Almost 3 years ago I wrote an article discussing some of the issues associated with patent protection being obtained relating to remote mine site operations. That article can be accessed here.
That article is the most viewed article of the many I’ve written and published on the LinkedIn platform. This demonstrates the high level of continuing interest in remote mine site operation, and what has increasingly grown to become referred to an ‘autonomous mining’.
The virtues of autonomous mining are often spruiked as the way forward for the industry, and there are certainly many clear benefits for the miners and their shareholders, for those working in or on the mines, and for consumers. However, the issue of the miner’s social license to operate is often raised, particularly in reference to concerns that jobs are, arguably, being lost – if not in the short term, with displaced workers being retrained into other jobs – perhaps over time we will simply see less intake relative to what might otherwise have been.
Dynamic Depiction of a Vehicle
The earlier article looked in particular at a Rio Tinto/Technological Resources patent application directed to a method of depicting in a dynamic manner a vehicle on a map of a mine operation, so that the depiction of the vehicle actually looks like a mine vehicle (and not, say, a blob or a box). The colour or some other identifier of the vehicle depicted indicates the status, such as whether the vehicle is full or empty. Should the status of the vehicle change, the identifier changes too.
Many readers of this earlier article expressed surprise that a relatively ‘minor’ change, being the depiction of the vehicle in question as a mine vehicle, was considered to provide the necessary quality of novelty and inventive step for an Australian patent, particularly as there were earlier disclosures of arguably similar systems relating to emergency services vehicles and the like.
Taking this opportunity to ‘check back in’ with developments provides further insight into the intellectual property of autonomous mining. In my experience, the key features of the ‘digital mine’ most commonly discussed are 1. Driverless trucks, and 2. Autonomous drilling. Let’s look at the second feature this time around, but still with reference to Rio Tinto and their subsidiary Technological Resources Pty Ltd.
Australian Patent Application 2010249159 is titled “A system and method for the autonomous drilling of ground holes”. The application has been filed in the name of both Technological Resources Pty Ltd and The University of Sydney. Interestingly, it still remains pending, despite having been filed in 2010. This is due to various factors, including the fact that an opposition had been filed to the grant of the patent, and an opposition filed in respect of amendments being sought to be made to the patent application.
The technology, expressed in its broadest form, is simply a method for autonomous drilling of ground holes by a ground rig that includes a ‘drilling arrangement’, and using an autonomous drilling procedure to control the drilling arrangement to drill the hole once the rig is positioned where the hole is to be drilled (excuse the circular language). At a more detailed level this includes a processor that selects steps based on ‘statuses’ of the rig or drilling arrangement. There further may be a ‘remotely located operator’ who can intervene for any necessary over-riding or reprogramming.
The party that opposed the grant of the Australian patent, Epiroc Australia Pty Ltd, clearly did not believe that Technological Resources Pty Ltd and The University of Sydney deserved to be granted a patent to such an arguably broad technology. However, what we can see is how the process of opposition to the grant of a patent can have an impact in Australia.
A third party that believes it may be disadvantaged by the grant of a particular patent to another party or parties has the right to intervene in that process by filing an opposition. A three month window is provided after the advertisement of acceptance of an application for the filing of such an opposition. The opposition then plays out through the filing of a statement of grounds and particulars and several evidentiary stages.
As noted in my previous article on this topic, Wrays conducts regular watching searches in certain technology areas, or for specific patent applicants, as we know that developments in specific areas will be of interest to many of our clients.
A quick review of the publically available records for Australian Patent Application 2010249159 shows that the opposition to grant, and the opposition to amendment, were withdrawn. This often occurs when the parties get together and reach an ‘arrangement’. Such an arrangement may include a license, that may be confidential and royalty free if the patent is at all tenuous, but which allows the patent applicant to obtain their patent.
Unfortunately for Rio and the University, the Patent Office has decided that some of the prior patent references relied upon by the opponent are sufficiently relevant for them to conduct a ‘re-examination’ of the patent application. It is the nature of patent oppositions that a third party trying to prevent the grant of a patent application will research the area in an attempt to find prior patent and other publications, or evidence of prior uses, that are relevant to what is alleged to be the invention. So, even if an opposition is withdrawn as in the present case, the Patent Office can choose to re-examine the application in an effort to ensure that an invalid patent is not granted.
The re-examination remains ongoing so it remains to be seen what impact it will have. It may be that Rio and the University can mount an appropriate argument, or proposed sufficient amendment, to overcome the issues raised.
Another twist to this tale perhaps encapsulates all that is good, and all that is bad, about Australia’s innovation patent system. Amongst all the activity described above, Rio and the University filed an innovation patent application as a divisional of Australian Patent Application 2010249159, indirectly (there was in fact a further intervening divisional application).
This is not uncommon as it can perform both a defensive measure – providing a backstop level of protection, albeit that only 5 claims are allowed and the maximum term is 8 years – and also a proactive measure, in that the lower threshold of invention, the innovative step, provides a robust weapon when asserting your intellectual property against another party.
The Australian innovation patent is unlikely to be an option in years to come. The Australian government appears determined to abolish this form of protection some time in 2019, despite the protestations of the Institute of Patent and Trade Mark Attorneys of Australia and many others, including the writer. This outcome is the result of a review of Australia’s IP protection regimes by the Government’s Productivity Council. It seems that the innovation patent regime hasn’t achieved the goals it was set when originally implemented, which was at least in part to provide a quick and relatively easy option for obtaining patent protection that would be taken up by small and medium enterprises. To my mind this remains to be settled.
Life After Death?
The good news is, based on what we currently know, that even once the innovation patent has been abolished, it will remain an option for those who, at the time of the abolition, were otherwise in a position to file an innovation patent. For example, if you have a pending standard patent application at the time of the introduction of the amending legislation, you will retain the right to file an innovation patent divisional from the standard patent application as long as it remains pending.
What does all this mean? It means that despite the opposition from a third party, and despite re-examination by the Patent Office, Rio and the University of Sydney have a certified innovation patent in force that provides them with the exclusive right to exploit a method for drilling ground holes using a mobile drill rig that permits ‘the speed of drilling holes to be balanced against the stability of the hole thus formed’, with several additional limitations relating to features touched on above.
What are the lessons to be learnt? Firstly, you must consider what may have been patented in a field before adopting a course of action in developing a mine, adopting a processing technology or running a mine site. There are serious due diligence considerations inherent in this decision making and equally serious obligations on those running the business should this not be done.
Second, never dismiss a good idea as ‘not patentable’ or ‘not worth protecting’. As you can see from this example, it doesn’t need to be rocket science and nor does it need to be quantum leap from what’s gone before.