blackfate

There’s been a lot of conversation about getting to the specifics of Patent Law; unfortunately, nobody in the education community has been privileged enough to have access to a patent lawyer yet. However, this could be the next best thing. Thanks to my contacts at IP Australia, I have sourced the Online version of the Australian Patent Examiner’s Manual – the guide for patent examiners themselves when processing patents as well as challenges to patents.

The relevant sections to look at relate to filing notice of prior art on Blackboard patent applications (to prevent current patent applications being granted), and requesting a re-examination for the patent already granted to Blackboard (s. 2.22 of the manual).

With regard to the former (prevention), documentation needs to be provided to show that the application fails to meet the legal tests for novelty and inventiveness, described in s. 2.4.2 and s. 2.5.3 respectively. Notice can be thus provided to the examiner under the provisions of s. 2.13.11.1. It should be noted, however, that published documents will need to be cited for the re-examination to be effective (s.2.13.11.2):

Examiners should note that they may consider only matter published in a document. This covers books, specifications, periodicals and similar publications; it does not cover publication by prior user or by oral communication. Statutory declarations by persons allegedly having seen or used the invention, or alleged actual samples of the invention, or statements where the invention may be inspected or publicly seen are not to be considered by the examiner. The examiner is also not authorised to consider any allegations that the invention was obtained from a person other than the applicant.

With regards to the re-examination of the granted patent, covered by s. 2.22 (s. 2.22.1),

The only grounds available for re-examination consideration are whether, in the light of documented material, the invention:

• is not novel, or
• does not involve an inventive step or an innovative step, as applicable.

If an objection is raised on these grounds re: the Blackboard patent, then s. 2.22.3.1 applies (Post Grant patent). As sealing of the patent occurred a year ago, a re-examination could normally be requested immediately under this section, documented as per s. 2.22.4.2:

[Re-examination] may, for example, occur when a member of the Patent Office staff or the patentee brings to the Commissioner’s attention prior art which was not raised in relation to the application at any time pre-grant or pre-certification, including any search results provided for the purposes of sec 45(3) or sec 101D which were not filed prior to grant. Consideration of sec 45(3) search results will not normally commence in the post-grant environment until a period of 6 months after sealing has elapsed, so that all search results can be considered at the one time.

However, it appears there may be a significant problem to challenging the patent under 2.22.3.1. The manual goes on to state:

Under sec 97(4) and 101K(2), the Commissioner must not re-examine a patent where relevant proceedings are pending. Before re-examining a granted patent, the examiner must check the file to see if there is any indication of court action. If there is no indication of a court action on the file, examiners must write to the patentee and inform them that the Commissioner intends to re-examine the patent unless advised within 7 days that relevant proceedings are pending. The re-examination report should not be issued until that period has ended.

The scope and jurisdiction of this statement is unqualified, indicating that it could potentially be affected by current court proceedings in the USA against Canadian firm Desire2Learn. Should those proceedings be prolongued, or should Blackboard be involved in continuous legal proceedings against other organisations, it is uncertain as to when a re-examination of the Blackboard patent may be granted.

I will be further corresponding with my contacts in IP Australia to determine the scope and jurisdiction applicable to s. 2.22.3.1, and will post my findings here.