A rose by any other name would smell as sweet – Patent claim terms that did not end up with the meaning the drafter wanted

/ Bill McFarlane / Articles

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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Steering the way – Arthur Bishop (1917–2006)

/ Phillip Boehm / Articles

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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Technology Trends In Electronics

/ Martin Pannall / Articles

Electronics pervades nearly every aspect of our lives, from the latest consumer gadgets in our homes that entertain us, keep us safe and wake us up in time to get to work, to the electronics that allow us to perform our work, and the electronics that blurs the line between home and work such as mobile communication networks and devices.

Electronic components and electronic devices are becoming more and more portable to allow the consumer to take their electronic life wherever they go.

It is difficult to pinpoint one particular developing trend in electronics over others, since electronics is used in nearly all areas of modern endeavour. Broad areas that have recently received much media attention include renewable energy, 3D printing, and wearable electronics.

One particular area that appears to attract much activity is that of medical technology and in particular, the integration of medical devices with the human body, whether used inside the body as an implant, or outside the body as a piece of wearable apparatus.

The most recent patent statistics analysis1 published by WIPO (World Intellectual Property Organisation) indicates that the most active patent area for Australian-originating patent applicants, is medical technology, with 4,558 patent applications filed in that area between 2007 and 2011, the greatest number of patent applications from Australia in all of the 35 technology fields covered in the study.


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When is a trade mark known more as a mark than what it means in a non-English language?

/ Lucy Deane / Articles

AMORE, GIALLO, FELICE, BELLO, BLANC BLEU are but a handful of the many foreign language words that are registered as trade marks in Australia.

But care must be taken not to assume (as one may be tempted to from a cursory glance at the Australian Register of Trade Marks) that words in a non-English language will more easily satisfy the requirements for registration as a trade mark in Australia.

The registration requirement of most relevance to trade marks comprising foreign language words is the requirement (set out in section 41 of the Trade Marks Act 1995 (Cth)) that a trade mark be “capable of distinguishing” the applicant’s goods or services from those of other persons.

When considering the application of section 41, the relevant enquiry will initially be whether a trade mark is “inherently adapted to distinguish” the applicant’s goods or services.  If a trade mark is “inherently” or prima facie adapted to distinguish, it will not attract an objection to registration under section 41.


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