Patents & Inventions Law & Lawyers

A patent is a right granted for any device, substance, method or process which is new, inventive and useful.

A patent is legally enforceable and gives the owner the exclusive right to commercially exploit the invention for the life of the patent. This is not automatic-you must apply for a patent to obtain exclusive rights to exploit your invention.

There are two types of patents in Australia;

  • a standard patent gives long-term protection and control over an invention for up to 20 years.
  • an innovation patent is a relatively fast, inexpensive protection option, lasting a maximum of 8 years. The innovation patent replaced the petty patent on 24 May 2001.

Patents give effective protection if you have invented new technology that will lead to a product, composition or process with significant long-term commercial gain.

In return, patent applicants must share their know-how by providing a full description of how their invention works. This information becomes public and can provide the basis for further research by others.

Australian patents are administered by the Patent Office of IP Australia, a Federal Government Organisation.

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An outline of the patent system

Historical origins

Patents are the oldest form of intellectual property, but their historical origins are obscure. In England, in the fifteenth century, the monarch began to grant monopoly rights as a means of attracting new industries from continental Europe, but these were more in the nature of a royal licence to avoid the effects of guild regulations than a true grant of exclusive rights to carry on an activity.[4] It was only in the following century that patents began to be granted in respect of inventions, and the patent system was put on a statutory basis for the first time in the seventeenth century with the passage of the Statute of Monopolies 1623 (Statute of Monopolies). Despite its age, this English statute continues to have relevance to Australian patent law today.

As it first developed, the English patent was a slow, costly and cumbersome procedure for encouraging and protecting inventions. The procedure was described in derisory terms by Charles Dickens in a short story published in 1850, ‘A Poor Man’s Tale of a Patent’. Over the years there were many piecemeal reforms to the system, but it was the Patents Act 1883 (UK) that provided the basis of modern patent law.

Patent legislation in Australia has always been closely modelled on that of the United Kingdom. Prior to Federation, each of the Australian colonies had its own legislation based on the Patents Act 1883 (UK). In 1901, the Australian Constitution gave the newly established Commonwealth Parliament power to make laws with respect to ‘copyrights, patents of invention and designs, and trade marks’.In 1903, this power was exercised with the enactment of the Patents Act 1903 (Cth).

As in the United Kingdom, there have been many amendments to Australian patent legislation in response to formal commissions of inquiry. The 1903 Act was re-enacted with substantial changes in 1952 and again in 1990. The Patents Act 1990 (Cth) (Patents Act) provides the current legislative framework governing the grant and administration of patents in Australia.

See also our Intellectual Property Law & Lawyers Section by clicking here.

Functions of patents

Patent law has been described as a ‘stressful if fertile union’ between certain contradictory principles: self-interest and the common good; monopoly rights and liberty; the ownership of ideas and public disclosure of knowledge. This union results from the dual goals of patent law—to benefit society by encouraging the provision of new and useful goods, and to encourage and reward inventiveness.

These goals are achieved by providing incentives for innovation and knowledge sharing by granting monopoly rights, for a limited period, to exploit a new product or process. Monopoly rights encourage investment by providing an opportunity to recoup the financial outlays involved in developing an invention. They also reward the inventor by allowing a return to be made on the time and resources expended on research and development.

The limited duration of the monopoly means, however, that the patented invention eventually will be available for free and unrestricted use when the patent term expires: the compromise is thus ‘a way of securing future benefits for the common good’.In addition, patents promote knowledge sharing during the term of the patent by requiring the patent holder to place the details of the invention in the public domain. As one United States judge has stated:

The purpose of the patent system is not only to provide a financial incentive to create new knowledge and bring it to public benefit through new products; it also serves to add to the body of published scientific/technological knowledge. The requirement of disclosure of the details of patented inventions facilitates further knowledge and understanding of what was done by the patentee, and may lead to further technologic advance.

Exploitation of patents

A patent gives the inventor the right to stop others from exploiting the invention for a limited period. However, a patent does not grant an absolute right to exploit an invention in any way the inventor may choose. A patent holder may have to satisfy regulatory requirements in order to exploit the patented product or process; for example, a patented pharmaceutical compound may need approval under the Therapeutic Goods Act 1989 (Cth) before it can be marketed lawfully and sold as a treatment for a particular condition. Similarly, the use of a patented invention is subject to the general law; for example, the components required to manufacture a car may be the subject of many patents, but the car must still be used in accordance with motor traffic laws.

A patent holder is not obliged to exploit a patented invention, but the failure to do so may have implications for the patent holder’s rights. For example, the patent could be subjected to compulsory licensing, or it could be used or acquired by the Crown under relevant provisions of the Patents Act. A patent holder may authorise others to exploit the patent by granting a licence on agreed terms. This may be on an exclusive, sole or non-exclusive basis, and almost certainly will require the licensee to pay royalties or other fees to the patent holder.

It is important to note that while patents are a form of intellectual property, they do not confer ownership in the physical material described in the claims for a patented product or process. Thus, a patent over a genetic sequence does not amount to ownership of the sequence itself.

Criteria for patentability

Although there is considerable variance in detail from one jurisdiction to another, most countries apply similar tests for patentability: an invention must be novel (that is, new), must involve an inventive step, and must have a useful application. In addition, the description of an invention in a patent application must be sufficient to allow a person skilled in the relevant art to create the invention independently.

Briefly, the Patents Act provides that an invention will be patentable if it is a ‘manner of manufacture’ within the meaning of s 6 of the Statute of Monopolies; is novel; involves an inventive or innovative step; is useful; and has not been used secretly within Australia prior to filing the patent application.

Certain inventions are expressly excluded from patentability. Australia has relatively few express exclusions, but they include inventions involving ‘human beings, and the biological processes for their generation’, as well as inventions the use of which would be contrary to law. Other jurisdictions recognise a broader range of exceptions, including inventions involving diagnostic, therapeutic and surgical methods of treatment of humans and animals; and inventions whose commercial exploitation would be contrary to morality or public order.

Australian Patent Law

Australian patent law operates within an international legal framework, which shapes certain procedural and substantive aspects of the patent system.

Australia has enacted legislation that regulates patenting practices within the Australian ‘patent area’ with respect to inventions involving any type of technology. The procedures for obtaining a gene patent in Australia are, broadly speaking, the same as those that apply to patents claiming any other type of technology.

Patents Legislation

Section 51(xviii) of the Australian Constitution grants the Commonwealth Parliament power to make laws with respect to ‘copyrights, patents of inventions and designs, and trade marks’. Pursuant to this power, the Parliament has enacted the Patents Act 1990 (Cth) (Patents Act) and the Patents Regulations 1991 (Cth) (Patents Regulations).

Patent protection in most countries is available for inventions that are new, involve an inventive step, and have a useful application.

In Australia, the Patents Act provides that an invention is patentable if it:

  • is a ‘manner of manufacture’—that is, the invention is appropriate subject matter for patent protection;
  • is novel;
  • involves an inventive or innovative step;
  • is useful; and
  • has not been used secretly within Australia before the priority date of the patent application.


The Australian patent system is administered by the Patent Office of IP Australia. IP Australia is a division of the Department of Industry, Tourism and Resources, but operates independently and reports directly to the Minister.

Under the Patents Act, the Commissioner of Patents has the power to grant a patent upon an application being filed with and examined by the Patent Office. IP Australia has developed the Patent Manual of Practice and Procedure (the Manual) to assist Australian patent examiners in applying the Patents Act and Patents Regulations.

State and federal courts and the Administrative Appeals Tribunal (AAT) also have a role in administering the patent system. Decisions of the Commissioner of Patents may be subject to review by the AAT or the Federal Court of Australia. The AAT may undertake merits review of the Commissioner’s decisions with respect to certain procedural matters prescribed by the Patents Act. A direct application may be made to the Federal Court for judicial review in relation to other decisions of the Commissioner; essentially those related to the grant of patents or matters closely allied to the grant (for example, amendments to patent specifications and revocations).

The Federal Court and state and territory Supreme Courts share original (first instance) jurisdiction over matters relating to the exploitation and enforcement of patent rights, including challenges to patent rights, infringement proceedings and compulsory licences. The AAT has no jurisdiction in relation to such issues.

Types of patents

Australian patent law recognises two principal types of patents:

(1) standard patents and

(2) innovation patents.

An applicant for a patent may elect to obtain protection for an invention under either system. Table A below outlines the key features of, and the difference in the scope of protection conferred by, standard and innovation patents.

Standard patents

A standard patent is the basic form of patent protection for inventions under Australian law and is consistent with the minimum requirements for patent protection under the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement). Unless otherwise indicated, references to an Australian patent and discussions of patent rights in this Report relate only to the standard patent system.

Innovation patents

The innovation patent is a ‘second tier’ of protection, which was introduced in 2001 to replace the petty patent system.  Innovation patents are intended to provide protection for ‘lower level’ inventions for which standard patent protection is not available and which are not covered by the designs legislation.

Patents of addition

The Patents Act also provides for the grant of a ‘patent of addition’ for an improvement in, or modification to, an invention claimed in a standard patent that has already been granted.[21] A patent of addition may be obtained only by the owner of the earlier patent, or a person authorised by the owner. The term of a patent of addition expires at the same time as that of the patent on the main invention.

Table A - Features of standard patents and innovation patents


Standard patent

Innovation patent



20 years (s 67)

Extension of up to 5 years   available for certain pharmaceutical patents (ss 70–79A)

8 years (s 68)

Number of claims

No   limit

Maximum of 5 claims   (s 40(2)(c))


Inventions excluded from   patentability, or excludable at the discretion of the Commissioner of Patents

Human beings and the biological   processes for their generation (s 18(2))

Inventions whose use would be   contrary to law (s 50(1)(a))

Inventions capable of application   as a food or medicine that are a mere admixture of known ingredients   (s 50(1)(b))

Same as for a standard patent, and

Plants and animals and the   biological processes for the generation of plants and animals (s 18(3),   (4))

Level of invention required

‘Inventive step’ over the prior   art (s 7(2)–(3), sch 1)

‘Innovative step’ over the prior   art (s 7(4)–(6), sch 1)

Review by Patent Office prior to   grant

Substantive review for compliance   with the requirements for patentability (ss 44–49)

Formalities check only; no   substantive review unless requested (ss 52, 120(1A))

If you have a matter involving a Patent or invention, then please complete your free Legal Enquiry Form to request immediate legal assistance on your legal matter.

Procedure for grant of a patent

Patent rights do not arise automatically. A patent can be obtained only by following the procedure set out in the Patents Act and Patents Regulations. An understanding of the procedure for obtaining a patent is important to understanding Australian patent law generally. The steps in obtaining an Australian patent are described below.

Filing an application

For a patent to be granted, an eligible person must file an application in the form prescribed by the Patent Office. Eligible persons are the inventor of the invention claimed in the application, or a person to whom the inventor has assigned his or her rights in the invention. A patent application must include a specification of the invention, which contains instructions adequate to enable a skilled person in the relevant area of technology to produce or perform the invention. The specification must also indicate the ‘claims’ that define the invention; that is, the scope of protection that the applicant is seeking.

Australian patent law recognises two types of patent applications—provisional and complete. Provisional and complete applications may be filed to obtain either a standard patent or an innovation patent.

A provisional application need only contain a description of the invention. Often, an inventor files a provisional application before all the details of an invention are known. The applicant then has 12 months to file a complete application.

A complete application must contain a full description of the invention, together with claims, and an abstract summarising the invention being disclosed. A complete application may be based on one or more provisional applications, and only those claims that are ‘fairly based’ on the relevant provisional application will be entitled to the priority date of the provisional application.

The ‘priority date’ of a patent claim is important in determining whether the requirements for patentability of an invention have been met. The requirements of novelty and inventive step are assessed against the prior art as it existed before the priority date. The priority date is typically the date on which a provisional application is filed in Australia, or the date on which an application is filed in another participating jurisdiction.

An applicant may also elect to file a complete application with the Patent Office under the Patent Cooperation Treaty (PCT). A PCT application designates all the jurisdictions that are parties to the PCT (including Australia), and secures an international priority date.

PCT applications that have entered the national phase (and will be processed as a complete application) are the main type of applications received by IP Australia. In 2002–03, 16,278 PCT applications selected Australia as one of the jurisdictions in which an applicant wished to obtain patent protection and entered the national phase in Australia. During the same period, 5,694 non-PCT applications for standard patents were filed with IP Australia.

Divisional applications

Each patent application may claim protection only for a single invention. If, following assessment of a patent application, a patent examiner finds that an applicant has claimed more than one invention in the application, the applicant may elect to file a ‘divisional application’—that is, a new application divided from the original or parent application. A divisional application allows an applicant to continue to benefit from the priority date of the original application.

Divisional applications may claim subject matter not contained in the original application so long as all the features of at least one of the claims were disclosed in the original application. There are no statutory limits on the number of divisional applications that may arise from a single complete application.

The Patents Act restricts the subject matter that may be claimed in a divisional application, depending on the time at which it is filed. However, a divisional application, once filed, is subject to the same procedural requirements, including examination, as any other complete patent application.

In its submissions to the Inquiry, IP Australia indicated that divisional applications are currently ‘open to abuse’. In practice, such abuse may occur only in a small number of cases. However, IP Australia suggested that patent applicants are able to make strategic use of divisional applications in order to delay determinations by the Patent Office as to the proper scope of patent claims, or as to whether a patent should be granted. IP Australia commented that the Patents Act allows an applicant to use a divisional application to obtain a de facto monopoly by extending the period within which to respond to an examiner’s adverse report. While this use of divisional applications may be legitimate in some circumstances, IP Australia suggested that it might be used tactically by an applicant in ‘newly developing areas of technology, such as genetics, where there is a question of [the] patentability of the subject matter’. Further, an applicant might avoid a decision in an opposition proceeding by withdrawing the opposed application and refiling it as a divisional application. To address these issues, IP Australia suggested that limitations could be imposed on the circumstances in which divisional applications are available.

However, the majority of submissions and consultations on this issue did not support imposing additional limitations either on the period within which a divisional application may be filed or on the subject matter that may be claimed in a divisional application. Submissions and consultations questioned whether divisional applications are being misused, and commented on the lack of evidence that divisional applications claiming genetic inventions present a special case.


Once an application has been filed with the Patent Office, a number of additional steps must be followed before a patent may be issued. An applicant must file a request that the Patent Office examine the application. Examination is not automatic and a request for examination must generally be filed within five years of the date of filing a complete specification. However, IP Australia’s standard practice is to direct applicants to file a request for examination, if no request has been received, at approximately 32 months from the priority date, although this period may vary according to IP Australia’s workload. An abbreviated examination may be requested if an Australian patent application is related to a patent that has already been granted by the patent office in a prescribed foreign jurisdiction.

The purpose of examination is to determine whether the invention meets the statutory requirements for patentability set out in the Patents Act. The Patent Office carries out searches of previously published documents—including scientific and patent literature (‘prior art information’)—to determine the prior art material relevant to the claimed invention. In addition, an applicant must disclose to the Patent Office the results of searches carried out by or on behalf of foreign patent offices in respect of the invention claimed in an Australian application, or in a corresponding patent application filed overseas. An examiner with expertise in the relevant area of technology then examines the application, taking into account the information contained in the results of these searches and any other prior art information.

Examination of a patent application typically involves an exchange between the examiner and the applicant about the appropriate scope of the specification and the claims in light of the relevant prior art. This process is known as ‘prosecution’ of a patent application.

Following receipt of a request for examination, an examiner will make an initial assessment of an application for a standard patent and either accept the application as filed or issue a ‘first report’ detailing the procedural and substantive grounds for objecting to the application. An applicant then has a period of 21 months to address the objections raised by the examiner. The examiner may issue further reports for each response by the applicant that does not satisfy the objections raised. An application for a standard patent will generally lapse if it is not in order for acceptance within 21 months after the date of the first report.

Acceptance, publication and sealing

The Commissioner of Patents must notify an applicant of the decision to accept or refuse a patent application, and must publish notice of the decision in the Official Journal of Patents (Official Journal). Formal refusal of an application is rare. More commonly, applications for standard patents lapse for failure to obtain acceptance within the prescribed 21 month period following a first report. The Official Journal also publishes notices of lapsed applications.
Publication of a notice of acceptance in the Official Journal should be distinguished from the publication of a complete specification for a standard patent. This typically occurs 18 months after the earliest priority date for the application, and is also advertised in the Official Journal. An application is confidential prior to publication of the complete specification, and only bibliographic details—such as the applicant’s name and title of the invention—are made available by the Patent Office.

A patent is granted when the Commissioner of Patents causes the patent to be sealed with the seal of the Patent Office. For a standard patent, this will occur within six months of the date of publication in the Official Journal of the notice of acceptance of the application, unless the application is opposed.

If you have a matter involving a Patent or invention, then please complete your free Legal Enquiry Form to request immediate legal assistance on your legal matter.

International legal instruments

Australia is a party to a number of international legal instruments relating to intellectual property. The major international instruments that affect patent laws and practices in Australia are:

  • Paris Convention for the Protection of Industrial Property 1883 (Paris Convention);
  • Patent Cooperation Treaty 1970 (PCT);
  • Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure 1977 (Budapest Treaty); and
  • Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement).

Australian domestic law has given effect to significant provisions of each of these instruments.

See also our Intellectual Property Law & Lawyers Section by clicking here.


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Patents & Inventions Law & Lawyers News

Rights of a patent holder

The Patents Act provides that the grant of a patent confers upon a patent holder the exclusive right to exploit, or to authorise another person to exploit, an invention during the patent term. ‘Exploit’ is defined in the Act to include:

(a) where the invention is a product—make, hire, sell or otherwise dispose of the product, offer to make, sell, hire, or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or

(b) where the invention is a method or process—use the method or process or do any act mentioned in (a) in respect of a product resulting from such use.

A patent does not, however, grant an absolute right to exploit an invention. A patent holder may have to satisfy other legal requirements in order to exploit the patented product or process. For example, a patented pharmaceutical compound may need to be approved under the Therapeutic Goods Act 1989 (Cth) before it can lawfully be marketed and sold as a treatment for a particular condition. In addition, a patent holder’s ability to exploit the invention may be subject to earlier patents not owned by the patent holder.

A patent holder may assign or license its patent rights to a third party. An assignment of a patent results in the transfer of all of the rights owned by the patent holder to a third party (the assignee).

A licence of a patent does not transfer ownership of any patent rights; rather, it establishes terms upon which a third party (the licensee) may exercise certain patent rights without such use constituting infringement.

A patent holder is not obliged to exploit an invention claimed in a patent at any time during the patent term, nor to license or assign its patent rights.

However, the failure to exploit the invention may encourage others to invoke the Crown use or compulsory licensing provisions in the Patents Act.

Patent rights remain subject to challenge even after the Commissioner of Patents accepts a patent application and after the patent is sealed. Section 20 of the Patents Act expressly states that nothing in the Act or in the PCT guarantees that a patent is valid.

Duration of patent protection

A standard patent generally has a term of 20 years, commencing on the date of the patent; an innovation patent has a term of 8 years. The term of a standard patent relating to ‘pharmaceutical substances’ may be extended in certain circumstances.

Art 33 of the TRIPS Agreement requires member States to provide patent protection for a term of not less than 20 years from the filing date. Article 27(1) requires member States to make patent protection available for all inventions, without discrimination as to the field of technology to which an invention relates. The Patents Act was amended in 1994 to extend the term of protection for a standard patent from 16 years to 20 years in order to bring Australian patent law into conformity with the TRIPS Agreement.

While the TRIPS Agreement provides some flexibility to member States in developing their own patent laws, the minimum term of patent protection is not subject to exceptions or qualifications. The TRIPS Agreement does, however, permit member States to require compliance with reasonable procedures and formalities as a condition of the acquisition or maintenance of intellectual property rights. Such procedures and formalities include the payment of fees for the filing and processing of a patent application, and for maintaining existing patent rights.

In addition, the Australia–United States Free Trade Agreement contains a provision that might affect the term of patent. Article 17.9.8 provides that, if there are unreasonable delays in a Party’s issuance of patents, that Party shall provide a means to adjust the term of the patent to compensate for the delay. If, in the future, there is evidence of unreasonable delay in the grant of Australian patents it may be necessary to amend the Patents Act to provide an extension of the patent term.

If you have a matter involving a Patent or invention, then please complete your free Legal Enquiry Form to request immediate legal assistance on your legal matter.

See also our Intellectual Property Law & Lawyers Section by clicking here.

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Quick Guide to Law School Financial Aid

Thu, 08 Feb 2018 15:16:22 +0000

A legal education is both an investment in a student’s future and a financial investment. Like all investments, before you apply for any student aid, considering the pros and cons of a massive expenditure of money, time, and effort is essential. A realistic assessment of the reasons to pursue a legal education and how to […]

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MPEP Q & A 128: Individuals Who May Sign the Power of Attorney for Applications Filed On or After September 16, 2012

Tue, 06 Feb 2018 15:00:20 +0000

Question: Who must sign the power of attorney for applications filed on or after September 16, 2012? Answer: For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings). An assignee who […]

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Complete Guide to a Career as a Patent Examiner

Thu, 01 Feb 2018 15:17:58 +0000

As long as people have good ideas, the need for patent professionals will exist. The field of patent law is fast-paced. With patent law, there are choices of practice types. The landscape for technical specialists, agents, and patent attorneys has changed considerably over the last two decades. Hiring practices has also changed over the last […]

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MPEP Q & A 127: What Must a Statement Under 37 CFR 1.97(e) State?

Tue, 30 Jan 2018 15:00:03 +0000

Question: What must a statement under 37 CFR 1.97(e) state? Answer: A statement under 37 CFR 1.97(e) must state either: That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the […]

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9 Tips On What To Wear To A Patent Law Job Interview

Thu, 25 Jan 2018 15:13:13 +0000

You’ve secured your first interview as a patent agent or patent attorney. The one most pressing question on your mind now, is what should you wear? One thing that you should be told at law school is that, typically, the bigger the law firm is, the more conservative the attire should be. East coast patent […]

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MPEP Q & A 126: Time When a Third Party Submission Must be Made

Tue, 23 Jan 2018 15:00:46 +0000

Question: When must a third party submission be made? Answer: A third-party submission must be filed prior to the earlier of: The date a notice of allowance is given or mailed in the application; or The later of: (i) Six months after the date on which the application is first published by the Office, or […]

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9 Tips For Paying Off Student Loans Fast

Thu, 18 Jan 2018 15:30:10 +0000

College loans are the most significant obstacle that prevents millennials from investing. In 2016, the average student debt was over $37,000. That figure is an increase of a little of 6% in 2015. Financial planners and investment managers offer these tips for paying off student loans fast. 1. Consider The Loans As You Would A […]

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MPEP Q & A 125: Reasons Why a Petition Filed Under 35 U.S.C. 321 May be Considered

Tue, 16 Jan 2018 15:00:28 +0000

Question: 35 U.S.C. 322 covers petitions involved in post-grant reviews. 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered. List two reasons why a petition filed under 35 U.S.C. 321 may be considered. Answer: 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered […]

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Waukeshia D. Jackson, Managing Partner, Patent Attorney at Jackson & Lowe Law Group, PC

Tue, 09 Jan 2018 15:47:37 +0000

Waukeshia D. Jackson Waukeshia is a patent attorney and the co-founder and managing partner at Jackson & Lowe Law Group P.C. in Atlanta, Georgia. She has worked in the field of intellectual law for over 6 years at the time of this interview. The following is her Q & A interview: How did you get […]

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MPEP Q & A 124: Situations Where the Examiner is Not Responsible for Examining the Sufficiency of the Showing

Tue, 09 Jan 2018 15:00:14 +0000

Question: In what two situations is the examiner not responsible for examining the sufficiency of the showing? Answer: The examiner is not responsible for examining the sufficiency of the showing except when: The application claim is subject to a rejection under 35 U.S.C. 102(a) or (e) and the applicant files an interference suggestion instead of […]

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7 Tips for Keeping Distractions to a Minimum While Studying for the Patent Bar Exam

Thu, 04 Jan 2018 15:15:15 +0000

The time has come. After much mental preparation and perhaps procrastination, you’ve decided to hunker down with a pot of coffee and all the material you need for the patent bar exam. However, you find that no matter what you do, you can’t seem to focus on the material at hand. Your hands migrate to […]

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MPEP Q & A 123: What Situation May a Certificate of Correction be Used In Order to Correct an Issued Patent as Long as the Filing Was Made Without Deceptive Intent?

Tue, 02 Jan 2018 15:00:00 +0000

Question: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in what situations? Answer: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in the […]

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Crush Your Patent Practitioner Interview

Thu, 28 Dec 2017 15:27:12 +0000

When it comes to landing the perfect job, there are a few rules that hold true for any industry. Naturally, the more specialized your focus, the more work you’ll need to put into your interview prep. If you’re aiming for a position as a patent agent or patent attorney, your prospective company will expect you […]

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MPEP Q & A 122: Advantages of Filing a CPA Compared to a Continuation or Divisional Application

Tue, 26 Dec 2017 15:00:46 +0000

Question: List an advantage of filing a CPA compared to a continuation or divisional application. Answer: The following list includes advantages of filing a CPA compared to a continuation or divisional application: The papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) […]

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Everything You Need to Know About Law School Time Management

Thu, 21 Dec 2017 15:10:26 +0000

One of the more important tips for law students to master for both law school and life generally is how time is spent and managed. Often, even successful executives and similar career professionals are unsatisfied with how time is spent. McKinsey asked nearly 1,500 executives around the world how they spent their time, and what […]

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MPEP Q & A 121: Times When a Request for Continuing Examination May be Proper

Tue, 19 Dec 2017 15:00:32 +0000

Question: List 2 times when a request for continuing examination may be proper. Answer: A request for continued examination may be proper when: An Office action is a final rejection. A Notice of Allowance has issued. An Office action under Ex Parte Quayle (this is a legal proceeding, the details of which are not discussed […]

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Why Didn’t I Pass the Patent Bar? I Studied Hard!

Thu, 14 Dec 2017 15:28:04 +0000

If you’ve failed the patent bar exam, USPTO statistics show that you’re not alone. Each year, more than half the people taking this exam don’t pass it. Although many review companies would like you to believe their particular review course makes all the difference, buyers of each can still go on to fail the exam. Most […]

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MPEP Q & A 120: What May an Applicant do in Response to a Rejection Based on Failure to Claim Patent-Eligible Subject Matter?

Tue, 12 Dec 2017 15:00:18 +0000

Question: What may an applicant do in response to a rejection based on failure to claim patent-eligible subject matter? Answer: In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: Amend the claim, e.g., to add additional elements or modify existing elements so that the claim as a whole amounts […]

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Top 5 Job Interview Tips Articles on the Web

Thu, 07 Dec 2017 15:15:55 +0000

The sweaty brow. The shaky palms. Everything about an in-person interview for a dream job screams nervousness, but it doesn’t have to be that way if you come prepared. Knowing the basics of a job interview, especially for something as distinguished as patent law, will ease your nerves and allow you to sail right through […]

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MPEP Q & A 119: When is a Reference Analogous Art to the Claimed Invention?

Tue, 05 Dec 2017 15:00:12 +0000

Question: When is a reference analogous art to the claimed invention? Answer: A reference is analogous art to the claimed invention if: The reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or The reference is reasonably pertinent to the problem faced by the inventor […]

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How Hard Is Law School?

Thu, 30 Nov 2017 15:11:53 +0000

How hard is law school, really? This is the question many prospective students ask themselves before ever studying for the LSAT or ever visiting a law school campus. For some, the answer to this question may determine whether attending a law school is the right choice. For others, the question is meant to assess the […]

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MPEP Q & A 118: Item an Appellant Must File If He or She Wishes to Reinstate an Appeal After Prosecution is Reopened

Tue, 28 Nov 2017 15:00:58 +0000

Question: What must an appellant file if he or she wishes to reinstate an appeal after prosecution is reopened? Answer: If an appellant wishes to reinstate an appeal after prosecution is reopened, appellant must file a new notice of appeal and a complete new appeal brief. Chapter Details: The answer to this question can be […]

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Top 5 LinkedIn Tips Articles on the Web

Thu, 23 Nov 2017 15:13:56 +0000

You’re working on passing the patent bar exam now, but did you know there’s a lot you can do help help you find your first job even before you pass it? Networking takes time, so getting started now is the best move for your future. The Internet has an infinite amount of resources to help […]

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MPEP Q & A 117: Items a ‘Corrective Document’ Must Include?

Tue, 21 Nov 2017 15:00:44 +0000

Question: An error in a recorded assignment document will be corrected by the Assignment Division provided a “corrective document” is submitted. What items must the “corrective document” include? Answer: The “corrective document” must include the following items: A copy of the original assignment document with the corrections made therein. The corrections must be initialed and […]

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Using LinkedIn in Your Patent Law Job Search

Thu, 16 Nov 2017 15:16:52 +0000

What did we do before the internet became a regular part of our lives? How did we shop for jobs? What made employers want to choose us over the next applicant? How did we even find applicable postings for which to apply? While these questions are interesting from a sociological perspective, the truth is, these […]

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MPEP Q & A 116: Consequence That May Result Where Patent Owner Fails to Make Timely Appeal After the Issuance of a Right of Appeal Notice

Tue, 14 Nov 2017 15:00:31 +0000

Question: What is one consequence that may result where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed? Answer: Where the patent owner fails to make a timely appeal after the issuance of a Right of […]

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Patent Searching Basics

Thu, 09 Nov 2017 15:17:59 +0000

US Patents and the Classification System The United States Patent and Trademark Office (USPTO) grants patents to inventors as a right to exclude others from making, using or selling an invention. With millions of expired, active and pending patents, the task of determining whether an invention has already been patented may appear to be daunting. […]

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MPEP Q & A 115: What is the Order of Arrangement for the Specification?

Tue, 07 Nov 2017 15:00:17 +0000

Question: What is the order of arrangement for the specification? Answer: The following order of arrangement is preferable in framing the specification. (A) Title of the invention. (B) Cross-reference to related applications. (C) Statement regarding federally sponsored research or development. (D) The names of the parties to a joint research agreement (E) Reference to a […]

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Overcoming Test Anxiety During the Patent Bar

Thu, 02 Nov 2017 14:19:29 +0000

What is Test Anxiety? Unless you have nerves of steel, you’re probably going to feel at least some level of anxiety during any given test. It’s only natural. It’s especially common when the test you’re taking is the patent bar exam. The complex material, the time limit, and the confusing questions all contribute to the stress. You […]

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These news come from Patent Education Series.

Despite Oil States, Inter Partes Review May Still Be Held Unconstitutional

Wed, 25 Apr 2018 17:50:32 +0000

Oil States v Greene’s Energy, 584 U.S. ___ (2018), just decided that patents are a public right, a franchise right, akin to a right to erect a toll bridge, and not personal property (slip op. at 9).  What was unfortunately never addressed in Oil States, and which the court specifically left the door open for, was that patents rights are still property rights for the purpose of Due Process--the inference being that IPRs may fail under the Due Process or Takings Clause.  Indeed the court seemed...

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SAS: When the Patent Office institutes IPR it must decide patentability of all challenged claims

Wed, 25 Apr 2018 14:57:19 +0000

In SAS Institute, a 5-4 majority ruled that there is no authorization in the statute for the Patent Trial and Appeal Board (PTAB) to partially institute a petition for inter partes review. Thus, the Supreme Court held that when the Patent Office institutes an inter partes review it must decide the patentability of all of the claims the petitioner has challenged. To provide instant reaction to the Supreme Court's decision in SAS Institute we've reached out to an All-Star panel of industry...

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Apple’s Consumer Data Collection Patents Prove that Data Privacy Risks Are Not Just a Facebook Problem

Wed, 25 Apr 2018 11:15:59 +0000

Even Apple co-founder Steve Wozniak has added to the growing choir of critical voices, announcing in early April that he had deleted his Facebook profile over concerns about the company’s data collection practices. But Apple’s hands aren’t entirely clean when it comes to personal data privacy for its consumers. As a recent article published by The Canberra Times in Australia notes, Apple apps pre-installed on the iPhone were able collect personal information, including the name and location of...

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Honigman Adds Three New Attorneys to IP Department

Wed, 25 Apr 2018 09:15:49 +0000

Honigman announced this week that it added two new partners to its Intellectual Property department. John Chau joins the firm’s Patent practice group in Bloomfield Hills and Mary Hyde enters the Intellectual Property Litigation practice group in Ann Arbor. Additionally, Cristina Almendarez joins as an associate in the Intellectual Property Litigation practice group in the firm’s Chicago office. The post Honigman Adds Three New Attorneys to IP Department appeared first on |...

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Industry Reaction to Supreme Court Decision in Oil States v. Green Energy

Tue, 24 Apr 2018 22:17:08 +0000

Earlier today the United States Supreme Court issued its decision in Oil States v. Green Energy, finding that inter partes review is constitutional both under Article III and the Seventh Amendment to the United States Constitution. In a 7-2 decision, the Court determined that patents are a government franchise that are subject to review by the Patent Office even after granting, and can be revoked at any time.  In order to get a diverse array of views, we held open comments through early evening...

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SCOTUS says Patents are a Government Franchise, Not a Vested Property Right

Tue, 24 Apr 2018 19:10:12 +0000

While there has been much optimism due to the arrival of USPTO Director Andrei Iancu and his recent speeches signaling he understands the U.S. patent system must move along a different path, it is impossible to think that one man will be able to correct the collective mistakes of 535 elected Members of Congress and 9 ivy league educated jurists who seem convinced that forfeiting America's patent system is somehow what the Constitution demands. His job just became much more difficult, and all...

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Supreme Court Issues Much Anticipated Oil States and SAS Decisions

Tue, 24 Apr 2018 17:09:05 +0000

Earlier today, the US Supreme Court issued it's highly anticipated 7 to 2 decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC which upheld the Constitutionality of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). SCOTUS applied the public rights doctrine to the government’s grant of a patent, finding that patent validity trials need not take place in an Article III court nor did they violate the Seventh Amendment, which ensures a person’s...

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USPTO Ignores FOIA Requests on PTAB and PTAB Judges

Tue, 24 Apr 2018 13:15:41 +0000

It is difficult to understand why the USPTO will not respond to simple, direct FOIA requests. If they do not want to produce there are procedures for them to follow, and they can always do what they seem so fond of doing, which is produce hundreds of pages of completely redacted, blank pages. That at least would allow me to file a lawsuit and proceed in court to obtain this information. Still, why should I or anyone have to sue the USPTO to obtain this information? Everything I'm asking for...

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Universal Entertainment Accuses Founder of Directing Patent Infringement Through American Subsidiary for Personal Gain

Tue, 24 Apr 2018 11:30:22 +0000

Japanese gaming firm Universal Entertainment Corporation (TYO:6425) filed a complaint alleging patent infringement and other claims against Las Vegas, NV-based entity Aruze Gaming America as well as Kazuo Okada, the founder of Universal Entertainment (UEC) and the sole shareholder and director of Aruze Gaming. The suit, filed in the District of Nevada, alleges that Okada directed patent infringing activities of Aruze while he was also an officer with UEC. The post Universal Entertainment...

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How is intellectual property valued when selling a business?

Tue, 24 Apr 2018 09:45:11 +0000

Intellectual property (IP) often represents one of the largest asset classes that a company holds, and unlocking its value is a key element in any business sale. The value of intellectual property such as patents, trademarks, brands, databases, and trade secrets, can be valued using a number of methodologies. But what makes these intangible assets so valuable to a business? The post How is intellectual property valued when selling a business? appeared first on | Patents &...

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Inventors inspired by humpback whales make a more efficient wind turbine

Tue, 24 Apr 2018 08:01:58 +0000

Whales show great efficiency, maneuverability and speed for their size and weight. It was this efficiency that fascinated biologist Frank Fish. He suspected the rugged shape of a humpback whale's flippers, which are lined with irregular bumps known as tubercles, might be responsible for adding extra efficiency... The company introduced the first Tubercle Blade HVLS (high-volume low-speed) fan to the market through a Canadian licensee and this industrial-scale fan is available in 38 countries....

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Will President Trump pardon boxing champ and inventor Jack Johnson?

Mon, 23 Apr 2018 19:27:07 +0000

While Jack Johnson is most well known as a the first African-American to be heavyweight boxing champion, he was also an inventor and entrepreneur. The crime Johnson was convicted of was transporting a white woman across state lines for an immoral purpose. Johnson was married three times, each time to a white woman. The post Will President Trump pardon boxing champ and inventor Jack Johnson? appeared first on | Patents & Patent Law.

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Advice and assistance in design registration can be sought from a professional. Patent attorneys and intellectual property lawyers can be found in the Yellow ..

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