A patent provides exclusive rights during its term to exploit the patented invention. In Australia the Patents Act 1990 (Cth) (Patents Act) protects intellectual effort by granting exclusive rights, during the term of the patent, to exploit an invention and to authorise other persons to exploit it. The owner is entitled to defend the patent against infringement from third parties in the patent area – which in the case of Australia is the Commonwealth of Australia – during the term of the patent.
What are the different kinds of patents in Australia?
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 are the threshold requirements patentability?
A patent is defined in the Patents Act as either a standard patent or an innovation patent, with the main protection difference being the duration of the monopoly rights granted (twenty (20) years for standard patents and eight (8) years for innovation patents). Once a Patent is granted, the patentee has “the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention” (per section 13(1)).
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 (Manner of Manufacture); and
- novel when compared with the prior art base as it existed before the priority date (Novelty); and
- involve an inventive step (Inventive Step) or innovative step (Innovative Step) depending in the case of an innovation patent; and
- be useful (Usefulness); and
- not have been secretly used in the patent area before the priority date of that claim by (Secret Use).
The patent itself must also comply with the following requirements (section 40);
- it must disclose the best method known to the patentee of performing the invention (Best Method); and
- 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 (Fair Basis); 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 (Sufficiency).
The assistance of a patent attorney is essential when drafting and filing the patent specification dealing with these issues.
Is there anything that cannot be patented?
It is not permissible to patent:
- human beings and biological processes for the generation of human beings (Section 18(2)); and
- plants, animals and biological processes for the generation of plants and animals for the purposes of innovation patents (Section 18(3)).
Matters not affecting the validity of a patent
A patent will not be invalid because:
- the patent (or share of the patent) was granted to a person not entitled to it (section 22A);
- the patent (or share of the patent) was not granted to a person entitled to it (section 22A);
- the publication or use of the invention as claimed on or after the priority date of the claim (section 23); or
- the grant of another patent which claims the invention in a claim of the same or later priority date (section 23).
How long does patent protection last for?
- The term of a standard patent is twenty (20) years (section 67).
- The term of an innovation patent is eight (8) years (section 68).
- Where a patent relates to a pharmaceutical substance, a party may apply for an extension of the term of the patent under section 70.
What is the priority date of a patent?
Section 43 provides that every patent must have a priority date. Section 43(2) provides that in most circumstances, the priority date will be the date of filing of the specification (the application date). There are some exceptions to this, and patents based upon an earlier patent may have different priority dates.
Takeaways
A patent provides strong protection and economic benefits for the patent holder. If the patent is a revolution in a popular industry, it could be worth millions (possibly even billions of dollars). It is therefore vitally important that anyone wishing to patent an invention ensure that they comply with the requirements for obtaining a patent, or they risk having it revoked at a later date. Seeking professional advice from lawyers and patent attorneys at an early state of the patent application process is very important.
Further references
Legislation
Related articles by Dundas Lawyers
Phasing out the innovation patent
Introduction to patent revocation
Ownership of employee inventions – disputing ownership of patents
Take care when alleging patent infringement
Further assistance on intellectual property
If you need assistance with intellectual property protection please telephone me for an obligation free and confidential discussion.
Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS. 
Legal Practice Director (preferred)
Telephone: (07) 3221 0013 | Mobile: 0419 726 535
e: mburrows@dundaslawyers.com.au
Disclaimer
This article contains general commentary only. 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.
