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Patent Registration

1. Definitions
2. The Requirements of Patentability
   1. Express Exclusion From Patentability - Non-patentable Subject Matter
   2. “Invention”
3. Requirement 1: Manner of Manufacture (Patentable Subject Matter)
   1. Patentable Subject Matter: Computer Software
   2. Patentable Subject Matter: Business Methods
   3. Patentable Subject Matter: Biotechnology
   4. Patentable Subject Matter: Treating the Human Body
   5. Patentable Subject Matter: Genes
4. Requirement 2: Novelty
   1. Priority Date
   2. Prior Art Base
   3. Disregarding Certain Types of Public Information
5. Requirement 3: Inventive step
6. Requirement 4: Usefulness
7. Requirement 5: Prohibition on Secret Use
8. Patent Applications: Description and Claim Requirements
   1. What does a Patent Contain?
   2. Claim Construction
9. Patent Application Process
10. International Patents
    1. Territorial Principle
    2. Patent Protection Overseas

In order to register a patent the invention must meet a strict criteria. This chapter will discuss the requirements of patentability. All sections within this chapter are referring to the _Patents Act 1990_ (Cth) unless otherwise noted.

Definitions

The Requirements of Patentability

In order to be patentable, an invention is required to meet the specifications found in s 18 of the Act. An invention is patentable if it is “manner of manufacture” within the meaning of s 6 of the Statute of Monopolies (i.e. is patentable subject matter, being either a product or process). The invention must be novel² and must involve an inventive step (for standard patents) or an innovative step (for innovation patents). The inventiveness and novelty of the invention are compared against the prior art base as it existed at the priority date. The invention must be useful which means it must work or be possible. The final requirement is that the inventions must not have been secretly used before the priority date.

Before they are fully registered, Patents are examined by IP Australia to decide whether the inventions are eligible for a patent. IP Australia bases their decision on the above specifications.⁵

Express Exclusion From Patentability - Non-patentable Subject Matter

There are a few categories of subject matter that are considered not patentable. These categories include:

1. Human beings and biological processes;⁶

2. Plants and animals;⁷

3. Products that would be contrary to law;⁸ and

4. Mere mixtures.⁹

According to s 18 of the Act (2): Human beings, and the biological processes for their generation, are not patentable inventions. This means that generally, methods of in vitro fertilisation are excluded from patentability.

According to s 18 of the Act (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.

There are also twos area where there is scope to exclude inventions from patentability found in the TRIPS Agreement. First TRIPS excludes inventions to “…protect human, animal or plant life, or health, or to avoid serious prejudice to the environment”.¹⁰ The second area allows for exclusions with respect to medical treatments, plants and animals.¹¹

“Invention”

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 s 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, an invention is considered patentable if it is a manner of manufacture, but according to the definitions in Schedule 1, the invention must be a manner of “new” manufacture. Despite the wording, this difference does not create an additional element of patentability. Instead, the wording of s 18 is considered to override any discrepancy and there is no need to incorporate the ‘new’ aspect of manner of manufacture.¹².

Requirement 1: Manner of Manufacture (Patentable Subject Matter)

In order to be a patentable invention, the invention must be a manner of manufacture.¹³ Whilst the statute does not expressly outline what a manner of manufacture is, there are express provisions which state what the invention must not be, including contrary to law, harmful to trade or generally inconvenient.

The meaning of manner of manufacture has been debated by the Australian High Court. In the case of National Research Development Corporation v Commissioner of Patents¹⁴ it was concluded that:

the correct inquiry to determine manner of manufacture is ‘not into the meaning of a word so much as the breadth of the concept which the law has developed by its consideration of the text and purpose of the Statute of Monopolies.

Video overview by Natalie McIntosh on Manner of Manufacture.

The Patents Act 1990 (Cth) incorporates the guidelines for manner of manufacture within s 18. Pursuant to s18 of the Act an invention is to be a manner of manufacture within the meaning of s 6 of the Statute of Monopolies.

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.

Patentable Subject Matter: Business Methods

The development of technology and innovative business practices lead to question of whether business methods could be considered patentable subject matter. This was a very controversial area of patent law. 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.¹⁵

Video overview by Stephen Kuhn on Business Method Patents.

Patentable Subject Matter: Biotechnology

Biotechnology is another area which is controversial within the patent landscape. Biotechnology was considered to be patentable subject matter on the basis that the product subject to patentability is an invention derived from human ingenuity and is a non-naturally occurring manufacture. This issue of patentability was considered in the US case of Diamond v Chakrabarty.¹⁶

Patentable Subject Matter: Treating the Human Body

The way in which medical technology can be used to treat humans has long been a contentious issue. The treatment of the human body has been considered to be patentable subject matter. This issue was considered in the case of Apotex Pty Ltd v Sanofi-Aventis¹⁷ where the court was asked to considered whether methods of medical treatment were excluded from scope of patentable subject matter. The court held that they were not excluded.

Patentable Subject Matter: Genes

One of the most contentious areas within patent law is the patentability of genes or the process of isolating genes. In the seminal case of D’Arcy v Myriad Genetics Inc¹⁸ the court was asked to consider whether the process of chemically isolating genes amounted to patentable subject matter. The court held that this process was not patentable subject matter.

Requirement 2: Novelty

In order to be patentable the invention must be new. This requires the invention to have 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.¹⁹

Novelty is required by ss 18(1)(b)(i), 18(1A)(b)(i) and 7(1) of the Act.

Video overview by Georgia Ardouin on The test of Novelty in patent law.

Video overview by Jess Smith on Novelty.

The concepts of priority date and prior art base will be considered in turn.

Priority Date

The priority date is the date at which the novelty and inventiveness of the invention are assessed against the prior art base. The priority date is defined in section 43(2), and is generally the date that the patent specification is filed.

Filing a provisional application creates an earlier priority date, by filing a 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. A provisional application may be desirable where a competitor is working on a similar invention and you want to get a patent first. A priory date will be the date that the provisional application is filed (so long as it discloses the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art (section 43(2A)(b), reg. 3.13C), which is a requirement for a specification in a provisional application in any case (section 40(1), 29(3)).

A foreign application can be made either provisional or complete via The Paris Convention or the PCT. This will be discussed below in Patent Protection Overseas.

Prior Art Base

Historically, the prior art base was confined to documents and acts that were made available within Australia.²⁰ The Patents Amendment Act 2001 (Cth) extended the breadth of the prior art base to include a worldwide comparison of all documents and acts available.

Video overview by Tracey Bryan on Prior Art Base.

One of the key ways to determine if a patent has been anticipated by content within the prior art base is to apply the reverse infringement test. The reverse infringement test was established in Meyers Taylor Pty Ltd v Vicarr Industries Ltd.²¹His Honour Aickin J stated at 235:

“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.²² It is not permissible to “mosaic” the prior art information to invalidate a patent.²³ However, reading together different publications is permissible where it is plain there is incorporation by reference, for example because an invention may involve putting things that exist together in a new way that hasn’t been done before.²⁴

An inventor who discloses his/her invention to the public before the priority date will anticipate his or her own invention. This may result in the invention lacking 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 where an applicant can file a complete patent application within 12 months of the disclosure and still be granted a patent.²⁵

Video overview by Jacob Corbett on Novelty in patents and the reverse infringement test.

Disregarding Certain Types of Public Information

Section 24 of the Act 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 novelty 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 Universities wanting to disseminate their work and then get a patent after. This won’t destroy novelty so long as the application is made within the 12 month period. If the application is made outside of this time frame the novelty may be considered destroyed.

This provision also applies where:

• 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; and

• Information made publicly available without the consent of patentee.

The specifics relating to this provision can be found in the Patents Regulations 1991.

Requirement 3: Inventive step

A patent must involve an inventive step. According to ss 18(1)(b)(ii) and 7(2) of the Act, this means that the invention would not 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. The threshold for this test is relatively low - ‘if it would not have been obvious’.

“Obvious” has the ordinary English meaning of “very plain”.²⁶ A “scintilla of inventiveness” (very small amount) is sufficient to support an inventive step.²⁷ It is necessary to guard against the use of hindsight - an invention always seems more obvious when you know about it.

Video overview by Shiva Abassi on Inventive Step.

Video overview by Emily Sakzewski on Inventive Step.

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.²⁸ This can be a team of researchers.²⁹

Video overview by Carrick Brough on A person skilled in the art. Video overview by Nathan Dowrick 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.³⁰

Requirement 4: Usefulness

An invention must be ‘useful’ to be eligible for a patent.³¹ Pursuant to s 18(1)(c) (which still apply post-Raising the Bar) an invention must operate as claimed or produce the claimed result if the steps are followed by a person skilled in the art. As a result of the Raising the Bar Amendments, ss 18(1)(c) and 18(1A)(c) were added which inserted a new definition of ‘useful’ in s 7A.

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.
• (2) The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.
• (3) Subsection (1) does not otherwise affect the meaning of the word useful in this Act.

Requirement 5: Prohibition on Secret Use

Patents must not be secretly used. This prohibits a patentee from effectively extending the patent term by making commercial use of the invention before the priority date. Patent protection provides a twenty-year monopoly to patent holders, before the invention falls into the public domain. It thus forces a patentee to choose between 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 separate area of invalidity.³³

Video overview by Zoe Busch on Secret Use.

Pursuant to s 9 of the Act the following acts are not considered to be secret use of the invention:

• 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; and

• Any use of the invention by or on behalf of the Commonwealth, a State, or a Territory.

There is a new 12 months grace period in respect of secret use.³⁴ 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.

Patent Applications: Description and Claim Requirements

What does a Patent Contain?

A patent contains three key parts. These include:

1. Abstract – briefly described invention and field or area it applies.

2. Description (including the best known method of performing the invention).

3. Claims (define the scope of the monopoly claimed).

Patent attorneys 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 in s 40 of the Patents Act 1990 (Cth) provides that:

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.³⁵

It also must be a complete specification which includes:³⁶

• Disclosure of 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 specification had to ‘describe the invention fully’); and
• Disclosure of the best method known to the applicant of performing the invention; and
• End with a claim or claims.

Section 40(3) of the Act further outlines that 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.

Lastly, s 40(4) notes that the claim or claims must relate to one invention only.

Claim Construction

Claims are used to define the limitations of the patent monopoly. The patent specification is intended to be given a purposive construction as opposed to a pure literal construction.

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.³⁷

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:

   • The filing of a provisional patent application creates a priority date;

   • If a provisional application is filed a complete application within 12 months of filing provisional application.³⁸

2. Complete application filed:

   • The filing date becomes the date of the patent;³⁹

   • Once the completed application has been filed time starts running;⁴⁰

   • At this point the patent becomes open to public inspection (‘OPI’) 18 months after the priority date.⁴¹

3. Examination

   • Application must request an examination within 5 years of lodging a complete application;⁴²

   • Applicant has 21 months to address examiners objections;

   • Re-examination can occur at the Registrars discretion.⁴³

4. Acceptance and publication

   • Can appeal to the Federal court if rejected;⁴⁴

   • Once accepted, becomes open to public inspection;⁴⁵

   • 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.⁴⁶

5. Opposition

   • The validity of a patent is not guaranteed;⁴⁷

   • Opposition to the grant of a patent can occur on the grounds set out in s 59.

6. Patent granted

   • Infringement proceedings can be brought;⁴⁸

   • Defendant can bring a counter-claim for revocation of the patent.⁴⁹

For more information see IP Australia’s Patent Application Guide

International Patents

Australian patents only provide protection to the invention within Australia. The following sections consider patent protection outside of Australia.

Territorial Principle

A patent for an invention gives a monopoly within the territory of the country which grants it. Outside that territory, it has no force or effect. A patentee can apply to have a patent outside the territory.

Patent Protection Overseas

If a patentee wants to extend the protection of their invention outside of Australia they have two choices: first to file patent applications in each country they seek protection within, or to file a single international application under the Patent Cooperation Treaty (PCT). The PCT is governed by the World Intellectual Property Organisation (WIPO). The Paris Convention also assists in the filing of applications as it allows applications to be filed in many countries at about the same time. This overcomes the difficulties of novelty that occurs where there is a patent filed in another country prior to filing in Australia. In instances such as this, the Australian application would lack novelty due to disclosure of the patent in other countries. A Paris Convention application overcomes this by allowing later applications in Paris Convention Countries without destroying novelty.

The PCT facilitates the filing of a patent application in a number of countries simultaneously, however the result is still multiple patent applications in multiple countries. A PCT application is subject the examination processes and standards of each of the countries. The PCT allows applicants to file one application for many countries. This is one single application, which split into multiple applications for each jurisdiction. Filing in this way may create a priority date. This can be used 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. The PCT makes the process of applying for patents in multiple countries easier.

For more information see WIPO Patent Cooperation Treaty Applicant’s Guide

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