All sections references are refering to the Patents Act 1990 (Cth) unless otherwise noted.
|Priority date||The date at which the novelty and inventiveness of the invention are assessed against the prior art base - usually the date the patent application is filed (S 43)|
|Prior art base||Publicly available information that describes the state of the art (state of existing known technology - latest and greatest)|
|Novel||Has not been disclosed publicly in a document or used in the public in a way observable by members of the public, or two or more documents or acts which together disclose the invention (s 7)|
|Inventive||Not obvious to a person skilled in the relevant art (or field of technology)|
|Patent area||Australia and the Australian continental shelf (Sch 1)|
|Complete specification||is made open to public inspection ('OPI') 18 months after filing (ss 54-55)|
The Requirements of Patentability
Section 18 provides that an invention is patentable if it is:
- A “manner of manufacture” within the meaning of section 6 of the Statute of Monopolies (i.e. is patentable subject matter, being either a product or process)
- is novel (as defined above s 7)
- involves an: inventive step (for standard patents); or innovative step (for innovation patents)
- is useful (must work/be possible)
- was not secretly used before the priority date (inventor not be permitted to not have an extension on patent term).
Patents are examined by IP Australia to decide whether they are inventions worthy of a patent based on the above requirements. This is compared agaisnt the prior art base as it existed at the priority date.
Non-patentable Subject Matter
S 18(2): Human beings, and the biological processes for their generation, are not patentable inventions.
- Arguably excludes methods of in vitro fertilisation from patentability.
S 18(3): For the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions.
The opening words of s 18 (1): “an invention is a patentable invention for the purposes of a standard patent if the invention…”
‘Invention’ is defined in Schedule 1: ‘[I]nvention 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.’
The word 'new' does not appear in s 18, only in the definition of invention. In s 18 is patentable if manner of manufacture, but in definition says “new” manner of manufacture. However, his difference does not create an additional element of patentability. Instead refer only to words of s 18, no need to incorporate the above definition (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2)(2007) 235 CLR 173, 211).
Requirement 1: Manner of Manufacture (Patentable Subject Matter)
Natalie McIntosh on Manner of Manufacture
This area is contentious at the moment.
S 18 requires a invention to be a manner of manufacture within the meaning of s 6 of the statute of monopolies. The meaning of 'manner of manufacture' was considered in the below case.
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252
- Facts: Appeal to High Court from a rejection by the Deputy Commissioner. Patent in question was a process/method -iInvolved a method of mixing known chemicals together and applying the mix to crops (alfalfa) in specific quantities to eliminate weeds, but not the crops. Method of producing a weedicide – not a patent for a product though, it is a patent for the process of creating that product. The application had been rejected because it was considered that this was merely a new use of a known substance and did not result in the creation of a physical or tangible ‘vendible product’. Vendible product concept comes from cases before NRDC.
- General principles outlined by the case:
- The term, ‘manner of manufacture’, is a dynamic concept whose meaning has evolved over time since it first appeared in Statute of Monopolies. Has common law meaning, and is not interpreted literally.
- Patentable subject matter is broad and flexible. The principles are to be applied flexibly as technological developments and inventions are excitingly unpredictable.The concept of patentability must accommodate inventions not yet envisaged.
- Must be a vendible product - a product means every end produced; 'vendible' means an artificially produced state of affairs. This is very broad. A process is a vendible product where it offers an advantage to the useful arts in material form, as opposed to fine arts (which are protected by copyright).
- Must be of economic significance - i.e. its value to the country must be in the field of an economic endeavour. It must have an industrial, commercial or trading character.
- Cannot be a mere discovery, idea, scientific theory or law of nature.
Court's Decision: The process of mixing the known chemicals together – the effects of which were not known before in the context of alfalfa and weeds that commonly hinder its growth, the process was patentable subject matter. It’s a new process, vendible product (new end produced – alfalfa output in the absence of weeds).
Patentable Subject Matter: Computer Software
In relation to computer software, copyright protects against the reproduction of a computer program in material form, but does not prevent independent creation. Patent protection for computer software provides protection against independent creation and for the means by which a result is obtained.
IBM v Commissioner of Patents (1991) 22 IPR 417
- Facts: invention was a method of creating an improved (smoother) curve on a computer screen. This implemented an algorithm that could be manually calculated, the application of which resulted in a smoother curve.
- Held: producing an improved curve image is commercially useful in the field of computer graphics – a smoother curve allows better graphics and more accurate portrayal of information. It is more than just a mathematical algorithm or pleasant image. It is the application of a mathematical algorithm to produce a commercial valuable and useful result. Therefore is the proper subject matter of a patent.
CCOM Pty Ltd v Jiejing Pty Ltd  FCA 902
- Facts: Chinese language word processor. Based on an algorithm. Involved using ordinary English keyboard but placing parts of common chinese characters on keys.
- Held: This is patentable subject matter. Computer software can be protected by patent.
Patentable Subject Matter: Business Methods
Stephen Kuhn on business method patents
Very controversial as this was a new and different kind of invention. The current position appears to be that the invention must produce a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation ( Grant v Commissioner of Patents (2006) 154 FCR 62).
State Street Bank & Trust Co. v Signature Financial Group Inc (1998) (‘State Street’) - United States Case
- Facts : Invention was a machine-implemented data processing system that used a mathematical algorithm to implement a financial investment structure – allowed an investment fund to be monitored – its only output was information – produced end of day report. Did what humans could do by hand but made this much faster and automated it.
- Held: Patentable subject matter, there is no business method exclusion from the scope of patentable subject-matter.
Welcome Real-Time v Catuity (2001) FCA 445 (Heerey J)
- Facts: Patent for a method of operating a customer loyalty scheme by configuring a smart card.
- Held: In terms of the business methods exception – found the State Street decision ‘persuasive’ (), i.e. the case appears to agree there is no business method exception against patentability.
Grant v Commissioner of Patents (2006) 154 FCR 62
- Facts: Involved a method of structuring a financial transaction with the aim of protecting an individual’s assets - a person creates a trust, the person makes a gift of money to the trust, the trust makes a loan of money to the person, the trust secures the loan by taking a charge over an asset held by the person. This thus gave priority in the person's bankruptcy.
- Held: the physiciality requirement was introduced - the invention must involve a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation (, , ). The method here had no concrete, tangible, physical or observable effect - it was a mere scheme, an abstract idea, mere intellectual information (30], , , ). Therefore, it was not patentable subject matter.
- The court observed that a method merely because a method is a business method does not prevent it from being patentable subject matter (). However, things such as legal advice, schemes, arguments and the like are not manners of manufacture ().
Patentable Subject Matter: Biotechnology
Diamond v Chakrabarty 447 US 303 (1980) - United States Case
- Facts: the invention was a bacterium capable of breaking down crude oil, useful in treating oil spills. Inserted non-native elements into the genome of a strain of naturally occurring bacteria and allowed to be produced in commercial quantities. The naturally occurring bacteria did not occur in enough quantity to make it commercially viable.
- Held: patentable subject matter is broad and includes 'anything under the sun that is made by man'.
“Judged in this light, the respondent‘s micro-organism plainly qualifies as patentable subject matter. His claim is ... to a non-naturally occurring manufacture or composition of matter - a product of human ingenuity.”
Patentable Subject Matter: Methods of Treating the Human Body
Apotex Pty Ltd v Sanofi-Aventis  HCA 50
The 4:1 majority of this case confirms that methods of medical treatment are patentable.
- Facts: Patent titled 'pharmaceutical for the treatment of skin disorders'. Contained a single claim for a method of preventing or treating psoriasis by administering a pharmaceutical composition containing the active ingredient leflunomide. Leflunomide (and other therapeutic uses other than psoriasis) was the subject of an earlier Sanofi-Aventis patent, which expired in 2004. Apotex marketed a generic version of leflunomide for treatment of psoriatic arthritis and rheumatoid arthritis – Sanofi sued Apotex for infringement, Apotex counter-sued saying Sanofi’s patent was invalid.
- Issue: Are methods of medical treatment for some reason excluded from scope of patentable subject matter?
- Held: Patent at issue is valid – no exception for methods of medical treatment. For policy reasons, some earlier courts said should not be patentable so they are more available to people – however counter-argument for incentive principle. Patent not infringed because s 117 (contributory infringement by supply of products) not made out.
Patentable Subject Matter: Genes
D’Arcy HCA - student video topic
- Facts: Concerns a product, namely nucleic acid sequences (DNA or RNA) that have been isolated from the cell nucleus of a BRCA1 human gene. BRCA1 – breast and ovarian cancer disposing gene. Mutations indicate a predisposition to breast or ovarian cancer. Cancer screening test: compare a health genetic sequence to a patient’s sequence to make a diagnosis ($3,000 in US, free in AU). Need to first chemically isolate the gene by separating it from the cellular environment in which it naturally exists.
- Held: isolation of genes not patentable
Requirement 2: Novelty
Georgia Ardouin on the test of Novelty in patent
Jess Smith on Novelty
The priority date is the date at which the novelty and inventiveness of the invention are assessed against the prior art base. A priority date is established by the earliest of filing either: a complete application or a provisional application.
Filing a provisional application creates an earlier priority date, by filinga simplified version of the patent specification, with the complete application required to be filed within 12 months. If this does not occur, the provisional application will lapse and another application cannot be made, as the provisional application will destroy novelty of the subsequent application. A provisional application may be desierable where a competitor is working on a similar invention and you want to get a patent first.
A foreign application (provisional or complete) in a Paris Convention country or a PCT application: The Paris Convention allows for the filing of applications in many countries at about the same time. This overcomes the difficulties of novelty that occur where there is a patent filed in another country prior to filing in Australia, in which case the Australian application would lack novelty due to disclosure of the patent in other countries. A Paris Covention application overcomes this by allowing later applications in Paris Convention Countries without destroying novelty.
PCT = Patent Co-Operation Treaty. Means by which applicants can file one application for many countries. Single application, then split into multiple applications for each jurisdiction. Filing in this way may create a priority date. Can use in conjunction with national applications – e.g. might file PCT for inventions in 3 countries and a national application in Australia – Paris Convention makes this possible.
Required by ss 18(1)(b)(i), 18(1A)(b)(i) and 7(1).
The invention must be new - i.e. it has not been disclosed to the public before the priority date. The invention is compared to the prior art base, which consists of prior art information that is publicly available in a document or through doing an act, or in two or more related documents or acts anywhere in the world (s 7(1)).
Tracey Bryan on prior art base
Apply the reverse infringement test, as established in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, 235 by Aickin J:
“The basic test for anticipation… is the same as that for infringement… whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
The prior art must disclose all the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517). It is not permissible to “mosaic” the prior art information to invalidate a patent (Minnesota Mining & Manufacturing Co v Beiersdorf (1980) 144 CLR 253). However, reading together different publications is permissible where it is plain there is incorporation by referenc, for example because an invention may involve putting things that exist together in a new way that hasn’t been done before (Nicaro Holdings Pty Ltd v Martin Engineering (1990) 91 ALR 513).
An inventor who discloses his/her invention to the public before the priority date will anticipate his or her own invention - the invention will lack novelty. However, disclosure of an invention to a person who is subject to an obligation of confidence will not destroy novelty. There is also a grace period (12 months), can file a complete patent application within 12 months of the disclosure and still get a patent: s 24.
Jacob Corbett - Novelty in patents and the reverse infringement test
Disregarding certain types of public information
24 states that a person making a decision can disregard certain types of information made publicly available through any publication or use of an invention, provided the patent application is made within 12 months of such publication. This section applies to both the question of noverly an inventive/innovative step.
This is invoked where an inventor, patentee or predecessor in title self-publishes the patent. This covers circumstances where an inventor has inadvertently disclosed their invention prior to seeking patent protection. A complete patent application must be filed within 12 months of the disclosure.
This is enlivened, for example, when scientists working at uni’s wanting to disseminate their work and then get a patent after. Won’t destroy novelty if bring application within 12 months.
Also applies where:
- there the patentee shows, uses or publishes at a recognised exhibition or publication at such an event. The specifics of this are found in the regulations.
- Publication or reading of a paper written by inventor before a learned society
- Working the invention in public for purpose of reasonable trial where type of invention makes it reasonably necessary for the working to be in public. For example, testing a rail car has to be done in public, cannot do so in enclosed environment.
- Information made publicly available without the consent of patentee.
A lot of the detail of this section is covered in the regulations.
Requirement 3: Inventive step (Standard Patents) or Innovative Step (Innovation Patents)
An applicant can choose to apply for either a Standard Patent or an Innovation Patent.
Marcus de Witt-Ryall on Innovative vs Inventive steps
Rebecca Mync on inventive step vs innovative step
Shiva Abassi on inventive step
Emily Sakzewski on Inventive Step
Set out in ss 18(1)(b)(ii) and 7(2). There will be an inventive step unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date. Doesn’t set a particularly high bar - ‘if it would not have been obvious’.
“Obvious” has the ordinary English meaning of “very plain” (Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411, 426 ). A “scintilla of inventiveness” (very small amount) is sufficient to support an inventive step (Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 28, 249 (Aicken J)). It is necessary to guard against the use of hindsight - an invention always seems more obvious when you know about it.
A 'person skilled in the relevant art' is a hypothetical “non-inventive” person who possesses “ordinary skill” who works in the art or science of the invention (H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151, 190,  per Bennett J). This can be a team of researchers (Aktiebolaget Hässle v Alphapharm Pty (2002) 212 CLR 411, 426 ).
Carrick Brough on a person skilled in the art
Common general knowledge is the body of knowledge known or used by all those in the relevant trade which forms the background knowledge and experience of those working in that field. Not simply information that could be found – must be information that is generally accepted and assimilated by the relevant technical community. It is the knowledge the person skilled in the relevant art has in the back of their mind when considering whether the invention is not obvious (Minnesota Mining & Manufacturing Co and 3M Australia Pty Ltd v Beiersdorf (1980) 29 ALR 29).
Sections 18(1A)(b)(ii), 7(4): An invention is taken to involve an innovative step when compared to prior art base unless a person skilled in the relevant art in the light of the common general knowledge before the priority date of the claim would consider the invention only varied from the prior art information in ways that make no substantial contribution to the working of the invention: s 7(4).
*Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd* (2009) 177 FCR 239;  FCAFC 81
* Facts: Concerned improved flexible roadside posts. Utilised sheet spring steel to overcome the problems of resilience and durability in existing flexible roadside posts. Stopped them from just cracking and breaking when hit. * Held: Innovation patents were designed for patenting improvements. The poles were patentable. The court held that the process to identify inventive step is to:
- Compare invention claim by cliam with each prior disclosure;
- Identify variations between invention and each prior disclosure; and
- Determine whether variations make a substantail contribution to the invention as claimed.
The question of whether an invention makes a substantial contribution as claimed has not been explained in greater detail. It is a factual enquiry that requires the perspective of a person skilled in the art having regard to relevant common general knowledge. It is decided on a case by case basis.
Requirement 4: Usefulness
Pre-Raising the Bar Amendments
Although usefulness is still required today, the new legislation brings in other considerations.
Section 18(1)(c) and 18(1A)(c) (which still apply post-Raising the Bar) states that an invention must operate as claimed or produce the claimed result if the steps are followed by a person skilled in the art. It does not depend on whether the end product is commercially viable (Rehm Pty Ltd v Websters Security System (International) Pty Ltd (1988) 11 IPR 289, 307-8; Rescare Ltd v Anaesthetic Supplies (1992) 25 IPR 119, 142).
Post-Raising the Bar Amendments - Additional Definition
Section 18(1)(c) and 18(1A)(c) was added to be inserting a new defintiion of 'useful' in s 7A, which commenced on 15 April 2013.
7A Meaning of useful:
- (1) For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.
- (3) Subsection (1) does not otherwise affect the meaning of the word useful in this Act.
These amendments rings Australian law in line with that in US. No need to look at US cases relating to ‘specific, substantial and credible use’. Not a ground examiner will consider, though may be raised in post-grant challenges to a patent’s validity. Traditional definition, that is works, involves some overlap between usefulness requirement and need for sufficient description.
Requirement 5: Prohibition on Secret Use
Zoe Busch on secret use
Prohibits a patentee effectively extending the patent term by making commercial use of the invention before the priority date. Patent protection provides a 20 year monopoly to patent holders, before the invention falls into the public domain. It thus forces a patentee to choose bteween patent or trade secret protection.
Secret use and public use are mutually exclusive - i.e. secret use will not affect novelty, and it is thus a seperate area of invalidity (Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75).
Section 9: the following acts are not to be taken to be secret use
- use for the purpose of reasonable trial or experiment only.
- use occurring solely in the course of a confidential disclosure of the invention
- any other use for any purpose other than the purpose of trade or commerce
- any use of the invention by or on behalf of the Commonwealth, a State, or a Territory
New 12 month grace period in respect of secret use in s 9. This provides that the grace period provisions in s 24 apply to any secret use of the invention made within 12 months of filing a complete application (as opposed to a provisional application). In other words, secret use will be treated in the same way as public use as far as the grace period is concerned.
Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75
- Facts: Concerned a hammer used in mining for exploratory drilling. A friend of the inventor, who had tested the hammers inventor, ordered a number from the inventor. However, the inventor had not accepted the order. It also decided that the manufacture of 15 to 20 hammers was reasonable in order to conduct trials to determine their commercial viability.
- Held Has the patentee obtained a commercial benefit before the priority date? One instance is sufficient, no matter how close to the priority date it occurs. Rationale: Prevents a patentee gaining a longer monopoly than the statutory period. Production of 15 – 20 hammers in condition for commercial sale and order having been received for 5-6 cannot be considered a matter of trial and experiment, this indicates trial and experiment had been concluded earlier and commercial product had commenced since. Lack of evidence as to any trials or experiments on hammers, so inference drawn is that this wasn’t occurring.
Diana Chiknaikin on Azuko Pty Ltd v Old Digger
Patent Applications: Description and Claim Requirements
What does a Patent Contain?
- Abstract – briefly described invention and field or area it applies.
- Description (including the best known method of performing the invention)
- Claims (define the scope of the monopoly claimed).
Patent attorney’s in Australia have exclusive monopoly on the right to draft a patent application, only inventor, applicant or an attorney can draft application. Lawyers are excluded from drawing patent applications: they don’t have the requisite qualifications, patent attorneys require science degrees and other attorney studies.
The Specification: s 40
- S 40(1) 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.
- S 40(2) A complete specification must:
- (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 (note pre-Raising the Bar, a specfication had to 'describe the invention fully'); and
- (aa) disclose the best method known to the applicant of performing the invention; and
- (b), (c) end with a claim or claims.
- S 40(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification - has to be some correlation between what is disclosed in the specification and what is claimed, if the claims try to gain monopoly in areas beyond the disclosure, will fail – however, if one claim is invalid it is not fatal to all, each is considered on its merits (note pre-Raising the Bar, claim has to be 'fairly based on the matter described' in the specification). Aim of this requirement is to ensure the claim is not broader than the contribution to the art described in the specification.
- s 40(4) The claim or claims must relate to one invention only.
Claim Construction: *Décor Corporation Pty Ltd v Dart Industries Pty Ltd* (1988) 13 IPR 385, 400 (Sheppard J)
The concerned closing contraption for plastic containers – so they stay closed.
Principles in constructing claims:
- Claims define the invention subject of the patent.
- Must be construed according to their terms, on ordinary principles of construction of written documents.
- It is not legitimate to confine the scope of claims by reference to limitations found in the body of the specification but which are not expressly or by proper inference reproduced in the claim themselves.
- Don’t expand or narrow the boundaries of monopoly as fixed by the words of a claim by adding to those words, glosses or interpretations draw from other parts of the specification.
- Construction – read specification as a whole.
- In some cases, the meaning of words use may be qualified or defined by what is said in the body of the specification.
- If an expression used in a claim is not clear or is ambiguous it is permissible to resort to the body of the specification to define or clarify words used in the claim.
- A patent specification should be given a purposive construction rather than a purely literal one.
- If it is possible to ascertain what the invention is from a fair reading of the specification as a whole it will be invalid.
- But the specification must be construed in light of the common general knowledge in the art as it existed before the priority date.
Patent Application Process
The patent application process is complicated and involves many steps which are drawn out over a period of time.
1. Optional - provisional application filed:
- Creates a priority date
- Must file a complete application within 12 months of filing provisional application (s 38)
2. Complete application filed:
- Filing date because date of patent (s 65)
- Time starts running (ss 67, 68)
- Becomes open to public inspection ('OPI') 18 months after the priority date (s 55; Reg 4.12)
- Application must request an examination within 5 years of lodging a complete application (s 44, Reg 3.15)
- Applicant has 21 months to address examiners objections
- Re-examination can occur at the Registar's discretion (s 97)
4. Acceptance and publication
- Can appeal to the Federal court if rejected (s 51)
- Once accepted, becomes open to public inspection (s 55)
- The application has the same rights he or she would have if a patent had been granted on the day the specification becomes open to public inspection (s 57)
- The validity of a patent is not guaranteed (s 20)
- Opposition to the grant of a patent can occur on teh grounds set out in s 59
6. Patent granted
- Infringement proceedings can br brought (s 120)
- Defendant can bring a counter-claim for revocation of the patent (s 121)
Video by Kimberley Dorrian on how to obtain a standard patent.
Only a formalities check is conducted prior to grant of the patent (s 52). The patentee must comply with the specification disclosure requirements in s 40. The patent can only be enforced once it is certified, which requires a substantive examination (s 101E). If an innovation patent is examined and found to be invalid, it is revoked (s 138).