PATENTS: Introduction and Procedural Matters: Ch 9...PATENTS: Introduction and Procedural Matters: Ch 9 1.1 Historical background (a) Before 1624 Darcy v Allan (1602) 74 ER 1131 Invention:

PATENTS: Introduction and Procedural Matters: Ch 9

1.1 Historical background

(a) Before 1624 Darcy v Allan (1602) 74 ER 1131

Invention: manufacture of playing cards in the UK

Revoked: unfairly raised prices

Should only be granted, where a person, through invention, bought a new trade into the realm

(b) The Statute of Monopolies, section 6 Provided also, that any declaration before mentioned shall not extend to any letters patents

and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patents and grants shall not use, so as also they be not contrary to the law nor mischievous to the state by raising prices of commodities at home, or hurt of trade, or generally inconvenient…

Standard patent now: 20 years

In 400 years, we’ve had a 6 year increase (copyright- bigger increase)

(c) The specification and 19th century developments Concept of specification

o Requirement: if you want to be granted a letters patent, you need to grant a specification

o A full technical description of the subject matter of the invention and the method for producing the invention

1903-first patents act introduced Replaced by act in 1952

o see increased to 16 years (from 14 years) o also introduced a smaller type of patent called the ‘petty patent system’-designed ot

reward smaller scale inventions Patents act 1990

o Been modified on a number of occasions o In 1995-increased to 20 years (to meet our TRIPS obligations) o Introduced innovation patent system in 2000

To meet needs of small and medium-sized business sinventions Inexpensive, quick and easy to obtain Compliance with formalities is main requirement

o Calls for reform Too easy to get a patent in Australia Number of changes made

A-G (Cth) v Adelaide Steamship Co [1913] HCA 36; (1913) 18 CLR 30

1.2 Patent law in Australia and justifications for protection Patent: Set of exclusive rights, that are granted in relation to an invention for a limited period of time.

An applicant must disclose their knowledge about their invention, so that knowledge is available to the public, so that once the patent expires, member of the public can make that invention

In return for this disclosure of knowledge, the applicant gains a monopoly over this invention Legal rights given to someone are very strong rights- must disclose all their knowledge of the

patent Requirements to get a patent-youll see how this is translated into law If you apply and are granted a patent, and its later revealed you havnt disclosed everything

about the invention, then you can lose your patent. VERY HIGH STAKES SITUATIONS Inventions are protected by patents only if they are registered with patent office IP Australia Once the application is made, it is examined by a patent examiner. 2 sets for requirements:

1. Form – how you do it a. Deal with stat requirements about public disclosure b. Just as important as substance requirements

2. Substance – what is in the application itself a. Evaluated on the basis of: is your patent novel. b. Is it an invention etc

If failed to meet form or substance- you wont get your patent Patents Act 1990 (Cth), Patent Regulations 1991 (Cth)

Standard patent o Look at inventiveness of the invention o Can be granted for any device, method or substance o IPhone

Innovation patent o Looks at whether your patent is innovative, not inventive o Must meet a lesser standard of being innovative o Only need to prove form requirements o Can be granted without substantive examination, but if you want to enforce it, it

needs to be examined and certified o Last for maximum of 8 years o Ie iPhone-removing the home button

Harder to get protection for patents out of all the other IP matters

Copyright-protects code, but not function o Patents protect function, not the code

Patents are granted nationally o No requirement for applicant have a presence in that jurisdiction in order to receive a

patent o But international agreements have made it possible/easier to lodge same application

in multiple jurisdictions o Practical implications

Expensive Only a monopoly in the jurisdiction Can stop them importing it into Australia

o Validity of your patent will have no implications on the validity of your patent in other countries

o TRIPS If were in breach of our obligations under this agreement, a country can take

us to the WTO

Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)

Lead to a decrease in a number of patents being applied for

Whether it is achieving the outcomes it intended to, remains to be seen

Productivity commission identified a number of problems with the provisions (Even after they changed)

IP Australia is undertaking reviews

Whether or not we should introduce an objects clause? o Patents act doesn’t contain an objects clause –provision that explains what the act

intends to do o Will give patent system more direction

Meets this clause Isn’t compatible with objects clause-it should be granted Should be included-should describe purpose of legislation, promoting

technological innovation Balance of producers, owners and users of technology

Pros for patent system: They provide incentives to create and innovative by providing a monopoly over what is created

o In Australia-vast majority of patents are not increasing the inventiveness of Australians or companies based here

o Vast amount of patents being granted, are being granted to overseas organisations

In 2016 o 28,395 applications – 2,620 were made by individuals or businesses resident in

Australia o US most applications, then Japan, Germany, UK and Switzerland

Modern problems: o Patent thicket – want to break into a new area, but then theres a patent that covers a

bit of your invention, and a patent over something else that covers part of your invention; ‘an overlaping of patent rights’

o Patent troll – someone gets a patent and doesn’t do anything with it; a company that obtains the rights to one or more patents in order to profit by means of licensing or litigation, rather than by producing its own goods or services.

CSIRO- patented Wi-Fi US (where they hold a patent for it)

Productivity Commission (2016), Intellectual Property Arrangements, Chapter 7

1.3 Procedure for obtaining a patent Application Publication examination acceptance/opposition grant/seal

(a) Who may apply? S 29: anyone can apply on behalf of another person (ie patent attorney)

o Anyone can apply, but restrictions on who can be granted a patent o S 15 sets out who may be granted a patent

An inventor Or a person who would be entitled (be assigned) Employment situations Legal rep of deceased person

(b) Form of the application s 29(1), (2)

Provisional application: ss 29(3), 40(1), reg 3.2

if you havnt finished your invention yet, not ready to bring it to market yet – but you want a earlier priority date

S 40- disclosure requirements Under s 38- you have 12 months to lodge your complete application https://moodle.telt.unsw.edu.au/pluginfile.php/2813296/mod_resource

/content/1/IP%20Australia%20-%20Basic%20Example%20of%20Provisional%20Specification.pdf

Complete application: ss 29(4), 40(2)-(3), regs 3.1, 3.2A

https://moodle.telt.unsw.edu.au/pluginfile.php/2813298/mod_resource/content/1/IP%20Australia%20-%20Basic%20Example%20of%20a%20Complete%20Specification.pdf

o Specification: sets boundaries of patents and legal rights o S 40: sets out the form requirements for the patent

Timing: s 38, reg 3.10

(c) Priority date s 43, reg 3.12 (See also: Convention applications s 29B, regs 3.5AG, 3.11); PCT applications s 29A and 56A, regs 3.5AA, 3.5AB-3.5AF) s 43:

Priority date is crucial because if the patent is granted, the applicant can claim priority over any invention or any later application

In Australia: first to filed system (as opposed to first invented system) o First to file scenario:

Person A makes an invention. Finish 2nd of January and go away Haven’t lodged a patent application While they’re away, Person B finishes inventing on 13 august; and 14 august

lodge an application for a patent Even though person A invented it before Person B, Person B filed their

application first Person A needs to pay a license fee t the other person, and wont be able to

get any legal protection

(d) Publication ss 54-55

18 months after your filing date/priority date, your patent will be open for public inspection

Whole application will be published in the Australian journal of patents S 57(1)

Applicant is deemed to have the same rights as if the patent had been granted on that day S 57(3)

Patent must be granted for you to pursue infringement proceedings

(e) Examination s 45, reg 3.18

Look at form & substance requirements

Applicant needs to have disclosed best method for invention

Claims need to be succinct

Examiner needs to look at whether the invention falls foul of s 18(2) o 18(2)-exclusion for human beings, and the biological processes for their generation

(f) Acceptance and opposition s 49(1), (5)

examiner produces a report

if accepts application- then it will be advertised in Australia official journal of patents (subsec 5)

if refuses- the applicant can appeal to the federal court

s 59 (see also s 18)

if advertised-triggers opposition period

any person may oppose grant of patent

grounds: o a) nominate person not entitled/entitled to joint ownerhsip o b) not a patentable invention o c) specification filed does not meet the s 44 form requirement

under examination, the examiner is required to look at whether the patent meets the requirements of a,b and c.

o s 18(d)-only invoked in opposition and revocation proceedings. Whether the patent has been secretly used

eg: someone had been using invention for 10 years, been selling it, but hadn’t lodged an application for patent. After 10 years they put in an application. Can fail

only brought up in opposition and revocation the examiner doesn’t look at that

(g) Sealing and term ss 61, 65, 67 (note ss 70-79A for pharmaceutical patents)

after sealing-you get your exclusive rights (can sue anyone that’s been using your patent)

(h) Application to Court for revocation s 138

If you’re being sued for patent infringement

you will go and challenge the validity of the patent

just have to knock out 1 out of the 2 (form and substance) (i) Special provisions for innovation patents

Complete specification: s 40(2)(c)

Formalities check: s 52(1), reg 3.2B

Acceptance, sealing and publication: ss 52(2), 62(1), 62(2)

Term: ss 65, 68

Certification: s 101A-101F; Opposition before Commissioner and revocation: s 101M-101N

QUIZ Human-cow hybrid embryo

Denied

Prohibition on patenting of human beings or is contrary to law A dog nappy

Yes

A sealed, crustless peanut butter and jelly sandwich

Yes A method for doing a shoey

Application has been filed A method for applying for a patent

Examiner rejected it

No substantive enough of physical change for this to be considered a manner of manufacture

The hook at the back of a bra

Yes – mark twain A detachable wristwatch band

Yes – owned by Google A small that cats find nice

Yet to be examined A method and means for creating for creating an anti-gravity illusion

Yes – MJ

Patentable Subject Matter: Ch 10, pp 393 - 444

2.1 The s 18 criteria SUBSTANCE: ss 18(1) (patents)

Standard patents

S 18(1)(a)- what type of invention is capable of receiving a patent o Manner of manufacture

Inventive step (s 18(1)(a)(ii))

(1A) (innovation patents) Innovative step (s 18(1A)(a)(ii))

Exclusions ss 18(2)

Broad prohibition based on subject matter Cant get any patent for any invention that relates to human beings and biological processes for

their generations Doesn’t always preclude inventions for IDF But if invention has a purpose of creating a human being- will fall foul of s 18

S 18(3)

Exclusion specific to innovation patents Cant get an innovation patent for an invention that relates to plant or animal (can get standard patent if it passes the test)

S 50(1)(b)

Case: Human cloning act- found that the invention was contrary to this law. May be entitled to patent protection, but may have some illegality to them

We specifically refer to s 6 of the statute of monopolies in our patents act

To what extent do the provisos apply? Definition of invention: Act, Sched 1 NV Philips Gloeilampenfabricken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 183 CLR 655

2.2 “Manner of manufacture” and the NRDC test s 18(1)(a)-a patentable invention is an invention that is a manner of manufacture within the meaning of s 6 of Statute of Monopolies. Not defined in act, go to case law: Distinction Patentable subject matter:

a) product that can be produced by following a specification b) a process or method by which, through following the specification, can be used to achieve a

certain results, provided that this product or process is capable of industrial or commercial application

National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (CB pp 396 - 400) – best case for manner of manufacturer

Invention: method to kill weed, using to spray on crops. Made up of chemicals and weed killers that already existed.

o Weed grows around crops, need to kill weeds. o NRDC sought a patent over that process

Problem with that: pushing boundaries of what can be patented. This process doesn’t come up with anything new. It kills stuff, and leaves something unharmed. No new chemical combination or new product

Commissioner argued: outside the scope of what should be called a manufacture

Issue: can we extend this definition further, such that this process is a manner of manufacture A method or process, a manner of manufacture is

a) results in production on some product b) x c) has the effect of…

If you have an application for process or method invention, then it has to result in some outcome relating to a product that can be sold etc. Here, not the case, weeds died, crops were unharmed.

Restricted to vendible products Patent was only used to protect products or protecting them from deterioration. Lay outside the concept of manufacture Judgement:

o Could be patentable o Essential principles:

It’s a mistake to ask if an invention is a manner of manufacture on a purely literal basis.[something that is made/produced in a warehouse or by hand or by industry etc]-we don’t think about that. This would limit the scope of the test to purely tangible goods

Rather, correct question is: xxx No reason o limit the patentability to processes that had some tangible product

as an outcome Rather held: product in relation to a process need only be something in which a

new or useful effect can be observed. Doesn’t need to be an article, can be a physical phenomenon in which an effect can be observed

Vendible= should be referred to some kind of utility or commercial aspect Key issue: whether the process is capable of some form of industrial or

commercial application o Here, the effect produced by the method constituted a product,

because it resulted in an artificially state of affairs, in a field of economic endeavour.

o Some kind of change through the application of some process or method, and is this change or method capable of some kind of industrial application

Must be part of a useful, must be value to the country in the field of economic endeavour

Grant v Commissioner of Patents [2006] FCAFC 120

Facts: applicant invention: business method for moving around funds, that reduced an individuals taxation liability. Ie if you followed this method, digital transfers would lower your financially liability

Rejected by FFC o Key element: Grant was arguing that their method-there is some artificially created

state of affairs-money moves. o Court said that’s not enough. There needs to be some kind of physical result beyond

that, as a result of the method. o The unresolved question was whether it is enough that a process produces a ‘useful

result’ or whether it is necessary that ‘some physical thing is either brought into existence or so affected as the better to serve mans purpose’ (270)

Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (CB pp 400 - 401) 35 United States Code § 101 Facts: financial scheme, similar to the Grant one. Validity of 2 patents

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