E-Patents Newsletter – Dec 2001

E-Patents Newsletter – Dec 2001

No 1 again!

Davies Collison Cave (Patent and Trade Mark Attorneys) and Davies Collison Cave Solicitors have, for the fifth time, been voted No 1 out of more than 30 other Australian based Intellectual Property firms. This achievement is recognised by the international survey conducted by the prestigious UK-based "Managing Intellectual Property" journal.



  • In a May 2001 decision concerning Welcome Real-Time v Catuity Inc., the Australian Federal Court upheld the validity of Welcome's patent for operation of smart cards in connection with traders' loyalty programs. Moreover, infringement of the patent was found by Catuity's use of their CiT/Transcard system, for example used on Westbus buses in Sydney and Cabcharge taxis. Nasdaq-listed Catuity Inc. will close its six-year-old Transcard smartcard project over the next three months. This decision approves business related patents embodied in software.


  • Small US company 'E-data' has been battling a US patent infringement action since 1995 against numerous companies including AOL Time Warner's CompuServe and Intuit. The patent, dating from 1985, relates to online software downloads and was previously held to be limited to downloads to compact discs, kiosks, paper etc., but not PC hard drives. In July 2001 the US Court of Appeals ordered that the patent's scope be considered more broadly by a lower Court. This could force software vendors to pay licensing fees to sell products directly over the Internet and affect Australian companies with US customers.


  • For the eighth consecutive year IBM has topped the list of patent recipients from the United States Patent and Trademark Office with 2,886 patents in 2000. Second was Japan's NEC with 2,020. Patent licensing royalties significantly contribute to IBM's revenue.

    New patent system in Australia – innovation patents

    In May 2001, a second-tier patent system, known as the Innovation patent system, came into effect in Australia. The Innovation patent has been aimed at encouraging innovation by small to medium companies by seeking to provide quicker and less expensive means of protecting lower level or incremental inventions not currently patentable.


    he Innovation patent requires a lower threshold of invention and has a term of 8 years compared to the usual 20 years for a Standard patent. An Innovation Patent will be able to be granted within a few months entitling the owner to legitimately mark their product as 'Patented'. However, a patent infringement action is not able to be taken unless the granted Innovation patent is certified by way of a request for examination by the Australian Patent Office.

    The Innovation patent should provide a means to protect computer software or hardware applications which may not be suitable for a Standard patent, but which are not simply superficial or peripheral to what is already known.

    In light of the relatively short commercial lifetime of some software or hardware applications in a fast moving industry, the fast grant and shorter term of the Innovation patent may prove attractive.

    Selected online intellectual property web-sites

    • Limited free searches for prior art patents: www.uspto.gov (United States), www.european-patent-office.org (Europe) www.jpo.go.jp (Japan)
    • Australian Patent Office: www.ipaustralia.gov.au
    • Identify prior art documents, such as obscure journal articles, to invalidate patents in litigation and be paid: www.bountyquest.com
    • Capitalise on your assets by listing online your Intellectual Property, such as patent applications, for sale or licensing: www.marketzone.ipnetwork.com, www.yet2.com