Bluescope Steel engaged in long running battle with IP Australia to protect branding pre-painted steel strip.
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”.