October 2018

1. General

General

Further Expansion of Offices Using WIPO's Digital Access Service
As noted in the May 2016 Bulletin IPONZ joined the WIPO administered Digital Access Service (DAS) in that month both as a depositing office and as a retrieving office in relation to patent applications. IP Australia has been a member office in the same capacity since December 2009.

The DAS is an opt-in service that makes complying with Paris Convention documentary requirements for claiming convention priority easier. If a priority document is uploaded into the DAS it can then be made available to participating retrieving offices of the DAS by supplying them with the code that is generated in response to the deposit.

Subsequent to IPONZ joining the DAS 8 further offices have joined, including Brazil, Chile, Europe and India. There are now 19 participating offices which use the service in relation to patent applications and the International Bureau which uses the service as a retrieving office in relation to PCT International applications.

The service is intended to be similarly used for complying with Paris Convention documentary requirements for claiming convention priority in relation to trade marks, designs and utility models. Recently several offices have allowed use of the service in relation to industrial designs and where applicable utility models, but both IP Australia and IPONZ currently only allow the service to be used in relation to patents.

2. Patents

Australia

IP Australia Response to Submissions on Part 2 Exposure Draft Released
IP Australia has now released its response to submissions received in respect of the exposure draft of the Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) Bill 2018.

The main focus in the Exposure Draft of the Bill and the associated submissions was:

• Amending inventive step requirements for Australian patents
• Introducing an objects clause into the Patents Act 1990
• Phasing out of the innovation patent system

While still being committed to the Government’s aim of aligning Australia’s inventive step requirements with Europe, IP Australia agrees with submissions to the effect that the proposed changes will not achieve the intended outcome of sufficiently raising the threshold for inventive step. Similarly it considers that further consideration and consultation on the associated changes to the definition of prior art base are also warranted.

IP Australia found no good reason to remove or amend the proposed introduction of an object clause, instead finding that the current text of the objects clause strikes an appropriate balance between the Productivity Commission’s recommendations and the feedback from stakeholders. IP Australia considered that the term technological innovation would not be construed narrowly and would not interfere with the manner of manufacture test for patentable subject matter. While its introduction might create some short term litigation uncertainty, the longer term benefits of the clause will override those.

IP Australia proposes to proceed with the abolition of the innovation patent and sees no merit in having a transitional phase out period.

IP Australia also considered that the proposed changes to Crown use and compulsory licensing provisions should in principle be implemented, although the compulsory licensing provisions would require further technical changes to effect that.

Europe

EPO Guidelines for Examination Updated
In the recently released updated version of the EPO’s Guidelines for Examination the practice and guidance on when replacement or removal of features from a claim results in unallowable added subject matter has been updated.

The updated guidelines begin with the addition of what is referred to as the “gold standard” test, having been developed and approved of by the EPO Enlarged Board of Appeal in decisions G 3/89, G 11/91 and G 2/10. Namely: an amendment is allowable only if the replacement or removal of a feature lies within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing (or the date of priority), from the whole of the application documents.

The guidelines then give the following three independent and non-exhaustive tests, the satisfaction of any of which results in a finding of unallowable added subject matter:

(i) the replaced or removed feature was not explained as essential in the originally filed disclosure;
(ii) the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and
(iii) the skilled person would directly and unambiguously recognise that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention).

The main amendment to these three non-exhaustive tests is that test (i) is no longer determined by what a skilled person would directly and unambiguously recognise. As such it is more objective and has a wider scope. Even if the replacement or removal of features from a claim is not captured by these three tests, it still needs to satisfy the “gold standard” in order to be found allowable on account of not containing subject matter extending beyond that given in the application as filed.

Another notable change concerns opposition proceedings in respect of inventive step. The first step in the assessment of obviousness under the EPO’s problem-solution approach is to identify the closest prior art document. It is possible for several prior art documents to be considered as being equally closest to the alleged invention in the sense that they each provide starting points for workable solutions that lead to the invention. Where this is the case the assessment of inventive step would need to use each of those documents as a different starting point.

The updated guidelines have made it harder for opponents to assert that there are several prior art documents that are equally closest by requiring this to be convincingly shown to be the case. The guidelines further elucidate the reason for this change by stating that the structure of such proceedings is not that of a forum where the opponent can freely develop as many inventive step attacks as they wish in the hope that one of them has the chance of succeeding.

United States of America

PTAB Changes its Claim Construction Standard
Effective from 13th November 2018 the Patent Trial and Appeal Board (PTAB) will apply the Phillips standard of claim construction in new cases it hears from that date, but will continue to apply the Broadest Reasonable Interpretation (BRI) standard for cases heard prior to that date.

In October 2018 the PTAB announced a final rule changing the claim construction standard it will use for interpreting claims. The change will apply to all the different types of PTAB proceedings, namely: inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) patent proceedings.

The change will bring the PTAB in line with the claim construction standard used by the District Courts, International Trade Commission (ITC) and the Court of Appeals for the Federal Circuit (CAFC) - all of which use the Phillips standard of claim construction. The precedential 2005 CAFC case Phillips v AWH Corporation held that claims are primarily to be interpreted on the basis of the intrinsic evidence – being the claims, specification and prosecution history. Extrinsic evidence such as dictionaries can be useful, but must be considered in the context of the intrinsic evidence.

Up until this change is made the PTAB has been using the BRI standard, which is used by the USPTO during examination so as to reduce the possibility that the claims will be interpreted more broadly after issuance. Under the BRI standard it is possible that extrinsic evidence might be interpreted outside the scope given in the intrinsic evidence if it provides a broader yet still reasonable interpretation.

A further aspect of the final rule is that the PTAB will be required to take into consideration any prior claim construction determination that has been made in a civil action or a proceeding before the ITC when construing a claim term in an IPR, PGR, or CBM proceeding.

While the claim construction standard will align with the higher Courts, the PTAB will is still mandated to employ the less strict preponderance of the evidence standard in determining the patentability of a challenged claim, whereas the ITC and CAFC apply the higher clear and convincing standard in determining the patentability.

Amending Application’s Priority Claim Affects Subsequent Continuing Applications
In Natural Alternatives International Inc v Iancu the Court of Appeal for the Federal Circuit (CAFC) upheld a lack of priority finding in respect of later continuing applications after Natural Alternatives subsequently deleted a priority claim in an earlier application in the chain of continuing applications.

Between 1997 and 2011 Natural Alternatives filed a chain of eight patent applications, where each of the continuing applications claimed priority back to the first of those applications filed on 12th August 1997. In April 2003 during the pendency of the 4th application Natural Alternatives filed a provisional application. The 5th application was filed as a continuation in part, claiming priority through the 4th to the 1st application as well as to the April 2003 provisional application. On 29th August 2008 the 6th application was filed claiming priority back through the priorities relied upon by the 5th application. The 7th and 8th applications also claimed priority back to the first application as well as to the April 2003 application.

However, on 2nd September 2008, 4-days after filing the 6th application, the still pending 5th application was amended so as to only claim priority to the April 2003 provisional application, thereby potentially extending its patent term upon grant. In subsequent litigation involving the patent issued in respect of the 8th application the defendant requested re-examination of that patent on the basis that its chain of priority back to the first application had been broken when the claim to priority through the 4th to the 1st application for the 5th application was deliberately and expressly terminated. Both the examiner and the Patent Trial and Appeal Board (PTAB) held that the patent issued in respect of the 8th patent application had lost the chain of priority back to the first application when the priority claim for the 5th application was amended. Consequently that patent was held to be invalid on account of prior art, which included the disclosure of the subject matter in the patent issued in respect of the first application.

The CAFC similarly upheld the earlier decisions. In addition to the above points made by the examiner and PTAB, the CAFC emphasised that patent claims are not entitled to an earlier priority date merely because the patentee claims priority, rather for a patent’s claims to be entitled to an earlier priority date the patentee must demonstrate that the claims meet the statutory requirements. Third parties should not be put to the undue burden of determining whether priority was established at some point during pendency. Further, it was noted that the standard patent term is 20-years from the earliest filing date meaning that new matter introduced in a continuation in part application will have a reduced term unless the benefit of the earlier filing date is disclaimed. As such, it was also held that it would be incongruous if a patentee could obtain a longer patent term for an earlier application whereas a subsequent continuation application has a shorter patent term upon grant.