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Fisher Adams Kelly Innovation Patents Found Valid

Issued: July 01 2011

Innovation patents drafted by Fisher Adams Kelly partner Paul Davis have recently been found valid and infringed in a decision handed down by the Full Federal Court of Australia in Seafood Innovations Pty Ltd v. Richard Bass Pty Ltd.

The first innovation patent relates to a fish stunning device, where the patent provides claims that include various features: a stunning device including a striker; a fish guide; and a trigger.

“Importantly, the fish guide is defined as including ‘a floor being pivotally movable between a first position and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit,” the firm said in a statement.

The respondent’s device included all of the claimed features, but also included cheek (side) plates and a top plate in addition to a chin plate (corresponding to the “floor” defined in the claims of the innovation patent). While the fish could not pass through the device without downward movement of the chin plate, movement of the cheek plates and top plate were also required to enable passage of the fish through the device.

In the first instance, it was successfully argued by the respondent that the lowering of the chin plate did not "allow a fish to pass". That is, if only the chin plate is lowered, the fish does not pass through the device. Therefore, no infringement was found.

This interpretation has been dismissed in the present appeal.

Regarding the second innovation patent, at the outset, both parties agreed that it was infringed by the respondent’s devices. The Appeal related to the primary judge’s decision that the claims of the innovation patent did not define the invention.

“In short, the claims are similar to those for the first innovation patent, but claim 1 at least excludes the feature of the fish guide including ‘a floor being pivotally movable between a first position and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit,’” the firm says.

Rather, the claim states that “a fish moves unidirectionally from the front entrance through the guide to the rear exit and the height of the striker is adjustable with respect to the fish guide.” The substance of the attack on claim 1 was that claim 1 did not include a limitation that the fish guide comprises a pivotally moveable floor and that this feature is essential to the invention.

“The outcome of the Full Federal Court case confirms the belief that innovations patents are extremely valuable intellectual property,” the statement said. “They have been confirmed as strong from an infringement perspective, having the same effect as a standard patent. They have also been confirmed as strong from a validity perspective being more difficult to revoke than standard patents. [IP owners] should consider the value of obtaining protection with innovation patents to compliment the protection they may obtain with a standard patent.”


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