Australian Patent Examiner’s Manual Online

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.

More info on Blackboard’s Australian Patents

I recently spoke to Subba, a national patents examiner with IP Australia’s Oppositions Hearing & Legislation branch. He’s provided me with more detailed information on the Blackboard patent, applications, and how these may be legally challenged.

Patent application 2005203324 is a divisional application with a parent patent 780938 (granted and sealed). It was open for inspection (OPI) to the public on 21st August 2005. To properly address this patent application, it would be necessary to have the parent patent re-examined. The parent patent 780938 was granted in Australia and sealed in April 2005. This is the patent equivalent to the one recently announced by Blackboard as being granted in the USA.

To have this patent re-examined, a third-party re-examination must be requested from IP Australia, together with documentation that the patent claim was not novel or inventive. The cost of a re-examination is A$1300. I’m confident that we can raise this amount and challenge the validity of the patent in Australia.

Blackboard’s other four patents (2003237918, 2003263854, 2003263855, and 2004265995) are all conventional WIPO (International) patent applications claiming US Priority. They are all currently open for public inspection, which means that oppositions to these applications must be lodged immediately.

Under Section 27 of IP Australia’s National Examination Manual, opposition is performed as stated in a previous post – by informing the Commissioner that the patent application is not novel or inventive, together with the appropriate documentation to demonstrate prior art. There is no cost for oppositions to patents that have not yet been granted lodged in this manner.

Welfare of Information Technology in Education (WITE)

An online group is being set up to help coordinate countermeasures against Blackboard’s patents, and coordinate support for any organisation against whom Blackboard attempts legal action.

The group is nominally known as WITE: the Society for the Welfare of Information Technology in Education. If you would like to join WITE, please request membership of this Wiki, and in your request, also request membership of WITE. If you would like to be a community leader, please also mention you would like to join the “WITE Board“.

Informing IP Australia of Prior Art

I’ve just spoken to IP Australia’s Customer Service helpline. I have to say, they were exceedingly friendly and helpful – excellent customer service – and provided me with some great information on heading off an e-learning fiasco in Australia.

While patents in Australia can’t be protested until they are granted (when there is a consideration period of three months), if a prior notification of prior art is lodged, it will be placed on file. (It’s possible that Blackboard waited for a similar protest period to elapse in the USA before making their announcement).

The address to write to is:

IP Australia
PO Box 200 Woden
ACT 2606 AUSTRALIA

The patents lodged by Blackboard are as follows:

Pat/Appn # Title Filed
2003237918 Internet-based education support system and method with multi-language capability 22 MAY 2003 WO03100745
2003263854 Internet-based education support system, method and medium providing security attributes in modular, extensible components 19 AUGUST 2003
2003263855 Internet-based education support system, method and medium with modular text-editing component for use in a web-based application 19 AUGUST 2003
2004265995 Content system and associated methods 13 AUGUST 2004 WO2005017697
2005203324 Internet-based education support system and methods 28 JULY 2005

In the process of patent searching, also found this WIPO patent application, which doesn’t appear to have an equivalent in Australia. It appears to claim invention of educational portals.

Blackboard Patents in Australia

I have taken a particular interest in the application of Blackboard’s patent applications and patents in Australia, the home of a number of innovative LMS systems including the open source Moodle project.

IP Australia, the Australian Government’s intellectual property organisation, provides a handy patent search facility; a search for the applicant “Blackboard” revealed that 5 of Blackboard’s 30 patents granted and pending are lodged in Australia. These are titled:

  • Internet-based education support system and method with multi-language capability (22May03)
  • Internet-based education support system, method and medium providing security attributes in modular, extensible components (19Aug03)
  • Internet-based education support system, method and medium with modular text-editing component for use in a web-based application (19Aug03)
  • Content system and associated methods (13Aug04)
  • Internet-based education support system and methods (28Jul05)

The patents cover other e-learning technologies and specifications other than the 44 claimed in Blackboard’s first patent to be granted in the United States. It appears that they could potentially be claiming to have invented Learning Objects (or LMS extensions), multi-language LMS, embedded HTML text editors, as well as the original claims of many core functions of LMS systems.

I will be researching the specific claims of Blackboard’s other patent claims in Australia and will post my findings.

Blackboard granted LMS Patent and Sue Desire2Learn

On the 26th July, 2006, Blackboard Inc, the organisation that owns the Learning Management System (LMS) products Blackboard and WebCT, announced it had successfully acquired a patent over many of the core functionalities of learning management systems worldwide, from a patent application filed in 1999. On the same day, it lodged civil proceedings against Desire2Learn, a small start-up developing their own competing enterprise LMS vendor.

Given that LMS philosophy and technologies had been developed independantly by a number of entities over the preceding decade, Blackboard’s claim seems ridiculous. However, their prompt action against Desire2Learn demonstrates the willingness of Blackboard Inc to use their patent as a means to remove their competition.

This blog is being set up as a source of information and resources on the issue of Blackboard’s patent and the intellectual property issues of e-learning technologies in general. Interested educators are invited to join and contribute to this resource, and to add to the associated wiki, http://blackfate.wikispaces.com