (researchers, inventors, business development managers, etc). It can also be important to understand the client’s key competitor(s) and its technologies for freedom to operate issues and to assist the organisation in its decisions to attack its competitors’ IP.  All these factors lead to:

  • greater proactive and strategic management of the client’s IP (rather than a reactive approach to IP issues as they arise);
  • increased efficiencies in dealing with IP matters;
  • a service provider enabled to add real value to the organisation, and
  • cost benefits.

Furthermore, there are synergies which come about from this approach.  As attorneys/lawyers become more embedded in an organisation they are better able to brainstorm technical solutions with R&D personnel and to assist them to understand the commerciality of the solutions they develop to real-world problems. Additionally, the improved collaboration which is possible between attorneys and R&D staff can lead to more robust patent specifications being drafted, thereby improving the strength of the IP, reducing the ability of infringers to work around the IP, and increasing the prospects of surviving a validity attack. It also leads to the attorneys having a better understanding of the key prior art in the field, and the common ‘terms of art’.  The organisation can also benefit in other ways. For example, many in-house IP teams are relatively small and there can sometimes be a high turnover of attorneys. Utilising a single service provider supports portfolio knowledge and corporate memory.

Conclusions and summary

There are many advantages to an organisation having its IP handled by a single service provider, and is a ‘best practice’ approach to strategic IP portfolio management.

Shelston IP is well placed to assist with management and consolidation of your IP portfolio to achieve your commercial objectives.

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 Paul Harrison

There are a couple of ways to file a patent application in a country of interest. The choice is usually based on a commercial strategy, and balanced by cost considerations. If protection of the invention is required in only a few countries, it is usually most cost effective to file directly into those countries and claim priority to any provisional patent application which has been filed – known as (Paris) Convention applications. Alternatively, where an applicant requires more than a few countries, it is more common to file a Patent Cooperation Treaty (PCT) patent application (and claim priority). It is also possible to pursue Convention applications in parallel with a PCT application.

The strategy of filing Convention applications incurs the relatively-expensive filing costs sooner compared to filing a PCT application, where the major filing costs are deferred for 18 months – a period referred to as the International Phase. In other words, the PCT application takes the place of the individual foreign patent applications that would otherwise have been required. After the International Phase, in a period referred to as the National/Regional Phase, the PCT application is converted into individual foreign patent applications, one in each country where patent protection is to be sought.

What is the PCT system?

The PCT is an international agreement administered by the International Bureau (IB) of the World Intellectual Property Organisation (WIPO) and covers most of the major industrial countries of the world. A list of the PCT contracting/member states can be accessed here. The IB receives all of the PCT applications, wherever they were originally filed, maintains compliance with PCT rules, maintains an official record of all PCT applications, forwards copies of relevant papers in PCT applications to regional and national patenting authorities, and publishes PCT applications.

Advantages of the PCT system

One significant advantage of a PCT application is deferral of the cost of the national phase applications, allowing Applicants more time to explore the commerciality of the invention. The PCT is also an attractive option for applicants who intend to find licensees for their foreign patent rights, as the PCT keeps the options open in many countries and then the licensee can pay the costs of prosecution in any countries in which the licensee is interested.

Another advantage is that a PCT application is automatically subject to both search and examination, and therefore provides some information for assessing the prospects of actually obtaining granted patents, and their potential scope of protection, before the major filing and prosecution costs are incurred. The PCT system permits a central prosecution before a single patent office, and can be used to reduce the number of objections that will need to be addressed later, before individual patent offices, thereby lowering prosecution costs. The PCT application route is costlier initially due to the filing costs of the PCT application itself, however it may be more cost effective overall due to streamlined prosecutions.

The PCT system can also be used to manage risk. For example, if the invention disclosed in the PCT application is subsequently found to be unpatentable in view of the prior art, an early decision can be made to withdraw/abandon the application, thereby avoiding the national phase filing costs.

The PCT system is also flexible in that if the applicant requires further time to raise funds or assess the potential of the invention the priority claim can be withdrawn close to the national/regional phase entry deadline, effectively extending the deadline to file national/regional phase applications. Of course, the applicant should only take this step if unaware of any relevant publications.

Examination of PCT applications

The PCT system does not examine patent applications fully, and it does not grant patents. The examination may be without interaction between the applicant and the Examiner (under Chapter I) or with interaction between the applicant and the Examiner (under Chapter II). By default, the examination is performed under Chapter I, unless a Demand is filed under Chapter II.

  • Chapter I: The main steps include: filing the PCT application, preparation of the International Search Report (ISR) and the Written Opinion (WO) of the International Search Authority (ISA), and the publication of the international patent application, with the ISR and any amended claims which have been filed. If a Demand is not filed (see below), the WO is later reissued as the International Preliminary Report on Patentability (IPRP) under Chapter I (IPRP/ Chapter I).
  • Chapter II: Chapter II is optional and is also known as International Preliminary Examination (IPE). The main steps include: the filing of a Demand including amendments and/or arguments to address any objections raised in the WO, and the subsequent preparation of the IPRP/Chapter II. Obviously if the WO is clear of issues of patentability, there is no need to file a Demand and undertake IPE.

What is International Preliminary Examination?

IPE is used to obtain “a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable”[1].  It is carried out by an International Preliminary Examining Authority (IPEA) at the request – called a “Demand” – of the applicant, and gives the applicant the opportunity to evaluate the prospects of obtaining patents in the countries of interested before incurring the expense and trouble of entering the national phase. Fees are payable for making the Demand, and it must be filed within a certain time limit and accompanied by a response to the WO. The examination is “preliminary”, since a final opinion will be formulated only in the national phase by the national or regional patent office, and is “non-binding” on anyone, including national/regional patent offices.

It is not necessary to file a Demand if you the applicant is content with the WO being reissued as an IPRP, and is happy to address any objections raised during the regional/national stage. For example, where the objections raised in a WO relate to matters of inventive step the applicant may choose not to respond to the WO.  This would allow the applicant to address the inventive step issues separately before each national office, and in accordance with national inventive step law and practice.

The PCT application is filed with a Receiving Office (RO) and is followed by search of the application by the ISA (who prepares the ISR and WO). For nationals and residents of Australia, the choice of RO is IP Australia or the IB, and the choice of ISA (and IPEA) can be IP Australia or the Korean Intellectual Property Office (KIPO).

What is examined?

There is not a uniform approach to the criteria for examining patentability in the national laws of each of the 150+ countries that are currently party to the PCT. Therefore, the criteria on which IPE is based correspond to internationally accepted criteria for patentability, namely: novelty[2], inventiveness[3], and whether the invention is industrially applicable[4]. A secondary objective is to identify whether there appear to be any defects in the form or content of the international application, for example with regard to clarity (claims, description, drawings), whether the claims are fully supported by the description, or whether there are multiple inventions claimed (lack of unity of invention). Additional objections can relate to inconsistencies in the description (ambiguous syntax, relative terms, etc.), whether there are too many independent claims in one category (conciseness), and whether the claims are framed in a result to be achieved (stating the desired result without explaining how the result is achieved).

What are the benefits of IPE?

According to the PCT guide[5], while the IPRP is not binding on a patent office, “it carries considerable weight … and a favorable report will assist the prosecution of the application…” Also, an application “… will generally proceed rapidly to the grant of a patent” where the IPRP is favourable. In practice, this is generally true for many countries, although many countries will use the IPRP as the starting point for further examination in the national/regional phase, especially the larger jurisdictions such as the US, Europe, China, and Japan, and will effectively start “from scratch”. Despite starting from scratch, the IPE procedure is of some benefit as many of the issues will have already been addressed prior to national phase prosecution, thereby potentially expediting prosecution in these countries and reducing overall costs.

From a risk management perspective, obtaining a clear IPE can also be of benefit to licensees, who can take some comfort from a clear report, and can make commercial decisions based on the likely scope of the claims.

What happens after the international phase?

The normal deadline for entering the National/Regional Phase is 30 or 31 months from the priority date, depending on the country, although it is possible to enter the National/Regional Phase “early”, before the deadline. The requirements for entering the National/Regional Phase are different for each country/region, and usually involve appointing a foreign attorney to handle the application, filing formal documents signed by the inventor/applicant, and paying official fees to the patent office of that jurisdiction. Once filed, the application is handled and examined according to the usual treatment of patent applications in the countries/regions involved, and all of the local time limits, laws, rules, and procedures must be observed.

Closing comments

The decision of whether to file Convention applications or a PCT application (and subsequently enter the national/regional phase) depends on the budget and the commercial strategy. Assuming a PCT application is filed, there is a further decision on whether to file a Demand, which depends on factors such as the commercial stage of the product, the interest of licensees, the scope of the planned national/regional filings, the budget, and the scope of the prior art cited in the ISR. We recommend that you discuss these important matters with your Shelston IP attorney early in the patenting process so that there is a targeted strategy for your innovation.

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.

[1] Article 33(1)

[2] Article 33(2), and Rule 64

[3] Article 33(3), and Rule 65

[4] Article 33(4)

[5] http://www.wipo.int/pct/en/appguide/text.jsp?page=ip10.html

Authored by Paul Harrison

On August 10, Patricia Kelly retired from her position as Director General of IP Australia, after almost five years in the role. Patricia will be replaced by Michael Schwager whose current role is as acting Chief Operating Officer at the Australian government scientific research agency, the Commonwealth Scientific and Industrial Research Organisation (CSIRO).

Shelston IP would like to acknowledge the significant contribution and leadership that Patricia has made to modernizing IP Australia by introducing many beneficial initiatives, including the introduction of digital technologies – making IP Australia the country’s first fully digital government agency; and the creation of a national IP register called the IP Government Open Data (IPGOD), allowing public access to more than 100 years of IP records. Patricia also was acutely aware of the importance of education and awareness of the IP system. This commitment resulted in the creation of a number web-accessible “IP toolkits” which brought the needs of Australian innovators into sharp focus.

As Patricia’s successor, Michael Swager brings a background of industry, science, and innovation to the Director General role. Shelston IP wishes Michael all the best for continuing and extending Patricia’s legacy by implementing further beneficial changes to IP Australia.

Authored by Paul Harrison

It is very common for patent examiners to cite patent documents as prior art to support novelty and inventive step objections. However, the information in patent literature is different to the kind of information published in peer-reviewed journal articles. In the latter case, the technical information is written for other scientists/engineers and is presented in a way that is intended to convey the results of that scientific research and to present conclusions that future researchers can build upon in their own research. In contrast, whilst a patent specification also covers technical subject matter, it is primarily a legal document that aims to set out the terms by which the patent owner and others will be bound. Accordingly, even though a patent specification should always be read through the eyes of a relevantly skilled person, it is written with public officials such as patent examiners, judges and business partners in mind. It is also often drafted around a particular commercial objective.

In light of these differences, the contribution and relevance of patent literature must be assessed in a different manner to non-patent literature. The purpose of this article is to cover some useful tips on how to read and understand prior art patent literature more efficiently.

Don’t just read the claims

The general structure of a patent specification is: title, abstract, background, summary of the invention, detailed description of the invention, examples, claims, and figures. It is useful to read the title and abstract to get an indication of the field of the invention. However, inventors often then immediately jump to the claims to ascertain what technical information is disclosed. In practice, we often encounter inventors who solely focus their review of a prior art patent on the claims. Some inventors deduce that because the claims seem to be quite different from the field of their own invention, the patent is not relevant.  Alternatively, they conclude that because a particular feature of their own invention is not disclosed in the claims, their invention must be new in view of that patent. At first blush, these are reasonable assumptions – after all, the claims should define the invention.  However, this kind of analysis is erroneous – the new invention must be assessed against the entire disclosure of the prior art patent specification.

It is useful at this point to understand what can influence the subject matter of the claims of a patent. In some cases, applicants disclose multiple inventions in a single patent application, but only pursue the main (or most commercially relevant) invention in a first application. Accordingly, just reading the claims will not necessarily give a clear picture of other inventions that may be disclosed in the patent specification. Further, for commercial reasons, claims can sometimes be directed to a specific embodiment of the invention, but a broader form of the invention contained in the detailed description may be highly relevant. An additional complication is that different claims can be pursued in different jurisdictions.

It should also be remembered that, until the claims are granted, they are a work-in-progress. In the usual course of events, patent applications are filed and initially published with broad claims. During the patent prosecution process, the claims are examined and typically narrowed in view of prior art raised by the examiner, and the patent is again published at acceptance/grant with those narrower claims. Under some circumstances, claims can also be amended post acceptance/grant, in which case the patent will be published again.

Therefore, for the above reasons, it is certainly useful to read the claims – but it is more important when evaluating the disclosure of a patent specification to read the detailed description in full, including, in particular, the examples.

It is also worth noting that the status of the patent – i.e., whether it was/is granted, in force, lapsed or expired, is not a relevant consideration when assessing the disclosure of the specification.  Patent documents cannot be dismissed on the basis that they did not proceed to grant or are not currently in force.

Scrutinise the examples

In many cases, applicants have limited resources and only generate a limited number of embodiments of the invention for inclusion in a patent application.  In order to maximise the commercial value of that patent application, the attorney handling the case will usually claim the invention broadly around that limited number of embodiments. Of course, the reason for claiming broadly is to cover enabled, routine alternatives and to maximise claim scope up to the limit of what has been previously disclosed.  In practice, the intent is to claim broadly enough to overlap with the prior art and then amend during prosecution up to the limit of the prior art, or to what is not obvious in view of that prior art. Claiming broadly can also reduce the likelihood that an infringer can avoid infringing the claims.

The net result can be, however, that inventors narrow the claims to their own inventions in view of patent prior art that makes broad claims, or worse – they may set aside their invention altogether.

A better starting point for inventors is therefore to review the examples of the prior art patent and compare their new invention against those actual examples to ascertain whether their invention is new. If there are similarities between the actual examples and a potential new invention, it is then prudent to consider whether the similarities are likely to constitute routine alterations or substitutions (an ethyl group for a methyl group in a chemical compound, for instance) or would otherwise be unlikely to have any measurable effect (a slightly different percentage of a non-active excipient, for instance).  Conversely, if there are one or more differences between actual examples and a new invention that appear to give rise to a surprising or unexpected technical effect (superior efficacy or stability, for instance) – then an inventor may be in a position to argue novelty and inventiveness over a patent disclosure with broad claims.

As mentioned above, patent applications are not peer reviewed, meaning the validity of the technical information in a patent (i.e., experiments in the examples) is not subject to the kind of scrutiny that a peer reviewed journal article will receive.  Because the technical information in a patent will only be assessed in patent validity proceedings, the information is usually assumed to be accurate by a patent examiner. Accordingly, it may be worthwhile repeating experiments in a highly relevant patent specification where the accuracy of the results is in question. This may assist in overcoming inventive step rejections over that patent prior art.

Pay attention to detail – but don’t be deterred by a broad specification

In addition to having broad claims, it is very common to encounter patent documents that include long lists of options and alternatives – be these applications (e.g., medical conditions), active ingredients (e.g., substituents and/or chemical compounds), non-active components (e.g., excipients, stabilisers, colours), physical parts (e.g., joints, adhesives, materials), etc.  Such lists are often included during drafting to demonstrate how components in specific examples can be replaced or altered in a routine manner without departing from the spirit of the invention (in patent terminology, to meet support and enablement requirements).  However, in practice, a patent applicant has rarely tested each and every combination.  Therefore, a new invention that combines selected features from across multiple lists and thus appears to be disclosed in a broad patent document is not necessarily anticipated.  If there were certain technical barriers that had to be overcome to make that combination, for example, or the combination gives rise to a surprising or unexpected technical effect – there is scope to argue rejections over broad patent prior art disclosures.

Notwithstanding the above, it is worth remembering that features which are not explicitly disclosed in a patent prior art document can be implicitly/inherently disclosed. Accordingly, it is important to read patent prior art through the eyes of the skilled person.

Finally, although terms in patent documents are usually given their ordinary meaning in the relevant art, it is permissible for the description to give terms special meanings.  That is, the patent might be its own dictionary.  Furthermore, different attorneys may use different terminology to refer to a feature. Because the language of a patent is very important, and misunderstanding or misinterpreting a technical term or even a commonly used word that has a very specific meaning in patent specifications (e.g., “consisting” in a patent specification is generally interpreted in the exhaustive sense) can lead researchers astray, it is important to read the patent literature carefully to ensure that a relevant disclosure is not dismissed due to terminology differences.

Conclusions and summary

Patent research is a tedious task and sometimes a researcher may dismiss a prior art patent on the basis of a title or abstract, or even the claims, when the relevant disclosure is contained in the examples or detailed description. For this reason, we recommend reading patent documents in full, paying particular attention to the examples.  In this way, you can provide your attorney with valuable information on the content of a prior art patent as read through expert eyes, which can streamline the patent prosecution process. More importantly, this may reduce the possibility of dismissing valuable IP in view of, for example, broad patent prior art disclosures.

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 Paul Harrison

In a recent article, we outlined the role of IP in the innovation process. In particular, we noted that the innovation process can be conveniently described as having 4 main stages, namely:

– conception of innovative ideas,

– the research and development (R&D) stage,

– commercialisation of products or services, and

– the marketing of those products or services.

The process may also include iterative aspects and is often cyclical in order to continually produce new product and service offerings to the market (the so-called “cycle of innovation”).

We noted that the involvement of an IP professional is critical at each stage of the innovation process, for example to provide advice on: legal (confidentiality) agreements, prior art searching and analysis (patentability, freedom to operate, competitor and landscape mapping), trade mark and design registrations, patent strategy (including advice on when a trade secret vs patent protection is appropriate), and enforcement matters.

  • We also noted that additional specialised advice is sometimes required in relation to, for example, Innovation Incentives, comprising advice on Government grants and rebates, and collaborative funding opportunities.

As the activities undertaken at each stage of innovation are different, it follows that the IP considerations are different at each stage, too. It is useful to summarise the stages of innovation and the main forms of IP that are relevant at each stage, and to identify what forms of specialised advice may additionally be appropriate at each stage. In this regard, we refer to the following table.

Closing comments

Outlined in this article is a summary of the main stages of the innovation process and what main IP tools are relevant throughout. We also outline what relevant advisory services are relevant corresponding to the stages of innovation. When an idea is an important commercial asset, it is wise to engage a qualified IP professional (patent or trade mark 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. Contact us to understand what IP tools are most appropriate for your innovation.

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 Paul Harrison

Intellectual Asset Management recently released their 2018 IAM Patent 1000 survey results. Shelston IP are proud to be listed as a Highly Recommended firm for prosecution.

We also congratulate Shelston IP attorneys Paul Harrison, Greg Whitehead and Chris Bevitt for being listed as standout attorney’s in their field.

Keeping future enforcement priorities firmly in mind, Shelston IP conducts an exceptional programme of core prosecution services. Value is added throughout the patent lifecycle by a straight-shooting litigation team and a long list of support functions, including assistance with securing funding and reacting to legislative changes in the IP environment. The offices are staffed with crack prosecutors, from which Paul Harrison stands out; recently concluding a term as president of the Asian Patent Attorneys Association Australia Chapter, Harrison is “renowned for his robust engineering expertise”, though his talents are in demand among a broad heavy-industry following. Newly ranked  Greg Whitehead share a fanbase of ASX-listed companies that value their technical gifts. Devoting his time to instructions in the mechanical engineering space, Whitehead focuses on advising mining operations and technology start-ups. Leading the commercial law team with aplomb, Chris Bevitt offers his remarkable business acumen to rights holders seeking commercialisation opportunities.

Authored by Paul Harrison, Greg Whitehead and Chris Bevitt

Between August and November 2017, IP Australia sought public comment on several Government-supported IP policies, including:

– the introduction of an objects clause into the Patents Act; and

– amending the inventive step requirements for Australian patents.

Now, IP Australia’s response to the public consultation process has been released and the news does not appear to be optimistic for innovators.

In this first of two “patentable subject matter” articles, I will consider IP Australia’s proposals in relation to the introduction of an objects clause and its seemingly significant potential impact on Australia’s patent eligibility threshold.

Background

At the end of 2017, the Government supported a recommendation by the Productivity Commission to introduce an objects clause into the Patents Act – a clear statement of intent for the guidance of courts in the interpretation of the Act. The Productivity Commission Report specifically stated that “[a]n objects clause could be useful in underpinning decisions on whether to grant a patent” and “would influence the granting of patents through the interpretation of the patent criteria, including manner of manufacture” (“manner of manufacture” being Australia’s patentable subject matter threshold). Thus, clearly a Patents Act objects clause will play a role in determining the validity of patents/applications.

The public consultation

A total of 14 submissions provided comments in relation to the proposed introduction of an objects clause. Significantly, by almost a two-to-one majority, the submissions opposed the proposal to introduce an objections clause into the Patents Act.

Those opposed to the introduction of an objects clause raised concerns including that:

  • its purpose would be inconsistent with the TRIPS agreement, which guarantees minimum standards of protection for IP rights;
  • it would introduce doubt into well understood and applied jurisprudence developed over many years; and
  • it would be likely to cause confusion and uncertainty for users of the patents system, and that these would be long-term issues.

Comments were also submitted that there was no evidence that Australian Courts are importing objectives for the Patents Act that are inconsistent with the public interest. For this reason alone, the necessity of a controversial objects clause must be seriously questioned.

 The proposed objects clause

Notwithstanding the well-reasoned concerns and criticisms set forth in the majority of public submissions, IP Australia nevertheless, and seemingly without explanation, proposed the following wording for the Australian Patents Act objects clause.

The purpose of this Act is to provide a patent system in Australia that enhances the wellbeing of society by promoting economic wellbeing through technological innovation and the transfer and dissemination of technology. In so doing, the patent system should balance over time the interests of producers, owners, users of technology, and the public.

A major concern of this proposed objects clause, and one that was raised during the public consultation process, is the reference to the term “technological innovation”. This term alone has the potential to erode over 50 years of jurisprudence set down by a celebrated High Court decision[1] that underpins Australia’s current patentable subject matter threshold.

 Technological innovation and the patentable subject matter threshold

The proposed objects clause set out in the Productivity Commission Draft Report referred simply to “innovation”. However, based on a submission by a single economist, Dr Hazel Moir, the final report included a revised objects clause referring to “technological innovation”. Specifically, Dr Moir’s submission was critical of Australia’s patentability threshold stating that “currently, a patentable invention in Australia is simply something artificial from which an economic return can be made” and that “this (patentability threshold) radically extends the boundaries of the patent system beyond technology”.

Relevantly, Dr Moir concedes in a paper prepared in relation to trade treaties and patent policy[2] that “courts and patent offices have laboured over definitions of “technological” and “technical” with poor results”. For this reason, she set out subject matter that she considers should not be covered by the term “technological innovation”. Specifically, it is stated:

…the broad exceptions to what constitutes a technological invention need to be spelled out in patent statutes. However, in the interests of remaining flexible for unknown future technologies it is preferable that the boundaries to what is a patentable (technological) invention are spelled out in terms of the kinds of things excluded. Patentable inventions should not include:

  • Discoveries – things that are not markedly different from things found in nature;
  • Methods of medical treatment including diagnostic, therapeutic and surgical methods of treatment; and
  • Computer software, which was never intended by any parliament or government to be patentable and must be clearly and absolutely excluded.

Dr Moir has also been critical of the Judiciary for its seemingly pro-patent stance, explaining that the reason why an objects clause is needed in the Patents Act is that it will assist in ending “economically dysfunctional decisions”[3].

IP Australia’s position

IP Australia in their response to the objects clause consultation, attempted to quell the controversy in relation to the term “technological innovation”, by stating that the objects clause is not, in and of itself, intended to provide grounds for challenging the subject matter of a patent, nor to override existing Australian jurisprudence on patentable subject matter. This seems to be in complete conflict with Hazel Moir’s strident position on the role of an objects clause and Australia patent eligibility threshold.

Significantly, however, IP Australia also states that the Productivity Commission considered an objects clause would better balance the patent rights of software and business methods innovators and users and help alleviate its concerns regarding the quality of software patents. This clearly suggests that an objects clause would be used to determine validity based on patent eligible subject matter.

Implementation of the objects clause

In addition to the lack of clarity regarding the term “technological innovation” and its impact on Australia’s patent eligibility threshold, at this stage, it is also unclear if and how patented inventions will be assessed for their capacity to “enhance the wellbeing of society by promoting economic wellbeing”. For example, it is not clear whether an invention’s economic significance will be assessed during examination and/or revocation proceedings. If so, the objects clause would introduce an additional avenue upon which to submit evidence during litigation and this would undoubtedly add to the complexity and cost of patent litigation.

Of further concern is the ambiguity concerning the precise meaning of the phrase “economic wellbeing of society”. The Productivity Commission made their view clear – the patent system should promote the well being of Australians. The proposed objects clause, however, does not limit economic wellbeing to Australian society. Thus, a patent that promotes “economic wellbeing” in a foreign country rather than Australia, could be considered satisfying the purpose of the proposed objects clause. This is contrary to the view expressed by the Productivity Commission.

 Concluding remarks

The next stage in the introduction of an objects clause into the Australian Patent Act will be the preparation of an exposure draft of the legislative amendments together with a draft explanatory memorandum on the intended purpose and interpretation of the objects clause. Given the current substantial uncertainty that exists regarding how the proposed objects clause will be implemented, this draft legislation will be keenly anticipated and Shelston IP will keep you advised of developments.


[1] National Research Development Corporation v Commissioner of Patents (‘NRDC’) [1959] HCA 67

[2] Trade treaties and patent policy: searching for a balanced approach 15th International Schumpter Society Conference, Jena Germany, revised 12 November 2014

[3] Response to IP Australia’s “Consultation on an objects clause and an exclusion from patentability”, July 2013 Dr Hazel V J Moir

Authored by Paul Harrison

Upon discovery of a novel biological target, an applicant may attempt to patent antibodies directed to the target, as such antibodies may have diagnostic and/or therapeutic applications. In the past, it has been possible to claim such antibodies in the US by merely stating that they are capable of binding the new biological target, and it was not necessary to characterise the structure or sequence of the antibody. Such an approach appears to be no longer possible in the US.

Recently, the U.S. Court of Appeals for the Federal Circuit decided in Amgen v. Sanofi 872 F.3d 1367 (2017), that claiming an antibody by reference to its target is insufficient to satisfy the requirements of 35 U.S.C. § 112(a), which requires that the specification contain a written description of the invention, and of the manner and process of making and using it.

The Court of Appeals found the previously-used “newly characterized antigen” test, which had been based on an example in USPTO-issued training materials and was noted in dicta in several earlier Federal Circuit decisions, contradicted the quid pro quo of the patent system whereby one must fully describe an invention in order to obtain a patent.

The USPTO has now issued a memorandum stating that, in light of the Court of Appeals decision, adequate written description of a newly characterized antigen alone does not provide adequate written description of a claimed antibody to that antigen, even when preparation of such an antibody is routine and conventional.  Instead, patentees must disclose a sufficient number of species of antibodies, or adequately describe the characteristics of the genus of antibodies, such that the species may be recognized by those skilled in the art.

Under this new guidance, it is likely that patentees will be limited in the breadth of antibody claims that they can obtain in the US.  This represents a divergence of US practice from that of Australia and Europe.  In Australia, a claim to an antibody that specifically binds a new epitope is allowable where the applicant had disclosed the new epitope and shown that antibodies can be raised against it.  This is because raising antibodies to that epitope is a principle that can be generally applied to produce antibodies over the whole scope of the claim.  A similar principle applies in Europe.

The USPTO is preparing new examples for inclusion in the Manual of Patent Examining Procedure (MPEP) and Shelston IP will keep you informed of developments.

Authored by Paul Harrison