Early Christmas present - duty to disclose search results abolished in Australia

Applicants for patents in Australia no longer need to disclose the results of foreign patent office searches to IP Australia for new or pending applications.

The only results you are still obliged to provide are those relating to applications advertised as accepted before 22 July 2007 where the search results were due before 22 October 2007. These search results can be late filed.

The law change follows consultation between IP Australia and the public. Users of the patent system found the existing search result disclosure provisions to be onerous and costly. Few perceived that providing this material would improve the examination process as most foreign patent office searches are available on the Internet anyway.

IP Australia considered that relieving applicants of the search result obligations would ease the burden on users of the patent system without adversely affecting the examination process.

It is refreshing to see a patent office instigate a law change that both simplifies the patent process and reduces the costs to its users. What a pity the USPTO cannot look down under.

The London Agreement - a stocking filler from Europe

European patents are granted in one of three languages: English, German or French. For your patents, this normally means English. When a European patent is granted, the owner must then register the grant in their chosen European countries to obtain protection. Registration fees must be paid, and if the country speaks a different language to that of the granted specification then a translated patent must be filed. These costs may add an additional NZ$5,000-10,000 in each country, often at the end of an already expensive European examination process.

The London Agreement will improve the process for patent owners. Under the London Agreement, a granted European patent automatically has force in the UK, Germany and France, regardless of the language of grant.

In other member countries of the Agreement (so far: Switzerland, Denmark, Liechtenstein, Luxembourg, Monaco, Netherlands, Sweden, Iceland, Latvia and Slovenia), no translation of the main text of the patent is required, provided that the patent is in their chosen official language. All members that have so far indicated they will select English.

The Agreement is now expected to come into force in early 2008.

There is some fine print. The Agreement is not yet in force and requires enabling legislation to be passed in many of the current member countries. Some countries will still require a translation of the claims. Other countries (Italy, Spain, Portugal, Turkey, Greece, the Czech Republic and Slovakia) have all expressed their reservations at the agreement. For those countries that do not sign up, the costs of registration fees and translated specifications will still apply.

In re Seagate Technology, LLC – a new willful infringement standard in the US

In August the US Court of Appeals for the Federal Circuit issued its decision in relation to In re Seagate Technology, LLC. Taking a rare step, a full court overturned one of its own earlier rules and held that the US doctrine of willful infringement now required “at least a showing of objective recklessness” by the alleged infringer.

Discussing this new standard, the court described a test where “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent”.

For those entering the US market after In re Seagate, activities such as freedom to operate clearance searches, work-around reviews, and opinions from in-house or external counsel may better support arguments about whether an alleged infringer has “acted despite an objectively high likelihood that its actions constituted infringement of a valid patent”. Reports from the US indicate that while opinions of US counsel will still be important in some circumstances, many businesses are now forgoing a full US counsel opinion.

Patient groups can provide novelty for Swiss-type use claims

A novel patient group is now enough to establish patentability in New Zealand for Swiss-type claims of the format "Use of X in the manufacture of a medicament to treat Y".

When initially examined, AstraZeneca’s two patent applications for use of a drug (fulvestrant and anastrozole, respectively) to treat a particular patient group with breast cancer were rejected. The drugs were known to treat breast cancer, but not to treat the patient groups claimed. The examiner maintained that claims where the novelty lies solely in the patient group to be treated are not allowable.

A J Park represented AstraZeneca in a hearing before the Assistant Commissioner of Patents. The Assistant Commissioner found that the principles previously applied to the allowability of claims to novel dosage regimes also apply to claims to treat novel patient groups. That is, improvements in existing therapies can be patentable. He agreed that the claims in both AstraZeneca’s patents disclosed an improvement in the existing therapies, and allowed the applications to proceed.

As with his earlier decision on novel dosage regimes, the Assistant Commissioner found the European law on Swiss-type claims helpful. These recent decisions once again show the Assistant Commissioner’s willingness to follow the European approach to Swiss-type claims, rather than the more restrictive approach favoured by the United Kingdom courts.

Changes to US patent practice delayed

GlaxoSmithKline and an individual inventor, Triantafyllos Tafas have successfully delayed implementation of the changes to US patent practice proposed by the USPTO.

The new rules were due to come into effect on 1 November 2007 but will not come into force until this dispute is resolved.

You can read more about the case here.

In the meantime it is presumably business as usual. It is not clear how quickly the USPTO will examine applications on file while the court action is pending. After the USPTO released the new rules on 21 August, examinations did slow right down. It is possible the USPTO will try and delay some applications (such as those with more than 5/25 claims) until a final decision is reached.

Anton Gibson