IP SPOTLIGHT 1 June 2020

GOING BACK TO MAKE AMEND(MENT)S…

OTHER TAKEAWAYS FOR PATENT HOLDERS It has always been beneficial to include several examples in a patent specification to comply with best method and sufficiency requirements. But it may also be prudent to ‘deconstruct’ examples at the outset, during the drafting process, to ensure that particular features inherent in the examples find support in their own right within the specification in the absence of association with companion features. For example, if an example includes a combination of features A+B+C, then the specification should ideally describe features A, B and C in their own right and discuss the technical function which they contribute to the invention. Similarly, it is preferable to ensure that various combinations of features found in the examples (e.g. A+B, A+C, B+C) are clearly and unambiguously disclosed as well as the technical significance of these combinations. Patent specifications also need to be carefully reviewed prior to filing to identify and address statements which have the potential to come back to haunt the patentee when it later wishes to propose amendments. If the lone statement in BASF’s specification could have been expanded upon in the description to unambiguously disclose that the broader group of desaturase homologues also included the ‘preferential conversion’ attribute, BASF’s proposed amendment would have been unlikely to have been considered as an impermissible intermediate generalisation. Unfortunately, the widespread practice of amending consistory clauses to mirror claim amendments or the removal of offending object statements during prosecution will not necessarily remedy potential vulnerabilities in the specification because it is the application as filed which will be used as the comparator when requesting post-acceptance amendments.

During prosecution of BASF’s application, claim 1 was amended to define a group of homologous desaturases having “at least 75% identity to a nucleotide sequence which codes for a polypeptide as shown in SEQ ID NO:14” . Claim 1 consequently encompassed a broader group of desaturases which had been disclosed in the specification as filed. When subsequently requesting its post-acceptance amendments, BASF relied on the second clause of the statement above to introduce two dependant claims which defined that the desaturase homologues (i.e. having at least 75% identity of the desaturase shown in SEQ ID No: 14) “preferentially converts alpha-linoleic acid compared to linoleic acid” . Beach J found that the proposed amendments were an impermissible intermediate generalisation because the specification as filed did not clearly and unambiguously disclose that the desaturase homologues had the same conversion preferences. Notably, the only place in the specification of the application as filed where the ability of the desaturase to preferentially convert alpha linolenic acid was disclosed, was the above statement and this ‘preferential conversion’ feature was disclosed in the context of being an attribute of one specific desaturase, not clearly attributable to the broader group of desaturases. TEST FOR ADDED MAT TER This decision shifts the Australian position closer to the United Kingdom’s approach to ‘added subject matter’. Beach J has provided guidelines as to how to apply s 102(1), noting that the test is a strict one. Firstly, the subject matter must be clearly and unambiguously disclosed in the application as filed. Secondly, although the required disclosure may be express or implied, it must still be clearly and unambiguously disclosed. Subject matter which would have been obvious to the skilled person is not permitted. Thirdly, one cannot extract features disclosed in one context and introduce them into a specification stripped of that context, otherwise the proposed amendment is no more than an impermissible intermediate generalisation. CSIRO’s appeal was successful and BASF’s proposed amendments were disallowed.

A recent decision in the Federal Court, Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2020] FCA 328 (13 March 2020), has highlighted the difficulties encountered when trying to make post-acceptance amendments to correct deficiencies in the claims or specification of a patent in Australia. In particular, care must be taken to ensure that there is contextual support in the specification as filed for the proposed amendment to avoid it being deemed as an ‘impermissible intermediate generalisation’. An ’intermediate generalisation’ may occur when a feature is disclosed in the context of a specific embodiment in the specification and is then introduced into a claim in circumstances which strip it of the context of the embodiment. While the feature may be clearly and unambiguously disclosed in the specification in combination with companion features, the introduction of the feature solus

(i.e. in the absence of the companion features or context of the embodiment) will constitute “added subject matter”.

Under s 102(1), a post-acceptance amendment is not allowable if as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the complete specification as filed and any other prescribed documents, when taken together. BASF’S APPL I CAT ION BASF Plant Science GmbH (‘ BASF ’) requested amendments to the specification and claims of its accepted application during opposition proceedings. CSIRO opposed the amendments but they were initially found to be allowable by IP Australia. CSIRO subsequently appealed the decision to the Federal Court. The decision largely turned on the fact that the specification as filed included a statement which referred to the invention as a combination of the following features: – – A CoA-dependent delta-6-desaturase having the substrate specificity of the delta-6-desaturase shown in SEQ ID No:14 – – The above CoA-dependent delta-6-desaturase which has a preference for conversion of alpha linolenic acid compared to linoleic acid.

OTHER TAKEAWAYS FOR PATENT L I T IGATORS

This is another in a long line of Australian cases where the Achilles heel has been the inability of the patent owner to make post-acceptance amendments to correct defects in the claims and specification. Parties engaged in opposition or litigation would be prudent to complete an analysis of the specification as filed and apply the test provided by Beach J to any proposed claim amendments.

MARY TURONEK Principal

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What IP advice do you give to start-up companies and how does it differ when advising a large multinational? While I recognise differences in scale and available resources, I advise my start up/SME clients to operate, so far as resources allow, like a large corporation or multi-national. That is, focus on business strategy, avoid alluring diversification and act in a sophisticated way with business partners and prospects. I think this can make a big difference because others will see this as a sign of confidence and even quality. The IP strategy is key here, marshalling those scarce resources to key markets and – in the case of patent – technological developments. It is also worth remembering that even large companies are very focused on where the IP budget is spent so it is not a case of covering all potential markets. Stay with key markets and an IP advisor will be able to assist with the sometimes difficult decisions that arise. What did you learn through your role as President of The Institute of Patent and Trade Marks Attorneys of Australia (IPTA)? I learnt a lot actually. In my two years as President, I was blessed with a talented and energetic Council and we focussed – along with busy lobbying effort – on a couple of key areas. We saw and acted on expanding our work on education and professional development for younger members of the profession (also an issue for energy industry young professionals too by the way). Education has always been one of IPTA’s strengths but there are other areas of professional development on which younger professionals look for advice. They want to be involved in the process too so IPTA has worked on this.

We put Richard under the Spotlight to find out what he is looking forward to at Wrays, what form of energy excites him the most, and what he enjoys doing - when he is not doing IP! After spending over 30 years at your previous firm, it’s been a while since you had your first day at work! What are you looking forward to most about joining Wrays? I have long admired the ambition and drive behind Wrays. As a formidable competitor to my previous firm, our team was always looking for ways to step ahead. I would often find that the Wrays team, with its brand strength had already got there. This propelled my efforts to come up with new ideas. Now, I look forward to joining that step-ahead team culture and making things happen with the Wrays team. On the energy side, for example, I see great potential for developing our energy practice working with Mary Turonek who has much experience as I do. I look forward to sharing ideas and learning from my colleagues in the engineering and technology group as well. We’re going to be busy! A client is nearly always competing with others and doing what the competitors are doing does not offer differentiation and a road to better margins. The way to better margins is intellectual property – as that term is used in both a legal and business sense. Immediately, there is a need to develop an IP strategy that differentiates those competitors. That opens the door to being creative whilst being perfectly aligned with business strategy. IP is a platform for that strategy. Being creative could include looking at a particular industry with a new perspective, looking at new geographies for client products and services and using new techniques – such as analytics and AI – to optimise client IP strategy. You have extensive knowledge of the use hydrogen as a clean fuel across a number of industries. What excites you about the potential for this form of energy? I am really excited by hydrogen and I have recently had a short abstract with my perspectives in the APPEA Journal. It offers wonderful possibilities for the energy industry. A particular appeal is the clean nature of ‘blue’ and ‘green’ hydrogen. Hydrogen is a building block for important chemicals based around ammonia for example. It is a powerful fuel that will become competitive within the next ten or so years. What is not to like? How do you develop a creative approach to IP whilst also aligning with a client’s business strategy?

WELCOME TO WRAYS

Wrays is pleased to announce the appointment of Richard Baddeley as a Principal in our Perth Engineering and Technology Group. Richard provides advice on all aspects of intellectual property and has built an impressive track record acting for a range of clients from start-ups to large multinationals. Richard’s background in both chemical and mechanical engineering provides a platform to understanding the technical merits of innovation across a wide range of fields including the energy, mining and automotive sectors.

Chairman Gary Cox announced the appointment saying “Richard is a valuable addition to the Wrays stable of expertise. He is a highly experienced IP specialist who is well- known for providing clients with tailored commercial advice. With his experience as past-President of the Institute of Patent and Trade Mark Attorneys and connections to the energy industry, Richard has a lot to offer Wrays. We look forward to having him as part of our team”. Richard’s appointment follows the recent arrival of Dr Mary Turonek to the Wrays Chemical, Resources and Oil and Gas team. With Mary and Richard now both at Wrays, the firm has arguably one of the best technical chemical and engineering IP groups in the country.

When you are not providing IP advice to your clients how do you keep yourself busy?

That’s an easy question to answer with the recent COVID-19 shutdowns, cooking! I have spent a lot of time trying to perfect a chicken curry. I’m also experimenting with new things, trying to make falafel as I write this actually…Also, I love wine and will endlessly search for the perfect pinot noir. Then, there is nothing like a walk along the waterfront or beach in Fremantle. There’s a new photo to take everyday!

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A GUIDE TO MANAGING INTELLECTUAL PROPERTY

Intellectual Property (IP) should be well managed – in the same way that a company manages all of its other assets. Unfortunately, because of the intangible nature of IP, it often gets overlooked. This brief guide aims to identify some of the issues and practices that will assist a company in being more able to effectively manage IP that already exists, and to identify and capture IP that may be created in the future. WHO MAY CREATE I P? Anyone within an organisation can create IP: engineers, managers, technicians, scientists, graphic artists, marketing personnel, web designers etc. It is also important to appreciate that third parties may create IP, for example, when a company engages another person or organisation to do some work on its behalf. – – Are problems being solved? – – Are reports, checklists, flowsheets or other summary documents being produced? – – Is money being spent on research, testing or trials? – – Are improvements being made to products, processes, business practices etc.? – – Are things being developed or created within the business that others may wish to copy or which is going to make (or save) money? – – Are new product or service names/brands being coined? – – Are new logos and packaging being created? – – Is a new online platform being launched (e.g. website, social media page)? If a company is doing any of this, then IP will be created that may be valuable to the company. WHEN MIGHT I P BE CREATED? Some simple considerations might help…..

WHAT STEPS CAN BE TAKEN TO HELP I DENT I FY AND CAPTURE I P? – – Document brain-storming sessions for new product and service names and logo designs. – – Capture and record inventions using an Invention Disclosure Document and/ or laboratory notebooks. – – Regularly review any records of inventions and take appropriate steps to protect IP, as required. – – Address IP issues at meetings: in particular R&D meetings, project meetings, marketing meetings, at board meetings, and business development and strategy meetings. – – Liaise regularly with external IP professionals. GOOD BUS I NESS PRACT I CES – – Consider an IP policy to assist the company to consistently identify, protect, manage and defend its IP – – Develop a sound records management system. – – Have a filing system for correspondence and documents. – – Keep a separate file for every application for a registered IP right. – – Keep an IP database or register, for example using a simple spreadsheet application. – – Don’t publish information without reviewing whether it is safe to do so – early publication can remove the possibility of patent or other formal protection later. – – Keep records of publications and disclosures. – – Keep a record of all agreements with third parties. – – Identify confidential documents and mark them ‘CONFIDENTIAL’ and keep them secure. – – Ensure that ownership and use of IP is addressed in all agreements with third parties. – – Make sure that contracts of employment address ownership of IP and the correct treatment of confidential and proprietary information. – – Use appropriate markings: – – Copyright © plus the year for copyright materials. – – ® or ™ to identify registered and unregistered trade marks respectively. – – Regularly review the IP portfolio: is it appropriate for the current and future needs of the business?

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KNOW THE ‘ I P LANDSCAPE’ This is about understanding what is happening in the business environment relevant to the business. It helps identify what customers and competitors are doing. It enables a company to better determine what IP is being created by them, thus reducing the risks of infringement, as well as identifying opportunities for licensing brands and technologies (both ‘in’ and ‘out’). It also assists in identifying any potential third-party infringements of the IP. Knowledge of the ‘IP landscape’ can be achieved by maintaining a general awareness, for example, by reading trade and scientific publications, attending conferences, or talking to colleagues. More formal searching techniques can also be used, for example, through the use of free databases available using the Internet. PROMOT I NG AN ‘ I P CULTURE’ I N THE WORKPLACE – – Having a healthy IP culture in the workplace can greatly assist with IP management issues. – – Provide education and awareness training for employees. – – Nominate an ‘IP Champion’ – someone who is a primary contact for IP matters. – – Encourage and reward employees for their innovations.

WHAT ARE THE R I SKS OF POOR I P MANAGEMENT? – – Money can be wasted because third party rights restrict the utilisation of work that has been done. – – Opportunities may be lost because a company is unable to stop competitors or generate an income from royalties. – – IP that has been created is taken and used by ex- employees or contractors. – – A company could be on the receiving end of an infringement lawsuit. ACT ION I TEMS – TRADE MARKS CONS I DERAT IONS – – What marks do I have/will I have? – – Where am I using them now and where will I use them in the future? – – How am I using them? – – Are they registrable where I use them/will use them? – – What is my trade mark budget?

ALBERT FERRALORO Principal

ADRIAN HUBER Special Counsel

About Wrays

Wrays is one of the largest independent IP specialist firms in Australia – bringing together the right combination of experts to protect, grow and defend our client’s intellectual property assets locally and globally for 100 years.

And when you combine our passion for achieving the best result with our broad capability across the IP spectrum, it’s our clients who enjoy the benefits. In day-to-day reality, this means bringing the right people in the room every time and working together across disciplines to deliver what’s needed.

It doesn’t stop there. Through our extensive local and global networks, we can connect clients with like-minded experts who deliver supporting services, such as private equity, tax advisors, corporate and employment law, as well as IP specialists around the world servicing other jurisdictions. wrays.com.au

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