PATENTS TEMPLATE
PATENTS TEMPLATE - Potentially discuss potential infringements first? Cos you can discuss patentability later under possible revocation - if the patentee sues anyone for infringement they are most likely going to cross claim for revocation. This can be done under s138(3)(b), on the basis that the patent is not a patentable invention - If our client sues anyone for infringement, they are likely to cross-claim for revocation under s138(3)(b) on the basis that our client’s patent is not a patentable invention or s138(3)(f) on the basis that our client’s patent specie doesn’t comply with s40(2)+(3) requirements • A patent is personal property, capable of assignment and devolution by law; s 13(2) • A patent may be granted to the inventor, or successor in title, regardless of Australian citizenship; s 15 • Patents can be co-owned; s 16. • Registration is not proof of validity; s 20.
1. How does the patent system work? See notes for detail on following:
• • • • • • • • • •
Application and priority date Specification and claims Solicitors and patent attorneys Examination by commissioner Opposition and other challenges Maintenance Duration Maximum period of protection is 20 years: s67. Innovation patents PCT applications
2. Is the patent within a contentious area? See notes • • • • • •
Human treatment exception – No o Bristol-Myers Squibb Agricultural and horticultural processes – Yes o NRDC Schemes, methods and systems – No o Rolls-Royce Ltd’s Application Business systems – No o Grant v Commissioner of Patents Computer software – Maybe, depends on purpose. o IBM Corporation v Commissioner of Patents Living organisms – Most likely, not humans or biological processes. o American Cyanamid v Berk Pharmaceuticals o Diamond v Chakrabarty
Is the Patent Registrable? 3. s 18 Basic Propositions
• • • • • • •
A patentable invention is an INVENTION Invention that is MANNER OF MANUFACTURE Invention must be NOVEL (when compared to PAB) Invention must involve an INVENTIVE STEP (when compared to PAB) Invention must be USEFUL Invention must NOT have been SECRETLY USED before priority date. Cannot patent people or processes.
4. Is it an ‘INVENTION’? •
NDRC: 1. Is it Vendible? o Expressed requirement of utility. Means saleable. o Is the significance of the product economic (must provide an advantage) 2. Do you have a Product? o Consists of an ‘artificially created state of affairs’
•
Where could inventiveness lie? NDRC o In a new method of using material. o In an adaption of material for a new purpose. o Hitherto unknown property is discovered and used. o Practical method of using the invention. § Can have discovery without invention – think abstract. § Only need one inventive step. § Can be rejected if there is a lack of newness. • Rogers v Commissioner of Patents – its not an invention if it’s a mere use of a known or old thing
5. Is it a ‘MANNER OF NEW MANUFACTURE’? • •
•
Don’t try to define ‘manner’ and ‘manufacturer’. ASK – What is the breadth of the concept, which has been developed in considering the text and purpose of the Statute?? o Concept of how it has been ‘made and manufactured’. o ‘Patents must not be contrary to law or mischievous to the state. Must not be counter to public policy or harm the state interest. They could raise prices or damage or be generally inconvenient; s 6 Statute of Monopolies. o May be refused where ‘specification on its face’ shows the invention claimed is not a manner of new manufacturer; Commissioner of Patents v Microcell. Rogers Case o Additional threshold for patentability – Is the mode of using the contrivance new (rather than just it’s purpose) = newness. o Can have a patent when a known substance, is used to create a result which was not known to be attainable by such means. Or a combination of known substances is used to produce a new result. o Contrivance may be modified for a new purpose.
ANSWERING COPYRIGHT QUESTIONS Is the material in question capable of copyright protection? (e.g. is it idea or expression, has it been reduced to material form? (s 22, s 10) Is it a work? If so, what kind? (ss 32, 10) Is it subject matter other than works? If so, what kind? (ss 89-92) Is it original? (s 32) Who owns copyright in it? (ss 35, 97-100, 78-83) What actions does the copyright owner have exclusive rights to (re this type of material)? (ss 31, 85-88) Have any of these actions been carried out by an unauthorised person? (If there is a reproduction, is it direct or indirect? E.g. different dimensions, intermediate forms, s 21 etc.) Have possibly infringing actions been carried out regarding a substantial part of the original material? (s 14) Is there a causal connection between a reproduction etc. and the original? Has there been an indirect infringement of the copyright (e.g. sale, importation, ss 102, 103, 36-39A) Are any defences available? (eg fair dealing, ss 40-42 etc., 103A,B,C etc.) What remedies would be sought? (s 115) Has there been any infringement of the author’s moral rights? Have any criminal acts occurred?
1. How does the patent system work? See notes for detail on following:
• • • • • • • • • •
Application and priority date Specification and claims Solicitors and patent attorneys Examination by commissioner Opposition and other challenges Maintenance Duration Maximum period of protection is 20 years: s67. Innovation patents PCT applications
2. Is the patent within a contentious area? See notes • • • • • •
Human treatment exception – No o Bristol-Myers Squibb Agricultural and horticultural processes – Yes o NRDC Schemes, methods and systems – No o Rolls-Royce Ltd’s Application Business systems – No o Grant v Commissioner of Patents Computer software – Maybe, depends on purpose. o IBM Corporation v Commissioner of Patents Living organisms – Most likely, not humans or biological processes. o American Cyanamid v Berk Pharmaceuticals o Diamond v Chakrabarty
Is the Patent Registrable? 3. s 18 Basic Propositions
• • • • • • •
A patentable invention is an INVENTION Invention that is MANNER OF MANUFACTURE Invention must be NOVEL (when compared to PAB) Invention must involve an INVENTIVE STEP (when compared to PAB) Invention must be USEFUL Invention must NOT have been SECRETLY USED before priority date. Cannot patent people or processes.
4. Is it an ‘INVENTION’? •
NDRC: 1. Is it Vendible? o Expressed requirement of utility. Means saleable. o Is the significance of the product economic (must provide an advantage) 2. Do you have a Product? o Consists of an ‘artificially created state of affairs’
•
Where could inventiveness lie? NDRC o In a new method of using material. o In an adaption of material for a new purpose. o Hitherto unknown property is discovered and used. o Practical method of using the invention. § Can have discovery without invention – think abstract. § Only need one inventive step. § Can be rejected if there is a lack of newness. • Rogers v Commissioner of Patents – its not an invention if it’s a mere use of a known or old thing
5. Is it a ‘MANNER OF NEW MANUFACTURE’? • •
•
Don’t try to define ‘manner’ and ‘manufacturer’. ASK – What is the breadth of the concept, which has been developed in considering the text and purpose of the Statute?? o Concept of how it has been ‘made and manufactured’. o ‘Patents must not be contrary to law or mischievous to the state. Must not be counter to public policy or harm the state interest. They could raise prices or damage or be generally inconvenient; s 6 Statute of Monopolies. o May be refused where ‘specification on its face’ shows the invention claimed is not a manner of new manufacturer; Commissioner of Patents v Microcell. Rogers Case o Additional threshold for patentability – Is the mode of using the contrivance new (rather than just it’s purpose) = newness. o Can have a patent when a known substance, is used to create a result which was not known to be attainable by such means. Or a combination of known substances is used to produce a new result. o Contrivance may be modified for a new purpose.
ANSWERING COPYRIGHT QUESTIONS Is the material in question capable of copyright protection? (e.g. is it idea or expression, has it been reduced to material form? (s 22, s 10) Is it a work? If so, what kind? (ss 32, 10) Is it subject matter other than works? If so, what kind? (ss 89-92) Is it original? (s 32) Who owns copyright in it? (ss 35, 97-100, 78-83) What actions does the copyright owner have exclusive rights to (re this type of material)? (ss 31, 85-88) Have any of these actions been carried out by an unauthorised person? (If there is a reproduction, is it direct or indirect? E.g. different dimensions, intermediate forms, s 21 etc.) Have possibly infringing actions been carried out regarding a substantial part of the original material? (s 14) Is there a causal connection between a reproduction etc. and the original? Has there been an indirect infringement of the copyright (e.g. sale, importation, ss 102, 103, 36-39A) Are any defences available? (eg fair dealing, ss 40-42 etc., 103A,B,C etc.) What remedies would be sought? (s 115) Has there been any infringement of the author’s moral rights? Have any criminal acts occurred?
