Overview

Patents are another form of IP rights a system under which people who come with new inventions are. They are granted exclusive rights to commercially exploit a novel, inventive and industrially applicable advance in the form or use of technology.

In the Internet you can get patents for a device or a method or a process. SO the Internet has a lot of ways you can do things, like downloading, and we also have the software, these are things you can get a patent for. Content is protected by copyright, and the patent system is relevant to all of the technology that makes up the Internet

Patents Act 1990 (Cth)

Administered by IP Australia by the Commissioner of Patents (based in Canberra and has offices in major Australia cities). There is a registration system as unlike copyright, you have go and apply for a patent.

History

Early History

Thee oldest, strongest form of IP – Patents - originated in Venice in Italian Renaissance (mid 15th century) The Venetian Statute of 1474 was similar in many ways to a modern patent statute:

We have among us men of great genius, apt to invent and discover ingenious devices; … If provision were made for the works and devices discovered by such persons, so that others who may see them could not build them and take the inventor’s honor away, more men would then apply their genius, would discover and would build devices of great utility and benefit to our Commonwealth”

This provides an incentive for people who can actually benefit form what they have done and more people are likely to engage in inventive activity.

In English law, in mid-1500s, Crown was granting monopolies, in return for annual payments to the Crown, royalties

House of Commons moved to abolish monopolies, except for the grant of Patents for Inventions

Enacted Statute of Monopolies in 1623, banning monopolies but creating a special limited exception in s 6

Statute of Monopolies 1623

s6 established an exception for “letters patent and grants of privilege for the term of 14 years or under hereafter to be made for the sole working or making of any manner of new manufacture within the realm to the true and first inventor and inventors of such manufactures which others, at the time of making such letters patent or grant, shall not use, so long as they be not contrary to the law or mischievous to the State …or generally inconvenient”

Our patent law still incorporates principles from the statute of monopolies. Our patent law refers to s6 of the statute if you look at the definition there is a Reference to “manner of (new) manufacture” in 1990 Patents Act

Element 1: Categorise Patent

Patent when granted confers monopoly from date of filing of complete specification (“date of the patent”)

20 years from date of the patent for standard patents: s67; 5 yr extension for some pharmaceutical patents: s70 - Boehringer (2000)

8 years for innovation patents

Innovations Patents

Replace earlier petty patents (introduced in 1979)

Intended to offer more appropriate protection for lower-level inventions representing incremental advances - these should only be used for something that has a limited life span and may be readily superseded or exported overseas.

Provides local industry with a cheap form of patent which is fast and relatively easy to obtain

Element 2: Application and Registration Process

Patent attorneys:

Entitled to prepare all documents, transact all business and conduct all proceedings under Patents Act but not documents relating to litigation: s 200

It is an offence for a legal practitioner to prepare or amend a patent specification unless acting under instructions from a registered patent attorney or directions from a court (penalty $3,000): s 202

Patent applications

See the flow charts of steps involved in obtaining and maintaining patents in s 4 of Patents Act

Any person can apply for a patent - 2 or more can apply jointly: ss 29, 31

Apply by filling out patent request and other prescribed documents

Eligibility

  • (Have to be very careful because if you put a person who is not the inventor or forget to put a person on then your patent can be attacked and the grant of patent may not be given or could be removed.)

oA person, 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 eg 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

Application process commences with filing of patent request + prescribed documents: s 29(1) and then filing them.

Sub Element 1: Provisional or Complete Application

Provisional Applications

Provisional app must be accompanied by a provisional specification

This is just the description of the claim.

Complete application must be accompanied by a complete specification: s29 (2) - (4)

This is the claims are sub-paragraph which describe the elements that make up the invention.

A provisional specification must simply describe the invention - usually does not have claims: s 40(1)

For standard patents, process can begin with a provisional spec

Then has up to 12 months to lodge complete application: s 38(1)

Provisional spec lapses if complete spec not lodged within 12 months: ss 38, 142(1)

This is important as it Establishes (early) priority date - applicant has further time to work on it, and when we look at novelty or inventiveness getting the earliest priority date is important as that is the date from which your invention is actually assessed against other technology that is out there.

And if provisional specification matches what you put in your specific specification at a later date, then the provisional specification will still hold and will trump over any other invention that has come along between your provisional and specification 12 month period.

Complete Applications

Describe the invention fully, including the best method known to the applicant of performing the invention

For an innovation patent, have 1 to 5 claims

For a standard patent, end with a claim or claims defining the invention: s 40(2)

Claims must be clear and succinct and fairly based on matter described in the specification: s 40(3)

The claim or claims must relate to one invention only: s 40(4)

The specification describes the invention, while the claims define the invention: EMI v Lissen (1939)

What is not claimed is disclaimed: EMI v Lissen (1939)

Claims and “body” make up the complete specification: Kimberly Clark Australia v Arico Trading (2001)

Claim must disclose an invention, but need not identify the inventive step

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

Applicant can request documents to become open to public earlier than this: s 54

Element 3: Priority

Establish the earliest time from which the applicant’s rights can be legally recognised

After grant, patentee’s rights operate from the priority date

Priority date is the date at which novelty, inventiveness or degree of innovation (for innovation patents) is assessed against the prior art base

Priority dates (contd):

Filing of a provisional or complete application establishes a priority date for claims: s 43(2)

Each claim has a priority date; different claims may have different priority dates: s 43

Priority date will often be filing date of complete specification

But, filing date of provisional spec will establish priority date if claims in complete spec are fairly based on information disclosed in the provisional: s43(2)

Priority dates (contd):

Can be secured from foreign applications

International filing of a PCT application establishes the priority date for Australia: ss 88 - 93

If application is made in a Paris Convention country, then an application is filed in Australia within 12 months, the foreign filing date is the priority date for Australian purposes: ss 94 - 96

International protection: There is no such thing as international patent however there is process where you can put in a single application at it would be recognized in a range of countries-this is the Patent Corporation Treaty (PCT) Application. On this you nominate where you want the patent to grant and it is forwarded to the patent offices in those countries.

No international patent

Need to file separate patent applications in each country or file a single application under the PCT procedures: ss 88 - 93

Signatories to the Paris Convention and members of the WTO are treated as “Convention Countries” under the PCT

International protection (contd):

PCT application designates various countries where a patent is required

Has same effect as a national/regional application in those countries/regions

Granting of patent is still left to national/regional patent offices

“national phase” does not begin until 20 or 30 months after the priority date - then the national fees become payable, translation may be required

Application is assessed according to the law of each country or region

Steps in application process:

Examination

Acceptance and publication

Pre-grant re-examination of complete specification

Opposition and sealing

Post grant re-examination

Revocation

Element 4: Revocation

Grant does not guarantee that patent is valid - remains susceptible to revocation through entire term: s 20

Application for revocation of patent or a claim may be made by Minister or 3rd party at any stage during life of patent: s 138(1)

Revocation (contd)

Grounds of revocation:

Patentee was not entitled to patent
Invention is not patentable
Patentee has contravened a condition in the patent
Patent or an amendment of the complete specification was obtained by fraud, false suggestion, or misrepresentation; or
The specification does not comply with s 40(2) or 40(3): 138(3)

Revocation (contd)

In infringement proceedings, the defendant can counter-claim for revocation of patent: s 121

In post-grant re-exam, if Commissioner makes an adverse report, he can revoke a patent, wholly or in relation to a particular claim: s 101; but must give patentee a reasonable opportunity to he heard before doing so.

Can be granted for a device, substance, method or process - or a combination of them

For standard patents - s 18(1):

Manner of manufacture within the meaning of s 6 Statute of Monopolies

When compared with prior art base before the priority date of the claim, is

Novel
Involves an inventive step

Useful

Not secretly used before the priority date of the claim by or with the authority of the patentee

(S18 -Page 347 of Text)

For innovation patents - “inventiveness” is replaced with “innovativeness”: s 18(1A)

Manner of manufacture within meaning of s 6 of Statute of Monopolies
When compared with prior art base before the priority date of the claim is
Novel
Involves an innovative step
Is useful
Was not secretly used before the priority date of the claim by or with the authority of the patentee

Exclusion for standard patents -

human beings and biological processes for their generation: s 18(2)

Exclusion for innovation patents -

Plants and animals and the biological processes for generating plants and animals - does not apply if the invention is a microbiological process or the product of such a process: s 18(3), (4)

Sufficiency of patent specification

Complete spec (body + claims) needs to provide detailed info fully describing the invention, including the best method known to the applicant of performing it: s 40(2)(a)

There must be a claim/s defining the invention that is clear, succinct and fairly based on the matter described in the specification: s40(2), 40(3)

Reason for this is to “teach and inform those concerned to know the state of the art in a particular area at the time the patent is applied for”: Décor v Dart

“best method” requirement usually satisfied by “including in the spec a detailed description of one or more preferred embodiments of the invention, with reference to drawings of specific mechanisms or structures or examples of specific process conditions or chemical formulations, depending on the field of the invention”: Firebelt v Brambles (2000)

Claims and specification are to be read by giving the words the meaning which a normal person, acquainted with the state of the art and the manufacture at the relevant time would give them, in the light of the common general knowledge

“will the disclosure enable the skilled addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty”: Kimberly Clark v Arico (2001)

A specification is insufficient if on reading it a person with reasonable skill in the relevant art would not understand how to perform the invention

The claims, as well as the body of the complete specification, are to be considered in determining whether it fully describes the invention as required by s 40(2): Kimberly Clark v Arico (2000) HCA

Fair basing - s 40(3)

Claim/s must be clear and succinct and fairly based on the matter described in the specification

Involves comparison between the matter described in the spec and the claim which defines the scope of the monopoly

Question is a narrow one: does the claim as expressed “travel beyond the matter disclosed in the specification?”

Fair basing (contd)

Gummow J in Rehm v Websters Security System (1988): “whether there is a real and reasonably clear disclosure in the body of the spec of what is then claimed, so that the alleged invention as claimed is broadly described in the body of the specification?”

Issue of fair basing arises where application has commenced with a provisional spec - further work before complete spec is filed - are claims in the complete spec fairly based on matter disclosed in the provisional spec to claim the earlier priority date?

Concept of “inherent patentability:”

Wording of s 18(1) implies existence of a threshold requirement of inventiveness to be satisfied before other elements of s 18(1) or 18(1A) are considered

Necessary quality of inventiveness must be apparent on the face of the patent specification: NV Philips Gloeilampenfabrieken v Mirabella (1995); Advanced Building Systems v Ramset Fasteners (1998)

A patentable invention must be a “manner of manufacture” within the meaning of s6 of the Statute of Monopolies: s.18(1)(a), 18(1A)(a)

Definition of “invention” is “any new manner of manufacture the subject of letters patent or grant of privilege within s6 of the Statute of Monopolies”

Leading case on meaning of “manner of manufacture” is re NRDC (HCA, 1959)

“manufacture” is a general title to describe the category of patentable inventions

not simply a matter of verbal interpretation

any attempt to precisely define “manufacture” will fail

Re NRDC:

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;

“Is this a proper subject matter of letters patent according to the principles developed for application of s.6 of Statute of Monopolies?

“manner of manufacture” is a dynamic concept - meaning has evolved and continues to do so

hardware devices - products - clearly a manner of manufacture - patentable if other criteria are met

but what about computer software?

Some subject matter is considered inherently unpatentable:

the materials protected by c/r

ideas per se

mathematical algorithms

scientific principles

laws of nature

Up to early 1990s, IP Australia rejected many applications for software patents

rejected as involving abstract ideas, intellectual processes, mathematical algorithms

not considered to be a patentable “manner of manufacture”

also rejected as “mischievous to the state and generally inconvenient”

Turning point in Australia was IBM v Commissioner of Patents (1991) (Text-pp354-359).

court applied a broad test for manner of manufacture, based on principles in re NRDC (1959)

a method of producing an improved curve image in computer graphics displays was patentable - a “commercially useful effect” in computer graphics

IP Australia issued guidelines in 1994

state threshold test for patentability of software inventions in broad terms

“Does the invention claimed involve the production of some commercially useful effect?”

Examples:

improved curve image, as in IBM

algorithm causing computer to operate more efficiently

but, an algorithm per se still unpatentable - does not produce a commercially useful result

CCOM v Jiejing, Full Fed Ct, 1994 - confirmed IBM decision (Cemented the possibility of patentable computer program). (Text on pp359-365)

involved computer + software + database for word processing in Chinese language characters

conventional computer system, VDU, specially adapated keyboard, database of Chinese characters arranged according to stroke type and order strokes are written, computer program which searched database

Fed Ct applied re NRDC test

invention was a patentable manner of manufacture

involved a “mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour”

field of economic endeavour: Chinese language word processing

End result: retrieval of characters for assembly of text on the computer screen

mode or manner of achieving this: storage of Chinese characters, categorised and stored according to stroke categories, and which could be searched and selected by reference to those criteria

-This has not been challenged or doubted and a computer still may be patentable.

Business methods

State Street Bank v Signature Financial Services (1998) US Court of Appeals (Text-pp370-375)

-Involved Software that had way of calculating contributions, and what was new was the way the transaction could be done.

-Could this be the subject matter of a patent?

-Rich J said that it was a total misconception to think that business methods had ever been excluded under scope of patentable subject matter in US Law. It was wrong to say and there were no cases that held that business methods were excludable.

-If you have something that it is produces as observable output and is economically relevant there is no reason for excluding this kind of technology, of course it still has to meet other criteria, but it is not excluded.

Welcome Real Time v Catuity Inc (2001) - Heerey J referred with approval to State Street (Text-pp365-370)

Involved smart cards with a chip that enabled operators to load software onto a computer and increase and decrease customer’s loyalty points.

Referred to what Rich J said

Categories of patentable subject matter are being extended

Methods of medical treatment of the human body (as distinct to cosmetic processes)

Joos v Commissioner of Patents (1972)

Anaesthetic Supplies v Rescare (1994)

Bristol Myers Squibb v F H Faulding (2000)

Full FCA - method of administering taxol in therapy is a patentable manner of manufacture

Other limits - s 6 Statute of Monopolies

Excludes patents for inventions that are “contrary to law or mischievous to the State or generally inconvenient”

S 6 incorporated into definition of “invention” in s 18(1)(a) and 18(1A)(a)