2 min read

IP Australia has been providing free, streamlined extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  However, streamlined extensions will not be available after 31 March 2021.

Streamlined extensions (until 31 March 2021)

The streamlined process has been available at IP Australia for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  Many deadlines for patents, trade marks and designs have been covered by the streamlined extensions of time.

No declaratory evidence or fee has been required; it has been possible to simply check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. 

Requesting extensions of time at IP Australia for patents, trade marks and designs from 1 April 2021

If you are unable to meet a deadline due to the COVID-19 pandemic, it will still be possible to request an extension of time.  However, from 1 April 2021, a declaration will be required to explain why you cannot meet the deadline.

The grant of an extension of time due to the effects of the pandemic does involve an element of discretion.  For patents, such extensions fall under section 223(2)(b) of the Patents Act 1990, according to which an extension of time “may” be provided if a deadline is missed because of “circumstances beyond the control of the person concerned”. 

Requests for extensions of time due to COVID-19 made from 1 April 2021 will be considered on a case-by-case basis and the Commissioner’s/Registrar’s review will consider the impacts of the pandemic.  

We can help

For more information about extensions of time in Australia, see our earlier article here: https://shelstonip.com/insights/publications/missed-an-australian-patent-deadline-heres-what-to-do/.

If you require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

3 min read

IP Australia is providing free, streamlined extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.

The period for requesting a streamlined extension has been extended until 31 March 2021.  However, IP Australia now indicates that, subject to any further developments in the COVID-19 pandemic, streamlined extensions will not be available after 31 March 2021.

What are the streamlined extensions?

IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. 

However, the streamlined extensions are not a simple free-for-all (see our earlier article here).  If asked, a requestor must be able to provide genuine reasons and evidence to justify the grant of the extension.  In addition, IP Australia warns that a false declaration could put the validity of an IP right at risk.

Many deadlines for patents, trade marks and designs are covered by the streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence).  However, there are some exceptions.  For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies.  For trade marks, these extensions are also unavailable for filing of divisional applications.

What if I want to request an extension of time after 31 March 2021?

If you are unable to meet a deadline due to the COVID-19 pandemic, it will still be possible to request an extension of time after 31 March 2021.  However, such an extension will not be available via the streamlined process and a declaration will be required to explain why you cannot meet the deadline.

The grant of an extension of time due to the effects of the pandemic does involve an element of discretion.  Such extensions fall under section 223(2)(b) of the Patents Act 1990, according to which an extension of time “may” be provided if a deadline is missed because of “circumstances beyond the control of the person concerned”. 

Requests for extensions of time due to COVID-19 made after 31 March 2021 will be considered on a case-by-case basis and the Commissioner’s/Registrar’s review will consider the impacts of the pandemic.  

We can help

For more information about extensions of time in Australia, see our earlier article here.

If you require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

2 min read

IP Australia is providing free extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  The period for requesting such an extension has been extended until 28 February 2021.  Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended further. 

Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.

IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. 

However, these COVID-19 extension provisions are not a simple free-for-all (see our earlier article here: https://shelstonip.com/insights/briefings/ip-australias-covid-19-extensions-of-time-a-word-of-caution/).  An element of discretion does apply and, if asked, a requestor must be able to provide genuine reasons and evidence to justify the grant of the extension.  The timing of the request can be of significance too.  In addition, IP Australia warns that a false declaration could put the validity of an IP right at risk.

Many deadlines for patents, trade marks and designs are covered by the streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence).  However, there are some exceptions.  For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies.  For trade marks, these extensions are also unavailable for filing of divisional applications.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

5 min read

Introduction

IP Australia is providing free extensions of time of up to 3 months if a deadline cannot be met due to the effects of COVID-19.  As reported here https://www.shelstonip.com/news/covid-19-update-ip-australia-now-extended-streamlined-relief-measures-31-january-2021-provide-certainty-holiday-period/, the period for requesting such an extension currently ends on 31 January 2021 with the prospect of the period being further extended. 

A streamlined process has been implemented for requesting COVID-19-related extensions.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic (equating to circumstances beyond control).  Although these COVID-19 extensions of time have so far been routinely allowed, they are nonetheless subject to the Commissioner’s discretion. 

New decision from IP Australia

A recent decision from IP Australia, Shell Internationale Research Maatschappij B.V. v Yara International ASA [2020] APO 55, http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/APO//2020/55.html, relates to a request for a COVID-19 extension in the context of a patent opposition.  It provides a reminder that care is required when requesting COVID-19 extensions at IP Australia, both in terms of the timing of the request and the reasoning.

Shell Internationale Research Maatschappij B.V. (the Opponent) filed a Notice of Opposition and, at the same time, requested a COVID-19 extension of 3 months for filing the Statement of Grounds and Particulars (SGP), which was due to be filed within 3 months of the Notice of Opposition. 

In accordance with usual procedure under Australian law, Yara International ASA (the Applicant) was afforded the opportunity to comment on the Opponent’s request for an extension of time.  The Applicant opposed the Opponent’s request for an extension of time. 

The Opponent’s submissions

The Opponent filed a declaration which provided a general overview of the COVID situation in the UK and at Shell.  The declaration noted that, as a consequence of the pandemic, the responsible in-house attorney had commenced working at home in April 2020, solely with the use of a laptop, without access to printers or desktop monitors, and that he did not have access to numerous physical documents that were required for the opposition.  The declaration also reasoned that, due to COVID-19, obtaining mandates and financial approvals for the opposition at Shell had become more difficult. 

The Applicant’s submissions

The Applicant, however, noted that the Opponent had filed two rounds of third-party observations at the EPO on the corresponding European application.  The Applicant argued that, although another Shell attorney had filed those third-party observations, the Opponent had not provided any reason why that attorney could not have prepared or assisted with the preparation of the SGP or why the task could not have been delegated to the Australian representative.  The Applicant pointed out that preparation of the SGP does not need expert witnesses and that the amount of time required to prepare the SGP is significantly less than that required for the preparation of evidence.  Furthermore, the Applicant argued that an undue delay would lead to an extended period of uncertainty for the Applicant and would not be in the public interest. 

Decision to grant a shortened extension and reasoning

The Commissioner commented that it was “not the existence of the pandemic, but rather the specific impacts on the responsible person, that must be taken into consideration”. 

The Commissioner considered that the extension request was “largely prospective and based on conjecture of circumstances that might arise in the future”.  The fact that the extension request had been filed at the same time as the Notice of Opposition did not work in the Opponent’s favour.  In this regard, the Commissioner observed that “if a party can anticipate on-going delays, and even quantify those delays in requesting an extension upfront, then presumably they can also plan and take action to mitigate their impact”.  The Commissioner expressed concern that “a party obtaining an upfront extension and working to an extended deadline may not be as diligent in completing their work, or as motivated to consider and implement mitigating strategies that could enable them to meet the original deadline”.

In the concluding remarks, the Commissioner adjudged that, whilst there were circumstances that had impacted on the Opponent’s ability to complete the SGP in time, the request was made at the beginning of the period for preparing the SGP when the impacts and the extent of delay were uncertain.  Further, the Commissioner was not satisfied that the Opponent had provided a sufficiently detailed disclosure of the circumstances to justify the request for an extension at that time, including the reasons why no strategies were available to mitigate the impacts. 

On balance, the Commissioner decided to allow an extension but the length of the extension allowed was less than the 3 months requested.

The Commissioner noted that the decision to allow the extension of time of course does not preclude the Opponent seeking a further extension based on current circumstances that may prevent completion of the SGP by the extended due date.

Conclusion

Whilst a shortened extension was granted in this circumstance, this decision serves as a stark reminder that IP Australia’s COVID-19 streamlined extension provisions are not a simple free-for-all.  An element of discretion does apply. 

A requestor must be able to provide genuine reasons and evidence to justify the grant of the extension and the timing of the request can also be of significance. 

In addition, it is worth mentioning IP Australia’s warning that a false declaration could put the validity of an IP right at risk.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Michael Christie, PhD

2 min read

IP Australia is providing free extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  The period for requesting such an extension has been extended until 31 January 2021 Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended further.

Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.

IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic.

Many deadlines for patents, trade marks and designs are covered by these streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence).  However, there are some exceptions.  For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies.  For trade marks, these extensions are also unavailable for filing of divisional applications.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us.

Authored by Serena White, DPhil and Gareth Dixon, PhD

It’s that time of the year once more in Australia: National Ride2Work Day (Wednesday 16 October 2019).  In celebration of pedal power, here’s a tour of some weird and wacky cycling patents.

One wheeled vehicle (US patent 325,548)

This curious vehicle, where the rider sits inside the wheel, was patented by John Otto Lose in 1885.  I love the way the illustrator has gone to the trouble of including a little umbrella in case of rain (not an essential feature of the invention).

Aerial bicycle (US patent 563,793)

Another slightly bizarre contraption was invented by Hiram Nickerson and patented in 1896.  The crucial problem, which seems to render this invention almost completely impractical, is that without a network of elevated track, the aerial bicycle can’t go anywhere.

Rowing bicycle (US patent 642,544)

Like the idea of rowing and fresh air but scared of the water?  No problem!  Louis Burbank has the solution for you with this rowing bicycle, patented in 1900.  More recent iterations of such a machine are available for purchase in 2019, but I suspect it’s probably a niche market.

Double bicycle for looping the loop (US patent 790,063)

Next up, it’s Karl Lange’s patent, granted in 1905, for a “double bicycle for looping the loop for circus and other performances.”  I’m not sure I fancy my chances with this one.  Especially without a helmet.

Exercising device for water use (US patent 4,241,688)

More recently, Ralph and Kathryn Mansolill’s 1980 patent is for a device useful for exercising in a swimming pool or other body of water.  The general idea is not to achieve some sort of miraculous unicycling on water.  In essence, the device is buoyant so that it can support a person “in a substantially seated upright position in the body of water such that the neck, head and upper shoulders of the person remain out of the water, allowing the person to exercise the legs, arms and torso while neutrally buoyant.”

Mowing apparatus adapted to be towed by a pedal-operated vehicle and the like (US patent 5,410,864)

Can’t afford a motorised ride-on lawnmower?  In 1995, Thomas Lacy and Kenneth Shackles, Jr. patented this mowing apparatus adapted to mount to the frame of a vehicle such as a bike.  Especially handy if you have a long, thin lawn.

Apparatus for harnessing wind to drive a bicycle (US patent 6,932,368)

Granted in 2005, Vladimir Zam’s patent protects his sail attachment which, when connected to a bicycle, harnesses wind to drive the bicycle forward.  My assumption is that it’s not intended for use on crowded city streets and I guess it might take a bit of practice not to fall off and hurt yourself when the wind changes direction.  However, Google suggests that others have also proposed bicycles with similar attachments – so perhaps this idea may have wind in its sails yet.

Body-connected bike (US patent 6,805,657)

Do you live in a small apartment and don’t have space for a bicycle?  Just do away with the frame.  And the pedals.  Indeed, Justin Trenary’s 2004 patent does just that.  It’s an interesting concept, probably quite exciting for downhill riding, but I’m not tempted to replace my commuting bike with one of these any time soon.

Authored by Serena White, DPhil and Charles Tansey, PhD

It’s that time of the year again: it’s National Ride2Work Day (Wednesday 17 October 2018). With this in mind, I thought I’d take the opportunity to show my appreciation for my favourite way to travel to work: the Brompton folding bicycle. I take a brief look at the bike and the role of intellectual property in its success.

What is a Brompton bike?

The Brompton folding bicycle was invented by Cambridge University graduate Andrew Ritchie in 1975 and named after the Brompton Oratory in South Kensington, London, which his flat overlooked. It folds conveniently into a compact package and, despite its small wheel size, displays surprising acceleration and nimble handling. Designed for commuters, this iconic bike is popular the world over.

Intellectual property protection

Patents

Patents provide protection for inventions which are new, inventive and useful. The original Brompton patent (EP 0 026 800 B1) was filed in 1979. This patent has long expired, so how is intellectual property contributing the continuing success of the Brompton?

Know how

These days, whilst the manufacturing of certain parts or processes is outsourced, the core production work is still carried out at Brompton’s UK factory. The manufacturing is complex and the company designs all of its own tooling. Keeping this know how within the company makes the bike difficult to copy and helps to keep the company a step ahead of potential competitors.

Designs

Brompton Bicycle Limited has a collection of registered designs for various bike parts, such as brakes and grips, registered in the UK and Europe. These registered designs protect how the parts look.

Trade marks

The company also owns several internationally registered trade marks, including the word mark “Brompton” and an instantly recognizable picture mark consisting of 3 bikes, stylized, in unfolded, partially folded and fully folded configurations.

Each trade mark acts as a “badge of origin”, identifying the source of Brompton bikes, parts and accessories and related services.

Marketing

Interestingly, Brompton Bicycle Limited does not advertise. Its marketing philosophy is to produce a great product that its customers love and to let its happy customers spread the word. And it works … arguably this article is one example!

Authored by Serena White, DPhil and Charles Tansey, PhD

With still no decision on whether or not a legal challenge at the German Constitutional Court is admissible, it is becoming increasingly uncertain if the new legislation for the Unified Patent Court (UPC) and the unitary patent will come into force before the UK’s departure from the EU. This article briefly outlines what the unitary patent and Unified Patent Court are, summarises the current issues and explains the significance of the timing of German ratification in the context of “Brexit day”.

What is the Unitary Patent?

Currently, when a European patent application is granted, it essentially becomes a “bundle” of individual national patents; one in each state in which it is validated.  A unitary patent will be a single, indivisible right and will cover most member states of the European Patent Convention (EPC).  After the relevant legislation comes into force, it will be possible to obtain a so-called unitary patent by requesting unitary effect within one month of grant of a European patent.

What is the Unified Patent Court?

The UPC will be a new international court which will have jurisdiction over all unitary patents.  It will also have jurisdiction over nationally validated European patents in states covered by the UPC, provided that patentees have not elected to opt out their patents from the UPC’s jurisdiction before any legal proceedings commence.

When will the UPC and the Unitary Patent arrive?

In order for the legislation to come into force, ratification of the UPC Agreement by Germany is required.  German ratification will mean that the requirement for ratification by at least thirteen EU states, including the three EU member states with the largest number of patents, is fulfilled.  The new legislation is set to come into force on the first day of the fourth month thereafter.

What is the German legal challenge about?

A legal challenge filed in Germany by Dr. Ingve Stjerna (a German attorney) essentially argues that the UPC Agreement is incompatible with German law.

The first step is for the panel of judges to decide whether or not the complaint is admissible.  A decision that the complaint is inadmissible would pave the way for Germany’s ratification.  Alternatively, if the complaint is determined to be admissible, it will then need to be decided if the arguments have merit.  This could involve referral of questions to the Court of Justice of the European Union (CJEU).

Why is the timing of resolution of the German challenge so important?

Many opinions suggest that the challenge is unlikely to be ultimately unsuccessful.  Nonetheless, the resulting delay could have serious ramifications for the UK’s participation in the UPC (and the unitary patent), bearing in mind the timetable for Brexit.

Working back from 29 March 2019 (“Brexit day”), in order for the legislation to come into force before the UK’s departure from the EU, Germany would need to ratify before the end of November 2018.

However, even if the legal challenge is resolved in time, Germany is not obligated to ratify immediately and may decide to wait in view of the current absence of agreement on any Brexit deal.

Brexit

As noted in our earlier article “Patent news from Europe: The Unitary Patent and the Unified Patent Court move a step closer”, the UK ratified the UPC Agreement in April 2018.  The UK’s ratification indicates its desire to be part of the unitary patent package in spite of Brexit.  The UK Government’s White Paper of 12 July 2018, about the future relationship between the UK and the EU, also supports this position.  However, at the end of August 2018, intellectual property was described as an “unresolved issue” in the context of Brexit negotiations.

If the UPC Agreement comes into force before the UK’s expected withdrawal from the EU, opinions suggest that the UK may be able to stay in the UPC.  However, the UK’s continued participation would require navigation of various legal and political obstacles.  Currently it is uncertain whether the UK would continue to be a part of the unitary patent, particularly because the unitary patent is provided for by EU Regulations.

In view of the delay caused by the German challenge, it seems increasingly likely that the UPC Agreement will not come into force before the UK’s expected withdrawal from the EU on 29 March 2019.  In this circumstance, the UPC might proceed without the UK.  This is because the wording of Article 89 of the UPC Agreement refers to the three EU member states with the largest number of patents.  With the UK becoming a non-EU member state, this wording would essentially enable the UK to be replaced by Italy, which would become the EU member state having the third largest number of European patents in force after Germany and France.  There is also the question of whether the UK could be a part of the unitary patent in this situation.

In short, the UK’s participation in the UPC and the unitary patent will be subject to negotiation.

What if the German challenge is ultimately successful?

Although many expect the challenge to fail, if it is successful, the UPC will certainly be in troubled waters because Article 89 of the Agreement requires ratification by the three EU member states with the largest number of patents in force.  Although this criterion does not mention any states by name, in practical terms it requires Germany’s ratification because Germany is the EU member state with the largest number of patents.  Amendment of the legislation would be required in order circumvent this problem, but the question is whether the appetite to continue with the UPC without Germany would still exist.

Need advice?

These are certainly interesting times.  We welcome queries from our Australian and New Zealand clients regarding the unitary patent and the UPC and would be happy to discuss what these changes mean for you.  Watch this space for further updates and information.

Authored by Serena White, DPhil and Charles Tansey, PhD

On World IP Day (26 April 2018), it was announced that the UK has ratified the Unified Patent Court Agreement (UPC Agreement). Now only ratification by Germany is needed for the legislation to come into force.

What is the Unitary Patent?

Currently, when a European patent application is granted, it essentially becomes a “bundle” of individual national patents; one in each state in which it is validated.

A unitary patent will be a single, indivisible right and will cover most member states of the European Patent Convention (EPC).  After the relevant legislation comes into force, it will be possible to obtain a so-called unitary patent by requesting unitary effect within one month of grant of a European patent.

What is the Unified Patent Court?

The Unified Patent Court (UPC) will be a new international court which will have jurisdiction over all unitary patents.  It will also have jurisdiction over nationally validated European patents in states covered by the UPC, provided that patentees have not elected to opt out their patents from the UPC’s jurisdiction before any legal proceedings commence.

When are the changes happening?

German ratification of the Agreement will trigger the legislation to come into force.  However, ratification in Germany is currently on hold due to a legal challenge at the German Constitutional Court, which is expected to be decided this year.  The earliest date for the new legislation to commence is likely to be early 2019.  Watch this space for further developments.

Need advice?

We welcome queries from our Australian and New Zealand clients regarding the unitary patent and the UPC and would be happy to discuss what these changes mean for you.

Authored by Serena White, DPhil and Charles Tansey, PhD

Are you an academic? Have you sought patent protection of your inventions, or do you plan to? What should you think about before you publish your work to preserve and maximize your patent position? Are you inadvertently making one or more common patenting mistakes?

Over the past dozen or so years I have assisted Applicants from a broad range of businesses protect their intellectual property (IP) – in particular, by patenting the technology they have invented.  These businesses have ranged from small start-ups, to large multinationals, and everything in between.  In addition, I have worked with the technology transfer and IP offices of several prominent Australian universities to protect the IP developed by academic staff and students.

The purpose of this article is to cover some of the more common situations that may jeopardize the ability to seek patent protection for an invention, or to limit the scope of what can ultimately be claimed.  I have personally seen inventors make several of these patenting errors over the years and thought it may be useful to share some of the more common mistakes in this article.

Publishing before patenting

Academics are under pressure to publish their work to promote their expertise in their chosen field and to obtain further funding for their research. However, the pressure to undertake cutting edge research and quickly publish that research can jeopardize the prospects of obtaining protection for the invention(s) that result from that research – which is unfortunate when it later transpires that those inventions are potentially very commercially valuable.

Once an “enabling disclosure” of an invention is made to at least one member of the public who is not under any duty of confidentiality (such as a non-disclosure agreement), there is no longer the possibility of patent protection for that invention as the invention is considered “published”. Once published, the invention is not “novel”.  An enabling disclosure is one that conveys all the technical features of the invention to a skilled person to enable them to make the invention. This could be by way of a conference abstract, a journal article, a letter to the editor, a poster, a website, email, public forums, Facebook, LinkedIn, possibly working the invention in public, or even an oral presentation.

Whilst there are some jurisdictions which provide a “grace period” for such disclosures (meaning that the disclosure will be ignored if patent protection is sought within a certain time period) it is generally unwise to rely on these provisions as a matter of course.  Also, not all jurisdictions provide a grace period, e.g., Europe, and different rules apply in the jurisdictions which do provide them.

I have personally witnessed an academic discuss their latest invention at the end of a public presentation and discuss their latest results which were “hot off the press”. This disclosure occurred before disclosing the new invention to the University’s IP Office, and was a potential publication of the invention.  I have also been involved in a case where the inventors confirmed in the Record of Invention (ROI) that there had been no earlier publication of the invention the subject of a patent application. Unfortunately, however, during the examination and search phase of the patent application the Examiner uncovered the abstract of a poster presentation 18 months before the filing date of the patent application, rendering the claims not novel. The ROI was clear that a poster presentation constituted a disclosure, but apparently the inventors did not read the ROI carefully enough, or think a poster presentation counted as a publication, or perhaps forgot about it when completing the ROI form.

Prior art searching

It may sound obvious to say, but it is beneficial to search the literature before embarking on new research. Searching can ensure that time, money, and resources are not wasted on pursuing avenues of investigation that have already been explored and found to be of little value, and future research can be better focused on what may deliver new and useful results. A good illustration of this is a case in which a large multinational had engaged an Australian University to undertake research over many years to develop a novel apparatus, including prototyping the apparatus and computer simulations of how the device worked in practice.  Many thousands of hours were devoted to the project, including many honours projects.  I was involved in drafting a portfolio of patent applications (under instruction from that multinational) over several years protecting the apparatus itself, the method of using it, and various improvements too.  Unfortunately, after dozens of patent applications had been filed in the countries of interest, it was brought to the Applicant’s attention by one of its suppliers that the apparatus had been published some 15 years earlier in a German patent publication. That single publication deprived almost all the patent claims from having any novelty, resulting in the Applicant abandoning the entire family of patents worldwide.

Needless to say, this was an unfortunate situation, with years of time wasted and probably hundreds of thousands of dollars, too.  The reason why the German patent was not found earlier in the project was never investigated thoroughly, but it was suspected at the time that very little prior art searching was conducted by the University or the multinational, and if it was, it was doubtful that a professional searcher had undertaken the searching.

Admittedly, this is rather an extreme example, but it illustrates what can happen if the literature is not thoroughly investigated prior to commencing work, and what can happen if the patent literature is not searched.  It is likely a professional searcher would have found the German patent, due to its classification in the relevant International Patent Classification (IPC) code. For completeness, we were instructed not to undertake any literature searching.

Of course, not every publication can be assessed prior to commencing the research, but comprehensive searching is a must, and the patent literature should also be searched, preferably by a professional patent searcher.

Insufficient enablement

I regularly receive and review ROIs from various universities. These ROIs are authored by the inventors and are the first step in capturing the invention and communicating them to the university to assess their commercial value. They are also used to communicate the invention to an attorney who will draft the patent application if the university decides to proceed. Most often the ROIs are well written, and the inventors have a good grasp on the relevant prior art. Sometimes the inventors even understand the path to commercialisation, and have commercial partners lined up, too.

One issue, however, can be the amount of experimental data which is supplied with the ROI, and which is generated over the ensuing 12 months before the “complete” patent application needs to be filed (usually by way of an International Patent Co-operation Treaty (PCT) Application). Often, researchers discover something new and have sufficient experimental data to demonstrate that new effect with certainty and to justify a journal publication. Sometimes, additional experiments are also undertaken to explore the full scope of the invention, but not always. Why can this be an issue?

The answer to this question can be found in understanding the law of “enablement”. In brief, the patent specification must provide sufficient information to enable the whole width of the claimed invention to be performed by the “skilled person” without undue burden, or the need for further invention. How much enablement is required strongly depends on the particular field of technology, and the relative skill set of the skilled person. A single example of the invention may satisfy these requirements. However, what is more likely (especially for broad claims) is that several alternative embodiments are required. The requirements can be even higher under some circumstances, for example where the claims are directed to synergistic combinations, or to alloys.

Whilst it is understandable that the once the new effect is discovered researchers want to quickly move onto their next research project, it is important to ensure that sufficient experimental data is generated and disclosed in the patent application to support the full width of the intended claim scope. Therefore, at around the time the provisional application is filed, it is preferable to map out a research programme with the attorney who is drafting the patent application to identify any additional research that should be conducted over the ensuing 12 months to make sure that sufficient supporting data is available by the time the PCT application is due to be filed. Providing that additional data can make prosecution of the patent application more straightforward, but more importantly can increase the prospects of broad claims being granted, increasing the overall value of the patent.

Publishing improvements after filing a provisional application

Every once in a while, inventors develop or discover some revolutionary new material (or method) that provides a step change in performance over and above the prior art, and then go about exploring that new material to optimize it and refine its properties even further. Some new, peripheral uses, are sometimes also discovered along the way. Whilst the initial discovery is usually protected by one or more patents, often those incremental advances are forgotten. However, the first patent filed is not necessarily the one that is required to protect the eventual product that goes to market, and therefore protection of those incremental improvements can also be critical.

As product improvements may not be covered by earlier applications, it is important for any improvements or developments to be discussed with the attorney handling the IP before they are published to ascertain whether a supplementary application may be required. By filing patents on those improvements, the life of the initial patent is effectively prolonged, and competitors are prevented from developing those improvements and protecting them. A suite of patents over the new material (or method) and the improvements is more commercially valuable and is a far more licensable proposition.

Statements affecting the patentability of a future invention

Most of the legal tests that have developed around the world to determine whether an invention is obvious in view of the prior art are centered around asking whether it would have been a “matter of routine” to proceed to the claimed invention with some “expectation of success”. An invention can therefore be found to be obvious in view of the prior art if there is some suggestion or motivation in the prior art that would have led a skilled person to arrive at the claimed invention with that expectation of success.

To avoid any negative consequences on patentability for a future invention, it is preferable for publications to avoid suggesting that some future research is expected to result in some improved result or outcome. For example, I have seen cases of academic publications reporting on some current research and then foreshadowing the details of future research and alluding to the expectation that the future research will result in even better results than the current research being reported. This practice might be aimed at securing future research funding or might be “claiming ownership” of that future research in an attempt to discourage competitor research groups from exploring that field. However, the problem that arises is that it can affect the patentability of a later-filed patent to an invention that emerges from that future research. For example, it is easy to see how a patent examiner could be examining a patent directed to that future invention and conclude that the claimed invention was obvious in light of the earlier publication which suggests the claimed invention was the “obvious” or “logical” next step in the line of research (i.e., a matter of routine) and success was entirely expected. This would lead the examiner to find the “future invention” not patentable.

Academics may not always have these considerations in mind when drafting manuscripts for journal publications. Therefore, it is preferable not to step beyond reporting the actual results obtained in the current research. Additionally, it is not just what is published before filing a patent application that is relevant: what is published after filing can be relevant, too.  For example, stating in a later publication that the development of an invention was obvious, simple, straightforward, or routine, could be used as evidence during prosecution of that patent or in a revocation proceeding that the claimed invention was obvious at the time.

On a somewhat related point, it is important to carefully decide the scope of the patent specification, too. Including information on embodiments that are quite different to the claimed invention will create prior art for that combination and may deprive it from being able to be protected by a patent. In other words, such additional subject matter is effectively given away.

Finally, publishing the research after filing a provisional application is not recommended, as improvements included in the complete/PCT application could be found to be obvious in light of the academic publication. This is especially the case in Europe where the invention must be “directly and unambiguously derivable” from the provisional application.  This is an important point to note, and is an area of some confusion, as patent applicants have often been told by patent attorneys that they are free to publish after the provisional application is filed.

Closing comments

Some common mistakes include not considering patenting of the invention before publication, not searching the prior art (including the patent literature), publishing improvements without considering IP protection of those improvements, and making statements in a publication which step beyond the actual results obtained can be detrimental to future patentability of the invention. Preferably the advice of a patent attorney should be sought.

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 Gareth Dixon, PhD and Serena White, DPhil