LAWS5150 IP Law Exam Notes
1. REQUIREMENTS FOR PATENTABILITY ... 2
2. PATENTS: NOVELTY, INVENTIVE STEPS AND UTILITY ... 12
3. PATENTS: RIGHTS, INFRINGEMENT AND OWNERSHIP ... 26
4. THE TORT OF PASSING OFF ... 36
5. TRADEMARKS ... 45
6. REGISTERED DESIGNS ... 60
7. COPYRIGHT ... 66
PATENTS STRUCTURE
1. Is it an INVENTION? (i.e. is it patentable?) a. Manner of Manufacture under s.6 SoM
i. What is the substance of the claim?
ii. Has the substance of the claim been made, or is it artificial?
iii. Economic utility of the invention
I.e. D A c chilling effect on market if patent upheld iv. New class of claim?
2. Is it NOVEL? Ask has novelty been destroyed/has there been anticipation?
a. Does the prior art information disclose information that enables the so-called invention to be performed by a skilled addressee in the relevant art? (Nicaro Holdings)
i. If NO novel ii. If YES not novel
iii. Looking at DISCLOSURE has the invention been publicly disclosed to the extent that a person skilled in the relevant art could reproduce it?
Damorgold: allowing the general public to hold an assembled item is not communicating it to the relevant person with skill to see how it operates (they cannot see the internal componentry without disassembly) See British Acoustic Films for e tent of a skilled addressee s
knowledge
iv. Windsurfing: Does the prior art information detail the essential inventive step f e a ff a e ?
3. Has there been an INVENTIVE STEP?
a. Determine patent specification and problem the invention solves b. Identify relevant art and hypothetical skilled person
c. Identify common general knowledge of hypothetical skilled person d. Assess any publicly-available prior art information
i. If the HSP could be reasonably expected to have ascertained, understood and regarded as relevant such information combines with the above common general knowledge
e. Ask: would the hypothetical non-inventive skilled addressee faced with the same problem been directly led from the prior art to try the technology of the patent, with the
expectation that it would work?
i. Would the claimed invention have been OBVIOUS to the person skilled in the relevant art when faced with a particular problem
ii. Nicaro Holdings: Where the common general knowledge leads away from claimed solutions adds weight to being INVENTIVE
4. Is the invention USEFUL?
a. s.7A(2): must disclose a use for the proposed invention that is sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art b. Has there been Secret Use?
i. I.e. has the applicant been secretly using the invention prior the priority date of the claim?
Requires intent to conceal: Bristol-Meyers; R W a Azuko: Use does not include manufacture ith intent to sell
1. REQUIREMENTS FOR PATENTABILITY
(A) D
EFINITION OF A PATENTA patent is a monopoly that grants to its holder (the patentee) the exclusive right to exploit an invention for a fixed term.
Patents will only be granted to inventions satisfying certain requirements (as seen below)
The rights of a patentee are statutory in origin deriving from Patents Act 1990 (Cth)
In return for a statutory monopoly, the patentee must make full disclosure of the details of their invention on the Register of Patents
LENGTH OF PATENTS:
o Standard Patent 20 years (cannot be extended) o Innovation Patent 8 years (cannot be extended)
Less requirements does not need to be inventive But also less protection
TRIPS AGREEMENT, Art. 27.1 Three-step system
...patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are:
o 1. New (novel);
o 2. Involve an inventive step and;
o 3. Are capable of industrial application (useful)
...patents shall be available and patent rights enjoyable without discrimination as to the ...field of technology
Australian Patents Act 1990 (Cth), s.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:
o (b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step; and o (c) is useful
(B) P
ATENTA
PPLICATIONP
ROCESSObtaining a Standard Patent
Legislation describes registration system, then rights conferred upon registration, and rights arising out of infringement, etc.
File Application
o An application for a patent must be registered with the Patent Office by lodging a complete specification. Date of lodging = priority date o Complete specification includes: a full description of the invention, a
statement setting out the best method kno n of performing the invention, and the claim or claims defining the invention.
o An applicant may choose to lodge a provisional specification prior to lodging the complete specification allows for an earlier priority date.
o Patent applications are very much a specialist area. It is essential to get specialist advice from a patent attorney.
Publication of application (in the Australian Official Journal of Patents) Examination:
o After publication, a Patent Office examiner examines the specification, both for formal legality and for conformity with the substantive requirements of patentability
The Patents Office works on the basis that an application should only be rejected if the patent is clearly bad
see s.49(1): this is the Patent Office not the Patent Refusals Office
The Office does not guarantee the validity of granted patents Acceptance, Opposition and Rejection
o s.45: After the examination, the Examiner reports on the compliance of the specification with the provisions of the Act
On the basis of that report the Commissioner accepts or rejects the application.
o s.51: The Applicant can appeal the rejection in the Federal Court
o In the case of a Standard Patent, the decision to accept will be advertised in the Official Journal
Opposition
o s.59: After the acceptance is notified in the Official Journal anyone who wishes to do so can then lodge an opposition
If this happens an opposition hearing will be held: s.60 No oppositions are permitted for an innovation patent o s.60: Where the grant of a standard patent has been opposed, the
Commissioner will then make a decision to either reject or accept the granting of the patent
o s.60: The decision of the Commissioner resulting from the opposition hearing is open to an appeal to the Federal Court
Re-examination of patent
o s.97: re-examination of the complete specification may occur as part of an opposition
Possible revocation of granted patent o s.138: The court may revoke a patent
o Revocation is necessary where the court finds that the patent has been invalidly registered
This often occurs where a party sued for infringement of a patent cross-claims for revocation on the basis that the patent ought not to have been granted - see s.121
The P Da
System based on first to file; not first to invent.
Date of filing application = priority date Importance of the priority date:
o From the priority date, you can publicly disclose your invention (prior to that, public disclosure of invention would invalidate patent by destroying
no elt ).
o Once the patent is granted, protection dates back to the priority date.
The priority date for an overseas patent application will also be the date that the patent application was filed in Australia (provided overseas application filed within 12 months of the Australian application and the overseas country is a signatory to the Paris Convention)
Patents Act s.40 Specification
If the invention is not yet finalised, one can lodge a provisional specification
A provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art
(2) A complete specification must:
o (a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
o (aa) disclose the best method known to the applicant of performing the invention
Patents Act ss.40(3); (4) - Claims
The complete specification must include the claim or claims defining the invention The claims are the most crucial part of any patent application this is so because the claims define the scope of the patent monopoly and as such require careful drafting since hat is not claimed is disclaimed
o The claims must be clear and succinct and fairly based on the matter described in the specification
o Claiming too broadly can undermine novelty and/or inventiveness (such that the application will fail), and thus increases the risk that the patent will be ineffective against non-literal infringement
o If the claims are too narrow, they may unduly restrict the applicant s possible monopoly
o The claims are often drafted to reveal enough to claim monopoly and too little to give everything away but note for the patent to be valid, the complete specification must disclose the best method known to the inventor for working the invention
(C) W
HAT IS ANI
NVENTION?
Patents Act 1990 Schedule 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 [1623], and includes an alleged in ention.
Statute of Monopolies, s.6
‘The prohibition of monopolies in s. 1 “shall not extend to any letters patent and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patents and grants shall not use, so as also they be:
o Not contrary to the law;
o Nor mischievous to the state by raising prices of commodities at home, or hurt of trade; or
o Generally inconvenient….’
Patentable Subject Matter
Australian Patent Office, Examination Practice following the High Court decision in Myriad
In considering these matters, it is helpful to ask:
What is the SUBSTANCE OF THE CLAIM (not merely its form)?
o As stated above, the first step is to identify the substance of the claim. The specification, including the claims, provides the information to do this.
Relevant factors include:
The form of words and breadth of the claim.
The size of the class of compounds covered by the claim.
