Intellectual Property
Winter Session 2016
(Weeks 11 and 12)
Beth Oliak
•
•
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.
Beth Oliak
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
Beth Oliak
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
Beth Oliak
•
•
•
•
•
•
•
Pharmaceutical products and processes
Engineering products and processes
Medical and therapeutic devices
Micro-organisms
Computer technology
Chemical compounds
Consumer electronics
Beth Oliak
•
•
•
•
•
•
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
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
1998 - CSIRO assert rights in 802.11 standard
April 2009 - CSIRO royalties $250 million (Dell, HP, Microsoft, Intel,
Nintendo and Toshiba)
total royalties $440 million
Beth Oliak
Beth Oliak
Beth Oliak
•
Venice 1474 – privileges for inventors of new arts and machines
•
Elizabeth I –royal prerogative to grant privileges
•
Darcy v Allin – monopoly for foreign playing 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
Beth Oliak
•
Standard patents
•
Standard
•
Selection patents
•
Select member/s from previously known class and find new uses and qualities
•
Combination patents
•
elements or integers in claim interact with each other to produce new result
or product
•
Innovation patents (introduced 2001)
•
Patents of addition
•
protect improvements and modifications of granted patent
Beth Oliak
•
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)
•
BUT can’t enforce unless certifed after examination
•
not plants or animals or biological processes for their generation
•
Dura-Post v Delnorth Pty Ltd
Beth Oliak
•
Provisional
• Describe invention
• Secure priority date
• 12 months to file full application
•
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
Beth Oliak
•
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
Beth Oliak
Mond Nickel Company
•
•
•
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
•
not over-meticulous verbal analysis
Rehm v Webster Security System International
•
•
Specification contained a real and reasonably clear disclosure of invention
Alleged invention as claimed is broadly, in a general sense, described in
specification
Beth Oliak
•
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”
Beth Oliak
•
Acceptance – s49
•
or adverse report – can amend application – s104, 107
•
3 months for opposition – s59, r5.3
•
Applicant not entitled
•
Invention not patentable – s18
•
Specification not comply s40
•
Sealed grant – s61 -62
•
Re-examination (on request) – s97 - 98
•
Novelty and inventive step
Beth Oliak
•
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 term because
need provide extensive trial and test data
3rd party can use pharma patent for non-therapeutic or
making application to get marketing approval – s119A
Beth Oliak
•
Patentee not entitled
•
Not patentable invention
•
•
•
Patent obtained by fraud or
misrepresentation
Specification not comply s40
NOTE: Infringer can counter-claim revocation
– s121
Beth Oliak
Requirements:
(1)
“manner of manufacture” within Statute of
Monopolies (1(a))
(2)
Novel (1(b)(i))
(3)
Involves an inventive step (1(b)(ii))
(4)
Useful (1(c))
(5)
Not been the subject of secret use (1(d))
(6)
not human beings and biological processes for
their generation (for innovation patents – (2))
Beth Oliak
•
Refers to 1624 Statute so import caselaw (NV
Phillips v Mirabella)
•
•
•
Products or processes that have an industrial
application
If follow specification, produce product or
produce results
A27 TRIPS – capable of industrial application
Beth Oliak
“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.”
Beth Oliak
•
•
•
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
Beth Oliak
•
•
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.
Beth Oliak
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.
Beth Oliak
“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.”
Beth Oliak
•
•
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
Beth Oliak
Computer program is algorithm except if applied for a
particular result:
IBM v Commissioner of Patents
•
improved method for producing curved images in computer
graphics
•
controlling computers to operate in a particular way
CCOM v Jiejing
•
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
Beth Oliak
Grant v Commissioner of Patents 2005
•
•
•
•
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
Beth Oliak
Welcome Real Time SA v Catuity Inc
•
•
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
Beth Oliak





Research Affiliates LLC v Commissioner of Patents
method for calculating an Index for using in financial
investing
akin to a mere scheme, abstract idea or mere information
and not resulting in a physical effect
the index generated is nothing more than a set of data.
The index is simply information: it is a set of numbers. It
is no more a manner of manufacture than a bank balance,
whether represented as data in a bank’s computer, written
on a piece of paper or kept in a person’s memory
the method of the claimed invention does not involve a
specific effect being generated by the computer.
Beth Oliak
•
Some countries expressly exclude – TRIPS A27 exception
•
Initially excluded as essentially non-economic
•
Joos v Commissioner of Patents – strengthen hair and nails (commercial
•
Anaesthetic Supplies v Rescare – method and device for reducing sleep
•
Bristol Myers Squibb v Faulding – method of administering drug to treat
•
Patient may be denied medical treatment
•
•
application in hairdressing)
apnoea
cancer
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
Beth Oliak
Cancer Voices Australia v Myriad Genetics Inc
•
•
•
Patent for isolated gene sequences relating
to BRCA1 (breast cancer gene)
The nucleic acid or gene sequence in
its isolated form was sufficient to qualify as
an artificially created state of affairs
The nucleic acid did not exist in isolated
form in the cell
Beth Oliak
•
Is novel when compared to prior art base at
priority date
•
New – not been done before
•
even if the reason that it has not been done
before is because it is silly or obvious
Beth Oliak
Prior art base anticipates the invention if it reveals essential features
of invention:
Hill v Evans
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
Meyers Taylor v Vicarr Industries
Reverse infringement test – if the patent was valid, would the
prior art infringe the patent
Beth Oliak
•
System of using “tilt up walls” device to quickly build concrete
walls
•
Ramset – essential feature was extended length of lever arm,
•
Advanced – essential feature are hoisting cable, shackle, anchor
•
•
designed to prevent premature release of clutch not provision of
cable
in wall section, ring clutch and a release cable
Release cable is essential because specification emphasis that
invention is quickly releasable
prior art does not disclose release cable so not anticipated
Beth Oliak
•
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)
Beth Oliak
•
•
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”
Beth Oliak
•
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 some
•
Even if no-one but an expert can understand it
•
Even if in a foreign language
•
Dennison Manufacturing v Monarch Marketing Systems –
•
“document resting quietly in French language in Canberra”
hospitals/universities and not catalogued
specification about plastic tags to attach price labels
Beth Oliak
•
Distribute samples
•
Manufacture devices and products
•
Display at public event
•
Offers to sell
•
Description in obscure publication
•
Information on internet
•
Images on internet
Beth Oliak
•
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
•
Patentee’s use or disclosure in the previous 12 months
(general grace period)
Beth Oliak
•
•
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
Beth Oliak
•
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)
•
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
Beth Oliak
•
•
•
•
Identify relevant art
Construct hypothetical skilled person (skilled but non-inventive ,not
particularly imaginative worker in relevant field – 3M v Beiersdorf)
Identify scope of 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
Identify 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
Would hypothetical skilled person knowing the information
have found it obvious to take the step
Beth Oliak
•
even if simple
•
not merely skill, tenancy, managerial efficiency
•
not if difference plain or very plain
•
not if take routine steps/experiments that try as
•
Aktiebolaget Hassle v Alphapharm – active
using familiar theory
matter of course
ingredient coated to allow tablet to pass through
stomach but dissolve in intestine
Beth Oliak
•
•
•
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
•
May be slow and laborious or brilliant coup
Beth Oliak
•
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
Beth Oliak
•
•
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
Beth Oliak
•
•
“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
specified medium
Beth Oliak


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
Beth Oliak
•
•
•
•
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
Beth Oliak
•
•
•
•
public has right to know what it 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
Beth Oliak
•
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
from April 2013 - claims are fully supported by the
description
Beth Oliak
•
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
•
Joint owners – s16
◦ own as tenants in common
◦ can work patent without accounting
◦ can’t grant licence or assign without other’s consent
Beth Oliak
•
•
•
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
Beth Oliak
Polwood v Foxworth
•
Method and apparatus for 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
Court found they were joint inventors
Beth Oliak
•
Employers not automatically entitled
•
Only if entitled to be assignee – s15(2)
•
Employment contract
•
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
Beth Oliak
•
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
Beth Oliak
Exclusive right to exploit invention and
authorise others to exploit – s13(1)
Exploit – Schedule 1:
•
•
Product - make, use, sell or otherwise
dispose, import or keep for purpose of
exploiting
Process – use the method, and exploit any
resulting product
Beth Oliak
•
Assignment
◦ capable of assignment – s13(2)
◦ assign in writing signed by assignor – s14
•
Security interests
◦ Register interests Register of Patents – s187, r19.1
◦ Personal Property Securities Act
•
Licence
◦ register interest Register of Patents – s187,r19.1
◦ Co-owners must all consent to licence – s16
Beth Oliak
•
•
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
Beth Oliak
•
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
Beth Oliak
•
•
claims determine legal limits of monopoly
construe claims then compare infringing
article (identify required elements of claim
and determine whether they are present in
infringing article)
Beth Oliak
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)
Beth Oliak
•
purposive construction rather than literal construction
•
essential requirements of invention – essential integers of claim
•
still infringe if replace inessential with mechanical equivalents:
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
Beth Oliak
•
Must complete finished article including all
integers
Dunlop Pneumatic Typre v David Moseley
•
bicycle wheel – hub, spoke, rim, tubeless tyre
•
not infringe to manufacture tyre only
•
even if intend consumers to combine with
other integers
Beth Oliak
•
Include if manufacture product in course of
manufacturing non-infringing product
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
Beth Oliak
•
not if merely possess, purchase, own
•
not if merely warehouse or transport
•
infringe even if selling components that
consumer must assemble
Windsurfing International v Petit
•
sale sailboard in kit of parts (esp because
common way of selling sailboard)
Beth Oliak
Product – unauthorised commercial use
Process – any unauthorised use
Beth Oliak
•
•
Patentee may control import but only where
patentee imposes conditions
otherwise exhaustion of rights
Beth Oliak
•
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
Beth Oliak
•
•
If use of product would infringe patent then
supply of product is infringement
Use of product
◦ 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
Beth Oliak
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
Beth Oliak
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
Beth Oliak
•
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
Beth Oliak
•
•
•
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)
experimental uses of the patented
invention – s119C
Beth Oliak
•
foreign vessels temporarily in patent area – s
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
Beth Oliak