The Australian government agency responsible for administering IP rights in Australia has recently announced that from May 2021 to June 2022, it will be conducting a trial of an innovative machine learning model to improve the process where patent applicants are directed to request examination.
While patent examination can be requested at any time, examination must be requested within two months of receiving a direction from IP Australia to do so, or within five years of filing (whichever is sooner). Failure to request examination in time will result in lapsing of the application.
IP Australia will typically direct an applicant to request examination around 4 years after filing. Once Examination has been requested, it joins a queue, where it waits to examined, with IP Australia aiming to issue a first report within 12 months.
For applicants looking to accelerate the process, there is the existing option of requesting expedited examination, where IP Australia will aim to issue the first report within 8 weeks of the request.
S44(2) of the Patents Act 1990 stipulates that the Commissioner may, on one or more prescribed grounds, direct the applicant to request examination. The prescribed grounds are found in Reg 3.16 of the Patents Regulations 1991:
- That the Commissioner reasonably considers it expedient to give the direction having regard to the progress made in the examination of applications filed before the filing date of the application concerned;
- That the Commissioner reasonably considers it to be in the public interest to give the direction;
- That the Commissioner reasonably considers it expedient to give the direction, having regard to the examination of another application for a standard patent or the examination of an innovation patent.
The Regulations also require that the direction must be given in writing and state the grounds on which it is given.
The intent of the new model is to issue a direction to applicants when an applicant’s IP strategy is more developed, with the aim of helping applicants navigate the patent examination process more efficiently. This will apply to applications made using patent attorney firms and self-filers. The model may change the previous first come, first served order of directions by focusing on applications that are considered more likely to be ready for examination, but the model will not change the directions process as mandated by the Patents Act.
However, it will be interesting to see whether the reason provided is updated to indicate that the decision has been made because of this new process, or whether it will remain the current default reason:
“You have received this direction because either progress has been made in the examination of applications filed before the filing date of your application or I consider it to be in the public interest”
The announcement of this trial comes around the same time that the Australian Government’s commissioned review in to the accessibility of the Australian patent system to small and medium enterprises (SMEs) was tabled in parliament. Provide a link.
The final report of the Patents Accessibility Review made 16 recommendations intended to improve both the accessibility of the patent system and the support provided to Australian SMEs applying for protection in Australia and overseas.
The report was based on findings from oral consultations with SME representatives and other specialists, including commercialisation advisors, organisations representing patent attorneys such as IPTA and FICPI and patent attorneys. The research team also considered submissions and undertook their own research.
While the complete report makes interesting reading for all stakeholders, it does provide commentary on processing times for patent applications, with the executive summary stating:
“On processing times there is no significant issue, given that IP Australia can arrange for expedited review of a patent application at no extra cost, this taking three months. Some participants were quite happy for the delay of a year or so (this being the standard patent examination time under normal circumstances) – but there is no doubt that the availability of an expedited review service will deal with any problem here.”
The Report identified that for many, the delay in examination of a patent application was useful, as costs were postponed, including the following, non-attributed quote:
“Australia is amongst the fastest jurisdictions in the world.
This is a red herring. SMEs applications shouldn’t be dealt with quickly. …It’s important to defer prosecution costs.”
The decision to move to this new process raises many questions:
- What metrics does IP Australia intend using to determine how developed an applicant’s IP strategy is?
- What does IP Australia consider to be efficient navigation of the patent examination process?
- Will this model be influenced by the progress of corresponding overseas patent applications?
- What does it mean to be more likely to be ready for examination?
- What can an applicant do to prevent early directions issuing?
While the findings of the accessibility report are not contradictory to IP Australia’s efforts to improve the customer experience, it is hoped that the agency is careful when it comes to anticipating the diverse needs of its customer base.
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Sequenom, Inc. v Ariosa Diagnostic, Inc.  FCA 1011, is a recent Australian Federal Court decision, which has been widely reported on, with writers predominantly focusing on aspects of validity (whether or not the invention claimed was a manner of manufacture) and infringement. This article however, focuses on the lesser reported aspect of the decision relating to infringement of the patent.
In short, Sequenom holds a patent comprising a series of method claims directed toward a prenatal detection method using non-invasive techniques. Co-respondent, Ariosa, developed the Harmony non-invasive prenatal test some 15 years after the priority date of the patent. Aspects of the Harmony Test were found to infringe the claims of the patent.
A portion of this much larger decision dealt with whether infringement occurred during a period of time, where prior to being licensed by Ariosa to use the Harmony Test in Australia, Australian co-respondents Sonic Healthcare and Clinical Laboratories each operated a “send out” testing service where they collected blood samples from pregnant women in Australia and sent those samples to Ariosa in the United States, where Ariosa would use the Harmony Test to produce the results which were then provided to Sonic and Clinical in Australia, and were subsequently forwarded to healthcare professionals in Australia. Sonic and Clinical each promoted and supplied Harmony Test results produced by their own and Ariosa’s use of the Harmony Test in the United States.
Sequenom sought relief for infringement against Sonic and Clinical, arguing that the Harmony Test results were a “product” resulting from the performance of the patented method and the promotion and supply of the results was an infringement.
The respondents cross-claimed that the test results were not a product that could be imported (or kept or sold) within the meaning of the definition of “exploit” in the Patents Act, and that the test results were “the information that could be brought within Australia by a form of communication, or by a person receiving that communication directly overseas and themselves travelling to Australia whilst retaining that information in their memory”.
In reaching his conclusion, Justice Beach turned to Section 13 of the Act, which provides that the patent gave Sequenom the exclusive rights during the term of the patent, to “exploit” the invention as defined in the relevant claims and to authorise another person to exploit the invention.
Schedule 1 of the Act states that where the invention is a method or process, “exploit” in relation to an invention includes use of the method or process or to make, hire, sell or otherwise dispose of a product resulting from such use, offer to make, sell, hire or otherwise dispose of such a product, use or import it, or keep it for the purpose of doing any of those things.
Accordingly, a person will be taken to have infringed a method claim of a patent if that person:
(a) within Australia uses the invention; or
(b) exploits, in Australia, a product resulting from the use, anywhere, of the method or process; or
(c) authorises or procures from anywhere an infringing act referred to in (a) or (b).
Justice Beach explained that the term “product” is not defined in the Act and should thus be afforded its ordinary meaning as “covering anything resulting from the patented method that can be commercially exploited”… “a vendible product” should be “understood as covering every end produced or artificially created state of affairs which is of utility in practical affairs and whose significance thus is economic”.
Critically, Justice Beach explained that “Interpreting the definition of “product” broadly limits the undesirable possibility that a potential infringer could utilise a patented process overseas and then import the resulting product into Australia, and so circumvent the monopoly granted by the method patent”.
Unpersuaded by the argument presented by the respondents, his Honour said “In my view, the reality is that the Harmony Test is carried out for the purpose of obtaining the results. The results are clearly commercially valuable; patients pay in the order of $400 to obtain them. The Harmony Test results, whether recorded in electronic or paper form, are the product of a patented process for the purposes of the definition of “exploit”. Moreover, by supplying the Harmony Test results to clinicians in Australia, Sonic and Clinical infringed the relevant claims during the send out [testing service] period.”
What could this mean?
This decision provides an important precedent that the exploitation in Australia of a product produced overseas by a patented process (i.e a process patented in Australia) constitutes an infringement. It is not limited to tangible products, but can also be found where the product of the patented process is one which is intangible such as medical test results like the prenatal test results obtained with the Harmony Test. It is, however, not hard to imagine how this decision might also be followed where the product of a patented process performed overseas constitutes some other commercially valuable information such as an online gaming outcome, or even a received telecommunication signal processed overseas according to a patented method, so the findings of this decision ought to be considered in analogous situations in other technical fields.
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A recently published decision by the Australian Design Office provides a cautionary tale about the effectiveness of generic confidentiality clauses in email footers.
Sun-Wizard Holding Pty Ltd v Key Logic Pty Ltd  ADO 8
Key Logic (the owner of a registered design for a Sollar Bolard) had sent email correspondence (prior to filing a registered design application) containing representations of the design to a number of parties. Despite the emails including a generic confidentiality footer below the signature block, a Delegate found that the representations were not communicated in a way which imposed an obligation of confidence on the recipient, and were therefore considered published for the purpose of the Designs Act.
Section D07.3.2 of the Design Examiner’s Manual provides guidance regarding the publication of a design in this context:
The criterion of ‘published’ relates to public availability. It is not limited to the process of producing multiple or a requisite amount of copies (such as the printing of a magazine).
A design is published in a document if:
- the document is one that a member of the public can inspect “as of right”; or
- a person not bound by express or implied confidentiality has knowledge of the content of the document.
For a design to have been considered ‘published’, it should have been made available to the public without obligations of secrecy or confidentiality. In considering the circumstances which would impart an equitable obligation of confidence, the principal authority is the decision of Coco v AN Clark (Engineers) Ltd (1968) 1A IPR 586 (‘Coco’).
Coco sets out two requirements to be satisfied in order to impart, on a recipient of information, an equitable obligation of confidence, as follows:
- First Requirement – the information must have the necessary quality of confidence; and
- Second Requirement – the information must have been communicated in circumstances which impart an obligation of confidence
Despite Key Logic arguing to the contrary, the Delegate held that including a generic confidentiality clause in an email footer was insufficient to satisfy the second requirement:
“It is not sufficient that Mr Arieni had an expectation that the material he provided in the email was kept confidential. That expectation was not clearly communicated nor was it apparent from the circumstances in which the email was sent. If the Owner sought to protect the Design by keeping it confidential, he ought to have kept it to himself.”
With regard to the confidentiality clause:
“I am not persuaded that the confidentiality notice at the bottom of the email has the effect submitted by the Owner… it is apparent that notices of that type are added almost universally by businesses as a matter of course beneath the signature blocks of their emails regardless of the content of the email to which they are appended. It is unlikely that any recipient of an email in a business setting reads beyond the signature block every time they receive an email…the ubiquitous presence of such notices means that they are unlikely to have the effect asserted by the Owner… a confidentiality notice at the beginning of an email is far more likely to be effective in importing an obligation of confidence to the recipient.”
As the email attaching representations of the design was communicated prior to the priority date associated with the design application, the Delegate’s finding meant that the design was not new and distinctive when compared with the prior art base – which included the email itself.
As a result of this decision, when communicating information by email which is intended to be confidential, it is important not to rely on a generic confidentiality clause in an email footer, but to instead include an additional or more prominent notification, such as a confidentiality notice at the beginning of an email.
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