Intellectual Property
LPAB Winter Session 2012
Therese Catanzariti
Therese Catanzariti
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Every person who shall build any new and ingenious device
in this City not previously made in our Commonwealth
shall notice of it to the office of our General Welfare Board
when it has been reduced to perfection so that it can be
used and operated. It is forbidden to every other person in
any of our territories and towns to make any further device
conforming with and similar to said one without the
consent and licence of the author for the term of 10
years…
We have among us men of great genius, apt to invent and
discover ingenious devices… more such men come to us
every day from diverse parts. Now if provision were made
for the works and devices discovered by such persons so
that others who may see them could both build them and
take the inventor’s honour away, more men would then
apply their genius, would discover, and would build
devices of great utility and benefit to our Commonwealth.
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Venice Statute 1474
Therese Catanzariti
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A monopoly being a derogation from the
common right of freedom of trade could not
be granted without consideration moving to
the public .. In the case of new inventions the
consideration was found either in the interest
of the public to encourage inventive ingenuity
or more probably in the disclosure made to
the public of a new and useful article or
process
Attorney General (Cth) v Adelaide Steamship Co
[1913] AC 781 at 394 per Lord Parker
Therese Catanzariti
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The main purpose of a patent system is to
stimulate industrial invention and innovation
by granting limited monopoly rights to
inventors and by increasing public availability
of information on new technology
Second Reading Speech,
Patent Amendment Bill 1981
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Therese Catanzariti
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Pharmaceutical products and processes
Engineering products and processes
Medical and therapeutic devices
Micro-organisms
Computer technology
Chemical compounds
Consumer electronics
Therese Catanzariti
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1992, 1996 - CSIRO Radio-Physics team develop technique to to
cut through atmospheric distortion and “unsmear” the signal to
measure the pulses emanating from exploding black holes
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1994 - IEEE 802.11 telecommunications standard
allows an electronic device to exchange data wirelessly (using
radio waves) over a computer network, including high-speed
Internet connection
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1998 - CSIRO assert rights in 802.11 standard
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April 2009 - CSIRO royalties $250 million (Dell, HP, Microsoft,
Intel, Nintendo and Toshiba)
total royalties $440 million
Therese Catanzariti
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Venice 1474 – privileges for inventors of new arts
and machines
Elizabeth I –royal prerogative to grant privileges
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Darcy v Allin – monopoly for foreign playing
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cards
Court declared monopoly void because
monopolies raise prices, debase quality, cause
unemployment
but could grant monopoly for inventions
James I - Statute of Monopolies 1624
declare monopolies void except for inventions
“sole working or making of any manner of new
manufacture …[granted] to the true and first
inventor
Therese Catanzariti
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Standard patents
Innovation patents (introduced 2001)
Patents of addition
◦ protect improvements and modifications of granted
patent
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Standard patents may be
Standard
Selection patents
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Combination patents
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◦ Select member/s from previously known class and find
new uses and qualities
◦ elements or integers in claim interact with each other to
produce new result or product
Therese Catanzariti
Replace petty patents
 Only require “innovative step” (not inventive step)
 Up to 5 claims
 Max term 8 years
 Presumed valid – formality check only
 no extensive examination
tho can’t enforce unless certifed after examination
 not plants or animals or biological processes for
their generation
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Dura-Post v Delnorth Pty Ltd
Therese Catanzariti
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Provisional
◦ Describe invention
◦ Secure priority date
◦ 12 months to file full application
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Complete – s40(2) – (4) and Sched 3,
Regulations
◦ Fully describe invention
including best method for performing it known to A
◦ claims defining invention and delineating monopoly
◦ claims must be clear, succinct and fairly based on
matter described
Therese Catanzariti
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patent subsist from priority date
prior art base examined from priority date
date file complete specification
date file provisional specification if – s43, r3.12-3.13
◦ file complete specification within 12 months
◦ complete specification fairly based on provisional specification
for amendments, date file amendments – s114, r3.14
 date file application in Paris Convention country
provided file in Australia within 12 months – s94-96, r3.12
 date file Patent Co-operation Treaty application – s88-93
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Therese Catanzariti
Mond Nickel Company
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has claimed invention been broadly described in provisional
specification
Does provisional specification contain anything which is
inconsistent with claimed invention
Does claim include a feature which the provisional specification
is silent
CCOM v Jiejing
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not over-meticulous verbal analysis
Rehm v Webster Security System International
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Specification contained a real and reasonably clear disclosure of
invention
Alleged invention as claimed is broadly, in a general sense,
described in specification
Therese Catanzariti
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Preliminary processing and publish details – s53
After 18 months from priority date, publish specification for
open public inspection (OPI) s54 – 55, r4,2, 4.3
Request examination (lapse if no request within 5 years) – s44
Applicant must disclose foreign documentary searches
Person eligible under s15
Application satisfy formal requirements s29
Specification complies s40
Invention is manner of new manufacture, novel and inventive (balance of
probabilities)
◦ Invention not excluded from patentability – s18, 50
◦ Application not “double patenting”
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Acceptance – s49
or adverse report – can amend application – s104, 107
 3 months for opposition – s59, r5.3
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◦ Applicant not entitled
◦ Invention not patentable – s18
◦ Specification not comply s40
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Sealed grant – s61 -62
Re-examination (on request) – s97 - 98
◦ Novelty and inventive step
Therese Catanzariti
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20 years from date of complete specification –
s65 and r6.3(date), s67 (term)
extend max +5 yrs for pharmaceutical substance
– s70
◦ included in Register Therapeutic Goods
◦ at least 5 years between patent date and first regulatory
approval date for substance
because health and safety laws reduce effective
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term because need provide extensive trial and
test data
3rd party can use pharma patent for nontherapeutic or making application to get
marketing approval – s119A
Therese Catanzariti
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Patentee not entitled
Not patentable invention
Patent obtained by fraud or
misrepresentation
Specification not comply s40
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Infringer can counter-claim revocation – s121
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Therese Catanzariti
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“manner of manufacture” within Statute of
Monopolies
Novel
Involves an inventive step
Useful
Not been the subject of secret use
not human beings and biological processes
for their generation
distinct requirements of a patentable invention
– CCOM v Jiejing
Therese Catanzariti
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refer to 1624 Statute so import caselaw
– NV Phillips v Mirabella
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Products or processes that have an industrial
application
If follow specification, produce product or
produce results
A27 TRIPS – capable of industrial application
Therese Catanzariti
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"a method or process is a manner of
manufacture if it
(a) results in the production of some vendible
product or
(b) improves or restores to its former
condition a vendible product or
(c) has the effect of preserving from
deterioration some vendible product to which
it is applied
Therese Catanzariti
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new method of killing weeds (thistle, nettle) in
broadleaf crops (celery, parsnip, clover, lucerne)
using known product
Word “manufacture” used not to reduce patentability
but as part of general title for whole category of
patentability
May be discovery without invention – discovery of
some piece of abstract information without any
suggestion of a practical application of it to a useful
end
method’s end result is artificially created effect
the result possesses its own economic utility
consisting in an important improvement in the
conditions in which the crop is to grow, whereby it is
afforded a better opportunity to flourish and yield a
good harvest.
Therese Catanzariti
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The point is that a process, to fall within the
limits of patentability which the context of
the Statute of Monopolies has supplied, must
be one that offers some advantage which is
material, in the sense that the process
belongs to a useful art as distinct from a fine
art - that its value to the country is in the
field of economic endeavour.
Therese Catanzariti
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“what is meant by a "product" in relation to a
process is only something in which the new
and useful effect may be observed. Sufficient
authority has been cited to show that the
"something" need not be a "thing" in the
sense of an article; it may be any physical
phenomenon in which the effect, be it
creation or merely alteration, may be
observed: a building (for example), a tract or
stratum of land, an explosion, an electrical
oscillation.
Therese Catanzariti
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discovery is only patentable when embodied in
practical, technical or industrial application
Diamond v Diehr
Process for molding raw, uncured rubber into
cured precision products
Arrhenius equation (rubber burning point) - not
patentable
Use Arrhenius equation in a computer program
to open the press and remove the rubber patentable
Therese Catanzariti
Computer program is algorithm
but if applied for a particular result
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IBM v Commissioner of Patents
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CCOM v Jiejing
improved method for producing curved images in
computer graphics
Controlling computers to operate in a particular way
Assemble text in Chinese characters on computer
screen
mode or manner of achieving an end result which is an
artificially created state of affairs of utility in the field
of economic endeavour
Therese Catanzariti
Welcome Real Time SA v Catuity Inc
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method involving credit smart cards that included computer chip
that recorded loyalty points from multiple distinct retailers onto
a computer file on chip
No physically observable end result in the sense of a tangible
product, but tangible result from POS terminal writing
information into computer file and print coupon
Grant v Commissioner of Patents 2005
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Method to protect assets against unsecured creditor’s claims –
create trust, gift to trust, trustee loan sum from trust, secure
loan by charge
“the method of his patent does not produce any artificial state of
affairs, in the sense of a concrete, tangible, physical, or
observable effect”
Physical effect in the sense of a concrete effect or phenomenon
or manifestation or transformation is required.
Mere scheme, abstract idea, intellectual information
Therese Catanzariti
Some countries expressly exclude – TRIPS A27 exception
 Initially excluded as essentially non-economic
 Joos v Commissioner of Patents – strengthen hair and nails
 commercial application in hairdressing
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Anaesthetic Supplies v Rescare – method and device for
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Bristol Myers Squibb v Faulding – method of administering
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reducing sleep apnoea
drug to treat cancer
Patient may be denied medical treatment
but no distinction in principle between product treating
human and method of treating human
but encourage research especially new uses of existing
drugs – eg aspirin
Therese Catanzariti
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Is novel when compared to prior art base at
priority date
New – not been done before
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even if the reason that it has not been done
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before is because it is silly or obvious
Therese Catanzariti
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whether prior art base anticipates the invention
prior art base reveal essential features of invention
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Hill v Evans
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A person of ordinary knowledge of the subject would
at once perceive, understand, and be able to
practically to apply the discovery without necessary of
making further experiments and gaining further
information… Whatever is essential to the invention
must be read out of the prior publication
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Meyers Taylor v Vicarr Industries
Reverse infringement test – if the patent was valid,
would the prior art infringe the patent
Therese Catanzariti
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System of using “tilt up walls” device to quickly build
concrete walls
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Ramset – essential feature was extended length of lever
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Advanced – essential feature are hoisting cable, shackle,
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Release cable is essential because specification emphasis
that invention is quickly releasable
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prior art does not disclose release cable so not anticipated
arm, designed to prevent premature release of clutch not
provision of cable
anchor in wall section, ring clutch and a release cable
Therese Catanzariti
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Information in document that is publicly available
Information made publicly available through doing an act
Information in complete specification with earlier priority date
even if unpublished at date of application
Information in single document
Information in single act
information in documents or acts if relationship between
documents and acts that person skilled in the relevant art would
treat as a single source of information – s7(1)
Can’t mosaic if information is not otherwise cross-referenced or
connected
“the picking out of individual items from prior publications… and
assembling them together so as to give them an appearance of
unity and then alleging that such mosaic reveals the very thing
claimed… not a permissible process” - 3M v Bieirsdorf
Therese Catanzariti
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If the public has access to it, free to use information
Even if disclosed to one w/o obligation confidentiality
Fomento v Mentmore – ballpoint pen given to govt dept
Merck v Arrow Pharmaceuticals – Lunar News given to
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some hospitals/universities and not catalogued
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Even if no-one but an expert can understand it
Even if in a foreign language
Dennison Manufacturing v Monarch Marketing Systems
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–specification about plastic tags to attach price labels
“document resting quietly in French language in
Canberra”
Therese Catanzariti
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Distribute samples
Manufacture devices and products
Display at public event
Offers to sell
Description in obscure publication
Information on internet
Images on internet
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must file within 12 months (some 6 months)
Publication without patentee’s consent
Disclosure to public authorities
Showing or use at recognised exhibition
Publication in paper and read or published by
learned society
Working in public of invention for reasonable
trial if necessary for working to be in public
◦ Newall & Elliott – laying submarine telegraph cable
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Patentee’s use or disclosure in the previous
12 months (general grace period)
Therese Catanzariti
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can’t be novel if method uses known
substances for purposes consistent with
known properties
Only if method uses unknown or unsuspected
property of the material so that it serves a
new purpose
NRDC v Commissioner Patents
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real advance and more than an obvious
extension, variation or combination of prior art
invention involves inventive step – s7(2)
unless obvious to person skilled in art in light of
◦ common general knowledge in Australia
◦ certain prior art
(from April 2013 – common general knowledge anywhere,
any prior art)
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certain prior art – s7(3)
prior art information / combination of prior art
information
skilled person reasonably expected to have
ascertained, understood, regarded as relevant
and combined
Therese Catanzariti
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Identify relevant art
Construct hypothetical skilled person
Skilled but non-inventive ,not particularly imaginative
worker in relevant field – 3M v Beiersdorf
Identify scope
◦ common general knowledge
common general knowledge of person skilled in art,
information known or used by those in relevant trade,
background knowledge and experience – 3M v
Beiersdorf
may not include all public knowledge, published specs
standard textbooks, technical manuals, trade magazines
◦ prior art
notional skilled reasonably expected to ascertain, understand,
regard as relevant, and combine if separate
Emperor Sports – not reasonably expect ARL coach, referee, umpire
or administrator to conduct USPTO search
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Would hypothetical skilled person knowing the information
have found it obvious to take the step
Therese Catanzariti
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even if simple
not merely skill, tenancy, managerial
efficiency using familiar theory
not if difference plain or very plain
not if take routine steps/experiments that try
as matter of course
Aktiebolaget Hassle v Alphapharm – active
ingredient coated to allow tablet to pass
through stomach but dissolve in intestine
Therese Catanzariti
solution to a problem
(but inventiveness may be in articulating the
problem)
 Satisfy long felt need
 Commercial success of the invention
(but may be good workmanship, price or other
qualities)
 Willingness of rivals to create imitation
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may be slow and laborious or brilliant coup
Therese Catanzariti
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Results promised in the specification can be achieved
by following the instructions in the specification
Does what the patentee intended, achieves intended
result
not if the apparatus does not work as claimed
read in light of specification as a whole according to
what an intelligent person skilled in art and desirous
of making use of invention would do
from April 2013 - a specific, substantial and credible
use for the invention is disclosed in the Patent
specification – s7A
Therese Catanzariti
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Prevent patentee effectively prolonging monopoly
Whether patentee obtained a commercial benefit
from activity before priority date – Azuko v Old
Digger
exceptions – s9
 reasonable trial and experiment
 Use by a public authority
 Use solely in course of confidential disclosure (eg
to patent attorney, potential investor)
 Other uses for purpose other than trade or
commerce
Therese Catanzariti
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“manner of manufacture” exclude patents that
are contrary to law or generally inconvenient
A27 TRIPS – members may exclude patentability
…to protect human life
Re Woo-Suk Hwang
No patent for method of producing hybrid
embryo created by transferring nucleus of human
cell into bovine ovum and activating the ovum
Fertilitescentrum AB and Luminis Pty Ltd
Method of growing pre-blastocyst human
embryos in a specifed medium
Therese Catanzariti
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Describe invention fully, including the best
method known to the applicant of performing
the invention
claims must be clear and succinct and fairly
based on the matter described in the
specification
Therese Catanzariti
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sufficiency - describe invention fully
describe fully enough to allow informed reader
with reasonable skill in trade to perform
disclose best method known of carrying out
invention
from April 2013 - specification discloses invention
in manner which is clear enough and complete
enough for the invention to be performed by a
person skilled in the relevant art
Therese Catanzariti
public has right to know what may/may not
do
 define clearly and with precision the
monopoly claimed so that others know the
exact boundaries of area
 Skilled addressee applying common sense
and common knowledge
ambiguous if claims lack clarity
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Therese Catanzariti
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Compare claims with invention disclosed in
specification
Lockwood Security Products v Doric Products
patent for a key controlled latch
Whether real and reasonably clear disclosure in
body of specification of what is then claimed, so
that the alleged invention as claimed is broadly,
that is to say, in a general sense, described in the
body of the specification
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from April 2013 - claims are fully supported by
the description
Therese Catanzariti
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Eligible person – s15
◦ inventor
◦ assignee of inventor (person who would be entitled
to have patent assigned to them)
◦ Successor to inventor or assignee
◦ Legal personal representative
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Joint owners – s16
◦ own as tenants in common
◦ can work patent without accounting
◦ can’t grant licence or assign without other’s
consent
Therese Catanzariti
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objectively assess contributions - if person’s
contribution had a material effect on the final concept
of the invention
concept of invention from whole of specification in
claims
don’t look at inventiveness of the contribution
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Polwood v Foxworth –method and apparatus for
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producing potting mix from waste organic materials
Polwood – steam treatment and de-watering proces
Foxwood – extended range of materials, design and
build apparatus to put process into effect
 joint inventors
Therese Catanzariti
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Employers not automatically entitled
Only if entitled to be assignee – s15(2)
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Employment contract
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◦ Express term
◦ Implied term
UWA v Gray – UWA professor research use of
microspheres for treatment of cancerous tumours
especially liver
not necessary to imply term
obliged to conduct research but no duty to invent
Therese Catanzariti
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Nature of invention
Duties employee engaged to perform
Employee’s position in the company
Circumstances invention made
◦ Whether made during working hours
◦ Whether useful to employer business
◦ Whether employee responding to employer
instructions
Therese Catanzariti
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Exclusive right to exploit invention and
authorise others to exploit – s13(1)
Exploit – Sched 1
Product - make, use, sell or otherwise
dispose, import or keep for purpose of
exploiting
Process – use the method, and exploit any
resulting product
Therese Catanzariti
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Assignment
◦ capable of assignment – s13(2)
◦ assign in writing signed by assignor – s14
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Security interests
◦ Register interests Register of Patents – s187, r19.1
◦ Personal Property Securities Act
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Licence
◦ register interest Register of Patents – s187,r19.1
◦ Co-owners must all consent to licence – s16
Therese Catanzariti
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Implied licence
◦ Purchaser’s right to use product
◦ right to repair product
Compulsory licence – s133, r12.1
Person may apply to Federal Court for licence to work
invention
◦ Patentee fail to satisfy reasonable requirements of public
 trade or industry unfairly prejudiced or demand not met because fail
manufacture to adequate extent, supply on reasonable terms or grant
licences on reasonable terms – s135
 applicant made reasonable efforts for reasonable time to obtain licence
on reasonable terms
 Patentee no satisfactory reason for failing to exploit
◦ Patentee using exclusivity to act anti-competitively contravening
Consumer and Competition Act
Crown use for services of Commonwealth or State – s163
Exploitation necessary for proper provision of services
Must pay remuneration – s165
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Therese Catanzariti
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applicant is registered proprietor or exclusive
licensee
patent in force
defendant perform act in Australia
after date of publication
act within patent owner’s exclusive rights
Therese Catanzariti
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Claims determine legal limits of monopoly
construe claims then compare infringing article
Decor Corporation v Dart Industries
Kinabulu Invstments v Barron and Rawson
Purposive construction
 Read specification as whole
 Don’t confine claims by limitations in specification
(tho specifications may define or qualify words in
claims, may resolve ambiguity and provide
background
 Court construe not expert
 Terms given ordinary English meaning
(tho evidence from experts on scientific or technical
terms)
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Therese Catanzariti
purposive construction rather than literal construction
 essential requirements of invention – essential integers of claim
still infringe if replace inessential with mechanical equivalents
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Catnic Components v Hill & Smith
lintel in spanning space above window and door openings
Claim – supporting back plate extending vertically
Infringer – back plate 6o from vertical, with no significant change
of strength or function
whether persons with practical knowledge and experience of
kind of work in which invention intended to be used would
understand that strict compliance with a particular descriptive
word was intended to be essential requirement so any variation
was outside monopoly
Therese Catanzariti
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must complete finished article including all integers
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Dunlop Pneumatic Typre v David Moseley
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include if manufacture product in course of
manufacturing non-infringing product
bicycle wheel – hub, spoke, rim, tubeless tyre
not infringe to manufacture tyre only
even if intend consumers to combine with other
integers
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Bedford Industries v Pinefair
garden edging product including pine logs arranged
side by side and connected by two strands of bands
changed product by severing strip so secured by
hinges
Therese Catanzariti
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not if merely possess, purchase, own
not if merely warehouse or transport
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even if sell components that consumer
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Windsurfing International v Petit
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assemble
sale sailboard in kit of parts
Therese Catanzariti
use
 Product – unauthorised commercial use
 Process – any unauthorised use
import
 Patentee may control import
but only where patentee imposes conditions
otherwise exhaustion of rights
Therese Catanzariti
supply integer knowing that recipient will
combine with other integers
 supply unpatented product with instructions
to recipient to use in infringing way
=>supplier not infringing
=>supplier may not be joint tortfeasor
because merely facilitating not participating
because no common design
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Therese Catanzariti
If use of product would infringe patent
then supply of product is infringement
 Use of product
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◦ Use if only one reasonable use
◦ Any use if supplier reason to believe that person
would put to use (unless staple commercial
product)
◦ Use of product in accordance with supplier’s
instructions
◦ Use of product pursuant to any inducement by
supplier
Therese Catanzariti
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Bristol Myers v Faulding
method of administering anti-cancer drug
Faulding provide hospitals with product information
guides and protocols
If the doctor’s use of drug would infringe BM patents,
F’s supply to doctor infringes patent
NT v Collins
method for producing blue essential oils ffrom
cypress pine
NT grant licence to ACOC to enter NT land and take
timber
Product is any product - not limited to product from
use of patented method
Therese Catanzariti
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Authorise
more than countenance or enable
Misleading and Deceptive – s18 ACL
Advanced Building Systems v Ramset
Fasteners
supplier may be guilty of misleading and
deceptive conduct for failing to warn
customers of real possibility that use of
products infringe patentee’s patent
Therese Catanzariti
act to include therapeutic goods on Register
of Therapeutic Goods s 119A
 act to obtain approval required by Cth / State
law to exploit a non-pharma product, method
or process - s119B
(eg conduct research and trials necessary to
gain regulatory approval)
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experimental uses of the patented invention –
s119C
Therese Catanzariti
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foreign vessels temporarily in patent area –
118
prior use – s119
person exploiting, or taken definite steps to
exploit product or process before priority
date
not if stop exploiting or abandon steps to
exploit before priority date except
temporarily
Therese Catanzariti