The-Gatherer-Volume-7

‘ The good news is, based on what we currently know, that even once the innovation patent has been abolished, it will remain an option for those who, at the time of the abolition, were otherwise in a position to file an innovation patent .’

Watching Searches As noted in my previous article on this topic, Wrays conducts regular watching searches in certain technology areas, or for specific patent applicants, as we know that developments in specific areas will be of interest to many of our clients. A quick review of the publically available records for Australian Patent Application 2010249159 shows that the opposition to grant, and the opposition to amendment, were withdrawn. This often occurs when the parties get together and reach an ‘arrangement’. Such an arrangement may include a license, that may be confidential and royalty free if the patent is at all tenuous, but which allows the patent applicant to obtain their patent. Re-Examination Unfortunately for Rio and the University, the Patent Office has decided that some of the prior patent references relied upon by the opponent are sufficiently relevant for them to conduct a ‘re-examination’ of the patent application. It is the nature of patent oppositions that a third party trying to prevent the grant of a patent application will research the area in an attempt to find prior patent and other publications, or evidence of prior uses, that are relevant to what is alleged to be the invention. So, even if an opposition is withdrawn as in the present case, the Patent Office can choose to re-examine the application in an effort to ensure that an invalid patent is not granted. The re-examination remains ongoing so it remains to be seen what impact it will have. It may be that Rio and the University can mount an appropriate argument, or proposed sufficient amendment, to overcome the issues raised. Innovation Patent Another twist to this tale perhaps encapsulates all that is good, and all that is bad, about Australia’s innovation patent system. Amongst all the activity described above, Rio and the University filed an innovation patent application as a divisional of Australian Patent Application 2010249159, indirectly (there was in fact a further intervening divisional application).

What does all this mean? It means that despite the opposition from a third party, and despite re-examination by the Patent Office, Rio and the University of Sydney have a certified innovation patent in force that provides them with the exclusive right to exploit a method for drilling ground holes using a mobile drill rig that permits ‘the speed of drilling holes to be balanced against the stability of the hole thus formed’, with several additional limitations relating to features touched on above. Take Aways? What are the lessons to be learnt? Firstly, you must consider what may have been patented in a field before adopting a course of action in developing a mine, adopting a processing technology or running a mine site. There are serious due diligence considerations inherent in this decision making and equally serious obligations on those running the business should this not be done. Second, never dismiss a good idea as ‘not patentable’ or ‘not worth protecting’. As you can see from this example, it doesn’t need to be rocket science and nor does it need to be quantum leap from what’s gone before.

This is not uncommon as it can perform both a defensive measure – providing a backstop level of protection, albeit that only 5 claims are allowed and the maximum term is 8 years – and also a proactive measure, in that the lower threshold of invention, the innovative step, provides a robust weapon when asserting your intellectual property against another party. The Australian innovation patent is unlikely to be an option in years to come. The Australian government appears determined to abolish this form of protection some time in 2019, despite the protestations of the Institute of Patent and Trade Mark Attorneys of Australia and many others, including the writer. This outcome is the result of a review of Australia’s IP protection regimes by the Government’s Productivity Council. It seems that the innovation patent regime hasn’t achieved the goals it was set when originally implemented, which was at least in part to provide a quick and relatively easy option for obtaining patent protection that would be taken up by small and medium enterprises. To my mind this remains to be settled. Life After Death? The good news is, based on what we currently know, that even once the innovation patent has been abolished, it will remain an option for those who, at the time of the abolition, were otherwise in a position to file an innovation patent. For example, if you have a pending standard patent application at the time of the introduction of the amending legislation, you will retain the right to file an innovation patent divisional from the standard patent application as long as it remains pending.

PETER CAPORN Principal

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