Australian Senate Rejects Proposal to Ban Gene Patents

A proposed ban on patenting of biological materials has not survived Committee review. The Australian Senate Committee has not recommended proposed amendments to the Patents Act to ban the patenting of biological materials. The Committee’s report on the issue was made available today:

http://www.aph.gov.au/Senate/committee/legcon_ctte/patent_amendment/report/index.htm

The Patent Amendment (Human Genes and Biological Materials) Bill 2010 was initially motivated by controversy surrounding patents held by Myriad Genetics over components of their genetic tests for susceptibility to breast cancer. The Bill’s text, however, went much further than simply limiting the scope of patentability of claims to genes or genetic markers and would have eliminated patent protection for any biological material, no matter how made, if it “existed in nature”. The inexact nature of the intended ban, its damaging effect on the biomedical and biotechnological industries in Australia, as well as the possibility that it violated Australia’s obligations under various international agreements likely contributed to its failure in committee.

This Bill is separate to the larger and more extensive patent reform legislation now before both chambers. The separate and substantially more extensive “Raising the Bar” amendments to the Patent Act are intended to lift the standards of patentability for inventiveness and utility, but will not alter the scope of patentable subject matter.

regards, Bill
PIZZEYS
bbennett@pizzeys.com.au

Express Lane Added to the PPH Between AU & US

Until recently, it was a requirement that, in order to invoke the PPH at the USPTO, the office of first filing (OFF) could not be the USPTO. This meant that an unconventional filing strategy (i.e. a non-US first filing) was required in order to make the PPH available to US clients.

Last month, the USPTO relaxed the requirement that the OFF could not be the USPTO such that, under the new regime, any un-examined US application sharing a common priority with an allowed Australian application may now be fast-tracked at the USPTO under the PPH. The USPTO revised requirements regarding the PPH can be found here -

http://www.uspto.gov/patents/init_events/pph/pph-mottainai_ipau.pdf 

Note the availability of an expedited examination process in AU which means that allowance in AU can often be achieved very quickly.

Please let us know if you have any queries.

Regards, Bill
PIZZEYS
bbennett@pizzeys.com.au

Timetable for Proposed Integration of AU & NZ Patent Prosecution

In an earlier circular, we flagged a joint announcement by the Australian and New Zealand patent offices to move towards integration of some functions.

There has now been a further announcement (linked below) setting out a 3-year timetable for a 3-stage roll out.

In brief, the intention is to:

• begin work sharing between the 2 patent offices in 2012,
• create a single application process for both countries in 2013, and finally
• create a single examination process for both countries in 2014.

We will, of course, keep you informed as this moves forward.

http://www.ipaustralia.gov.au/resources/sem_process.shtml

Regards, Bill
PIZZEYS
bbennett@pizzeys.com.au

Bad Moon Rising – AU Examiner’s Power to Infer Facts in Making I.S.Rejections

Christopher Gary Parmenter [2011] APO 26 (28 April 2011)

Sometimes the oddest cases have the biggest impact.

The present case relates to “A Method of Cultivating Plants”. More specifically, it relates to a method of harvesting plants, particularly cannabis, during the lunar apogee (for those who are curious, this is the time at which the moon is most distant from the earth).

The APO accepted the patent application and then unilaterally decided to initiate a re-examination based upon “a routine quality review”.

In the re-examination, the APO rejected all claims and relied upon the grounds of lack of novelty and lack of inventive step. The inventive step rejection was made and sustained in the absence of any evidence from experts regarding factual matters such as, for example, the state of the common general knowledge in the art at the priority date.

The applicant argued that this was contrary to the strong statements of Lindgren J in the trial decision in the Emperor Sports case (Emperor Sports v The Commissioner of Patents [2005] FCA 996) prohibiting “speculation” on the part of the APO regarding matters of fact.

The APO rejected this argument and relied on paragraphs 23 & 24 of the appeal decision in the Emperor Sports case (Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26)) which the APO says overturned Lindgren J on this point. The paragraphs in question say that the “Commissioner can draw legitimate inferences…that may be rationally drawn from technical knowledge”. The APO has latched onto this part of the appeal judgment as empowering them to make (and maintain) inventive step rejections without supporting evidence regarding the underpinning factual matters.

We now have a situation in which the APO adopts a very different approach in ex parte matters (i.e. exam and re-exam) as opposed to inter parte matters (i.e. opposition). On the above approach, an examiner can potentially maintain an inventive step rejection in the absence of any factual evidence. However, an opponent cannot make the same case without strong supporting evidence from skilled persons.

The APO feels that the rationale for the different standards applied in exam and opposition resides in the fact that, during exam, the onus lies with the applicant to satisfy the Commissioner of the validity of the claim whereas, during opposition, the onus shifts to the opponent to make out their case for invalidity.

Enjoy – but don’t inhale!

http://www.austlii.edu.au/au/cases/cth/APO/2011/26.html

regards, Bill

PIZZEYS

Case Histories & Full Text Searching Now Available Through APO Database

Dear Clients & Colleagues,

• It is now possible to search case histories through the APO (AUSPAT) database back to 2006.

• It is also possible to do full text searching of specifications back to 1904.

• Please refer to: http://pericles.ipaustralia.gov.au/ols/auspat/  

• Please note that the database offers 3 different kinds of searches: Quick, Structured and Advanced. Our experience is that the Structured and Advanced searches are not yet stable (they often return nil results and/or they time out). Accordingly, the Quick search option is recommended in the short term.

Regards, Bill

PIZZEYS

bbennett@pizzeys.com.au

Proposed Changes to AU Patent System

We draw your attention to the fact that a number of changes to the AU Patent System are presently under consideration.

The draft Bill can be viewed here: http://www.ipaustralia.gov.au/pdfs/news/ip_laws_exposure_draft_bill.pdf  

A summary of what we consider to be the most significant proposed changes can be found below.

Prior Art Base for Inventive Step

At present, in order to be eligible as prior art for inventive step considerations, the prior art reference must be one which would have been reasonably “ascertained, understood and regarded as relevant” by the skilled person. This requirement filters out some prior art references. This requirement will be removed. Consequently, all prior art references will be eligible for inventive step considerations.

Preliminary Search & Opinion

At present, search and substantive examination is combined. A preliminary search and opinion system will be introduced. This will be similar to EP. We are concerned that the APO may also attempt to introduce a deadline for the filing of divisional applications calculated from the date of the issuance of the preliminary search and opinion.

Exam & Re-Exam Based on Prior Use

At present, the APO conducts exam and re-exam based only on documentary prior art. Non-documentary prior art (e.g. public demonstration or sale) is not considered by the APO in exam and re-exam. The APO will be able to consider non-documentary prior art during exam and re-exam.

Experimental Use Exception

At present, there is no statutory experimental use exception to infringement. An experimental use exception will be introduced.

Omnibus Claims

At present, omnibus claims (e.g. Apparatus substantially as herein described) are permitted. Omnibus claims will no longer be permitted.
Modified Exam & Deferment of Exam Deadline At present, it is permissible to seek a 9 month extension of the initial deadline for requesting exam. Further, when requesting exam, it is possible to request either normal exam or modified exam (the latter being an abbreviated exam based on an issued foreign patent – US, EP, NZ, CA). Deferral of the exam deadline will no longer be possible. Modified exam will no longer be available.

Finally, we mention that there is also a separate draft Bill in circulation which proposes to restrict the patentability of biological materials. This other Bill is highly contentious and the proposed wording of the exclusion is being negotiated.

Regards, Bill
PIZZEYS
bbennett@pizzeys.com.au

Integration of AU & NZ IP Systems

The AU & NZ IP Offices recently announced an intention to create:

• a combined trade mark register for AU & NZ, and
• a combined patent application/examination procedure for AU & NZ.

Whilst the implementation of these proposed changes is still in the future, we believe that there is now even further reason to consolidate representation of AU & NZ matters with a single representative firm.

The joint announcement regarding the integration of the patent systems can be found here:

http://www.ipaustralia.gov.au/pdfs/general/SEM_factsheet.pdf

regards, Bill
PIZZEYS
bbennett@pizzeys.com.au

Patentability of Biological Materials

My colleague, Vaughan Barlow, details the ramifications of the Patent Amendment (Human Genes and Biological Materials) Bill (2010), currently being debated before the Australian parliament.

The Bill seeks to ban the patenting of all biological material that is “identical or substantially identical to such materials as they exist in nature”. If passed, this legislation may significantly jeopardize the biotechnology, pharmaceutical, medical and agricultural industries in Australia.

The full article is posted on the Patent Barista site here:

http://www.patentbaristas.com/wp/wp-content/uploads/2011/02/Patentability-of-biological-materials-in-AU-FINAL-VPB.pdf  

regards, Bill
PIZZEYS
bbennett@pizzeys.com.au

Significant Change of Official Practice re Divisional Applications

We wish to draw your attention to a significant change of official practice at the APO in relation to divisional applications.

Where a divisional application presents claims for examination which have been previously rejected in the parent (or grand-parent) application, then the APO will give the applicant only 2 months to respond and overcome the rejection (rather than the usual 21 months).

If the applicant does not overcome the rejection within the 2 month period, the APO will offer the applicant the opportunity to be heard before any further action (e.g. formal refusal of the application) will occur.

Full information regarding this new procedure for the case management of divisional applications can be found in the Examiner’s Manual (please refer to part 2.10.11). You can find the Examiner’s Manual here:

http://www.ipaustralia.gov.au/pdfs/patentsmanual/WebHelp/Patent_Examiners_Manual.htm  

The APO has just issued the first 5 formal refusals of applications under this new system. Please note that in each of these 5 applications, the applicant failed to respond in the 2 month period AND the applicant failed to respond to the opportunity to be heard. In each of the 5 cases, the application was then formally refused by the APO. Links to each of the 5 formal refusals are provided below.

1. Schering

http://www.austlii.edu.au/au/cases/cth/APO/2011/10.html  

2. Scott Laboratories

http://www.austlii.edu.au/au/cases/cth/APO/2011/9.html  

3. McNeil PPC

http://www.austlii.edu.au/au/cases/cth/APO/2011/8.html  

4. Qualcomm

http://www.austlii.edu.au/au/cases/cth/APO/2011/6.html  

5. Senomyx

http://www.austlii.edu.au/au/cases/cth/APO/2011/5.html  

Regards, Bill
PIZZEYS
bbennett@pizzeys.com.au

More Trouble for Business Method Patents

Research Affiliates, LLC. [2010] APO 31

Last month we drew your attention to a decision of the APO (Iowa Lottery) in which the APO rejected an application directed to a business method (pooling of jackpots) implemented in a computer environment. In our commentary, we noted that we could not reconcile the APO’s approach with the governing precedential law and we made some practical suggestions as to how an application might be crafted in order to maximise its prospects of success. Our commentary can be found here:

http://australianpatentlaw.wordpress.com/2010/11/12/apo-casts-doubts-on-business-methods/  

The APO has now issued a further decision (Research Affiliates) in which an application directed to a business method (portfolio management) implemented in a computer environment has been rejected. The decision can be found here:

http://www.austlii.edu.au/au/cases/cth/APO/2010/31.html  

It is clear from the sequence of decisions, and from informal discussions with senior members of the APO, that a decision has been taken within the APO to reject business method applications until such time that a rejected case is taken on appeal and the law is “clarified”.

In the meantime, our practical advice is now moving towards “delay and defer” prosecution whilst a suitable case is taken forward on appeal.

Regards, Bill
PIZZEYS
bbennett@pizzeys.com.au