- The Requirements of Patentability
- Requirement 1: Manner of Manufacture (Patentable Subject Matter)
- Requirement 2: Novelty
- Requirement 3: Inventive step (Standard Patents) or Innovative Step (Innovation Patents)
- Requirement 4: Usefulness
- Requirement 5: Prohibition on Secret Use
- Patent Applications: Description and Claim Requirements
- Patent Application Process
- Ownership: employees and employers
- Converting Patent Applications
- International Patents
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.
^ Term ^ Definition ^ | 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. [^AUTOREPLACEDPAs43ENDREPLACE] [^AUTOREPLACEDPAs43ENDREPLACE]: //PA// 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.[^AUTOREPLACEDPAs7ENDREPLACE] [^AUTOREPLACEDPAs7ENDREPLACE]: //PA// 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. [^AUTOREPLACEDSch1ENDREPLACE] [^AUTOREPLACEDSch1ENDREPLACE]: Sch 1 | | Complete specification | is made open to public inspection (‘OPI’) 18 months after filing. [^AUTOREPLACEDPAss5455ENDREPLACE] [^AUTOREPLACEDPAss5455ENDREPLACE]: //PA// ss 54-55 |
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 novel [^AUTOREPLACEDPAs7ENDREPLACE] 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. [^AUTOREPLACEDPAs7ENDREPLACE]: //PA// s 7
Patents are examined by IP Australia to decide whether the inventions are worthy of a patent. IP Australia bases their decision on the above specifications. [^AUTOREPLACEDPAs18ENDREPLACE] [^AUTOREPLACEDPAs18ENDREPLACE]: //PA// s 18
There are a few categories of subject matter that are considered not patentable. These categories include:
Human beings and biological processes; [^AUTOREPLACEDReLuminisPtyLtdFertilitiescentrumAB200462IPR420ENDREPLACE] [^AUTOREPLACEDReLuminisPtyLtdFertilitiescentrumAB200462IPR420ENDREPLACE]: ////Re Luminis Pty Ltd & Fertilitiescentrum AB////(2004) 62 IPR 420
Plants and animals;[^AUTOREPLACEDPAs183ENDREPLACE] [^AUTOREPLACEDPAs183ENDREPLACE]: //PA// s 18(3)
Products that would be contrary to law; [^AUTOREPLACEDPAs501aENDREPLACE] [^AUTOREPLACEDPAs501aENDREPLACE]: //PA// s 50(1)(a) and
Mere mixtures. [^AUTOREPLACEDSeeWMWrigleyJrCovCadburySchweppesPtyLtd200566IRP298315ENDREPLACE] [^AUTOREPLACEDSeeWMWrigleyJrCovCadburySchweppesPtyLtd200566IRP298315ENDREPLACE]: See //WM Wrigley Jr Co v Cadbury Schweppes Pty Ltd// (2005) 66 IRP 298 
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”.[^AUTOREPLACEDTRIPSart272ENDREPLACE] The second area allows for exclusions with respect to medical treatments, plants and animals.1 [^AUTOREPLACEDTRIPSart272ENDREPLACE]: //TRIPS// art 27(2)
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. [^AUTOREPLACEDLockwoodSecurityProductsPtyLtdvDoricProductsPtyLtdNo22007235CLR173211ENDREPLACE] [^AUTOREPLACEDLockwoodSecurityProductsPtyLtdvDoricProductsPtyLtdNo22007235CLR173211ENDREPLACE]: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2)(2007) 235 CLR 173, 211 .
In order to be a patentable invention, the invention must be a manner of manufacture. [^AUTOREPLACEDs6StatuteofMonopoliesENDREPLACE] 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. [^AUTOREPLACEDs6StatuteofMonopoliesENDREPLACE]: s 6 //Statute of Monopolies//
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 Patents// [^AUTOREPLACED1959102CLR252269ENDREPLACE] it was concluded that: [^AUTOREPLACED1959102CLR252269ENDREPLACE]: (1959) 102 CLR 252, 
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 onManner 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//.
Facts: Appeal to High Court from a rejection by the Deputy Commissioner. The patent in question was a process involving a method of mixing known chemicals together and applying the mix to crops (alfalfa) in specific quantities to eliminate weeds, but not the crops. The method of producing a weedicide is not a patent for a product, it is a patent for the process of creating that product. The application had been rejected because the the method was considered to be 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.
The Courts 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).
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.
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. [^AUTOREPLACEDGrantvCommissionerofPatents2006154FCR62ENDREPLACE] [^AUTOREPLACEDGrantvCommissionerofPatents2006154FCR62ENDREPLACE]: //Grant v Commissioner of Patents (2006) 154 FCR 62//
Video overview by Stephen Kuhn on Business Method Patents.
State Street Bank & Trust Co. v Signature Financial Group Inc (1998) (‘State Street’) - United States Case
Facts : The invention was a machine-implemented data processing system that used a mathematical algorithm to implement a financial investment structure. This allowed an investment fund to be monitored with its only output being information produced by the end of the day report. Essentially the program did what humans could do by hand but made this much faster and automated the process.
Held: The Court held that the invention was patentable subject matter as 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, this case 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 physicality 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 ().
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//. [^AUTOREPLACED447US3031980ENDREPLACE] [^AUTOREPLACED447US3031980ENDREPLACE]: 447 US 303 (1980)
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. The process involved inserting non-native elements into the genome of a strain of naturally occurring bacteria and allowed it 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.”
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-Aventis// [^AUTOREPLACED2013HCA50ENDREPLACE] 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. [^AUTOREPLACED2013HCA50ENDREPLACE]:  HCA 50
Apotex Pty Ltd v Sanofi-Aventis  HCA 50
The 4:1 majority of this case confirms that methods of medical treatment are patentable.
Facts: The patent was titled ‘pharmaceutical for the treatment of skin disorders’. This patent 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 then 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. The court held that the patent had not infringed because s117 (contributory infringement by supply of products) could not be made out.
Video overview by Thalia Ho on Swiss style claims’ on application of pharmaceuticals.
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 Inc// [^AUTOREPLACED2015HCA35ENDREPLACE] 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. [^AUTOREPLACED2015HCA35ENDREPLACE]:  HCA 35
D’Arcy v Myriad Genetics Inc
Facts: This case 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. The purpose of a cancer screening test is to compare a health genetic sequence to a patient’s sequence to make a diagnosis. This process costs approximately $3,000 in US, comparatively this process is free in AU). In order to diagnose the gene has to first be chemically isolated by separating it from the cellular environment in which it naturally exists.
Held: isolation of genes not patentable
Video overview by Nicholas Chinon D’Arcy v Myriad Genetics.
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. [^AUTOREPLACEDPAs71ENDREPLACE] [^AUTOREPLACEDPAs71ENDREPLACE]: //PA// s 7(1)
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.
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 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, as the provisional application will destroy novelty of the subsequent application. A provisional application may be desirable where a competitor is working on a similar invention and you want to get a patent first.
A foreign application’s an be made wither provisional or complete via The Paris Convention or the PCT. This will be discussed below in Patent Protection Overseas.
Historically, the prior art base was confined to documents and acts that were made available within Australia. [^AUTOREPLACEDPatentsAct1952CthENDREPLACE] 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. [^AUTOREPLACEDPatentsAct1952CthENDREPLACE]: //Patents Act 1952// Cth
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//. [^AUTOREPLACED1977137CLR228ENDREPLACE] [^AUTOREPLACED1977137CLR228ENDREPLACE]: (1977) 137 CLR 228 His 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. [^AUTOREPLACEDNicaroHoldingsPtyLtdvMartinEngineeringCo199091ALR513at517ENDREPLACE] It is not permissible to “mosaic” the prior art information to invalidate a patent. 2 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. 3 [^AUTOREPLACEDNicaroHoldingsPtyLtdvMartinEngineeringCo199091ALR513at517ENDREPLACE]: //Nicaro Holdings Pty Ltd v Martin Engineering Co* (1990)// 91 ALR 513 at 517
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. [^AUTOREPLACEDPAs24ENDREPLACE] [^AUTOREPLACEDPAs24ENDREPLACE]: //PA// s 24
Video overview by Jacob Corbett onNovelty in patents and the reverse infringement test.
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//.
An applicant can choose to apply for either a Standard Patent or an Innovation Patent.
Video overview by Marcus de Witt-Ryall on Innovative vs Inventive steps.
Video overview by Rebecca Mync on Inventive Step vs Innovative Step.
According to ss 18(1)(b)(ii) and 7(2) of the //Act//, 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. The threshold for this test is relatively low - ‘if it would not have been obvious’.
“Obvious” has the ordinary English meaning of “very plain”. [^AUTOREPLACEDAktiebolagetHsslevAlphapharmPtyLtd2002212CLR41142630ENDREPLACE] A “scintilla of inventiveness” (very small amount) is sufficient to support an inventive step. 4 It is necessary to guard against the use of hindsight - an invention always seems more obvious when you know about it. [^AUTOREPLACEDAktiebolagetHsslevAlphapharmPtyLtd2002212CLR41142630ENDREPLACE]: Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411, 426 
Video overview by Shiva Abassi onInventive Step.
Video overview by Emily Sakzewski onInventive 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. [^AUTOREPLACEDHLundbeckASvAlphapharmPtyLtd2009177FCR151190173perBennettJENDREPLACE] This can be a team of researchers. 5 [^AUTOREPLACEDHLundbeckASvAlphapharmPtyLtd2009177FCR151190173perBennettJENDREPLACE]: H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151, 190,  per Bennett J
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. [^AUTOREPLACEDMinnesotaMiningManufacturingCoand3MAustraliaPtyLtdvBeiersdorf198029ALR29ENDREPLACE] [^AUTOREPLACEDMinnesotaMiningManufacturingCoand3MAustraliaPtyLtdvBeiersdorf198029ALR29ENDREPLACE]: //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. [^AUTOREPLACEDPAs74ENDREPLACE] [^AUTOREPLACEDPAs74ENDREPLACE]: //PA// s 7(4)
;  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 claim with each prior disclosure;
- Identify variations between invention and each prior disclosure; and
- Determine whether variations make a substantial 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.
Video overview by Daniel G on Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd.
Prior to the 2012 amendments, the term useful was not as clearly defined as it is today. Although usefulness is still a requirement of patentability, the new legislation requires other factors to be considered. Pursuant to ss 18(1)(c) and 18(1A)(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. It does not depend on whether the end product is commercially viable. [^AUTOREPLACEDRehmPtyLtdvWebstersSecuritySystemInternationalPtyLtd198811IPR2893078RescareLtdvAnaestheticSupplies199225IPR119142ENDREPLACE] [^AUTOREPLACEDRehmPtyLtdvWebstersSecuritySystemInternationalPtyLtd198811IPR2893078RescareLtdvAnaestheticSupplies199225IPR119142ENDREPLACE]: //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
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//.
The Raising the Bar Amendments bring Australian law in line with that of the US. In the US there is no requirement for ‘specific, substantial and credible use’ to be considered, as these grounds will not be examined. These grounds may however, may be raised in post-grant challenges to a patent’s validity.
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. [^AUTOREPLACEDAzukoPtyLtdvOldDiggerPtyLtd200152IPR75ENDREPLACE] [^AUTOREPLACEDAzukoPtyLtdvOldDiggerPtyLtd200152IPR75ENDREPLACE]: //Azuko Pty Ltd v Old Digger Pty Ltd// (2001) 52 IPR 75
Video overview by Zoe Busch onSecret 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. [^AUTOREPLACEDPAs9ENDREPLACE] 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. [^AUTOREPLACEDPAs9ENDREPLACE]: //PA// s 9
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.
Video overview by Sam D’Arro onSecret use in Azuko Pty Ltd v Old Differ.
Video overview by Diana Chiknaikin on Azuko Pty Ltd v Old Digger.
A patent contains three key parts. These include:
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 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. [^AUTOREPLACEDPAs401ENDREPLACE] [^AUTOREPLACEDPAs401ENDREPLACE]: //PA// s 40(1)
It also must be a complete specification which includes: [^AUTOREPLACEDPAs402ENDREPLACE] [^AUTOREPLACEDPAs402ENDREPLACE]: //PA// s 40(2)
- 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.
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. [^AUTOREPLACEDSeeDcorCorporationPtyLtdvDartIndustriesPtyLtd198813IPR385400CatnicComponentsLtdvHillSmithLtd1982RPC183ENDREPLACE] [^AUTOREPLACEDSeeDcorCorporationPtyLtdvDartIndustriesPtyLtd198813IPR385400CatnicComponentsLtdvHillSmithLtd1982RPC183ENDREPLACE]: See Décor Corporation Pty Ltd v Dart Industries Pty Ltd (1988) 13 IPR 385, 400, Catnic Components Ltd v Hill & Smith Ltd  RPC 183
The patent application process is complicated and involves many steps which are drawn out over a period of time. The following section will outline the process involved with both standard patents and innovation patents.
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.[^AUTOREPLACEDPAs38ENDREPLACE] [^AUTOREPLACEDPAs38ENDREPLACE]: //PA// s 38
Complete application filed:
The filing date becomes the date of the patent; [^AUTOREPLACEDPAs65ENDREPLACE] [^AUTOREPLACEDPAs65ENDREPLACE]: //PA// s 65
Once the completed application has been filed time starts running; [^AUTOREPLACEDPAss67and68ENDREPLACE] [^AUTOREPLACEDPAss67and68ENDREPLACE]: //PA// ss 67 and 68
At this point the patent becomes open to public inspection (‘OPI’) 18 months after the priority date. [^AUTOREPLACEDPAs55Reg412ENDREPLACE] [^AUTOREPLACEDPAs55Reg412ENDREPLACE]: //PA// s 55; Reg 4.12
Application must request an examination within 5 years of lodging a complete application; [^AUTOREPLACEDPAs44Reg315ENDREPLACE] [^AUTOREPLACEDPAs44Reg315ENDREPLACE]: //PA// s 44, Reg 3.15
Applicant has 21 months to address examiners objections;
Re-examination can occur at the Registrars discretion. [^AUTOREPLACEDPAs97ENDREPLACE] [^AUTOREPLACEDPAs97ENDREPLACE]: //PA// s 97
Acceptance and publication
Can appeal to the Federal court if rejected; [^AUTOREPLACEDPAs51ENDREPLACE] [^AUTOREPLACEDPAs51ENDREPLACE]: //PA// s 51
Once accepted, becomes open to public inspection; [^AUTOREPLACEDPAs55ENDREPLACE] [^AUTOREPLACEDPAs55ENDREPLACE]: //PA// 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. [^AUTOREPLACEDPAs57ENDREPLACE] [^AUTOREPLACEDPAs57ENDREPLACE]: //PA// s 57
The validity of a patent is not guaranteed; [^AUTOREPLACEDPAs20ENDREPLACE] [^AUTOREPLACEDPAs20ENDREPLACE]: //PA// s 20
Opposition to the grant of a patent can occur on the grounds set out in s 59.
Infringement proceedings can be brought; [^AUTOREPLACEDPAs120ENDREPLACE] [^AUTOREPLACEDPAs120ENDREPLACE]: //PA// s 120
Defendant can bring a counter-claim for revocation of the patent. [^AUTOREPLACEDPAs121ENDREPLACE] [^AUTOREPLACEDPAs121ENDREPLACE]: //PA// s 121
For more information seeIP Australia’s Patent Application Guide
Video by Kimberley Dorrian on How to Obtain a Standard Patent.
Only a formalities check is conducted prior to grant of the patent. [^AUTOREPLACEDPAs52ENDREPLACE] 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. 6 If an innovation patent is examined and found to be invalid, it is revoked. 7 [^AUTOREPLACEDPAs52ENDREPLACE]: //PA// s 52
Video overview by Matthew Egerton-Vernon on When an Employer Will Own The Invention of an Employee.
An innovation patent application can be converted to either a provisional application or a standard patent application. In terms of a provisional patent application, an innovation patent can be converted so long as the request to convert is made between the filing date of the innovation patent application and the earliest of these dates: the application acceptance or 12 months from the filing date.
In terms of converting the innovation patent into a standard patent the request to convert must be made before the innovation patent has been accepted.
A standard patent application can be converted to either a provisional application or an innovation patent application. In terms of a provisional application, the request to convert must be made between the filing date and the earliest of these dates: 12 months from the filing date, before the application is accepted or three weeks before its publication. In terms of an innovation patent, the request to convert must be made before the standard patent has been accepted.
Australian patents only provide protection to the invention within Australia. The following sections consider patent protection outside of Australia.
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.
Norbert Steinhardt and Son Ltd v Meth
In the case of Norbert Steinhardt and Son Ltd v Meth Fullagar J stated: [^AUTOREPLACED1961105CLR440443444ENDREPLACE] [^AUTOREPLACED1961105CLR440443444ENDREPLACE]: (1961) 105 CLR 440, 443-444
The English Patents Act relates exclusively to English patents, and the infringements which it makes unlawful are infringements of English patents only. In the same way, the Australian Patents Act relates exclusively to Australian patents, and the infringements, which it makes unlawful, are infringements of Australian patents only. If, therefore, an Australian patentee sues in Australia for an infringement alleged to have been committed in England, and it is asked whether the act complained of was actionable in England, the answer must be: No. For his Australian patent gives him no monopoly in England, and what the defendant has done in England is perfectly lawful according to English law.
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
//TRIPS// art 27(3) ↩
//Minnesota Mining & Manufacturing Co v Beiersdorf (1980)// 144 CLR 253 ↩
//Nicaro Holdings Pty Ltd v Martin Engineering (1990)// 91 ALR 513 ↩
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 28, 249 (Aicken J ↩
Aktiebolaget Hässle v Alphapharm Pty (2002) 212 CLR 411, 426  ↩
//PA// s 101E ↩
//PA// s 138 ↩