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

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.


Administration

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

Features

Standard patent

Innovation patent

 

Term

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.

Examination

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.

 

Links to further resources - Patents & Inventions Law & Lawyers

 

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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MPEP Q & A 147: Post-Grant Reviews and Civil Actions

Tue, 19 Jun 2018 14:00:13 +0000

Question: Can a post-grant review be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent? Answer: No, a post-grant review may not be instituted if, before the date on which the […]

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7 Mistakes You May Be Making on Your Patent Agent or Patent Attorney Resume

Thu, 14 Jun 2018 14:09:50 +0000

OK, so you’ve finished law school and are putting together a resume. If you’re looking for a career in intellectual property, a strong resume along with an equally good cover letter is your first step to getting your foot in the door of a patent law career. Obviously, you can look at an attorney sample […]

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MPEP Q & A 146: When Can a Combination as Claimed Show that Inventions are Distinct?

Tue, 12 Jun 2018 14:00:00 +0000

Question: When can a combination as claimed show that inventions are distinct? Answer: Inventions are distinct if it can be shown that a combination as claimed: (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and (B) the subcombination can be shown to have utility either […]

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Patent Practitioners Guide to Being More Effective with LinkedIn Connections

Thu, 07 Jun 2018 14:17:56 +0000

As with most social networking like Twitter and Facebook for everyday communication, LinkedIn has quickly become an indispensable resource for professionals in almost every field—and that includes intellectual property. By using the latest technology, their growth has been fast and impressive with 467 million members in late 2016. To get the most out of LinkedIn, […]

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MPEP Q & A 145: Methods For Paying a Maintenance Fee

Tue, 05 Jun 2018 14:00:07 +0000

Question: How can a maintenance fee be paid? Answer: A maintenance fee may be paid: with cash with Treasury notes with national bank notes with post office money orders with certified checks over the internet by electronic funds transfer (EFT), credit card, or deposit account payment methods Chapter Details: The answer to this question can […]

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Patent Training Workshop Progress Update

Thu, 31 May 2018 14:07:16 +0000

The Patent Training Workshop has now replaced the older, Basic Patent Training course within the PES Patent Bar review. We have produced and uploaded approximately 12 hours of video for the new course and it is ready to go for you. Now when you login to the course, you’ll see the Patent Training Workshop right […]

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MPEP Q & A 144: What Should a Subject Matter Eligibility Rejection Under Step 2 Do?

Tue, 29 May 2018 14:00:52 +0000

Question: What should a subject matter eligibility rejection under Step 2 do? Answer: A subject matter eligibility rejection under Step 2 should: Identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception; Identify any additional elements (specifically point to […]

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Top 10 Student Loan Mistakes to Avoid

Thu, 24 May 2018 14:15:03 +0000

If you’re thinking about getting into patent law, then you probably already realize gaining the right degree or degrees is a priority. Patent agents have a minimum of a Bachelor’s degree. Patent attorneys have a Bachelor’s degree in science or engineering plus a law degree. Many patent agents and patent attorneys have much higher than […]

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MPEP Q & A 143: Who Decides Petitions for Derivation and Conducts Any Ensuing Derivation Proceeding?

Tue, 22 May 2018 14:00:39 +0000

Question: Who decides petitions for derivation and conducts any ensuing derivation proceeding? Answer: The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding. Chapter Details: The answer to this question can be found in the following supplement: Derivation Proceeding Final Rules. This is a special supplement that at the […]

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How to Apply to Law School as an Engineer or Scientist

Thu, 17 May 2018 14:20:56 +0000

Law schools welcome those with engineering and science majors. A scientific or technical background is helpful for lawyers specializing in patent law. If you’re planning on applying for law school after gaining your science or engineering degree, make sure you enroll in courses that train students to think analytically and require lots of writing. Choosing […]

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MPEP Q & A 142: Examples of Evidence Under 37 C.F.R. 1.131(a)

Tue, 15 May 2018 14:00:23 +0000

Question: List 2 examples of evidence under 37 C.F.R. 1.131(a). Answer: The allegations of fact might be supported by submitting as evidence one or more of the following: (A) attached sketches; (B) attached blueprints; (C) attached photographs; (D) attached reproductions of notebook entries; (E) an accompanying model; (F) attached supporting statements by witnesses, where verbal […]

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Creating a Better Patent Bar Review for You

Thu, 10 May 2018 14:20:49 +0000

We’ve gotten a lot of great feedback on the Patent Training course videos that were uploaded last week. Altogether, 45 videos were uploaded which totals right around 6 hours. This means about half of the new Patent Training Workshop is ready to go for you. It’s been a lot of work to put this together […]

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MPEP Q & A 141: Issues That Must be Completed During the Examination Before an Interference May be Called

Tue, 08 May 2018 14:00:07 +0000

Question: What are the three major issues that must be completed during the examination before an interference may be called? Answer: The three major issues that must be completed during the examination are: All pending claims must be allowed, finally rejected, or canceled All petitions must be decided All appeals from a final rejection must […]

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6 Hours of New Training Videos Uploaded Within the PES Patent Bar Review

Thu, 03 May 2018 14:22:34 +0000

We’ve just uploaded slightly under 6 hours of training videos for the New Patent Training Workshop. If you have a current membership to the PES Patent Bar review, you can access all these videos for free within the client center. You can reach the videos from the Dashboard which is the page you’re taken to […]

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MPEP Q & A 140: Status Identifiers Expected to Follow the Claim Number in an Amendment to the Claims

Tue, 01 May 2018 14:00:06 +0000

Question: List two status identifiers that are expected to follow the claim number in an amendment to the claims. Answer: Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered). The status identifier (withdrawn – currently […]

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2018 USPTO Paper and Pencil Version of the Patent Bar Exam

Thu, 26 Apr 2018 14:10:39 +0000

The USPTO allows test takers to take the patent bar exam in a yearly paper and pencil session. It appears this upcoming paper and pencil session may be the last one offered.  Apparently, fewer and fewer people have been taking the paper version of the exam. The USPTO has proposed to discontinue the paper examination […]

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MPEP Q & A 139: Fees the Office Might Refund

Tue, 24 Apr 2018 14:00:44 +0000

Question: What fees might the Office refund? Answer: The Office may refund: A fee paid by mistake (e.g., fee paid when no fee is required); or Any fee paid in excess of the amount of fee that is required. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. […]

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Patent Bar Source Materials Changing After August 8th, 2018

Thu, 19 Apr 2018 14:10:07 +0000

The USPTO posted the update schedule for the patent bar source materials earlier this week. According to this latest notice, the 08.2017 version of the MPEP + 5 supplements will start being tested as of August 16th, 2018. Between now and August 8th, 2018, the 07.2015 version of the MPEP + 14 supplements will be […]

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MPEP Q & A 138: When May a Process and Apparatus for its Practice be Shown to be Distinct Inventions?

Tue, 17 Apr 2018 14:00:30 +0000

Question: When may a process and apparatus for its practice be shown to be distinct inventions? Answer: Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or […]

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How Old Is Too Old for Law School?

Thu, 12 Apr 2018 14:12:26 +0000

The average first-year law student is almost 26-years-old. Therefore, people in their 30’s and 40’s may think they are too old for starting a second career and going to law school, but it can still be a great choice for many. Here are some facts non-traditional students should know about law school admission. Advantages of […]

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MPEP Q & A 137: Who May a Party Dissatisfied with a Final Decision in a Derivation Proceeding Appeal To?

Tue, 10 Apr 2018 14:00:16 +0000

Question: Who may a party dissatisfied with a final decision in a derivation proceeding appeal to? Answer: A party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit. Chapter Details: The answer to this question can be found in the following supplement: Derivation Proceeding Final Rules. […]

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[Case Studies] Top 5 Careers for Scientists to Transition Into

Thu, 05 Apr 2018 14:15:48 +0000

Traditional career paths have changed. A career trajectory will have plateaus and dips as scientists change direction and build skills. Whether you’re a promising student or you have years of hands-on experience working for leading companies, career changes are often daunting enough; switching to a completely new area can be downright frightening. Five popular career […]

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MPEP Q & A 136: What a Reasons Document Should Include

Tue, 03 Apr 2018 14:00:03 +0000

Question: The reasons document explains why each item of information does or does not raise a substantial new question of patentability (or SNQ) in a supplemental examination. What should a reasons document include? Answer: The reasons document explains why each item of information does or does not raise a SNQ. The reasons document should include: […]

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Interested in Intellectual Property Law? Review These Top 8 IP Law Schools

Thu, 29 Mar 2018 14:15:38 +0000

According to a report by the U.S. Patent and Trademark Office, over 38 percent of the United States’ gross domestic product is made up of intellectual property. To name a few, the field of intellectual property law protects ownership claims to works of art, inventions, and written works. Any industry involving human creativity presents an […]

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MPEP Q & A 135: When May the Prior Art Date of a Reference Under Pre-AIA 35 U.S.C. 102(e) be the International Filing Date?

Tue, 27 Mar 2018 14:00:49 +0000

Question: When may the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) be the international filing date? Answer: The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated […]

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How to Keep Motivated While You Prepare for the Patent Bar Exam

Thu, 22 Mar 2018 14:13:47 +0000

Do you want to be a patent attorney, a patent agent, or get a start in the field of patent law? If so taking and passing the patent bar examination is the key to getting started. The focus of preparing for the patent bar exam should be to overcome exam difficulties which include: The long, […]

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MPEP Q & A 134: Who is Barred From Filing a Request for Ex Parte Reexamination of a Patent?

Tue, 20 Mar 2018 14:00:36 +0000

Question: Who is barred from filing a request for ex parte reexamination of a patent? Answer: “Any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Accordingly, there are no types of “persons” who are excluded from being able to seek reexamination. Corporations […]

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Top 5 Careers for Engineers to Transition Into

Thu, 15 Mar 2018 14:15:41 +0000

Whether you start out in mechanical engineering, chemical engineering, engineering management, or in civil engineering, a career change may be in the cards for you. The employment landscape of today rewards engineering graduates with the courage and perseverance to forge a career path that applies old skills to new challenges and opportunities. Career Transition Ideas […]

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MPEP Q & A 133: Correspondence That May be Transmitted by Facsimile.

Tue, 13 Mar 2018 14:00:17 +0000

Question: Name two types of correspondence that may be transmitted by facsimile. Answer: Types of correspondence which may be transmitted by facsimile include: CPAs (available for design applications only), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs), assignment documents, issue fee transmittals and […]

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These news come from Patent Education Series.

Time Warner Asks CAFC to Vacate $139.8M Reasonable Royalty Awarded to Sprint

Wed, 17 Oct 2018 10:15:51 +0000

John O’Quinn, partner at Kirkland & Ellis and counsel representing Time Warner at the Federal Circuit, argued that the entire verdict should be vacated, not just the damages portion, because the court allowed the jury to use a 2007 verdict granted to Sprint against Vonage on the same asserted patents as evidence to determine the damages award. That verdict involved the use of a 25 percent rule of thumb for determining a royalty rate, a rule that the Federal Circuit has subsequently held to...

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Trademark Licensing Protection Act to Prevent Brand Control from Creating Joint Employer Relationship

Wed, 17 Oct 2018 09:15:15 +0000

Congressman Steve Chabot (R-OH) and Congressman Henry Cuellar (D-TX) are co-sponsoring H.R. 6695, the Trademark Licensing Protection Act of 2018, which has been referred to the House Committee on the Judiciary. The bill is designed to clarify the law around trademark licensing for franchises in a way that reduces the liability of franchisees under current U.S. labor law. The post Trademark Licensing Protection Act to Prevent Brand Control from Creating Joint Employer Relationship appeared...

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Rule 36 Affirmances at the Federal Circuit – Week of October 8, 2018

Tue, 16 Oct 2018 19:20:41 +0000

During the week of October 8, 2018,  there were five cases involving patents that were decided without an opinion as a result of Rule 36 affirmances at the United States Court of Appeals for the Federal Circuit. Three of those cases were issued by panels including Chief Judge Sharon Prost. In two cases, the Federal Circuit upheld district court invalidations of asserted patents whereas another two affirmed rejections of applicants claims by the U.S. Patent and Trademark Office. The last case...

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Broad Application of WesternGeco Leads to Increased Patent Damages in Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.

Tue, 16 Oct 2018 16:00:12 +0000

Last week, Chief Judge Stark issued a ruling from the District Court in Delaware that applies WesternGeco broadly to increase patent damages from foreign sales resulting from direct infringement.  Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., Civil Action No. 04-1371-LPS (Slip Op., October 4, 2018).  This might occur where a patented product is made in the U.S., but sold abroad, or where the distribution channel for an infringing article includes warehousing in the...

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PTAB Institutes CBM Review of Nasdaq Patents Challenged by MIAX

Tue, 16 Oct 2018 09:15:17 +0000

In early October, the Patent Trial and Appeal Board (PTAB) instituted a series of covered business method (CBM) reviews on patents owned by American stock exchange Nasdaq. The CBM reviews were petitioned by trading platform provider Miami International Holdings (MIAX) and challenge the validity of patents which Nasdaq has asserted against MIAX in U.S. district court. The post PTAB Institutes CBM Review of Nasdaq Patents Challenged by MIAX appeared first on IPWatchdog.com | Patents & Patent...

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Writing a Software Patent Application

Mon, 15 Oct 2018 14:30:56 +0000

Any good patent application that covers a software related invention will need to put forth three specific pieces of information. First, you need to describe the overall computer architecture of the system within which the software will exist. Second, you need to prepare a single flowchart that depicts the overall working of the software. Third, you need to prepare a series of flow charts that show with painstaking detail the various routines and subroutines that together connect to create and...

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Western Tennessee Judge Denies Spotify’s Motions to Dismiss Copyright Infringement Claims Brought by Bluewater Music

Mon, 15 Oct 2018 11:45:57 +0000

U.S. District Judge Jon McCalla of the Western District of Tennessee recently issued an order denying motions made by interactive streaming music provider Spotify to dismiss a case including copyright infringement claims brought by independent music publisher and copyright administration company Bluewater Music Corporation. Judge McCalla’s order determined Bluewater has standing for all 2,142 music compositions it has asserted based on ownership or an exclusive license of the works. Given...

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Museum of Modern Art Wins Injunction Against MOMACHA On Merits of Trademark Infringement, Dilution Claims

Mon, 15 Oct 2018 09:15:25 +0000

U.S. District Judge Louis Stanton recently issued an opinion granting an injunction requested by New York City’s Museum of Modern Art (MoMA). The injunction prevents the operator of an art gallery and café located in close proximity to a MoMA Design Store in New York’s SoHo neighborhood from using a pair of marks that infringe upon MoMA’s own marks. The marks in question in this case are 'MOMA' and 'MOMACHA,' both of which were filed by MOMACHA, the SoHo café that began operating in April of...

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Waymo Patent Asserted Against Uber Suffers Setback in Reexamination

Sun, 14 Oct 2018 18:15:13 +0000

he U.S. Patent and Trademark Office issued a final office action in an ex parte reexamination of a patent owned by Google self-driving car development subsidiary Waymo. As a result of the reexamination, Waymo stands to lose 53 of 56 claims, including all 20 of the patent claims originally issued. The patent in question had been asserted as part of the company’s well-known infringement suit filed against Uber. The post Waymo Patent Asserted Against Uber Suffers Setback in Reexamination appeared...

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A Realistic Perspective on post-Alice Software Patent Eligibility

Sun, 14 Oct 2018 15:05:02 +0000

Much of the havoc wrought in the software patent system by the landmark decision Alice v. CLS Bank International, 134 S. Ct. 2347 (2014) stems from the unworkable two-part patent eligibility test based on vaguely defined and nebulous Abstract idea and significantly more constructs... In a patent eligibility landscape riddled with Alice-based rejections and invalidation it behooves patent practitioner and applicants alike to appreciate that not every innovation that achieves “a new, useful, and...

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Judge Denies Beyoncé Motion for Summary Judgment in Feyoncé Trademark Case

Sat, 13 Oct 2018 16:30:27 +0000

On Sunday, September 30th, U.S. District Judge Alison J. Nathan of the Southern District of New York signed a memorandum opinion and order that was officially entered the following day in a trademark case brought by pop music superstar Beyoncé Giselle Knowles-Carter against Feyonce, Inc., a developer of merchandise marketed to engaged people using the brand name Feyoncé. Although the court found no dispute that the mark “FEYONCÉ” was chosen with the intent to capitalize on the famous “BEYONCÉ”...

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NASA Tech in Your Life, From Hair Care to Coffee Makers to Baby Formula

Sat, 13 Oct 2018 14:25:43 +0000

NASA recently launched a new version of its Home & City website featuring a redesigned, interactive interface designed to give users a sense of the scope of technologies originally developed by NASA which they encounter in their lives, sometimes on a daily basis. According to Derek Wang, NASA’s public outreach manager for the Space Technology Mission Directorate, the approximately 130 technologies included in the Home & City website is less than one percent of the thousands of...

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