Author: Peter Caporn
We’ve all heard about it. In fact, if there’s a talk being given or an article being written about innovation in mining or resources then it will no doubt make reference to Rio Tinto’s innovative approach to mine site operations.
With all this innovation happening there is a level of intellectual property being generated. Once the intellectual property is generated the intellectual property management systems of a well run organisation should identify it and subject it to a decision making process in which a determination is made as to how it is best handled. Is it a trade secret? Is it patentable? If so, what then? Do you publish in an effort to ensure no one else can protect it, or do you file your own patent application with a view to exclude others or perhaps to license the technology?
Getting back to Rio Tinto. What does Rio Tinto’s view of their intellectual property mean to another miner? What possible impact could that have on your operations and how you choose to run your business?
Quite a lot as it turns out. Rio Tinto, through a subsidiary called Technological Resources Pty Ltd, chooses to protect a wide array of technologies by way of patents in Australia and overseas. A cursory review of publically available patent records will reveal the full list. Wrays conducts regular watching searches on certain technology areas as we know that developments in specific areas will be of interest to many of our clients. Amongst these records we find various of Rio Tinto’s Australian patent applications as they’re published upon acceptance. That is, each of the published records we see have been accepted by the Australian Patent Office as being fit for grant as an Australian patent. In fact, each of these applications will be granted if a third party doesn’t oppose the grant.
Rio’s Australian Patent Application
One such application recently came to my attention – Australian Patent Application 2010305329, titled “A Mine Operation Monitoring System”. The full specification of the accepted patent application can be accessed here.
I was interested to see what aspects of the remote mine site operations were being protected. In the world of patent law there are certain things that can be protected, and some that can’t. Fundamentally, in the Australian context, something patentable should be new of ‘novel’, it should be ‘non-obvious’ or display an inventive step, and critically it should be for a ‘manner of manufacture’. This last requirement is a rather esoteric question, relating amongst other things to whether the invention relates to a vendible product and an artificially created state of affairs. This last point has recently been the subject of much legal consternation as cases relating to certain software programs and isolated genetic material have appeared in our Federal and High Courts. So the question of what was actually being protected was of interest.
As it turns out the subject matter of Australian Patent Application 2010305329 is, and I paraphrase, 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. You can see how neat this would appear on those large screens at Rio’s Operations Centre at Perth Airport.
If you delve into the prosecution history of Australian Patent Application 2010305329 you get a feel for what it was about this particular invention that was crucial in it meeting the novelty and inventive step requirements. The basic hurdle of ‘manner of manufacture’ didn’t figure in this examination. Cutting to the chase, it seems that the features of the invention that tipped it over the line into patentability was the specific depiction of the vehicles as mine vehicles, and the fact that the status information is embodied in the depiction of the vehicle, such as in the colour of the vehicle, rather than as some disembodied numbers or words floating nearby the vehicle on the display. Prior patents in non-mining fields were raised during examination but other specific applications, such as those in the field of emergency services, were not thought to be similar enough to prevent the application being accepted.
So, presuming that no third party is prepared to step in and oppose the grant of Australian Patent Application 2010305329 the application will go to grant some time shortly after 24 March 2016.
Will this ever be tested – we don’t know. I for one would certainly be interested to see whether teachings regarding the depiction of status information in one area of application are really not relevant to depictions in another.
What are the lessons to be learnt from Rio’s patent application? 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.