We are delighted to announce the promotion to Partner of Stephen O’Brien and Christopher Wilkinson.
Stephen is an Australian and New Zealand Patent and Trade Mark Attorney within our specialist Electronics and ICT teams. He is highly recommended to assist clients with all aspects of IP protection – including branding activities, and identifying and protecting inventions. He has a particular interest in working with South Australian based start-up companies to assist in the identification of inventions and the development and management of patent strategies to maximise the value of their IP.
Chris is an Australian and New Zealand Patent and Trade Mark Attorney within our specialist Electronics, ICT and Life Sciences teams. With his diverse technological background and experience, Chris is able to rapidly engage with new clients to understand their technical language and needs, in order to assist them protecting their innovative solutions.
Commenting on the promotions, Managing Partner Tom Melville said: “I am thrilled to see the promotion of such talented and client-focused attorneys. Stephen and Chris both have exceptional intellectual property skills and experience. Their addition to the partnership team provides Madderns with a fantastic opportunity to expand our reach in assisting clients in taking their great ideas to the world as we begin our 50th year.”
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Bluescope Steel engaged in long running battle with IP Australia to protect branding pre-painted steel strip.
Bluescope Steel Limited [2017] APO 59
Patent application AU2016208431 (the ‘431 application) entitled “Branded Products” was filed by Bluescope Steel on 29 July 2016 and was the third successive divisional patent application stemming from a complete patent application filed in 2005. Each application was directed to forming an improved brand on a pre-painted steel strip by partially removing a section of a layer on the strip so that branding did not form a “dominant” part of the steel strip product.
The history of the family of applications included a total of nine unfavourable examination reports, with “manner of manufacture” and “inventive step” objections remaining an unresolvable stumbling block throughout the examination process.
During examination of the ‘431 application, a single examination report issued which maintained the “manner of manufacture” and “inventive step” objections raised in the previous reports for the earlier applications. The report also indicated that, as a result of several adverse examination reports having previously issued in relation to the subject matter, the application would be referred to a hearing officer to consider whether to either refuse the application or direct an amendment.
The ‘431 application fared no better at the hearing, with the Delegate finding “that the claims are not for a manner of manufacture. I find no patentable subject matter in the application. I need not consider inventive step. The application is refused.”
The refusal based solely on manner of manufacture is of particular interest. It is well established law in Australia that for an invention to be a ‘manner of manufacture’ it must belong to the ‘useful arts’ rather than the ‘fine arts’; it must provide a material advantage; and its value to the country must be in the field of economic endeavour.
While claim 1 of the ‘431 application was directed to “[a] pre-painted steel strip includes a steel strip and a layer of paint covering at least one surface of the strip…”, the Delegate considered that the substance of the invention was merely the presentation of information characterised solely by a visual arrangement, because claim 1 recited “a plurality of brands at spaced intervals along the length of the steel strip…wherein the size of each brand is relatively small compared to the surrounding area of the un-branded paint layer.”
Claim 1 further claimed that each brand was “defined by a section or sections of the paint layer from which the paint has been partially removed and therefore has a thinner paint layer than the remainder of the paint layer which is un-branded and is visually identifiable”. In relation to this feature, the Delegate stated that “there is no contribution to the art in partially or wholly removing paint layer from a substrate such as a steel to form a thinner paint layer. Informatively, I note that a range of patent documents support this understanding.”
Undeterred, Bluescope has recently filed a further divisional application (AU2017251846) for the same subject matter covered by the ‘431 application. The Delegate made ominous reference to this new application, saying it will likely be “the cause of considerable wastage of Patent Office resources and presumably significant inconvenience for any interested third parties”.
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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 [2017] 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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Australia’s patent law requires that, in additional to describing the invention “fully”, a patent specification must also disclose the “best method of performing the invention”.
Sub-section 40(2) of the Australian Patents Act 1990 requires that:
A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention
This requirement stems from the need to fully describe the invention claimed so as to not keep any details of the invention secret which would otherwise need to be shared with the public to allow the person skilled in the art to recreate the invention to the best level known to the applicant. This is part of the bargain of teaching society the invention in exchange for a limited term of monopoly afforded by a patent.
Failure to disclose the best method known to the applicant can result in the invalidation of any patent subsequently granted on the application.
In a recent Decision1 by the Australian Patent Office, one of the issues considered was that of best method. In Merial, Inc. v Bayer New Zealand Limited, the Hearing Officer considered the issue of best method in the form of three questions:
- what is the invention for which a best method must be provided;
- what method is described in the specification; and
- was the applicant aware of a better method?
While it is established law that the best method known to the applicant that must be disclosed in the specification is that known by the applicant at the time of filing the application,2 there is still some question as to when this requirement needs to be fulfilled, i.e. is it possible to subsequently amend the specification as filed to add the best method should the specification as filed be deemed to be lacking disclosure of the best method?
In the Full Federal Court decision of Pfizer Overseas Pharmaceuticals v Eli Lilly,3 it was held that the specification can be amended to include the best method at least until the time of grant, but left open the possibility of including the best method even after grant of the patent.
This decision therefore made it quite possible to correct an otherwise-deficient specification in regards to best method and did not necessarily result in the automatic invalidation of a patent (although great care should be taken not to fall foul of the provisions4 of the Patents Act which give a court discretion in allowing (or refusing) amendments, which in one case resulted in a patentee being refused the opportunity to amend their patent to overcome a finding of lack of best method, resulting in the ultimate revocation of the patent).5
Pre-Raising the Bar Amendment Provisions
These latter decisions were made in respect of patents filed prior to the “Raising the Bar” provisions,6 which governed all patent applications for which a Request for Examination was filed on or after 15 April 2013. These provisions served, in part, to increase the validity thresholds for the granting of a patent in Australia.
Prior to Raising the Bar, the provisions dictating what amendments were not allowable, were set out in Section 102. In particular, subsection 102(1) provided:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
Thus, under the “old law”, it was possible to amend a specification which added new matter, provided that it did not result in the claiming of that new matter.
Accordingly, the scope to add new matter to add a best method description after the application was filed, and therefore correct an otherwise deficient specification, was quite generous.
Post-Raising the Bar Amendment Provisions
Under the current Act as amended under the Raising the Bar provisions, the equivalent subsection 102(1) provides:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).7
It will be noted that the new provision now prohibits the making of an amendment which would result in disclosing matter that extends beyond that disclosed in the specification as filed.
In the context of amending a specification after filing to correct a deficient specification by adding information relating to a best method, this tightened provision appears to close off (or at least severely restrict) any opportunity to correct a best method defect. This effectively requires that the specification include the best method at the time of filing the application.
In the Patent Office Decision referred to above (Merial, Inc. v Bayer),8 the Hearing Officer found the opposed patent application not to have disclosed the best method of performing the invention. While the opposed patent was governed by the Raising the Bar provisions, the Hearing Officer nevertheless allowed the Applicant a period of 2 months to propose amendments to overcome the deficiency (of the finding of lack of best method). The Officer however stated that “It is not clear to me how the deficiencies in the opposed application may be overcome since it appears that any proposed amendments would result in adding new matter that was not present in the originally filed specification, and therefore would not be allowable under section 102 of the Act.”
It remains to be seen how the Applicant responds.
The new requirement that the specification as proposed to be amended does not claim or disclose matter that extends beyond that disclosed in the complete specification as filed in combination with the prescribed documents has yet to be considered fully by the courts. However, in another, even more recent Patent Office Decision9 in Steven Borovec v K-Fee System GmbH, the Hearing Officer in considering this question, cited guidance provided by the Australian Patent Examiner’s Manual of Practice and Procedure10:
“The effect of sec 102(1) is that an amendment must not add new matter that the hypothetical person skilled in the art could not directly derive by reading the information in the complete specification as filed and other documents prescribed by regulation 10.2A i.e. the explicit and/or implicit disclosure of the complete specification as filed, taken together with the other documents prescribed in reg 10.2A. However, where the person skilled in the art could directly derive the matter sought to be added to the specification from this combination of documents, an amendment will be allowable under sec 102(1).”
Thus, the correct approach to considering whether an amendment adds new matter is to ask whether the skilled person would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn from the combined disclosure of the complete specification as filed and other prescribed documents. This comparison is a strict one in the sense that subject matter will be added unless it is clearly and unambiguously disclosed, either explicitly or implicitly, in the relevant documents”.
Accordingly, while the new provisions appear to be extremely limiting in allowing amendments to overcome a finding of lack of best method in a specification for an application governed under the Raising the Bar law, there may well be some small “wiggle room” in some cases by being able to combine information from the specification as filed with information in the “prescribed documents”, as well as the possibility of relying on information that is “implicitly” disclosed in the combination of these documents.
With the ground of lack of best method being used more frequently in recent years to attack the validity of an Australian patent, and with more patents being granted under the Raising the Bar provisions, it is only a matter of time until a case comes before the courts to provide more guidance on the issue.
- Merial, Inc. v Bayer New Zealand Limited [2018] APO 14 (22 February 2018) [Merial]
- Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992), 25 IPR 119
- Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224
- Section 105 Australian Patents Act 1990
- Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 (8 March 2016)
- IP Laws Amendment (Raising the Bar) Act 2012
- Regulation 10.2A of the Patents Regulations 1991 defines “prescribed documents” for the purpose of paragraph 102(1)(b) as an abstract filed with the complete specification; any part missing from the compete specification at filing that was later incorporated into the specification under reg.3.5A or PCT Rule 20.5 or Rule 20.6; and an amendment that has been made to the complete specification after filing, for the purpose of: I. Correcting a clerical error or obvious mistake; or ii. complying with sec 6(c) (micro-organism deposit requirements).
- Merial, supra note 1 at 239
- Steven Borovec v K-Fee System GmbH [2018] APO 18 (9 March 2018)
- Australian Patent Examiner’s Manual of Practice and Procedure Section 2.23.8.1A
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