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Australian Patent Law Developments

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PA106741Keltie recently welcomed Australian Patent Attorney Peter Treloar from Shelston IP to London and Peter was kind enough to provide a presentation on Australian Patent Law Developments. The following is an overview of developments in “Raising the Bar”, Business Method patents and Innovation patents in Australia.

Raising the Bar – the Raising the Bar Act came into force on 15 April 2013 and provided a cut off by which examination requests must have been filed in order to be treated under the old law. There was consequently a huge uptick in exam requests leading up to the deadline and the resultant backlog of cases is only now beginning to clear up.

The Act signalled an official move towards a more European approach to patent prosecution in Australia, for example the adoption of the problem/solution approach to inventive step determination.

The Act reduced the time frame for requesting examination from 6 months after a direction to 2 months. Despite the reduced timeframe for filing requests, no major problems have been detected. An area that has been impacted however is the time frame to put a case in order (now 12 months from first exam report rather than 21 months). This may result in a higher percentage of divisional applications being filed and may cause problems in future if Australian applications start to run ahead of other major territories.

The content of examination reports has not changed hugely under the new law since the Patent Office was already applying the EPO approach. Prior art that may be relevant is now broader than previously. A major change however relates to disclosure objections with specifications containing broad claims and narrow disclosure likely to attract an objection.

It was noted that the law on disclosure is not fully formed as yet and there has only been one significant decision in CSR Building Products Limited v United States Gypsum Company.

Computer Implemented Inventions

Historically there has been a long run of Federal Court decisions that supported the patentability of software patents. However, in 2010 the Patent Office decided to change policy of their own accord and started rejecting large numbers of applications to computer implemented inventions.

Two cases since then have highlighted the changed approach: Research Affiliates which related to technology for generating share indexes and RPL Central which related to a UI for uploading data.

The Research Affiliates case was influenced by the recent Alice decision in the US Supreme Court and the court found the invention to be limited to an abstract idea. In RPL Central the case was successful at first instance but then unsuccessful on appeal with the court holding the invention must be in the field of computing and not business and drawing a distinction between “technological innovation” (patentable) and “business innovation” (unpatentable).

A two step test may be inferred from the RPL Central case: (1) is the invention, in substance, in a field of technology or business? And; (2) if it is a business innovation, is there a “computing innovation” in the manner of implementation?

Peter noted that the test is somewhat nebulous which gives a fair amount of leeway to the courts when deciding on patent eligibility.

There may however be signs that that the patent eligibility pendulum is swinging back again with recent decisions in Aristocrat Technologies Australia Pty Limited (UI Improvements) and Foxtel Management Pty Ltd v BBC (UI for streaming) being found patentable. A gaming and playout rules innovation in Konami Gaming Inc however was found unpatentable.

The general advice when drafting applications for computer implemented inventions in Australia is that protection should be available for a wide range of inventions but the key is to draft the specifications carefully. For example, you should seek to disclose the purely “technical” invention separately from non-technical examples. In other words, if the invention relates to a User Interface, draft the specification such that the technical description of the UI appears separately to the use of the UI in a business context.

Innovation Patents – the final part of the talk was on the subject of innovation patents which are a powerful tool for enforcement. Innovation patents have a lower threshold for validity (no obviousness test) and so are easy to obtain. Typically it takes between 3-5 months from filing to secure an innovation patent.

Innovation patents for foreign applicants are often spun out of standard patents. Although innovation patents are limited to 5 claims and an 8 year term, they provide the same remedies as a standard patent.

Efforts are underway to reform the innovation patents system.

In the Q&A session that followed the talk Peter noted that Australian Examiners take account of grants in the same patent family. The Patent Prosecution Highway system is available based on either a UK or European patent but Peter noted that it was often possible to “informally PPH” a patent application by calling the Examiner and explaining that the claims were going to be brought into alignment with a granted right elsewhere. Going down either the PPH or “informal PPH” route can noticeably speed up grant.

With thanks again to Peter for his talk and please note that any errors above may be attributed to this IPcopywriter!

Mark Richardson 1 November 2016

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