June 2021
1. General
Feedback Sought on Issues with Using IP Australia’s New Online Services Platform
With the impending decommissioning of IP Australia’s eServices Platform feedback is being sought on any issues users of IP Australia’s New Online Services Platform have had.
In 2018 IP Australia began developing a more customer-centric platform through the use of API technology, which improves the immediacy, reliability and connectedness to their external-facing services compared to the eServices Platform. External input was sought during the development stage through webinars with stakeholders who joined the Transactional Digital Services Reference Group.
In September 2020 the new Online Services Platform was made available to all customers for trialling and trade mark renewal purposes and progressively included more services while the eServices Platform remained available throughout as an alternative.
In March 2021 IP Australia announced that the new Online Services Platform will completely replace the eServices Platform from 1st July 2021, with the eServices Platform no longer being available for use. It was also announced that the filing of international patents would not be supported on the Online Services Platform and would need to be done via WIPO’s ePCT system, although payments for PCT filings can be made via the Online Services Platform.
Following concerns raised by patent and trade mark attorneys with aspects of the new platform representative attorney organisations IPTA and FICPI are increasing pressure on IP Australia to address the raised concerns and are encouraging more feedback on the new platform. Particularly of interest are any inefficiencies or inconveniences introduced by the new platform and any critical deficiencies such as could result in increased liability risks for attorneys. Examples of concerns that have been raised are:
- The lack of provision for an attorney reference number;
- Listing all tasks rather than tasks relevant to a specific IP right such as patents, designs or trade marks;
- No longer providing an assignment form in a format that allows data entry;
- Providing payment receipts that do not mention the IP right that the payment has been made in respect of;
- Given the near instantaneous publication of trade marks the section 64 pre-publication amendment provisions are effectively redundant.
A recent outcome of these organisations having a video conference meeting with IP Australia on 8th June 2021 was IP Australia agreeing to allow for an attorney reference number and to delay the decommissioning of the eServices Platform until 1st August 2021. IP Australia are also expecting to resolve some other issues in the next couple of weeks. Feedback can either be made using IP Australia’s anonymous feedback tool and/or via the above attorney organisations.
2. Patents
Full Court Finds Dis-Harmony in Trial Judge’s Judgment
In Ariosa Diagnostics Inc v Sequenom Inc 2021 FCAFC 101 the Full Court of the Federal Court (FCAFC) rejected Ariosa’s appeal against the trial Judge’s finding that Sequenom’s non-invasive prenatal diagnosis patent is valid, but held that the trial Judge erred in finding some of the patent claims infringed
The claimed invention related to non-invasive prenatal diagnosis methods by detecting foetal nucleic acids in serum or plasma from a maternal blood sample based on the surprising and unexpected finding that foetal DNA is detectable in maternal serum or plasma samples. Prior to the discovery it was known that whole fetal cells circulate in the blood of a pregnant woman and laborious techniques had been developed to distinguish those from maternal cells. However, it was discovered that cell-free fetal DNA (cffDNA) could be detected in the plasma and serum within the blood of pregnant women, and Sequenom used that discovery to claim various non-invasive prenatal diagnosis methods.
Sequenom claimed that Ariosa infringed 12 claims of its patent by conducting a non-invasive prenatal diagnostic test known as the Harmony Test and that by licensing other parties to use the Harmony Test Ariosa is a joint tortfeasor in infringement by those other parties. Ariosa cross-claimed that the patent is invalid for the following reasons: (a) the relevant claims are not for a manner of manufacture; (b) the claimed invention lacks an inventive step; (c) the relevant claims are not useful; (d) the relevant claims are not fairly based; (e) there is a lack of sufficiency; and (f) the claimed invention was obtained by false suggestion or misrepresentation. The trial Judge found all but one of the asserted claims to be valid and infringed by the use of the Harmony Test.
On appeal before the FCAFC Ariosa claimed that the remaining 11 asserted claims are invalid due to not being a manner of manufacture; not being fairly based; and lack sufficiency, and also claim that aspects of the Trial Judge’s infringement determinations are wrong.
Regarding manner of manufacture the trial Judge found that the subject matter of the patent avoided making claims to cffDNA as a product or to its presence as such claim types had been held impermissible by the High Court in D'Arcy v Myriad Genetics Inc 2015 HCA 35 (see summary here). In contrast, the trial Judge found the method claims made practical use of the discovery in methods that involve human mediated discrimination between cell-free maternal and fetal DNA in an artificially prepared plasma or serum sample extracted from a pregnant female. Given that cffDNA in the maternal blood has not and cannot be detected without human action the invention claimed adds to human knowledge and involve artificially created state of affairs and has economic significance on account of the considerable advantage the method provides over pre-existing foetal DNA detection methods. As such they were held to be a manner of manufacture within the scope of the principles given in National Resource Development Corporation v Commissioner of Patents [1959] HCA 67. The trial Judge went on to hold that the patent would not have a chilling effect as its boundaries are clear and commensurate with the invention described and couldn’t be innocently infringed, and further that the finding on manner of manufacture is consistent with or distinguishable from that in other jurisdictions.
On appeal Ariosa submitted that the trial Judge neglected to ask whether that end result involved an artificial effect, which Ariosa answered in the negative after characterising the invention as simply information about the DNA of the foetus. They further submitted that apart from involving the discovery that cffDNA is detectable in maternal serum or plasma the claims only involve the use of known methods and so simply claim the identification or discernment of the naturally occurring phenomenon.
The FCAFC found Ariosa’s approach tends to obscure the correct identification of the invention, as the invention does not lie in the mere observation that cffDNA is to be found in maternal plasma (or serum) and held that the trial Judge was correct in holding that the end result of the method is not just the “information” encoded by the naturally occurring cffDNA itself. Rather, correctly understood, the invention lies in the explanation of how to extract the cffDNA from the plasma or serum. It is the idea coupled with a practical means of application that makes the invention, and it is impermissible to disaggregate the integers of the method to point only to the cffDNA as the invention.
The FCAFC rejected Ariosa’s insufficiency arguments in which it had sought to segregate the invention into three separate methods - the qualitative method the correlative quantitative method and the comparative quantitative method – and then argue that the latter two had not been enabled by the description. The FCAFC found that approach unjustified on the basis that there is only one invention described and the patentee only has to provide one means of utilizing the invention provided the person skilled in the art can produce something within each claim without new inventions or additions or prolonged study of matters presenting additional difficulty. The FCAFC considered Ariosa’s segregation of the invention to artificially narrow its scope, agreeing instead with the trial Judge that the description discloses a method of detection that can be used in several ways.
Ariosa also challenged the trial Judge’s finding of infringement during the period when third parties would send blood samples from Australia to Ariosa in the United States, who would then conduct the Harmony Test and report back the results via a file sharing platform. The primary Judge noted that the term “product” in the definition of “exploit” is not defined in the Act and construed the term to cover anything resulting from the patented method that can be commercially exploited. Consequently, the trial Judge found that the Harmony Test results constitute a “product” resulting from the use of the method of the patent and so held Ariosa infringed by importing, supplying, offering to supply or otherwise disposing of the Harmony Test results in Australia. Ariosa contended that the trial Judge erred in that conclusion and also contended that the Harmony Test results should not qualify as a “product” as they are merely information.
The FCAFC agreed with Ariosa, finding that the trial Judge’s construction of “product” in the context of the definition of “exploit” for a process claim was too broad as it does not recognise that not all methods or processes will lead to a product resulting from their use. The trial Judge’s finding that the Harmony Test results were a product was also considered to lead to undesirable results by allowing oral communication of the result to potentially constitute infringement and would be counter to the patent law principal that a claim to mere information is not patentable.
Still No Clear Picture - Federal Circuit Split on Patent Eligibility
In Yu v Apple Inc 20-1760 the majority decision of divided Court of Appeals for the Federal Circuit (CAFC) decisions has arguably further extended the scope of patent ineligible subject-matter under the Supreme Court’s two-step Mayo/Alice inquiry.
Yu’s US patent 6,611,289 involves claims to improvements to digital cameras by using multiple image sensors, multiple lenses and digital processing to produce enhanced images containing detail that would be lost or compromised if multiple sensors and lenses were not used.
Only claims 1, 2 and 4 were in issue and both parties agree that claim 1 is representative for eligibility purposes.
1. An improved digital camera comprising:
a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;
two lenses, each being mounted in front of one of said two image sensors;
said first image sensor producing a first image and said second image sensor producing a second image;
an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;
an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and
a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.
The District Court granted Apple’s motion to dismiss Yu’s infringement action after it held that the asserted claims were directed to the abstract idea of taking two pictures and using those pictures to enhance each other in some way. The District Court noted that there is a long history of using multiple photographs to create enhanced photographic images and further found that the claims involve elements that are well-known, routine and conventional.
On appeal the CAFC majority held that the District Court was correct in finding under step 1 of the Alice/Mayo eligibility test that the claims are directed to the abstract idea of taking two pictures and using those pictures to enhance each other in some way. The majority found that claim 1 is directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery rather than a specific means or method that improves the relevant technology. The CAFC rejected Yu’s contention that the claims are directed to patent eligible applications of the abstract idea, finding that the enhanced images were obtained by using known components performing their known functions, with these recited at too high a degree of generality in the claims. While the specification shows that the enhanced images can be obtained by specific configurations of sensors and lenses, the asserted claims mention less sensors and lenses and only captured an abstract idea that was too far removed from the specification’s disclosure of the novel features.
The majority also rejected Yu’s contention that the patent affirmatively satisfied the step 2 determination of whether the claim nonetheless includes an inventive concept sufficient to transform the nature of the claim into a patent-eligible application. Whereas Yu argued that claim 1 was found to be novel, the majority noted that a novel claim can still be only an abstract idea. Further, while the claim mentions hardware configurations that are vital to the invention, the mentioned configurations were considered insufficient to elevate the claim beyond an abstract idea as the claimed hardware configuration itself (in contrast to those detailed in the specification) is not and does not produce the asserted enhancement of one image by another. By not having recourse to the inventive concept disclosed in the specification, the asserted claims were held to lack an inventive concept sufficient to transform them from being mere abstract ideas.
In her dissenting decision Judge Newman responds to the majority’s decision by emphasising that the claimed invention is a mechanical and electronic device of defined structure and mechanism and as such is not an abstract idea and is not converted into one by a statement of purpose or advantage. Judge Newman reproached the majority for finding the claimed invention to be an abstract idea on account of failing to separate eligibility under §101 from novelty under §102 when it noted that the claimed invention only uses known components performing their known functions. The separation of eligibility under §101 from novelty under §102 was deemed necessary by the Supreme Court in Diamond v Diehr, 450 U.S. 175 (1981), where at 189-90 it stated:
It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and § 102 covers in detail the conditions relating to novelty. The question therefore of whether a particular invention is novel is “wholly apart from whether the invention falls into a cate-gory of statutory subject matter.”
Judge Newman considered the majority were fundamentally wrong in considering that the patentability of a new device involved the abstract idea ground of ineligibility under § 101. Judge Newman considered that when the Supreme Court proposed the two-step patent eligibility test in Alice Corp. Pt. Ltd v CLS Bank International, 573 U.S. 208 (2014) one of its purposes was to distinguish between abstract ideas and specific embodiments. In finding Yu’s specific embodiment to be an abstract idea Judge Newman considers that the majority have gone beyond the Supreme Court’s guidance and so have effectively expanded the scope of the abstract idea ground of ineligibility under § 101. She considered such an expansion will affect all fields of patenting activity rather than the biological and computer-implemented technology fields that are the main focus of the § 101 ineligibility grounds and is contrary to statute, precedent and public interest.
3. Trade Marks
Forward to the Past – EU Consults on GI Protection for Non-Agricultural Products
The European Commission has opened a public consultation on whether to create EU-wide harmonised protection for indications of geographical origin in relation to non-agricultural products.
Currently the EU has harmonised geographical indication (GI) protection for agricultural products, but protection for indications of geographical origin for non-agricultural products is only available at state level in about half of the EU states.
At a general level a geographical indication is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. While there are numerous non-EU countries that allow GIs to be registered for agricultural products in general, most countries, including Australia and New Zealand, limit the registration of GIs only to wines and spirits, being the minimum requirement under Article 23 of the TRIPs Agreement. This has been a point of contention when those countries enter into Free Trade Agreement negotiations with the EU. For non-agricultural products most countries have provided protection against false indication of source in line with Article 10 of the Paris Convention and more recently Article 22 of the TRIPs Agreement.
In November 2019 the EU deposited its instrument of accession to the Geneva Act (2015) of the Lisbon Agreement. Being the fifth such eligible depositing country / region, the EU’s deposit allowed the Geneva Act to enter into force in February 2020. From 30th June 2021 the Lisbon Agreement will have 8 member states for the Geneva Act and 27 member states for the Stockholm Act.
The Geneva Act is promoted as being more flexible than the Stockholm Act. The Stockholm Act applies only to appellations of origin, which are a particularly strong form of geographical indication as they require that the raw materials be sourced in the place of origin and that the processing of the product also take place there. The Geneva Act allows for both appellations of origin and geographical indications, with the latter only requiring that the given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. Both Acts allow protection to be obtained in all member states from a single application.
Whether under the Stockholm Act or the Geneva Act, the Lisbon Agreement allows the qualities or characteristics of a product to be due to human factors, but only for appellations of origin, meaning that the qualities or characteristics of a product need to be exclusively or essentially due to those human factors. However, EU-based producers of non-agricultural products cannot use the Lisbon Agreement to protect indications of geographical origin that are relevantly linked with those products unless they are in states that are members of the Lisbon Agreement and allow protection for indications of geographical origin for non-agricultural products.
Some EU and non-EU countries already allow for the registration of indications of geographical origin for non-agricultural products on the basis that the products have specific qualities due to human factors found in the product’s place of origin. For instance, specific manufacturing skills and traditions as in the case of Swiss watches or handicrafts made using local natural resources. However, currently they cannot register those indications of geographical origin for non-agricultural products within the EU geographical indications system. They can certify the origin of their non-agricultural products using a collective trade mark, as such marks are exempted from the absolute ground that prohibits signs consisting exclusively of a geographical name from being a trade mark. However, using a collective trade mark does not enable producers of industrial and handicraft products to certify the link between quality and geographical origin according to pre-determined EU-level standards, such as occurs with EU Regulation 2012-1151 on Quality Schemes for Agricultural Products and Foodstuffs.
Several grounds of objection to the extension of protection for indications of geographical origin to non-agricultural products have been asserted. Incentivising traditional production patterns is alleged to reduce innovation and competition and limit the benefits available from global supply chains. It is also argued that it is more difficult to justify the connection between quality and origin for non-agricultural products as it depends more upon human know-how than natural factors. Where that know-how is public the rationale of allowing consumers to distinguish between authentic and non-authentic products would be harder to justify.
The consultation is directed mainly towards people, businesses and institutions within the EU. However, arguably it is also relevant to countries like Australia and New Zealand who are currently negotiating Free Trade Agreements with the EU. If the EU does extend protection for indications of geographical origin to non-agricultural products, then there might be pressure for countries to recognise and allow for those rights if they want to have a Free Trade Agreement with the EU. While both Australia and New Zealand have legislation giving protection to geographical indications for wines and spirits, neither is a contracting party to any version of the Lisbon Agreement. Rather, both countries legislation is more geared to being compliant with the relevant Paris Convention, TRIPs Agreement and CPTPP provisions as well as particular bilateral agreements.