The U.S. Supreme Court today handed down its much awaited Bilski v Kappos decision. The decision is available here [PDF].

Bilski’s patent application was directed to the management of fixed bill energy contracts, in which consumers pay monthly prices for their future energy consumption in advance of winter based on their past energy use. The patent specification, and the claims themselves, omitted any reference to a computer or other technological implementation of invention.

In Richwood Creek Pty Ltd v Williams [2010] FCA 196 the Federal Court has reversed a decision of the Patent Office to uphold a patent opposition. The opposition was decided on the ground that the patent applicant alone was not entitled to the grant of a patent. Our commentary on the Patent Office decision is here.

Spender J disagreed that one of the inventors’ rights in the invention vested in his employer. In reaching the decision that the inventor’s (Mr Williams’) invention was not the property of his employer, Spender J was influenced by the inconsistent and insufficient evidence before the Office, for example, there was no written employment contract between Mr Williams and the (alleged) employer. Further, it was significant that the employer did not assert its rights to the invention during the opposition, and Mr Williams did not contest the appeal of the Office’s decision.

In November 2009 the Australia Government introduced legislation implementing the Agreement between Australia and New Zealand on Trans-Tasman Court Proceedings and Regulatory Enforcement. The Trans-Tasman Proceedings Bill 2010 was passed by both Houses of the Australian Parliament and is now awaiting Royal Assent.

The New Zealand Government introduced parallel legislation on 24 November 2009. The Bill received its first reading on 23 March 2010 and has been referred to a Parliamentary Select Committee. Submissions in the Bill are due by 7 May 2010 and the Select Committee’s Report is due on 29 July 2010.

The decision of Bennett J in Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108 highlights the importance of expert witnesses being truly representative of the hypothetical person skilled in the art.

Inverness relied on the evidence of Boscato, “a person who works at a bench in a laboratory rather than being a theoretical researcher. She has designed and made immunoassays, uses them routinely and has a “practical interest” in the subject matter of the invention.” By comparison, MDS relied on the evidence of Sinosich, a person who “has worked in the field of immunoassay development, including immunoassays for a range of fertility, pregnancy and non-pregnancy associated analytes. He has generated both polyclonal and monoclonal antibodies; all of his research activity has been antibody-based.”

A significant issue in the case was the construction to be given to the expression “specific binding reagent” as used in the claims of the patent. Sinosich considered that the adjective “specific” used in relation to a reagent was a term of art meaning that the reagent would preferentially bind to an analyte in the immunoassay with no binding to any other molecule in the sample. Boscato agreed that, in the context of immunoassays, “specificity” meant the ability to measure the analyte without interference from other substances which would cause a false positive response, or interference from other substances causing an inaccurate result but that there was a distinction between the use of “specificity” and “specific”. Boscato considered that the use of “specific” in the phrase “a specific binding reagent for an analyte” meant that the reagent has to be able to bind the analyte of interest in a specific binding reaction, but not necessarily exclusively.

The High Court today refused the application by Sanofi-Aventis for special leave to appeal the decision of the Full Federal Court in Apotex Pty Ltd v Sanofi-Aventis [2009] FCAFC 134, meaning the decision of that court stands.

Our review of that case is here.

“On a practical level the lesson of this case may be there is a need for express arrangements” – Gummow J special leave hearing

The impact of the recent decision of the High Court of Australia to refuse the University of Western Australia’s application for special leave to appeal from the Full Federal Court’s decision (reported here) cannot be underestimated.  While it represented the end of a very lengthy battle that commenced in December 2004, this decision will have huge impact on universities and their commercial dealings with private sector groups.

Universities will now need to have in place effective procedures and clear contractual terms dealing with the ownership of inventions created by academic staff.  It is clear that the rule in Sterling v Patchett [1955] AC 534 that an employer is entitled to any product of the work which the employee is paid to do unless it is excluded by express agreement and whether that product is patentable or not, does not extend to academic staff employed by universities.

There is an immediate need for universities to review all existing projects to address the question of the ownership of IP and to resolve ownership, before entering into any commercial arrangement.  Likewise companies that rely on research conducted by universities will need to ensure the ownership of any IP generated in these projects has been adequately addressed.

The High Court today refused the application by the University of Western Australia for special leave to appeal the decision of the Full Federal Court in University of Western Australia v Gray [2009] FCAFC 116. Our analysis of that case is here.

There is no further avenue of appeal. We expect to issue a further update when we have examined the transcript, which is not yet available.

The University issued this statement today.

The Australian Government’s Commercialisation Australia initiative provides grants of up to $50,000 to access specialist business advice and services including intellectual property management.

IP Australia reported today that eligible expenditure include fees for the cost of filing a patent application, patent search and examination fees, and annual patent maintenance fees.

An overview of the scheme is here.

A Florida-based company that issued misleading invoices to patent and trade mark applicants was recently found to have violated the state’s Deceptive and Unfair Trade Practices Act.

This serves as a timely reminder that there are several organisations that issue official-looking documents to owners of recently granted (or due for renewal) patents and trade marks. The documents usually look like invoices and solicit payment for a service of no value at all.

Further information on this problem, including a list of organisations engaged in the practice, is here.

Dura-Post (Aust) Pty Ltd’s application for special leave to appeal from the Full Federal Court’s decision was refused by the High Court of Australia on 11 December 2009.  As reported earlier here, the Full Court of the Federal Court upheld the decision of Justice Gyles including his findings on innovative step.

In reaching its decision, the Full Court confirmed that when considering whether the invention claimed is in respect of an ‘innovative step’, the Court must compare the invention as claimed with each prior art disclosure and identify whether any variations between the invention and the prior disclosure make a substantial contribution to the working of the invention.