Jane Glover Barrister – Mediator – Adjudicator

are patent examination hearings borked?

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I am a little anxious about this post.  Am I about to stick a knife into a sacred cow?  Will it attack me?

So I’ll dive straight in:  I don’t think patent examination hearings really work in many instances.  The structure and the system don’t match the skill-sets of the people involved. 

Let’s think about what happens when you file a patent application.  The patent is examined by an examiner.  The idea is that the examiner is a scientist who has expertise in the relevant field.  The biotech people examine the biotech patents, the mechanical people examine the mechanical patents, and so on.

What often happens is that there is correspondence back and forth between the applicant and the examiner about a particular issue, and an impasse is reached.  In fact, under the new Act this happens pretty regularly.  When that occurs, the applicant can request a hearing with an Assistant Commissioner.

In  New Zealand, often the Assistant Commissioner hearing the issue is not a scientist.  Most recently, the Assistant Commissioners hearing patent cases have been barristers.  The skill-set of a barrister typically involves being really good at assessing the relative weight of two or more sets of evidence and argument, being really good at knowing the rules of evidence, and being really good at understanding matters of law and logic.  They will be excellent at absorbing and synthesising new tranches of knowledge quickly, but they won’t usually come to a case pretending to have any relevant scientific expertise.

Even if the Assistant Commissioner does happen to be a scientist, there is no single person who can be an expert in all of the different fields of science that are relevant to patent applications, and can keep sufficiently up to date in all of those fields.  The world has become increasingly specialised: we are well past the time when a polymath like Alexander von Humboldt could know pretty much everything there was to know about everything. I know Einstein worked in a patent office, but realistically the chances of the most brilliant mind of an era popping up in New Zealand, let alone at IPONZ, must be fairly remote.  (No disrespect intended!)

Sometimes, the issues that come up in examination hearings are matters of law or construction that cause few issues for an Assistant Commissioner.  But sometimes, they involve matters of pure science, or – more often – matters of law that are inextricably intertwined with the science.  What then? 

For safety, let’s use a recent Australian case as an example of some of the difficulties that can arise.  (Sacred cows can’t swim.)

BASF CORPORATION [2019] APO 34

This decision is really interesting.  The patent was for pesticides, which were comprised of synergistic mixtures of certain active ingredients. 

The experimental data in the patent showed that there were synergies between other, similar compounds, but not as between the specified compounds.  The examiner refused registration on the basis of the UK Supreme Court decision in Warner-Lambert: it was not “plausible” that there were synergies between all of the claimed compounds.

So then the applicant filed evidence showing that there were in fact synergies between these particular compounds.  But, as Lord Sumption said in Warner-Lambert, the material demonstrating plausibility needs to be in the patent itself.  Evidence filed later that the product works as claimed won’t usually help to demonstrate plausibility.

Being thwarted on that front, the applicant requested a hearing and – here is a slightly weird thing – filed evidence from one of the inventors that HE thought that it was plausible on the basis of the experimental data set out in the patent itself that there would be synergies across the board. 

The Delegate accepted this evidence on the basis that it was unchallenged: “OK then, the inventor says it was plausible on the basis of the information in the patent so that is good enough.”  But OF COURSE it was unchallenged evidence, as it was an examination hearing.  There weren’t any other parties.  

And yet, what else could the Delegate do?  Disregard the evidence entirely? Or simply rely on her own knowledge and expertise (she does have a PhD in chemistry, but who knows whether her knowledge is still current or completely on point) in assessing this evidence?  It seems to me that this could also be fraught, and that there might be pressures on Delegates/Assistant Commissioners to hear cases that are somewhat outside their scientific skill-sets.

A NEW MODEL

I think what we need is a model that plays to everybody’s strengths.  If the matter is sent to an Assistant Commissioner for a hearing, then in some cases it would be helpful for both sides of the argument should be raised and tested. I think that perhaps there is more of a role for independent experts instructed by the applicant, and an amicus from within IPONZ if required.

Preferably, whatever model is adopted, the person presenting IPONZ’s position would not be the particular examiner involved (or at least that examiner would not be the only person involved).  Sometimes, people who have been too closely involved in a process over time can lose objectivity, and blind spots develop. 

And I don’t think that the answer is simply to appoint a senior examiner as an Assistant Commissioner, unless that person also has a law degree and legal experience.  Both the law and the science are crucial.  Decision-makers need to have an understanding of the principles of natural justice, to understand the rules of evidence, and to be able to craft a decision that will make sense to a High Court judge when it is taken on appeal. 

YOUR THOUGHTS

I am really interested to know what others think about this.  I’m convinced that there must be a better way.  And in the New Zealand context, with a limited pool of qualified candidates, we will need to think creatively.

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Jane Glover

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By Jane Glover
Jane Glover Barrister – Mediator – Adjudicator

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