PATENTS Flashcards
WHAT IS A PATENT
- Grant of exclusive rights to commercially exploit a novel, inventive and industrially applicable advance in the form or use of technology
- “…the patent system is recognised to be an imperfect instrument.
- Nevertheless it may be the best policy solution man can devise to the difficult trade off between, on the one hand, maintaining incentives for investment and, on the other hand fostering the diffusion of new technology’s benefits to consumers and to those who might make leapfrogging inventions”
Intellectual Property Competition Review Committee (IPCRC) 2000
PATENTS IN AUSTRALIA
- Patents Act 1990 (Cth)
- registration system, administered by IP Australia – Commissioner of Patents
- Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
- Two main categories: standard and innovation
- Innovation and standard
- (innovation patent to be phased out – last date to file 25/5/2021)
- patent confers “monopoly” from date of filing of complete specification (“date of the patent”)
- Length: 20 years for standard patent; 8 years for innovation patent
PATENT APPLICATION
- Any person can apply for a patent – 2 or more persons can apply jointly: ss 29, 31
- Who can be granted a patent?
- Any person/s, whether an Australian citizen or not, who is
the inventor; or
would be entitled to have the patent assigned to him when it is granted e.g. employer; or
derives title from the inventor or person who is entitled to assignment; or
the legal representative of a deceased person in these categories: s 15
STEPS IN PROSECUTION OF AN APPLICATION
- Application (provisional/complete within 12mths)
- Publication (after 18 mths)
- Examination (after 50 mths)
- Acceptance advertised in Official Journal (within 62 mths) – third party can oppose
- Patent granted (sealed) and entered in Register – Letters Patent sent to patentee (within 67 mths)
SPECIFICATION
- The specification describes the invention which is the subject of the patent, while the claims define the invention and establish the ambit of the patentee’s monopoly: EMI v Lissen (1939)
CLAIMS
- Complete specifications often begin with a “consistory” claim in wide terms, followed by narrower, dependent claims
- Claims must be carefully drafted, because their function “is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers … What is not claimed is disclaimed”: Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 39 per Lord Russell of Killowen; Bartlem Pty Ltd v CMMC Pty Ltd [2001] FCA 1218.
PUBLIC INSPECTION
- Complete specification usually becomes open to public inspection 18 months after date of filing or 18 months from the earliest provisional application associated with it
- By publication in Official Journal: s 53
- Third party may notify Commissioner of patents of prior art: ss 27, 28
EXAMINATION
- Preliminary search and opinion: s 43A (introduced by Raising the Bar Act)
REQUEST FOR EXAMINATION OF PATENT
- Within 5 years of lodging application: s 44(1)
- Or within 6 months of Commissioner direction to request examination: s44(2)
WHAT HAPPENS ON EXAMINATION
- if Adverse Report, applicant has time to respond
- if application is in order for acceptance, the patent request and complete specification is accepted
- S 45 (1) ..Commissioner must examine the request and specification and report on:
(a) whether the specification complies with subsections 40(2) to (4); and
(b) whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criteria mentioned in paragraphs 18(1)(a), (b) and (c); and
(c) whether the invention is a patentable invention under subsection 18(2); and
(d) such other matters (if any) as are prescribed. - Cf Examination of innovation patents
- No examination for innovation patent pre-grant, only a formalities check
when complete application is filed for innovation patent, it proceeds to grant if Commissioner is satisfied it meets the formalities: s 52;
exam occurs post-grant, if Commissioner decides to do so or upon request from patentee or third party, eg if the patent is to be enforced or challenged as invalid: s101A, 101B
GRANT OF PATENT
- By registering particulars of patent in the Register: s 61
- Details will be on register.
- Grant of patent is no guarantee of its validity: s 20
- Just because you have a patent with IP Aus doesn’t guarantee it is valid.
- Can be examined at any time, be revoked at any time.
- A person at any point can challenge validity
RE EXAMINATION
- Can be initiated by Commissioner at any time before grant
- After grant, must re-examine if directed by patentee, any other person or prescribed court: s 97
REVOCATION
- Can occur as a result of opposition, re-examination, cross-claim in infringement proceedings
- May revoke the whole patent or so far as it relates to a claim
TERM
- 20 years for standard patents (from date of filing of complete specification): s 67
- Possible 5 yr extension for some pharmaceutical substances: s 70
- 8 years for innovation patents
TIME AND COSTS
- Examples:
- Standard patent $370-$470 (depending on mode of application)
- Examination request $490
- Acceptance $250
- Cost benefits of PCT
- There is also maintenance costs.
SECTION 18
- Section 18:
(1) …an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is [1] a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is [2] novel; and
(ii) involves [3] an inventive step; (or “innovative step” for innovation patents)
and
(c) is [4] useful; and
(d) was [5] not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.
ELEMENTS OF A PATENT
- INVENTION
- MANNER OF MANUFACTURE
- NOVEL
- INVENTIVE STEP
- USEFUL
- NOT SECRETLY USED
INVENTION
- “a threshold requirement”
- that an alleged invention must satisfy before it need be tested against the listed heads of patentability in s 18: N V Philips Gloeilampenfabrieken v Mirabella International (1995) 183 CLR 655
- Necessary quality of inventiveness must be apparent on the face of the patent specification
- If not apparent, no need to proceed further
- Excluded matter:
- Some subject matter is considered inherently unpatentable:
Solely artistic creations (the materials protected by copyright)
Mere discoveries, scientific principles, theories or mathematical algorithms - They have to build on the theory/algorithm.
Mere ideas
Purely mental processes (?)
DEFINITION OF INVENTIVENESS
- Sch 1 Dictionary: “invention” means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention.
WHAT CAN A PATENT BE GRANTED FOR
- Patents can be granted for a:
(1) device/product/substance; or
(produced by following the instructions in the patent specification)
(2) method/process; or
(which can be used to achieve certain results by following the specification)
You have to specify how it achieves that result.
(3) a combination of (1) and (2)
MANNER OF MANUFACTURE
- “manufacture” is a general title to describe the category of patentable inventions
- a dynamic concept
- meaning has evolved and continues to do so: NRDC case
- Common law meaning, not literal interpretation
- Leading case on meaning of “manner of manufacture” – NRDC v Commissioner of Patents [1959] HCA 67
AREA WHERE SCOPE TESTED IN MANNER OF MANUFACTURE
- Methods of medical treatment
- Biotechnology
- Software
- Business methods
NRDC FACTORS
Patentable subject matter is broad and flexible
Concept must accommodate inventions not yet envisaged
* See [15]
Artificially created state of affairs
* Must produce a new and useful result of specific practical application
* Cf an inevitable result of that which is inherent in the plant
Leading to an economically useful result
* a “vendible product” of “industrial or commercial or trading character”
* Economic utillity – ‘a patentable invention is one that offers some advantage which is material, in the sense that it belongs to a useful art as distinct from a fine art … its value to the country is in the field of economic endeavour’;
METHODS OF TREATING THE HUMAN BODY
- There was some assumption it was an exception for method of treating human body.
- They can in fact be patentable – condirmed in 2013 case.