August 2014

1. Patents

Australia

Not all Problems are Known to those Skilled in the Art
In AstraZeneca AB v Apotex Pty Ltd the Federal Court of Australia Full Court (FCAFC) considered whether the problem that is alleged to be solved in a patent document can be assumed to be part of the common general knowledge.

AstraZeneca’s cation patent relates to pharmaceutical compositions that include rosuvastatin as the active pharmaceutical ingredient. In an earlier decision the Trial Judge held that the statement of the problem to be solved can be taken as part of the common general knowledge.

However, on appeal, the FCAFC held that the Act does not expressly or impliedly contemplate that the description of the invention, including any problem that the invention is explicitly or implicitly directed at solving, can necessarily be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. While the problem addressed by a patent specification can be (and usually is) common general knowledge to the hypothetical person skilled in the art or could be reasonably expected to have been ascertained, understood and regarded as relevant by such a person, this cannot be assumed. The patentee’s starting point can itself be inventive, and it is not always apparent to others in the field that there is a problem that needs to be overcome. Also, the patentee’s starting point may involve information that the Patents Act deems not to be available to the hypothetical person skilled in the art, such as information that was disclosed through use outside the patent area. Further, it is also noted that there is no obligation to describe the starting point in the specification. It is the invention itself that must be fully described, not the route that was travelled by the inventor to arrive at it. Whether a patent is valid should not depend on the starting point used by the patentee.

Nonetheless, while the FCAFC overturned the Trial Judge’s finding on obviousness, the patent was still held to be invalid on account of not being entitled the initial priority date following amendment. The amendments excluded from the claims certain inorganic salts. While the amendments would normally qualify as narrowing in nature, the fact that the original patent positively recommended the use of those inorganic salts meant that the original patent did not disclose the amended patent.

Europe

Second Medical Use Claims and Double Patenting
Following the Enlarged Board of Appeal’s decision G2/08 in February 2010 from 29th January 2011 the EPO no longer allows Swiss-form claims for newly-filed applications. Subsequent second medical use type applications can only contain EPC 2000 second medical use claims of the form:

[Known substance or composition] for use in [new therapeutic use].

This “product for use” form of claim is simpler than the Swiss-form claim, which is a process claim having the form:

Use of [known substance or composition] in the preparation of a medicament for use in [new therapeutic use].

At the time the EPO said that the new claim format would be considered to have the same claim scope as the previous format and may even be wider.

In decision T1780/12 the EPO Board of Appeal considered whether a divisional application in the new form is invalid for double patenting if it is based on a parent application in the old form, following examiners objections to that effect. The appeal was allowed on the basis that the subject matter of the claims was different. While a Swiss-form claim is a purpose-limited process claim; a second medical use claim is a purpose-limited product claim. Since a process claim and a product claim were in different categories they could not have identical scope. The Board further commented that in general a purpose-limited process claim confers less protection than a purpose-limited product claim, and so the scope of protection of the claims would be different. Further, the Swiss-form claims of EP1 included the additional element of requiring “manufacture of a medicament”, which the second medical use claims of EP2 did not.

New Zealand

Structural Change for NZ Patent Divisional Applications
The recently published Patents Regulations 2014 will effect a structural change in the time limit for filing a divisional application. Currently, under the Patents Regulations 1954, a divisional application can be filed at any time while an application is pending and before it has been accepted for grant. Moreover, the time limit in which such a divisional can be filed is determined by the status of the immediate application it is divided from, which need not be the initial parent application.

However, under regulation 71(a) of the Patent Regulations 2014 the time limit for filing a request for examination of a divisional application is the earlier of 5-years from when its complete specification is filed or is treated as having been filed. In effect, this restricts the filing of divisional applications to 5-years from the filing date of the original parent complete specification.

PCT

PCT International Filing Options via IP Australia
WIPO intends to decommission PCT-EASY as of 1 July 2015. As the majority of IP Australia’s customers use ePCT, IP Australia will remove PCT-EASY as a means for filing PCT applications from 1 November 2014. Following the removal of PCT-EASY, the following options will remain available for filing PCT applications with IP Australia:

• ePCT - WIPO's newest fully electronic offering and IP Australia’s preferred method of filing - receives WIPO fee discount
• PCT-SAFE - fully electronic, receives WIPO fee discount
• eServices - no WIPO fee discount
• Paper (posted to IP Australia) - no WIPO fee discount

IP Australia’s website has further information on the PCT application process, including a specific page on filing with ePCT.

United Kingdom

UKIPO Considers Application Publication Options
As with many other countries (soon to be joined by New Zealand), the United Kingdom currently publishes patent applications at the earlier of 18-months from the priority or filing date. Earlier publication by the UKIPO can also be requested provided the search has been performed.

The UKIPO has now initiated a consultation to consider other options for publication. It gives the following as possible options for change, with more than one being able to be proceeded with.

• Allowing publication without having a search. This would be useful where an applicant wants publication even though the application is unlikely to proceed to grant. This would save the UKIPO from having to undertake a search.
• Allowing applicants the option of requesting a certificate of disclosure. Although certified copies of applications are already available, some applicants appear to want the recognition of a certificate of disclosure prior to (hopefully) receiving the deed of grant.
• Allowing applicant’s to request earlier publication irrespective of whether a search has been performed.

2. Trade Marks

United States of America

Dot Pattern Held Not Functional in Trade Dress Dispute
In McAirlaids Inc v Kimberly-Clark Corp the Court of Appeals for the Fourth Circuit had to consider whether a product produced by a patented process could also attract trade-dress protection.

McAirlaids products include absorbent pads, which are made of a textile-like material that is formed using a pressure-fusion process. McAirlaids have patented both the pressure-fusion process of forming the material as well as the resulting product. Under the process cellulose fibers are shredded and arranged into loosely formed sheets, and then fused together at specific areas resulting in the surface being embossed with dots, which form the pads without binders. To both be absorbent and maintain resilience the size and spacing of the dots within the pattern must fall within certain parameters.

McAirlaids also obtained a trade mark registration for the pattern of dots embossed on the absorbent pads, and sued Kimberly-Clark on account of its use of a similar dot pattern on bed mats manufactured by a different process. Kimberly-Clark alleged that the trade mark was invalid on account of the pattern of dots embossed on the absorbent pads being functional, and obtained a District Court summary judgment in its favour.

However, the Court of Appeals for the Fourth Circuit vacated and remanded the District Court’s summary judgment. While acknowledging that the pressure formed dots of the design were functional, the Appeals Court considered there was sufficient evidence to create doubt as to whether the embossed pattern as a whole was functional. The patents did not recite or claim any particular embossing pattern. Hence, while the dots of the design perform the function of holding the material together, the pattern of the dots is not inherently functional.

On account of a differing fact situation, the Appeal Court Judges distinguished this case from the Supreme Court decision in TrafFix Devices Inc v Marketing Displays Inc. In that case the Supreme Court held that the proper inquiry in determining whether a trade dress is legally functional is whether “it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” If a trade dress meets that standard, it is not protectable even assuming the existence of secondary meaning.