Thursday, September 5, 2013

Secret Use and Patents: Issues for the Petroleum Industry in Western Australia

It is well-known that the subject technology of a patent application must be novel to obtain patent protection.

This is why if a business is to disclose details of its technology before filing a provisional patent application, it must be disclosed under the terms of a confidentiality agreement or non-disclosure agreement. Confidentiality agreements help preserve the essential novelty in a patent.

However, there is another important issue regarding ‘secret use’. Subparagraph 18(1)(d) of the Australian Patents Act 1990 states that:
“an invention is patentable, so far as is claimed in any claim, if it was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person…”

The prevailing authority on secret use in Australia is the Full Federal Court case of Azuko v Old Digger (2001) 52 IPR 75. It was held that the relevant question of whether secret use has occurred before the priority date (that is, the all-important date of filing the patent application) is whether certain commercial acts done before the priority date constitute a de facto extension of the patent monopoly. An extension of the monopoly usually requires the patentee to have “reaped a commercial benefit”.

Tuesday, September 3, 2013

Chinese Military Hackers Target Commercial Intellectual Property

Earlier this year, Virginia-based cyber security firm Mandiant released a 60-page report pointing to a specific Chinese military unit as the perpetrators of one of the largest cyber attacks on US infrastructure and corporations to date.

Mandiant alleges that the attacks were directed mainly at 115 US targets, with twenty coming from different industrial sectors such as aerospace, energy, transportation, financial, and even legal institutions. Mandiant's report points to a 12-story office building in Shanghai as the base of operations for Unit 61398, which they dubbed as the “Comment Crew” or “Shanghai Group.” Mandiant said that since 2006, it has observed attacks from this unit against at least 141 companies spanning 20 major industries.

Image Source: Google Earth
Despite China's dismissal of the reports as “groundless” and “irresponsible”, many security experts continue to find the Comment Crews' actions as pointing towards government sponsorship, with one of the most popular cases being the successful hacking of Coca-Cola. The attack was done through a 'spearphishing' email (a more targeted version of phishing emails, which trick victims into entering their private information through a fake link on an email masquerading as belonging to a personal contact) which had been sent to a Coca-Cola executive. The attack was initiated after Coca-Cola has acquired a large Chinese company, and experts suggest that it was done for the purpose of uncovering negotiation strategies and other critical information related to the acquisition.

Sunday, September 1, 2013

Marvel's Web Blaster Toy: Are Royalties Payable in a Patent License After a Patent has Expired?

In May 1990, inventor Stephen Kimble filed an application to patent a toy designed to allow a person to shoot "webbing" from the palm of his hand using a hidden pressurized container full of string foam. The container is incorporated into a glove. Kimble secured the patent in the US (US Patent No 5.072,856). (The patent attorney who drafted the specification amusingly included the following in the description of the prior art: All kinds of shooting toys have been designed and built over time for the amusement of children and adults alike. Water is normally the medium used as projectile and water guns are the most common type of toy utilized for this purpose. They come in the shape of hand guns, rifles, machine guns, and other configurations allowing the player to squirt water from various parts, often hidden, of his or her body. The mind boggles.)

Kimble offered his design to Marvel Enterprises, Inc. Marvel's Spider-Man character has the ability to shoot webbing from the palm of his hands, and so Marvel was an obvious partner in any exploitation of the invention. Indeed, it was clear from the patent specification that this was what Kimble had in mind: “Accordingly, this invention creates a toy that makes it possible for a player to act like a spider person by shooting webs from the palm of his or her hand.”

Marvel said to Kimble that they would consider his designs for the web-shooting toy and that he would receive royalties if they ever make a toy out of it. However, Marvel then launched a Spider-Man toy called the "Web Blaster." The toy bears similarities to Kimble's designs.

More Military Patent Litigation: How the Rights to the Phalanx CIWSWere Under Challenge

Last April, Waltham, Mass.-based Raytheon has fulfilled the second of its three part contract with the Royal Australian Navy, in which the Phalanx Close-In Weapons Systems on the RAN's various vessels will be upgraded to the Block 1B configuration. This should improve their efficiency in approaching and nearby targets, while also reducing the manpower required for maintenance of the CIWS.

The Phalanx CIWS was originally designed and developed by General Dynamics in the 70s mainly for use by the Royal Navy and the United States Navy on several of their surface combat ships. The CIWS on the U.S. Navy side were originally nicknamed 'R2-D2,' due to the barrel-shaped dome bearing a resemblance to the popular “Star Wars” droid. On the Royal Navy side, it was referred to as 'Daleks,' after the similarly dome-shaped robotic alien creatures from the UK sci-fi series “Doctor Who”.

Phalanx CIWS - ID 060605-N-6363M-004