Did you know that sending an email overseas may find you in breach of the Defence Trade Control Act 2012 and that you will be personally liable? Did you know that a penalty for such an act without a licence includes imprisonment?
Australia takes seriously its international counter proliferation obligations, using Australian export control laws to ensure Australia exports responsibly. Australia’s export control policies are in place to enable the export of defence and strategic goods where it is consistent with Australia’s national interests and international obligations.
The Defence Export Control Office (DECO) is the government entity that supervises these obligations as defined in a number of Acts and the one that is the subject of this article is the Defence Trade Controls Act 2012. The DECO web site, from which passages of this article are included, is http://www.defence.gov.au/DECO/Notices.asp#N2 .
The Defence Export Control Office (DECO) is responsible to the Minister for Defence for regulating the export of defence and strategic goods and technologies and importantly for you and the patent attorney profession this includes the export of information about controlled goods and technologies by way of electronic email.
The implementation date for the application of this Act is 17 May 2015, so you have plenty of time to set procedures in place in your working environment so that you, your staff or colleagues are not going to fall foul of this Act.
Thus, the inclusion of such information in an academic paper, patent specification or even an email containing such information, sent overseas or copied to someone, such as a fellow researcher or patent attorney overseas, is prohibited unless a license to do so is obtained before the act of export. It does not matter to where overseas the export of the information is made, so it does not matter that it may only be sent to someone in what most would consider an allied nation such as the United States of America.
Interestingly, an email containing the same information sent and received within Australia is not an export.
More specifically if you want to know whether the information is of the type that MUST be licensed before exportation, the first point of enquiry is the Defence and Strategic Goods List (DSGL) http://www.defence.gov.au/DECO/DSGL.asp .
This list contains all controlled items in relation to the arms control treaties and international export control regimes to which Australia is committed, and identifies specific Australian goods and technologies. The important issue is to realise that information that discloses certain technical details of these goods and technologies is information subject to the Defence Export Controls Act 2012.
The DSGL is made up of two parts.
Part One covers defence and related goods – these are goods and technologies designed or adapted for use by armed forces or goods that are inherently lethal. These goods include:
- military goods – goods or technology designed or adapted for military purposes; and
- non-military lethal goods – equipment that is inherently lethal, incapacitating or destructive such as non-military firearms, non-military ammunition and commercial explosives and initiators.
Part Two covers strategic goods and technologies developed for commercial needs but may be used as part of a military program, for the development or production of a military system or weapons of mass destruction. This is also known as the Dual-Use List.
This document is 361 pages long and unless you are continually required to deal in such matters, it has been a welcome initiative of DECO to provide a web interface to assist concerned and responsible persons to check if their goods or technology fall within its ambit. Thus it is important for academics, their administrators, inventors and patent attorneys to make the check and determine if a planned export will require a licence or at least a further discussion with DECO to determine the circumstances. The web site is http://www.defence.gov.au/deco/ .
DECO has indicated that every effort will be made to assess enquiries and applications within a reasonable time frame, but clearly, the earlier before the planned or intended export you conduct a check or contact DECO the better. It will be unrealistic to expect DECO, to properly assess your situation within hours or days if the type of information is not clearly identifiable as being a restricted export or requires authorisation of an export licence.
Once formalised, the progress of individual cases is closely monitored and reported to the applicant. Applicants are consulted early in the application process and throughout the process and are provided the opportunity to present all relevant information that can assist in making an assessment of the application for a licence or indeed the necessity for a licence. Where it is determined that an application requires inter-agency consultation, applicants are provided with written advice explaining the process and that advising time frames may extend beyond 35 days.
The export control systems in place and the types of goods and technology are continually evolving and must be constantly monitored and updated by DECO into the DSGL. Australia’s export control policies and procedures are therefore regularly reviewed to take account of changes in our strategic circumstances. Thus it is the responsibility of you and your patent attorney to check and recheck the DGSL or enquire with DECO as required.
As stated above the implementation date for the application of this Act is 17 May 2015, so now is the time to create procedures for you your working environment so that you, your staff or colleagues are not going to fall foul of this Act. DECO is relying on education as the main instrument of encouragement to Australians and punitive measures will not be taken. However, DECO has indicated that repeat and intentional export of such information will be met with the full force of this very important law.
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New Spin on Old Technology
With the 2014 edition of Le Tour de France underway, it’s a good time to have a look at bike related IP. During the tour there will doubtless be the usual discussion and debate amongst cycling enthusiasts about the technology being adopted by the professional riders, and whether they should adopt the technology on their own machines. You’ll possibly hear references to elliptical chain sets, tubular rims/tyres and other developments, and you’ll certainly hear talk of electronic gear shifting and power meters.
Rolling in the 1890s
Surprisingly, the foundations of many of the mechanical developments used on the latest bike designs can be traced back to the late 1800s, at least. The 1800s was a prolific period for bicycle related developments. Indeed, in terms of bike related patent activity, nearly a third of all patent applications filed at the USPTO in the 1890s were bike related. Many of these historic patents are accessible today.
Elliptical Chain Rings Turn Full Circle
For example, US Patent 557,676, which issued in 1896, addresses the problem of dead-spots in the pedalling cycle – the same problem addressed by current technology chain-sets used by the pros at the tour. This problem involves the uneven application of power by the rider during the pedal stroke.
US Patent 557,676 addresses the dead-spot problem by utilising an “elliptical drive gear”, which is similar in concept to the elliptical chain rings used on present day racing bikes.
Tubular rims are usually the rim of choice for professional riders as they are thought to provide a lower rolling resistance than clincher type rims/tyres.
Tubular rims are fitted with tubular tyres which are glued to the rim. Patents for tubular rims existed as early as 1900, at the least. For example, US Patent 640,174 describes a tubular tyre for a bicycle wheel which is fastened to the rim by “… gluing the edges of the rim and then tacking them.” US Patent 636,153, which issued in 1899, describes a beaded tyre similar to those used on most bikes today.
Patents directed to calliper type brakes for bicycles can also be traced back to the 1890s, at the least.
For example, US Patent 627,912 describes a front wheel centre-pull type calliper braking system which is activated by a lever fitted to the handle bars.
The system is similar in principle to the current braking system typically used on road bikes.
The 2014 Vintage
This year’s tour will doubtless reveal additional innovations which will generate excitement amongst cycling enthusiasts – particularly in the area of electronic gear shifting and pedal based power meters.
Some of that technology will be the subject of current patent applications by applicants looking to secure a competitive advantage for themselves, and the rider.
See here for full article: [article]
Stephen O’Brien is a Senior Associate in our ICT team and also leads our sports technology practice. In his spare time, Stephen coaches a South Australian based triathlon squad and is a contributor to Triathlon and Multisport Magazine
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There are a number of questions that arise when considering this issue. Some of them are fundamental issues: whether software related inventions in the mobile phone application space are patentable subject matter; should the patent be directed to a method or a device or a system; what needs to be included in a supporting patent specification; etc.?
First, what is a phone application? Well it can be a number of things but t ypically it is characterized by the existence of software designed to operate on a mobile platform, such as for example, a mobile phone but which also includes phablets, tablets and portable computer devices. The functionality of the software is merely a matter of the imagination of the developer. That functionality may include interaction between the user and the device only, or interaction of the user or the application with a remote server (which may be cloud based) while using or not using features included in the device such as GPS and accelerometer sensors. Easily overlooked is the specific software located at the server designed to do a number of things including interaction with the mobile platform and backend services such as a payment gateway; maintaining one or more databases, serving the user experience, serving data to purchasers of user data, etc.
Clearly, the functionality of the software may be patentable and claims to a method incorporating the minimum essential steps of the functionality may be available. A method claim patent will allow defense of the unauthorized copying of the functionality by an application that replicates that functionality even if there is no copying of the code – copying of the functionality is the key. It is unlikely that the device itself will be patentable as it is a known device. However, it may be that there is a special interaction of the software with one or more of the in-built mobile platform sensors. It may as also be that there is a special interaction of the application with a remote server and the combination of the application and the remote server is special. What is useful to understand, is that to prove infringement readily, every one of the steps of a method claim must be performed by a single entity. Therefore, it is necessary to create claims that represent the steps performed by either the mobile platform and/or the server.
It may be that there is a money making aspect of the application, e.g. the way the user pays for a digitally based service or virtual product. This can best be defined as a business method involving a system, a computer and/or computer software.
In some countries, the examples given above will not be patentable subject matter and in some countries the functionality alone, or a combination of hardware and software may be patentable. However, it is still necessary that the claimed invention is novel and non-obvious to those skilled in the art as is the case with any computer-related invention.
What needs consideration when reviewing the mobile application is an assessment of what is the essential function, that step or those steps, which provide the commercially valuable aspect of the business behind the mobile application. A flow chart of the process steps is useful, as is a critical review of: which steps are important; which are essential; which are not required; and those that provide essential as opposed to desirable functionality. It will also be useful to identify the smaller step elements that make up one or more of the larger steps. The level of abstraction required to describe the steps can be high and the use of concise and accurate language is useful. However, a more detailed description will need to be provided if there is to be a patent applied for. Some of the other readily available information includes user definition, wireframes, flow charts, screen shots, etc. All this information will assist you and your Madderns attorney to explore the options available.
Of course, a patent is not the only Intellectual Property (IP) to consider, since copyright will automatically subsist in the code (source and machine code), with no formal application required although in the United States registration is possible and recommended. Yet further, if the server performs the commercially valuable functionality, it may be practical to treat that software as commercially confidential and thus a trade secret, since no user or competitor will be able to access that software. For many mobile applications, a unique and memorable trademark is the most important factor in a mobile application’s success. Note that eventually there will be a public release of the patent specification disclosing all of the important details of the invention and how to implement it.
With more than a million applications (apps) out there – is it worthwhile obtaining a patent for a mobile application? How long do you need the advantage of a patent, 6 months, a year or more? Is your idea useful to other mobile applications or mobile phone companies such that you will be able to license it to others? Well that is a commercial decision based on numerous factors. In my experience, the filing of a provisional patent that will last just one year usually provides enough time to make a better decision in light of the market and competition at the time.
As you should now better appreciate, the question of patentability of a mobile application is not unlike the question of whether a computer related invention is patentable. What functionality is commercially important will determine the starting point of such a determination. You will also be able to consider and investigate whether the idea is already the subject of a patented. Consult with your attorney to discuss your mobile applications’ patentability and its trademark before it is offered on-line or offered in any form to others.
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There are a few things that keep patent attorneys up at night and one of them is the choice of words when drafting a claim. Sometimes “one word” can make all the difference to the enforceability or validity of a patent.
This is a general information article meant for a non-legal readership so it may be useful to set the scene. When an inventor brings their idea to an attorney one of the many tasks but one of the most important is to define the invention. A claim is a one-sentence definition of the crux of the invention, which must be clear and succinct, and supported by the matter described in the rest of the specification. There will only be the minimum number of essential features in the claim. The claims of a patent define the invention to which the patentee is entitled the right to exclude others exploiting.
The words of the claim are carefully chosen to define the invention. However, as is the way of patent opposition or litigation each side will sometimes need the words to have a particular meaning that benefits their position. The other side will argue before the patent office or the court that all or just one of the words has a different meaning to the one the drafter thought it had, especially if the term turns out to mean that the patent is not valid in light of a particular meaning. Then there are times that a phrase or just one word needs to have a meaning that benefits the patent holder to make the alleged infringers’ product or method fall within the scope of the claim. It all comes down to claim interpretation, which is determined by the Hearing officer or the Judge/s as considered through the eyes of the person skilled in the particular art. Interestingly, not all the Judges in a case necessarily agree but that is a topic for another article.
This article does not include a discussion of all the relevant issues for this topic, such as ambiguity, lack of clarity, or lack of support. Yet further, other related issues include but are not exhaustive: mechanical equivalents, essential and inessential element, etc.
There are many cases to illustrate this issue and the following were of interest to the writer.
Let me illustrate some phrases that did not quite work as the drafter intended.
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Most people would give no thought to how a car steers unless it steers terribly, or not at all. But have you ever considered how it is that your car’s steering is stable on the open road, but easy to turn at slow speed and in car parks?
Many would give credit to power steering, but the key lies in Australian Arthur Bishop’s patented variable-ratio steering technology. Without variable-ratio steering, power steering makes for nervous or twitchy steering at speed.
Others had tried to develop such a system before Bishop, but had concluded that it was not possible. Not only did Bishop figure out not how to make a working variable-ratio system, but how to mass-produce it as well.
But Bishop was not only a brilliant engineer, he was also a strategic user of the patent system, with an estimated 300 patents in 17 countries to his name. He once said that:
‘The patent system plays an essential role for the innovator in preventing others pirating his ideas before he has had time to perfect them’.
‘It’s important to patent other ways of accomplishing the same object, but also to find and cover the best way to manufacture, or the best process associated with that new idea. And so you build up a matrix or pyramid of protection around the idea. That makes it much more invulnerable to challenges by other manufacturers who very often have resources which go far beyond the innovators.’
As a result of Bishop’s vision, an estimated one in five of the world’s cars, including 11 million new cars each year, use some aspect of his variable-ratio, rack and pinion and associated power steering technologies. Yet Bishop’s company manufactures none of them. They are all made under license agreements paying up to A$14 million a year, or in joint ventures with car manufacturers or their suppliers.
And so it is that Arthur Bishop’s legacy may not lie is his inventions, but the realisation that exporting knowledge may be just as valuable as exporting anything else.
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