Patent law and commercialisation

At Dundas Lawyers^®, we understand that innovation can be critical for business success.  Dundas Lawyers^® has experience identifying, enforcing and defending intellectual property rights and has worked with businesses at all stages of the business lifecycle to commercialise and exploit their patent rights.

What exactly is a patent?

The World Intellectual Property Organisation (WIPO) defines a patent (Patent) as:

“As an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.”

Patents are considered an incorporeal exclusivity right granted by a sovereignty (Government) to an inventor.  This instils the inventor with a right to commercially exploit their invention for the lifetime of the Patent.  Patents are one element of Intellectual property (IP) that focuses on the encouragement of innovation and the protection of the rights of the inventor.  The aim of a Patent is to balance the competing interest of the inventor and the greater public.  This is achieved by granting the inventor a commercial monopoly over their invention in return for providing the technical progress to the public.  There are two (2) different kinds of patents:

• standard patents; and
• innovation patents.

An innovation patent provides protection for ‘lower level’ inventions that are not sufficiently unique enough to qualify for standard patents.  They are less expensive and easier to obtain than a standard patent.

What does a patent protect?

The primary function of the patent system is to create a framework that provides for the protection of innovation.  In Australia the system for protecting the rights of patentees is contained in the Patents Act 1990 (Cth) (Patents Act) which is administered by the Australian Patents Office.  Section 13 of the Patents Act provides that a patent gives the patentee the exclusive right (during the term of the patent) to exploit the invention and to authorise another person to exploit the invention.  The exclusive rights provided by this section are personal property and are capable of being assigned or devolved by law.

To qualify for these protections, the invention must pass the tests for patentability set out in the Patents Act.  Part of these tests require that the invention must be new, with the Patents Act distinguishing between patents based on their ‘inventiveness’ or ‘newness’; between standard patents and innovation patents.  Regardless of this distinction, a patent will not be granted where the invention is known to the public through prior use or disclosure of the invention.

What are the threshold requirements patentability?

Section 18(1) of the Patents Act describes the elements that must be satisfied for an invention to be patentable in Australia.  The invention must be:

• a manner of manufacture within the meaning of section 6 of the Statute of Monopolies;
• novel when compared with the prior art base as it existed before the priority date;
• involve an inventive step or innovative step depending in the case of an innovation patent;
• be useful; and
• not have been secretly used in the patent area before the priority date of that claim.

In accordance with section 40 of the Patents Act, the patent itself must also comply with the following requirements:

• it must disclose the best method known to the patentee of performing the invention;
• the patent must end with claims which define the invention:
  • in the case of a standard patent, there must be at least one (1) claim but there is no limit to the number of claims;
  • in the case of an innovation patent, there must be at least one (1) claim, but not more than five (5);
  • the claims must not rely on references to descriptions or drawings unless absolutely necessary; and
  • the claims must relate to one (1) invention only;
• the claims defining the invention must be clear and succinct and supported by the information disclosed in the patent specification; and
• it must 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.

The assistance of a patent attorney is essential when drafting and filing the patent specification dealing with these issues.

Court decisions involving Patents by Dundas Lawyers^®

• Hill & Smith Holdings PLC v Safe Barriers Pty Ltd (No 2) [2020] FCA 8 (8 January 2020)
• Hill & Smith Holdings PLC v Safe Barriers Pty Ltd [2018] FCA 1882 (27 November 2018)
• Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd [2018] FCA 587 (2 May 2018)

Recent videos on patent law and commercialisation by Dundas Lawyers^®

Disclaimer
This page contains general commentary only about patent law and commercialisation.  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^®?

Having exerted Blood Sweat and Years^® since April 2010 we are the team that you want on your side to assist with commercialisation of your Patents.  Dundas Lawyers^® are not Patent Attorneys so do not draft Patent specifications for our clients.  However, we work with a number of leading Patent Attorneys who have subject matter expertise aligned with our clients and are involved in all aspects of Patent commercialisation and licensing.  Some of the reasons clients choose Dundas Lawyers^® include:

• our Uncommon business acumen;
• our Uncommon customer focus;
• our ability to offer fixed fees (when there is a fixed scope of work);
• our intellectual property experts with hands on experience in a variety of intellectual property transactions as well as Court matters involving defence and cross claiming for the revocation of Patents;
• the fact that we don’t just know law, we know business!
• how we leverage our Uncommon Nous^® to provide client centric solutions.

Considering getting a lawyer to advise on patent law and commercialisation?

For a confidential, no obligation initial telephone call to find out how we can help your business gain an uncommon advantage in patent law and commercialisation 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

Complete the form below and we will respond to your enquiry within one (1) business day from the moment you press Submit.

Recent insights about patent law and commercialisation