For technical reasons and in light of the relatively modest number of posts, we are rationalising our RSS feed options to one covering all posts. If you previously subscribed to individual category feeds, please subscribe to this feed. We apologise for any inconvenience.
Gyles J commences with a concise explanation of the approach to be taken in assessing innovative step, consistent with recent approaches to the question of inventive step, noting that:
There is no need to search for some particular advance in the art to be described as an innovative step which governs the consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim and ask whether the invention as claimed only varies from the kinds of information set out in s 7(5) in ways that make no substantial contribution to the working of the invention. It may be that there is a feature of each claim which differs from the prior art base and that could be described as the main difference in each case but that need not be so. Section 7(4), in effect, deems a difference between the invention as claimed and the prior art base as an innovative step unless the conclusion which is set out can be reached.
His Honour then considered the background to the introduction of innovation patents, including the High Court decision in Griffin v Isaacs from which the phrase “substantial contribution to the working of the invention” is derived, concluding that
The focus is upon working of the invention (as claimed) not to the degree or kind of variation from the kinds of information set out in s 7(5). In other words, the variation from the kinds of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step.
The judgement then turns to the presence or absence of innovative step in this particular instance, with Gyles J noting at [63] that:
As I have endeavoured to explain, the question is not whether flexible sheet steel is better than flexible PVC – it is certainly different. It cannot be seriously argued that the material sheet spring steel does not make a substantial contribution to the working of the roadside post claimed in each claim
And again at [78]:
The different material contributes substantially to the manner in which that invention as claimed performs. As I have said earlier, it is not a question as to whether these claims are better than the disclosure by Kennedy, or whether it was obvious to move from Kennedy to this invention. Therefore, there is an innovative step over Kennedy.
Accordingly, the test applied by Gyles J appears to be whether the feature, which varies from the prior art, in and of itself makes a substantial contribution to the working of the invention, rather than whether the nature of the variation, the extent to which that feature differs from the prior art, makes such a contribution. Indeed it appears that the feature which varies may be inferior to that disclosed in the prior art and the invention nevertheless involve an innovative step.
The judgement also implicitly confirms that all prior art information may be relied upon in assessing innovative step provided it is publicly available, in contrast with inventive step where that information must satisfy the requirement of section 7(3).
The Intellectual Property Office of New Zealand website has now improved its navigation, search and online transactions.
For more information about the changes click here
In Apotex Pty Ltd (formerly GenRx Pty Ltd) v Sanofi-Aventis [2008] FCA 1194, previously mentioned here, Gyles J concluded his consideration of novelty with the comment that:
However his Honour’s findings on novelty, and in particular the need for an enabling disclosure, suggest that the bullet may not only have a hollow point but be hollow in its entirety.
Gyles J commences by stating that the phrase enabling disclosure, while “reasonable shorthand in relation to the disclosure required for there to be anticipation of a process or method claim … has little, if any, relevance to anticipation of a product claim or a claim for a chemical compound by formula. Indeed, it is apt to mislead in relation to the latter.”
There follows a discussion of the traditional authorities relating novelty, including Hill v Evans, Flour Oxidizing Co Ltd v Carr and General Tire v Firestone which his Honour effectively distinguishes on the bases that they related to claims to processes rather than products.
His Honour then considers more recent UK decisions such as Re Genentech Inc’s (Human Growth Hormone) Patent and SmithKline Beecham (Paroxetine Methanesulfonate) Patent. These cases and the stated requirement for both enablement and disclosure are distinguished on the basis that:
Accordingly, Gyles J held claim 1, directed to a particular enantiomer of a chemical compound, to be anticipated by an earlier patent describing how to produce the racemate of that compound and identifying the existence of the enantiomer, but giving no information as to how each enantiomer might be resolved.
Over 100 years ago Lord Esher, in Ungar v Sugg (1892) 9 RPC 113, opined:
that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined. Whose fault is it? It is really not the fault of the law; it is the fault of the mode of conducting the law in a patent case. This is what causes all this mischief.
Today it seems little has changed, at least in the minds of the Judges of the Federal Court who have set out to change the way Patent litigation is conducted in Australia.
The procedures are stated to be “deliberately not overly prescriptive, with an emphasis on flexibility of application to each proceeding” and are clearly aimed at narrowing the issues in dispute as early as possible. The specific matters addressed include:
The procedure also provides for procedural mediation or case management conferences to try and narrow the issues in dispute and resolve interlocutory matters.
These procedures will hopefully play an important role in streamlining the conduct of certain patent disputes and may provide SME’s with the prospect of being able to enforce their patents without significant expense. However already this year the Federal Court has handed down patent decisions in relation to the pharmaceuticals Liptor and Plavix, which had global sales of USD13.5 billion and USD7.3 billion respectively in 2007. Where the monopoly rights conferred by a patent are of sufficient value, it is likely that litigants will still wish to fight every point and the procedures may have a limited impact.
Section 47(1) provides that the fact that a design, or any article to which a design has been applied, has been exhibited at an official or officially recognized international exhibition … shall not prejudice or prevent the registration of the design or invalidate the monopoly therein, if the application for the registration of the design is made within six months after the opening of the exhibition.
The Full Court considered that:
the trial judge erred in formulating a test of “international” which involved the need for a significant foreign presence. Not only does it import into the section a requirement that is not expressly stated, but it introduces into the section questions of degree which are likely to be productive of uncertainty and expense. In our opinion, the fact that there were exhibitors from Australia and New Zealand was sufficient to make the fair an “international” exhibition within s 47(1).
As a result, the validity of the design registration will not be effected by the prior publication of the design caused by its display at the fair.
In an appeal from a Trade Mark opposition, Ryan J in Neumann v Sons of the Desert SL [2008] FCA 1183, has seemingly significantly broadened the operation of section 42 of the Trade Marks Act.
Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law.
registration of the mark in Australia by the respondent to the exclusion of the applicant would be contrary to Spanish law, which governs the relationship between the parties. I accept this evidence and therefore consider that the opposition based on s 42 of the Act must also succeed.
The decision stands for the propositions that:
a) the law in question need not be Australian law; and
b) it is sufficient that the process of seeking and obtaining registration of the trade mark is contrary to law, irrespective of whether use (as seemingly required by the Act) of that trade mark in Australian would be so.
In this case, the appeal was not contested by the respondent, however if the decision is followed, it may require an Australian Court to decide whether certain actions would be contrary to the law of another country. One might have thought that applying Australian IP law was challenging enough!
While claims 1, 10 and 11 were found lacking novelty and claims 6 to 9 lacking inventive step, claim 3, which would be infringed by Apotex proposed sale of generic Clopidogrel in Australia, was held to be valid.
The Patents Bill was introduced to Parliament on 9 July, and will replace the Patents Act 1953.
The purpose of the new Bill is to update New Zealand’s patent regime to ensure that it continues to provide an appropriate balance between providing adequate incentives for innovation and technology transfer while ensuring that the interests of the New Zealand public are safeguarded.
To address this issue the new Bill will provide NZ Examiners to consider the ground of inventive step during the examination of the application on a basis similar to that currently adopted in Australia.
The new Bill also contains measures that will assist in protecting the interests of Maori in their traditional knowledge and indigenous plants and animals and will reform the regulatory regime for the Patent Attorney profession.
Where a NZ resident wishes to file an application for a patent abroad without first filing a corresponding patent application in New Zealand, the resident must obtain a foreign filing permit from the Commissioner under section 25(5) before making the foreign patent application.
IPONZ will now accept requests for foreign filing permit by email.
In response to the request, IPONZ will issue a permit (if appropriate) by reply e-mail. This will be the only form of permit issued and serves as the written permit as required under section 25(5).
It should be noted that a New Zealand resident does not need a foreign filing permit where:
(a) the resident has made an application for a patent in New Zealand for the same invention at least six weeks before intending to file a corresponding foreign patent application; or
(b) the resident is making a foreign application which is claiming convention priority from an application for the same invention filed abroad by a non-resident.
You are visitor number
IP Now - Australia & New Zealand Intellectual Property Law is proudly powered by
WordPress
Entries (RSS)
and Comments (RSS).