This unit is different (write at top of exam for bonus mark)!
Topic 1: PATENTS
(1) Patents: Introductory Points & Terminology
(A) Introductory Points
i. Key points• An invention addresses a problem that is pre-existing.
• And the patent describes the invention.
ii. Background points
• Governed by the Patents Act 1990 (Cth).
• Registered system which permits the owner to exploit invention for the life of the patent.
• Types of patents in Australia
‣ Standard patent: gives long-term protection/control over an invention for up to 20 years.
• Property vs Intellectual Property
‣ Property: on exclusive owner to create wealth, to sell to others etc.
‣ Intellectual Property: Similar however, patents are inventions/new things — the different however is ownership over the replication.
‣ Less incentive to invent better unless deal/money is made out of it (a quid pro quo for the inventor) — ‘you have to pay me for the better version of the invention’.
• Monopoly
‣ Patent law comes in play here, document from the Crown/Monarch which states the inventor has a monopoly over the invention for 20 years, so no one else can make/sell/
deal with the better invention for 20 years. If they do = Infringement.
‣ Exclusive rights are held for 20 years (price for patent can change over time though, for e.g. pharmaceuticals begin expense, then after the 20 years become cheap).
• The Requirements of a Patent
‣ Two key sections: External & internal requirements for patents
■ s 18(1) External:
1. Has to be an invention: Manner of manufacture (within meaning of s6 SoM).
2. Has to be new: Novel (when compared with the prior art base).
3. Has to be inventive: Inventive Step (beyond anything previously done and when compared with the prior art base).
4. Can’t have been secretly used: Made available publicly.
■ s 40 Internal:
5. a) Internal requirements (s45(1)(a)).
! of !
2 125
This unit is different (write at top of exam for bonus mark)!
(B) Terminology
Patent documentation• Identifies then solves the problem.
‣ Claims: refer to different products (or parts) within the same invention, the patent is to the invention but the patent is more than the invention and each claim states/describes something slightly different.
Claims
• The monopoly asserted by a patentee or would-be patentee is crystallised in a series of statements (known as 'claims’) that appear towards the end of the patent document .
• Claims define (hopefully with precision) the scope of monopoly the patentee is claiming.
• They operate as warning to the rest of the world — that is competition, that they should not stray within the boundaries or they will infringe the patentee’s monopoly.
• Range from general to site specie, that is, to more limited claims that fall within the scope fo a more general and wider-ranging claim.
Patent specification
• The bulk of patent documentation that precedes the claims = ‘the specification’.
• Specification usually contains a much fuller description of what the problem is that the patentee has sought to overcome, an account of how the patentee has done this (ie a description of the invention he/she has claimed to ahem made - and a further description of how this may be carried out).
• Also illustrations or drawings (figures).
• Important issues arise wth respect to the construction of patent specifications and claims, and particularly with respect to the relationship that the latter bear towards the former.
Narrow/Broad Claims
• Why have them? You don’t want to have all your eggs in one basket. I done claim is rejected you want to refer to there elements of the invention in other clams to ensure the whole product/invention is correctly patented.
‣ Need to be specific with regard to terms you use within claims, cannot be broad!
‣ Integers: are the individual complete part of the claim (integers = a complete thing)
‣ Each claim must be novel, inventive etc — if it is valid, then the question is had the description made a product that covers al the integers in the claim?
Statue of Monopolies
• Patent law in Australia is derived from the Statue of Monopolies 1623 (UK)
‣ Section 6 of SOM: “provided also and be it declared and enacted that any declaration before mentioned shall not extend to any letters patent and grants of privilege, for the term of 14 years or under hereafter to be made of the sole working or making of any manner of new manufacture within this realm to the true
! of !
3 125
This unit is different (write at top of exam for bonus mark)!
and first inventor and inventors of such manufactures which others, at the time of making such letters or grant, shall not use, so as also they be not contrary to the law, nor mischievous to the state, by raising prices of commodities at home or hurt of trade or generally inconvenient”.
Rationale for Protection
• The Act aims to encourage technical innovation/maintain incentives for investments on the one hand and on other hand, foster diffusion of new technology’s benefits to consumers.
• The Act is based on the concept of a social bargain — patent law reflect a contract between the innovator and the public.
• The investor fully discloses its invention to the public (rather than keep it confidential) and in return a statutory property grant is given by society for a finite term.
• According to social contract theory, the paten grant represent a quid pro quo between investor and society, which justifies the regime.
Concept of an Invention
• The principles or laws of nature involves: the natural phenomena or properties of the substances or things employed;
• The method of application of those principles: a process of manufacture;
• The immediate result produced by that process or method of application: some identifiable article or substance; and
• The ultimate result achieved: the object to be attained or the use to which the more immediate result is applied. Also…
• Patent system grants rights in respect of inventions rather than discoveries
• The essences of invention requirements some human intervention — an invention is a practical product or process and not information about the natural world
• Thus discoveries in nature where there is a mere description of existing things and their functions appear to be outside the concept.
Provisional Applications
• Before applying for patent, can file a provisional application — which establishes a priority date (proves you are first to come up with invention) — equivalent to a place holder.
• Signals intention to file full patent application later (however filling a PA on its own doesn’t give you patent protection).
• To claim priority date of provisional application, must apply for a patent (standard) ie file a complete application within 12 months of filing the provisional application.
• General rule: priority date for invention is date which you first filed a patent application that described your invention in detail.
‣ To get earliest possible priority date on invention, you can file provisional application (PD gives jump on competitors).
‣ If inventor decides to apply for standard patent, can use priority date from provisional application (useful where dispute over who came up wth idea first).
! of !
4 125
