Patent law lawyer

At Dundas Lawyers^®, we understand that defending or enforcing of your business’s rights in patents can be critical for business success.  Infringement and intellectual property theft is on the rise in the modern digital landscape.  For many businesses, intellectual property protection involves more than just an idea or a concept, it is essential to protects genuine business assets.  Dundas Lawyers^® has experience identifying, enforcing and defending intellectual property rights and has acted for businesses inside and outside of the courtroom.

What exactly is a patent?

A patent is a grant of exclusive commercial right to exploit and authorise others to exploit an invention for the duration of the patent.  In Australia, a patent can be granted for a new, useful and inventive or innovative:

• product, such as a machine, device or substance; and/or
• process or method.

When is a patent infringed?

To establish infringement the Patent owner (or an exclusive licensee) must prove that the product which is alleged to infringe takes all of the essential integers of the claims of the Patent (see Doric Products Pty Limited v Asia pacific Trading (Aust) Pty Ltd [2017] FCA 849 at [38]).  The Court in Doric said at [38]:

“As a fundamental rule, the test for infringement is determined by the construction of the claim, and there will be no infringement unless the alleged infringer has taken all of the essential features of the claim”.

What are the essential integers of the claims of a patent?

Whether an integer is “essential” or not is generally determined by the patentee (Fresenius Medical Care Australia Pty Limited v Gambro Pty Limited [2005] FCAFC 220 at [45]).  An integer will usually be essential unless it does not materially affect the way the invention works.  Even if a feature does not materially affect the way the invention works, an integer is essential if it is evident from reading the patent that the feature is intended to be essential (Catnic Components v Hill & Smith Ltd (1982) RPC 183).

Cross claiming to revoke a patent

When faced with allegations of infringement as well as considering whether the respondents product takes all of the essential integers of the patent in suite its usual to consider the grounds of which the patent could be revoked for reasons of invalidity.  The basis that any patent could be revoked is the opposite of the reasons it should have been granted in the first place.  Put another way a patent could be held to be invalid because:

• it lacks of novelty (section 7(1) and section 18) (Lack of Novelty);
• it lacks an inventive step (section 7(1) and section 18) (standard patent) (Inventive Step);
• it lacks of innovative step (section 7(1) and section 18) (innovation patent) (Innovative Step);
• the invention is not useful (section 18(1)(c)) (Usefulness);
• the invention was secretly used in the patent area before the priority date of the claim (section 18(1)(d)) (Secret Use);
• is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies (section 18(1)(a)) (Manner of Manufacture); or
• other grounds for invalidity:
  • patent obtained by fraud, false suggestion or misrepresentation (section 138(3)(d)) (Fraud, False Suggestion or Misrepresentation);
  • the patent specification does not provide sufficient information and instruction for a person skilled in the field that the patent relates to be able to perform the teaching of the patent and produce an invention falling within the claims of the patent (section 40(2)(a)) (Sufficiency);
  • failure to disclose the best method known to the patent applicant of performing the invention (section 40(2)(aa)) (Best Method); or
  • the claim or claims must be clear and succinct and supported by matter disclosed in the specification (section 40(3)) (Fair Basis).

There are of course other grounds for revoking a patent, which could apply on case-by-case basis, however the above are the generally accepted categories.

Recent videos on patent infringement and patent revocation by Dundas Lawyers^®

Disclaimer
This page contains general commentary only about patent infringement and invalidity.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

Why choose Dundas Lawyers^® as your Australian Patent Lawyer?

Having exerted Blood Sweat and Years^® since April 2010 we are the team you want on your side for the long term to act as the ‘bodyguard’ for your business to protect its intellectual property or to stand up for your rights.  Some of the reasons clients choose Dundas Lawyers^® include:

• our Uncommon business acumen;
• our Uncommon expertise in transactional, compliance and litigious matters;
• our Uncommon expertise forensic case preparation;
• our Uncommon customer focus;
• the fact that we don’t just know law, we know business!
• how we leverage our Uncommon Nous^® to provide client solutions.

Need a lawyer to advise on patent infringement?

For a confidential, no obligation initial telephone call to find out how we can help your business gain an uncommon advantage in initiating or defending allegations of patent infringement in an Australian Court please phone our team on either 1300 386 529 or 07 3221 0013.

Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
T: +61 7 3221 0013 (preferred)
M: +61 419 726 535
E: mburrows@dundaslawyers.com.au

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Recent insights about patent infringement and patent revocation