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Navigating Post-Grant Patent Amendments: Lessons from R F Industries v Mine Site Technologies

 

Date:

Body:

Adjudicator:

 

15 April 2024

Australian Patent Office

Debases Desgupta, Delegate of the Commissioner of Patents

Background

The central question addressed by the Delegate in R F Industries v Mine Site Technologies was whether amendments submitted during re-examination of a granted patent were allowable under the Australian Patents Act 1990 (Act). Importantly, this decision highlights the usefulness of re-examination and opposition to challenge a granted patent.  It also illustrates the complexities which can arise when the issues with respect to the claims exist prior to, and do not result from, the proposed amendments.

Background

The decision relates to multiple third party requests for re-examination of innovation patent no. 2018101203 (Patent) in the name of Mine Site Technologies Pty Ltd (MST).  An adverse re-examination report issued against the patent, and MST sought to amend the Patent to overcome the objections raised in the report.  The amendments were considered by an Examiner to be allowable, addressing the objections raised.  R F Industries (RFI) subsequently filed an Opposition to the amendments asserting that the claims were impermissibly broadened as a consequence of the amendments, and that the amended specification was no longer compliant with the Act under the provisions relating to claim support and sufficient disclosure.

The invention claimed in the patent relates to a telecommunications system.  The specification articulates a long-standing problem that ‘distributing power and data along the length of a linear industrial environment is not commercially practical’.  The specification then states that the ‘telecommunications system of the invention addresses the problem in the prior art by facilitating the transmission of power and data via a single transmission line’.

Claim 1 of the Patent as ultimately considered allowable following re-examination is reproduced below:

  1. A telecommunication system including:

a two-conductor cable, which is adapted to transmit a composite signal, including a data component and a power component;

a plurality of electrical repeater modules, each module operatively connected to the two-conductor cable, each electrical repeater module including a connection point, wherein the connection point is an Ethernet port; and

at least one network device connected to each connection point;

wherein, the electrical repeater module is configured to:

receive the composite signal from the two-conductor cable;

separate the composite signal by filtering the composite signal to extract the data component and the power component;

supply power derived from the power component through the connection point using a Power over Ethernet specification to power the network device(s) connected thereto;

transmit data derived from the data component through the connection point to the network device(s) connected thereto;

receive output data through the connection point from the network device(s) connected thereto; and

transmit the output data along the two-conductor cable,

wherein at least one of the plurality of electrical repeater modules includes one communication module that performs upstream communications and another communication module that performs downstream communications.

The text struck out and inserted (as shown by underlining) reflect the amendments made by MST that achieved allowability.

Opposition

RFI opposed the amendments, arguing, amongst other things, that the amendments were not allowable as they were impermissibly broadening (pursuant to s102(1) of the Act), and that as a result of the amendments the claims lacked support and the specification did not sufficiently describe the invention (pursuant to 102(2) of the Act).  RFI filed evidence in the form of a declaration and written submissions, while the patentee chose not submit evidence or written submissions.

As an initial matter, the Delegate considered the amendment that changed the term “electrical module” to “repeater module”.  The specification referred to repeater modules, and the Delegate determined that a person skilled in the art would understand that a repeater module is a type of an electrical module. 

The Delegate then focused on the addition of the final clause “wherein at least one of the plurality of repeater modules includes one communication module that performs upstream communications and another communication module that performs downstream communications.”

The opponent’s main argument was that the use of ‘at least one’ in this context was nonsensical.  That is, for the system to work, each repeater module must have a communication module that performs upstream communications and another communication module that performs downstream communications. 

The Delegate reviewed the specification in detail and agreed.  The disclosed function of the repeater modules was to connect a first transmission line to a second transmission line, thereby receiving a composite signal, decoding and recreating the data, and transmitting the recreated signal.  The only examples showed systems where all of the repeater modules included a communication module that performs upstream communications and another communication module that performs downstream communications.

Section 102(1)

The Delegate considered whether the amended claims extended beyond the disclosure of the complete specification under s102(1).  He determined that the claims as certified (ie. prior to amendment) did not require that all of the electrical modules include two communication modules that perform upstream and downstream communications, respectively.  The delegate therefore found the amendment did not result in a claim directed to matter not originally disclosed in the specification, and so was allowable under s102(1).

Section 102(2)

The Delegate then turned to s102(2). The Delegate found that the certified claims (ie. prior to amendment) did not comply with s102(2) in that they did not require that all of the electrical modules include two communication modules that perform upstream and downstream communications, as described in the specification.  The issue with respect to s102(2) therefore resulted from the unamended certified claims, and was not the result of the amendment. The Delegate therefore concluded that the opposition under section 102(2) failed.

Outcome

In the end, the Opposition by RFI was unsuccessful.  Notably, the amendments did not themselves create an issue with respect to the requirements of clear and complete disclosure and support under s102(2). Any issues as to the failure to meet the requirements of disclosure and support were already present in the claims prior to amendment. The Delegate therefore stated that reconsideration should be given to claim construction and substantive grounds in re-examination. As significant issues remained regarding the claims, the Delegate refused to make an award of costs.

Implications

This decision provides a good example of the usefulness of re-examination and opposition in the context of challenging patent rights.  It also illustrates the complexities which can arise when the issues with respect to the claims exist prior to, and do not result from, the proposed post-acceptance/grant amendments.

This decision further points to the powers of the Australian Commissioner of Patents (and Delegates) in initiating re-examination of a patent, unilaterally.  It is not uncommon to see ex parte re-examination initiated by the Commissioner subsequent to a request for patent term extension (PTE) in the context of pharmaceutical patents, for example.  A further re-examination report is expected to issue against MST’s Patent.

 

About Pearce IP

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Naomi is the founder of Pearce IP, and is one of Australia’s leading IP practitioners.   Naomi is a market leading, strategic, commercially astute, patent lawyer, patent attorney and trade mark attorney, with over 25 years’ experience, and a background in molecular biology/biochemistry.  Ranked in virtually every notable legal directory, highly regarded by peers and clients, with a background in molecular biology, Naomi is renown for her successful and elegant IP/legal strategies.

Among other awards, Naomi is ranked in Chambers, IAM Patent 1000, IAM Strategy 300, is a MIP “Patent Star”, and is recognised as a WIPR Leader for patents and trade marks. Naomi is the 2023 Lawyers Weekly “IP Partner of the Year”, the 2022 Lexology client choice award recipient for Life Sciences, the 2022 Asia Pacific Women in Business Law “Patent Lawyer of the Year” and the 2021 Lawyers Weekly Women in Law SME “Partner of the Year”.  Naomi is the founder of Pearce IP, which commenced in 2017 and won 2021 “IP Team of the Year” at the Australian Law Awards.

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Chris is a senior Patent and Trade Mark Attorney who is registered to practice before the intellectual property offices of Australia and New Zealand.  He is experienced in patent drafting, patent and trade mark prosecution and opposition, and freedom to operate, opinion and due diligence work.  Through his experience and delivery of highly-regarded client service, Chris has been recognised as a leading patent practitioner having been listed in the IAM Patent 1000 as a recommended individual for patent prosecution, and a Rising Star in 2021, 2022 and 2023 by Managing IP.

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