Milton Edgar Anderson [2008] APO 19 (11 August 2008) http://www.austlii.edu.au/au/cases/cth/APO/2008/19.html
In a recent decision of the Patent Office, the Deputy Commissioner has re-affirmed the view that scientific theories or discoveries of the laws of science without a specific practical and useful application are not patentable.
The claimed invention related to a “the new science of subtronics” and “a new law of electric induction” that, allegedly, stemmed from the discovery of electrosubtronic fields.
The claimed invention was rejected.
Specifically, the Deputy Commissioner found that the claimed invention was not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies as required by section 18(1)(a) of the Act. To support the decision, the following passage was cited from Lane Fox v Kensington and Knightsbridge Electric Lighting Company (1892) 3 Ch. 424 at 428,429:
".....a man who discovers that a known machine (his Lordship might equally have said a known substance) can produce effects which no one before him knew could be produced by it has made a discovery, but has not made a patentable invention unless he so uses his knowledge and ingenuity as to produce either a new and useful thing or result, or a new and useful method of producing an old thing or result."
Friday, August 29, 2008
Tuesday, August 5, 2008
Patent opposition and 'microemulsions'
William A. Newman v Solutions-IES, Inc [2008] APO 18 (28 July 2008)
http://www.austlii.edu.au/au/cases/cth/APO/2008/18.html
In this recent decision from the Patent Office, all claims found to be entitled to the earliest priority date. Although claim 28 does not contain some features of claim 1, these features are matters of routine that are always carried out. All claims were found to be novel and inventive. None of the documents that form part of the prior art base disclose the use of microemulsions. There is no evidence that it was a matter of routine to prepare a microemulsion with droplets of less than one micron.
At para 40, the Commissioner looked at the term ‘microemulsion’, “Is the term “microemulsion” used as a term of art, with a droplet size as understood in the art, or does it simply mean an emulsion with small droplets, and the size of the droplets solely defined by the words “having an average droplet size less than that of the sediment”. I note that the Federal Court recently considered a patent involving the term “microemulsion” in a different technology (Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178). The court reached the view that there was some ambiguity in the size of droplets encompassed by the term, and had regard to the description on the point. While that case is not authority for the meaning of a technical term, it demonstrates the proper approach to the construction of ambiguous technical terms.”
Two minor section 40 deficiencies were identified in relation to the fair basis of claim 8 and the clarity of claim 28.
Costs awarded against the opponent.
http://www.austlii.edu.au/au/cases/cth/APO/2008/18.html
In this recent decision from the Patent Office, all claims found to be entitled to the earliest priority date. Although claim 28 does not contain some features of claim 1, these features are matters of routine that are always carried out. All claims were found to be novel and inventive. None of the documents that form part of the prior art base disclose the use of microemulsions. There is no evidence that it was a matter of routine to prepare a microemulsion with droplets of less than one micron.
At para 40, the Commissioner looked at the term ‘microemulsion’, “Is the term “microemulsion” used as a term of art, with a droplet size as understood in the art, or does it simply mean an emulsion with small droplets, and the size of the droplets solely defined by the words “having an average droplet size less than that of the sediment”. I note that the Federal Court recently considered a patent involving the term “microemulsion” in a different technology (Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178). The court reached the view that there was some ambiguity in the size of droplets encompassed by the term, and had regard to the description on the point. While that case is not authority for the meaning of a technical term, it demonstrates the proper approach to the construction of ambiguous technical terms.”
Two minor section 40 deficiencies were identified in relation to the fair basis of claim 8 and the clarity of claim 28.
Costs awarded against the opponent.
Obviousness, admissions on the face of the specification and the possible emergence of a five-step approach?
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139 - http://www.austlii.edu.au/au/cases/cth/FCAFC/2008/139.html
In a recent decision made publicly available on austii, the Full Federal Court has given consideration to a raft of patent issues, with obviousness being a key consideration.
After providing the relevant provisions going to inventive step, their Honours then proceeded to a five step approach to the obviousness analysis. At [80], their Honours said:
“80 It follows from the provisions of the Act outlined above that in determining the issue of obviousness, it is necessary:
(1) to identify the invention "so far as claimed in any claim";
(2) to identify the "person skilled in the relevant art";
(3) to identify the common general knowledge as it existed in Australia before the priority date;
(4) to inquire under s 7(2) whether the invention referred to in (1) above would have been obvious to the person referred to in (2) above in light of the knowledge referred to in (3) above; and
(5) to inquire whether that invention would have been obvious to that person in the light of that knowledge when that knowledge is considered together with either kinds of information mentioned in s 7(3) (additional prior art information).”
The decision is also of interest with respect to it consideration of common general knowledge and admissions on the face of the specification as raised in the recent Lockwood and Wrigley decisions.
In a recent decision made publicly available on austii, the Full Federal Court has given consideration to a raft of patent issues, with obviousness being a key consideration.
After providing the relevant provisions going to inventive step, their Honours then proceeded to a five step approach to the obviousness analysis. At [80], their Honours said:
“80 It follows from the provisions of the Act outlined above that in determining the issue of obviousness, it is necessary:
(1) to identify the invention "so far as claimed in any claim";
(2) to identify the "person skilled in the relevant art";
(3) to identify the common general knowledge as it existed in Australia before the priority date;
(4) to inquire under s 7(2) whether the invention referred to in (1) above would have been obvious to the person referred to in (2) above in light of the knowledge referred to in (3) above; and
(5) to inquire whether that invention would have been obvious to that person in the light of that knowledge when that knowledge is considered together with either kinds of information mentioned in s 7(3) (additional prior art information).”
The decision is also of interest with respect to it consideration of common general knowledge and admissions on the face of the specification as raised in the recent Lockwood and Wrigley decisions.
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