IP SPOTLIGHT 9 June

SOLAR GIANT HANWHA HAS A LARGELY ‘UNDISCOVERED’ WIN

NEW L IMI TAT ION I NTRODUCED TO THE PATENT Claim 13: Solar cell according to any one of claims 9 to 12, wherein the second dielectric layer has a thickness of more than 100 nm. The respondents had not addressed the other amendments sought by Hanwha in this same manner and consequently they failed in their bid for related discovery. maintaining legal professional privilege and confidentiality. After inspecting the unredacted form of the documents, the Court decided that the redactions were warranted on this basis and thus the respondent’s application failed in this respect. CONCLUS ION The application for further and better discovery was in large part dismissed. Burley J’s decision demonstrates that when considering the likely relevance, despite a common patentee and/or subject matter, patents in different patent families are considered to be unrelated patents, and, for the purposes of assessing applications for post grant amendments, prior art raised in respect of another patent family may not be considered relevant. As this application was filed in response to Hanwha’s amendment application, which was further filed in response to the infringement and cross claimed invalidity proceedings, it will be interesting to see how the proposed amendments will affect the subsequent proceedings. REDACTED DOCUMENTS Hanwha submitted that the redactions are related to

The Court considered the application/s in the following manner:

– – Should additional discovery be required? – – Are the redactions warranted?

Importantly, with the onus falling on the respondents, the Federal Court concluded that the respondents’ application failed, with the exception that it be entitled to additional discovery of one aspect. SHOULD ADD I T IONAL D I SCOVERY BE ORDERED? Hanwha stated that the reason for seeking their amendments was to ‘strengthen’ the claims and potentially reduce the scope of issues that may need to be determined (in light of prior art). In turn, the respondents contended that Hanwha had, amongst other things, failed to act promptly after becoming aware of circumstances that would lead a reasonable person to (apply to) amend earlier. The relevant circumstance is the Bhattacharyya prior art. Bhattacharyya was initially cited against a different patent family in 2015. Despite both patent families disclosing a solar cell and sharing some ‘common features’, the Court disagreed with the respondents noting that, whilst Hanwha was aware of Bhattacharyya, it was not until May 2019 that Bhattacharyya was cited against the Patent. 1 The respondents further contended that the proposed amendments are “the same as, or similar to” the amendments proposed in respect of the corresponding European Patent (i.e. the European patent in the same patent family), so it follows that documents concerning those amendments should be discovered. The Court was satisfied that there was sufficient similarity between some amendments to warrant additional discovery, in that the Court believed the amendments took the same effect. The relevant amendments were:

A recent Federal Court of Australia decision (Hanwha Solutions Corporation v LONGi Green Energy Technology Co. Ltd [2020] FCA 580) has provided some guidance regarding applications for post patent grant amendments and discovery. In this decision, the Court has largely dismissed an application for discovery filed by three companies, LONGi, Jinko and REC (the respondents ). This result is of particular interest as many recent Australian decisions have gone against patentees seeking to make amendment to a patent immediately prior to, or during, infringement litigation. BACKGROUND Hanwha had initially sued the respondents under the Patents Act 1990 (Cth) in part for infringement of claims 9, 11 and 12 of their Australian Patent 2008323025 (the Patent ) titled “Method for manufacturing a solar cell with a surface-

passivating dielectric double layer, and corresponding solar cell”. In response, the respondents filed cross claims that the contentious claims were invalid based on lack of novelty and inventive step (based on a prior published US patent application referred to in the decision as Bhattacharyya ), lack of support and utility. Thereafter, Hanwha filed an interlocutory application seeking leave to amend the Patent pursuant to section 105 of the Patents Act ( amendment application ). The respondents opposed the amendment application on grounds including, inter alia , that Hanwha delayed in seeking the amendments and failed to make full disclosure of all matters relevant to the proposed amendments. On 11 October 2019, the Federal Court ordered Hanwha to supply those documents relevant to the amendment application. The respondents were not satisfied with the provided discovery and further contended that all relevant documents must be provided. Therefore, the respondents filed interlocutory applications seeking orders, primarily that Hanwha discover and produce documents, unredacted, within certain listed categories.

PETER CAPORN Principal

PROPOSED AMENDMENTS TO CORRESPOND I NG EU PATENT

ELLEN CHA Technical Assistant

Claim 13: Solar cell according to any one of claims 9 to 12, wherein the second dielectric layer has a thickness of more than 100 nm and more preferably more than 150 nm.

1 Hanwha Solutions Corporation v LONGi Green Energy Technology Co. Ltd [2020] FCA 580 [19].

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UPDATES TO PATENT OFFICE INITIATIVES CORONAVIRUS AND YOUR IP

CANAD I AN PATENT OFF I CE – – Initially, all deadlines falling between 16 March 2020 and 31 March 2020 were extended to 1 April 2020. – – On 26 March 2020, the Canadian Patent Office issued a notice informing that deadlines falling between 16 March 2020 and 12 June 2020 would be extended until 15 June 2020. – – If additional time beyond 15 June 2020 is required, a further extension of some, but not all, deadlines may be requested under the Canadian Patent Rules. – – For such additional extension requests, COVID-19 related delays will be considered to be exceptional circumstances when accompanied by a simple justification of why the extension of time is necessary. EUROPEAN PATENT OFF I CE (EPO) – – The EPO initially extended all deadlines expiring on or after 15 March 2020 to 17 April 2020 which was then further extended to 2 June 2020. – – EPO special COVID-19 related measures relating to extensions of deadlines have since ended. – – If an extension is still required, a request for such can be submitted under the normal EPO regulations. – – All oral proceedings in examination and opposition proceedings scheduled until 14 September 2020 are postponed until further notice unless they have already been confirmed to take place by means of videoconferencing. UN I TED STATES PATENT OFF I CE (USPTO) – – The USPTO is providing extension of patent and trade mark deadlines due to disruptions related to COVID-19. These extensions are governed by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) – – For Small and Micro entities, deadlines up to 1 June 2020 are automatically extended to 1 July 2020 provided that the documents filed to compete a deadline action are accompanied by a statement that the delay in filing or payment was due to COVID-19. – – For large entities, after 31 May 2020, relief will be available to those who need it on a case-by-case basis. – – The USPTO will also waive fees for filing a request for revival of a patent application which became abandoned on or before 30 June 2020.

CH I NESE PATENT OFF I CE – – Where a deadline before the Chinese Patent Office is missed, the Applicant is able to request restoration of the application under normal Chinese patent regulations. – – The request for restoration must be filed either within 2 months of removal of the obstacle which caused the delay, or within 2 years of the deadline which was missed, whichever occurs first. – – The fees to request restoration of the application are waived, however normal evidentiary and formalities requirements must be filed with the restoration request. I ND I A – – The entire country of India was in lockdown between 25 March 2020 to 31 May 2020. Some regions have since relaxed the lockdown requirements, however, strict restrictions remain in force in regions which have a large number of COVID-19 cases. – – Initially, all deadlines falling between 15 March to 17 May 2020, were automatically extended to 1 June 2020. – – If an extension of time beyond 1 June 2020 is required, or for a deadline which fell due after 17 May 2020, a request for extension of time can be filed under the normal Indian patent regulations. – – Requests for extension of time need to be filed no later than one month from when the obstacle for meeting the missed deadline is removed. – – There is no waiver of official fees for requesting an extension of time. OTHER COUNTR I ES Patent Offices in other countries are also implementing special provisions to assist Applicants in coping with disruptions due to the COVID-19 pandemic. A short summary of the measures taken by individual offices is provided by WIPO at https://www.wipo.int/covid19-policy-tracker/#/ covid19-policy-tracker/ipo-operations. If you have any specific concerns regarding the possibility or actual missing of deadlines as a result of disruption due to the pandemic, please get in contact with us to asses your particular circumstances and the remedies available with the relevant patent office(s).

As we move through the COVID-19 pandemic and many countries start to show signs of emerging out the other side, how are Patent Offices around the world modifying their approach to dealing with the hardship that patent applicants are experiencing in these difficult times? Many Patent Offices worldwide have implemented temporary extensions of time to meet the requirements of satisfying deadlines. The measures currently in place on a selection of Patent Offices in the jurisdictions of Australia, New Zealand, and several of our major trading partners are reported below. AUSTRAL I AN PATENT OFF I CE – – Extensions of time of up to 3 months are still available to respond to a Patent Office deadline due to COVID-19 related misadventure, including for e.g.:

– – Filing a request for examination; – – Submission of evidence in opposition proceedings; – – Payment of renewal fees – – Applications for extension of term of a patent – – All deadlines in matters before the courts or the Administrative Appeals Tribunal on application to the relevant body. – – A declaration is not necessary when the disruption is identified as being COVID-19-related – – No fees are payable for the extension request. – – Streamlined extensions are available for many (but not all) patents, trade marks and designs deadlines. are affecting your ability to respond by a deadline, you may request IPONZ for an extension of time to meet that deadline. – – Deadlines will be extended by 3 months for COVID-19 related disruptions. – – IPONZ will assess extension of time requests on a case- by-case basis. NEW ZEALAND PATENT OFF I CE (I PONZ) – – If circumstances related to COVID-19 have affected you or

PHIL BURNS Senior Associate

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WHAT IS INNOVATION?

Defining innovation is a difficult, and even controversial, task. At a simple level, innovation could be defined as any commercially relevant change to a product or service. If being “commercial” is not the objective, it can be deleted or replaced with a preferred term. Commercial innovation is important though and government policies are likely to favour such innovation as the Australian, or global, economy moves on from the pandemic. It is worth noting here that the pandemic itself has fuelled innovation as equipment manufacturers have moved to produce scarce personal protective equipment, manufacturing processes have been revised and distillers have moved to produce hand sanitiser. This last suggests that innovation has also a brand dimension as the distiller’s business has moved from,

perhaps, gin production to hand sanitiser. Given the lucrative nature of that business, a trade mark portfolio review may be in order to ensure that brand protection remains relevant. Let’s return to technological innovation. It is always worth considering whether a valuable form of such innovation is protectable. In some cases, the innovation – though very important commercially – is incremental. It may be obvious and not patentable though Australian innovation patents remain relevant for now. An innovation that is new and solves a particular problem, though, should be reviewed – prior to use or any publication – for patent protection and advice sought if the innovation deserves it. A government focus on innovation is welcome, will help innovators who will gain even more by considering the IP aspects and further options to project their enterprise.

RICHARD BADDELEY Principal

About Wrays

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