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Mark Summerfield
Works at Watermark - Intellectual Asset Management
Attended University of Melbourne
Lives in Melbourne, Australia
93 followers|1,973,498 views
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Work
Occupation
Patent and Trade Marks Attorney
Skills
Intellectual Property (IP) and Intellectual Asset Management (IAM) Specialist
Employment
  • Watermark - Intellectual Asset Management
    Senior Associate, 2002 - present
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Currently
Melbourne, Australia
Previously
Berkhamsted, UK
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Tagline
Patent Attorney. Innovation. Science & Technology. Books. Music. Food. Wine.
Introduction
I am the editor and primary author of the Patentology blog, and a registered Australian Patent Attorney, working in the profession since 2002.  Prior to this I worked with two different start-up ventures in the telecommunications space, one of which was developing innovative optical networking technologies, the other design automation software.

In an earlier life, I worked in various commercial and academic research environments.  My PhD was awarded in the field of optical fibre communications technology.

I have also myself been an inventor on a number of patent applications.
Bragging rights
Named one of the world's top 300 IP Strategists in IAM Magazine's 2013 IP Strategy 300.
Education
  • University of Melbourne
    Electrical Engineering, 1986 - 1989
    Bachelor of Engineering (Elec) (Hons)
  • University of Melbourne
    PhD - Optical Fibre Technology, 1992 - 1996
    Thesis title: Telecommunications Applications of Four-Wave Mixing in Semiconductor Optical Amplifiers
  • University of Melbourne
    Masters in IP Law, 2001 - 2004
    Intellectual Property, Patents, Trade Marks and Designs law and practice
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Mark Summerfield

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The Australian Patent Office recently engaged its own expert witness to successfully defend a Federal Court appeal against a decision to reject a patent application on grounds of obviousness.

This was a very unusual step for the Patent Office to take. However, past experience (particularly an infamous case involving a patentee called Emperor Sports) has shown that in the absence of supporting evidence it is very difficult to persuade the court to find a patent claim lacking in inventiveness.

It is likely that this recent case is indicative of the seriousness with which the Patent Office will approach future appeals, in order uphold patent standards, and avoid a repeat of the Emperor Sports scenario.
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Australia’s competition regulator has instituted proceedings against Pfizer for alleged anticompetitive conduct in relation to its supply to pharmacies of out-of-patent blockbuster cholesterol drug atorvastatin (Lipitor).

The case serves as a reminder that a patent does not confer upon the patentee an unfettered right either to exploit its own invention, or to use the exclusive rights to distort a competitive market within which it operates in ways that go beyond the privileges provided under patent law.

There are specific provisions in both the competition law and the patent law to ensure that ownership of a patent is not a carte blanche to ignore the fundamental principles of the competitive marketplace!
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The USPTO is teaching its examiners that combinations of naturally-occurring materials, such as gunpowder, cannot be eligible for patent protection.

The new guidance comes in the wake of the Supreme Court's decisions in the Mayo and Myriad cases. However, I cannot believe that what the US examiners are being told is correct. The patentability of a combination has never depended upon the patentability of its individual components. A patent claim must be considered as a whole, and if the parts of a combination interact with each other in a manner that is new, non-obvious, and dependent upon the ingenuity with which they have been brought together, then the claimed combination should be patent-eligible.

Certainly that is the case in Australia, and most other jurisdictions with which I am familiar. If the USPTO is right about the law following Mayo and Myriad, then the US is now seriously out of step with the rest of the world!
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The Australian government has been compelled to release the 2013 report of the Pharmaceutical Patents Review under freedom of information laws. Among the recommendations in the report (most likely to be ignored) is a significant reduction in the duration of pharmaceutical extensions of patent term.
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The Federal Court of Australia has confirmed that the current patent attorney privilege provisions protect a broad range of communications, records and documents made for the ‘dominant purpose’ of providing patent attorney services, including technical documents and communications made in the course of preparing a patent application.

Importantly, the court found that neither public use of an invention, nor the ‘lodgement and subsequent publication of a patent application’ results in a waiver of privilege.
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Mark Summerfield

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A WIPO Deputy, US national Jim Pooley, has filed an extraordinary 'Report of Misconduct' against Director General Francis Gurry.

This is the latest event in an ongoing saga that looks increasingly like a witch-hunt designed to make Gurry's position untenable. He has just been nominated for a second six-year term as Director General, and it is expected that his nomination will be confirmed by the UN General Assembly on 8-9 May 2014. However, the alleged misconduct dates back to 2008, prior to the commencement of his first term.

The allegations are therefore not new. What is new is the filing of a formal report by such a senior official within WIPO. Pooley claims that his timing is motivated by recent developments, in particular the airing of the allegations in French newspaper Le Temps on 1 March 2014, and Gurry's subsequent dismissal of questions about the matter at a media conference on 6 March.

However, the resurfacing of the allegations is itself largely the result of objections to Gurry's renomination raised by a number of members of the US Congress late last year, who wanted to see the Obama Administration back an alternative candidate.

The main issue that US politicians have with Gurry is not the propriety of events that took place six years ago, but his more recent involvement in a WIPO program to ship ‘high-end computers’ and other electronic equipment to North Korea and Iran, along with ‘secret agreements’ to open satellite offices of WIPO in Russia and China.

Can it really be due only to recent media coverage that a senior WIPO official, who happens also to be a US national, has chosen this time to file a formal written Report based on allegations that have been common knowledge within WIPO (and elsewhere) for many years? I find it hard to believe.
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From April 2014, IP Australia expects to be directing more patent applicants to request examination of their applications.

As a result of a rush on new applications and examination requests, to get in ahead of the 'Raising the Bar' patent law reforms last year, the Australian Patent Office has not issued many notices over the past year directing applicants to request examination. In many cases, this means that patent applications are not now being examined until more than five years after filing.

However, Australian patent examiners have been making good progress on the backlog of work resulting from the spike in examination requests. This means that more applications can be brought into the examination queue, and the pendency of Australian patent applications should start to decline.
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From 14 April 2014, Australian applicants will be able to file international patent applications with IP Australia via the WIPO ePCT online system.
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New IP law reform legislation, the Intellectual Property Laws Amendment Bill 2014, has been introduced into the Australian parliament.

It is likely that the legislation will pass without further amendment.  It will:
o implement Australia’s obligations under the TRIPS Protocol;
o provide for cheaper litigation options under the Plant Breeder’s Act;
o provide for single patent application and examination processes for Australia and New Zealand, and for a single trans-Tasman patent attorney regime; and
o implement a number of administrative changes and corrections in the Patents, Trade Marks and Designs Acts.
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Australian patent law reforms which commenced in 2013 created new limits on the amendments which may be made to patents and applications. These reforms bring Australian law into line with most other developed countries.
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