Patent Notes PDF

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PATENTS

Sources of Law •

Patents Act 1953 in force until 13 September 2014

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Patents Act 2013 in force since •

BUT transitional provisions apply

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Very little case law under 2013 Act – a few IPONZ cases on NZLII

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Expectation is that leading cases under 1953 continue to apply – Lucas v Peterson is the ONLY NZ case to ever reach the Supreme Court.

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British case law under Patents Act 1977 (UK) is relevant – RPC, Fleet Street Reports

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Westlaw

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Intellectual Property Law

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Patents Precedents

Leading UK text book – Terrell on the Law of Patents (hard copy only) relevant for arguing cases in the supreme court.

Topics         

Bargain Invention Ownership / Dealing Infringement Novelty Patenting Process Inventive Step Challenging a Patent Patents

1. The Bargain The rationale: in this case it is about information sharing. In the old days it was expected you go to another country and steal their ideas and bring it back. Full disclosure of the new invention in exchange for 20 year monopoly right. These days we have moved on from stealing and expect people to come up with their own ideas. At the end of 20 years it becomes publicly available.

2. Invention What do patents protect: • • • • •

New products New manufacturing techniques New processes Improvements to existing products / processes. Does not have to be completely new. How things work – function, not form. A contrast with copyright, doesn’t matter if they look the same.

Flag – if something works like nothing else on the market.

14 Patentable inventions An invention is a patentable invention if the invention, so far as claimed in a claim,— (a) and (b)

(c) (d)

is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; when compared with the prior art base— (i) is novel; and (ii) involves an inventive step; and is useful; and is not excluded from being a patentable invention under section 15 or 16.

Statute of Monopolies 1623: tres Patents and Graunt of Privilege … hereafter to be made of the sole working or makinge of any manner of new Manufactures within this Realme, to the true and first Inventor and Inventors of such Manufactures, which others at the tyme of makinge such tres Patents and Graunts shall not use, soe as alsoe they be not contrary to the Lawe nor mischievous to the State, by raisinge prices of Commodities at home, or hurt of Trade, or generallie inconvenient

Morton’s Rules (GEC’s Application (1943) 60 RPC 1): • Results in the production of some vendible product; • Improves or restores to its former condition a vendible product; or • Has the effect of preserving from deterioration some vendible product to which it is applied. GEC – compositions for fire extinguishing National Research Development Corp v Commissioner of Patents (1959) 102 CLR 252: (aka NRDC) • “manufacture” may encompass both a process and a product; • “product” in relation to a process is simply “something in which the new and useful effect may be observed”; and • A new use of a known product is patentable. NRDC – eradication of weeds

Swift & Co v Commissioner of Patents [1960] NZLR 775 • Applied these tests in NZ Swift – application of enzymes to tenderize meat - These are applied in NZ. The new Act is specific about things we cannot patent: • Contrary to ordre public • Contrary to morality • Human beings • Method of medical treatment (of human beings) • Method of in vivo diagnosis – this was added in. In vitro diagnosis is fine. • Plant varieties Interestingly methods of treating animals have always been allowed. We only have a problem with treating human beings. Exclusions from patentability 15 Inventions contrary to public order or morality not patentable inventions (1) An invention is not a patentable invention if the commercial exploitation of the invention, so far as claimed in a claim, is contrary to— (a) public order (which in this section has the same meaning as the term ordre public as used in Article 27.2 of the TRIPS agreement); or (b) morality. Examples The commercial exploitation of the following inventions is contrary to public order or morality and, accordingly, those inventions are not patentable: an invention that is a process for cloning human beings: an invention that is a process for modifying the germ line genetic identity of human beings: an invention that involves the use of human embryos for industrial or commercial purposes: an invention that is a process for modifying the genetic identity of animals that is likely to cause them suffering without any substantial medical benefit to human beings or animals, or an invention that is an animal resulting from such a process. (2) For the purposes of subsection (1), commercial exploitation must not be regarded as contrary to public order or morality only because it is prohibited by any law in force in New Zealand. (3) The Commissioner may, for the purpose of making a decision under this section, seek advice from the Māori advisory committee or any person that the Commissioner considers appropriate. 16 Other exclusions (1) Human beings, and biological processes for their generation, are not patentable inventions. (2) An invention of a method of treatment of human beings by surgery or therapy is not a patentable invention. (3) An invention of a method of diagnosis practised on human beings is not a patentable invention. (4) A plant variety is not a patentable invention.

(5) For the purposes of subsection (4), plant variety has the same meaning as that given to the term variety in section 2 of the Plant Variety Rights Act 1987. https://www.wto.org/english/tratop_e/trips_e/trips_e.htm

Maori advisory committee • •

Knowledge of mātauranga Māori (Māori traditional knowledge) and tikanga Māori (Māori protocol and culture) To advise on whether— • an invention claimed in a patent application is derived from Māori traditional knowledge or from indigenous plants or animals; and • if so, whether the commercial exploitation of that invention is likely to be contrary to Māori values.

- this came in with the new Act. They have not actually had to look at anything so far. This is a special thing that NZ has. Contrary to morality is contrary to Maori values.

Computer Programs as Inventions • • •

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A computer program is not an invention To the extent that it relates to a computer program as such. Meaning the actual contribution made by the alleged invention lies solely in it being a computer program • a new and improved way of operating a washing machine that gets clothes cleaner and uses less electricity is an invention Taking into account: • the substance of the claim and the actual contribution it makes: • what problem or other issue is to be solved or addressed: • how the relevant product or process solves or addresses the problem or other issue: • the advantages or benefits of solving or addressing the problem or other issue in that manner: • any other matters the Commissioner or the court thinks relevant.

- Also came in with the new Act. 11 Computer programs (1)A computer program is not an invention and not a manner of manufacture for the purposes of this Act. (2)Subsection (1) prevents anything from being an invention or a manner of manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such. (3)A claim in a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.

Examples A process that may be an invention A claim in an application provides for a better method of washing clothes when using an existing washing machine. That method is implemented through a computer program on a computer chip that is inserted into the washing machine. The computer program controls the operation of the washing machine. The washing machine is not materially altered in any way to perform the invention. The Commissioner considers that the actual contribution is a new and improved way of operating a washing machine that gets clothes cleaner and uses less electricity. While the only thing that is different about the washing machine is the computer program, the actual contribution lies in the way in which the washing machine works (rather than in the computer program per se). The computer program is only the way in which that new method, with its resulting contribution, is implemented. The actual contribution does not lie solely in it being a computer program. Accordingly, the claim involves an invention that may be patented (namely, the washing machine when using the new method of washing clothes). A process that is not an invention An inventor has developed a process for automatically completing the legal documents necessary to register an entity. The claimed process involves a computer asking questions of a user. The answers are stored in a database and the information is processed using a computer program to produce the required legal documents, which are then sent to the user. The hardware used is conventional. The only novel aspect is the computer program. The Commissioner considers that the actual contribution of the claim lies solely in it being a computer program. The mere execution of a method within a computer does not allow the method to be patented. Accordingly, the process is not an invention for the purposes of the Act. (4)The Commissioner or the court (as the case may be) must, in identifying the actual contribution made by the alleged invention, consider the following: (a)the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes: (b)what problem or other issue is to be solved or addressed: (c)how the relevant product or process solves or addresses the problem or other issue: (d)the advantages or benefits of solving or addressing the problem or other issue in that manner: (e)any other matters the Commissioner or the court thinks relevant. (5)To avoid doubt, a patent must not be granted for anything that is not an invention and not a manner of manufacture under this section. Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371, [2007] RPC 7. - We used the test in this case however the test has now chaged and they have moved on.

2. Ownership • •

Need to identify each “true and first inventor” (wording in s of monopolies) Assignment from each inventor to patentee • Oral is possible under NZ law, but written is evidence • Before grant in NZ (but before filing better for overseas)

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Co-ownership is fraught – ss 24-27 • Suggest forming a company to be the single owner • Use shareholder agreement to cover ownership of company

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Employees • Scope of employment • Is the employee employed to invent? • Use of company resources / own resources • Employment agreements key

Dealing with Patent rights Business Sales and Purchase • •

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Patents are personal property – s17 Standard Auckland District Law Society Sale & Purchase agreement does not deal well with intangible assets • List IP assets in schedule • Patents should be identified as asset in accounts – should be easy to find Due diligence may include (use a Patent Attorney): • Opinion on validity of patent • Comparison of patent rights with commercial product • Valuation – seek specialist advice

Dealing with Patent Rights Licensing • • • • • • •

Exclusive or non-exclusive Territory Ownership of improvements Calculation of royalties, payment terms Consequences of breach Associated with other IP (know-how etc) Who will take infringement action

3. Infringement • • •

Claims define scope of monopoly right Construction is a question of law Purposive, not purely literal construction • Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (HL)

Lucas v Peterson Portable Sawing Systems Ltd [2003] 3 NZLR 361 (HC) at [28] NB actual decision overturned by SC Lucas v Peterson Portable Sawing Systems Ltd [2006] NZSC 20; [2006] 3 NZLR 721 (30 March 2006) [25]-[28] – example of patent Catnic: this was to do with a lintel – it was intended to be read by a builder, if it is a few degrees off then it is still vertical. Vertical does not mean it is a few degrees off. A patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked. “vertical” included up to 6-8 degrees variation in context

NB This aspect of the Lucas v Peterson saga was not mentioned by the Supreme Court, and is therefore considered to be a good summary of the law: didn’t mention or criticize para 28.

(a) The interpretation of a patent specification is a question of law for the Court to determine but expert evidence can be received as to the meaning of technical terms and concepts found within it. (b) The specification is to be construed objectively through the eyes of a skilled but unimaginative addressee. The test is what an addressee skilled in the particular art in question would understand from the document as a whole. (c) The patent is to be given a purposive construction. Not appropriate is the kind of meticulous verbal analysis to which lawyers can be sometimes attracted. (d) The Court is to have regard to the surrounding circumstances as they existed at the priority date, this including matters of common general knowledge at that time.

(e) It is to be assumed that redundancy was not intended. Consequently separate effect should be given to each word and phrase unless no sensible additional meaning can be ascertained from them. (f) The specification is to be interpreted as a whole. Since it is the claims that define the scope of the monopoly, they will normally be the starting point but ambiguity in words or expressions can, in appropriate cases, be resolved by reference to the context of the document as a whole. Importantly, for this purpose the document includes the drawings. (g) The complete specification is broadly divisible into the description or consistory clauses (s 10(1) and (3)(a) of the Patents Act), the best method for performing the invention (s 10(3)(b)), and the claims (s 10(3)(c) and (4)). (h) The description or consistory clauses must identify and describe the essence of the invention in terms which reveal the inventive step or steps. The question is what the skilled addressee would understand as the essential and novel features of the invention. (i) The superlative ‘best’ when referring to the best method (s 10(3)(b)) implies that more than one embodiment will be possible for any given invention. Passages in the specification introduced by the word ‘preferably’, or ‘in a preferred form’, or ‘in one embodiment of the invention’, or words to similar effect, may tend to indicate what is being described as merely optional and therefore not an essential part of the invention itself. (j) It may be necessary to distinguish between consistory clauses and embodiments for another reason. When referring to the body of the specification for purposes of clarifying ambiguous expressions in a claim, consistory clauses may be exhaustive as to the intended scope of the expression. Embodiments, on the other hand, might help to show the broadness of a claim but presumably never its narrowness. (k) Notwithstanding those technicalities, the overriding requirement will always be to view the specification purposively through the eyes of the technically skilled addressee and not those of a lawyer conducting a line by line analysis of a debenture or will.

Notional skilled addressee (man/person skilled in the art) It is a legal fictional character, described as the cousin of the reasonable man, the cousin of the officious bystander (insurance), wraith like creature that stalks the report of patent cases just as the reasonable man does the treatises of torts. “This wraith-like legal creature who stalks the Reports of Patent Cases just as the “reasonable man” does the treatises on tort…” Beecham v Bristol-Myers (No. 2) [1980] 1 NZLR 192, 232 “cousin” to the Reasonable Man and the Officious Bystander There is a lot of case law around who this man is – • Not a real person, but a legal fictional character • Expert witness is NOT notional skilled addressee • The notional skilled addressee: • a skilled technician • well acquainted with workshop technique

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• has carefully read the relevant literature (including patent specifications) • familiar with the basic principles of patent law • unimaginative • incapable of scintilla of invention • does not combine or “mosaic” documents unless uninventive or cross-referenced • very good background technical knowledge (common general knowledge) • can be a team • shares common prejudices or conservatism • believes what he finds in the documentation to be true • would seek advice on aspects with which he is not personally familiar May be a different construct for different questions: • interpret the patent • decide what is disclosed in any cited piece of prior art • decide whether the claimed invention of a patent in suit is obvious

- you would often draw several people together when working on patent, so this man seems strange.

Example of a Patent • NZ Patent 332466 About a portable hangi. Statement of invention explaining what was new etc.. (many pages) sometimes one piece of apparatus can have many inventions within it. – when you are drafting the invention sometimes you are not sure what might give you a point of difference in the market. Disclosure part – what you are offering for the monopoly you are going to get. You might not claim the monopoly on all of those. ^Doug Andrews Heating and Insulation Limited v Dil [2015] NZCA 122 (20 April 2015) at [16] Doug Andrews Heating and Ventilation Limited v Dil [2013] NZHC 3333 (12 December 2013) - Court went through the exercise, and found that the competing party did not infringe the claim. At the end of the patent, there are some drawings showing what the patent looks like. HC absolutely slams some of the witnesses.

Freedom to operate Some people are not worried about staying ahead of the curve, they just want to avoid an infringement notice. Most of the time clients know who is out in the market and who is likely to sue. • • • •

Search for relevant in force patents in jurisdiction of interest • Limitations on database searching Patent Attorney opinion regarding infringement risk • Restricted “patents work” under section 274 Required by some investors as part of due diligence May be Government funding available via Callaghan Innovation etc

“giving advice (other than advice of a scientific or technical nature) about the infringement of patents” is “patents work” They can ...