Patents

The Patents Act 1990 (Cth) forms the basis of Australia’s patent law. Patents only exist in registered form.  Applications for registration must be made to IP Australia.

Patents provide inventors with a temporary exclusive right to exploit their invention and authorise others to exploit it. Patents are available for inventive products and processes. The Patents Act states that where the invention is a product, exploitation encompasses making, hiring, selling or otherwise disposing of the product, offering to make, hire or sell or otherwise dispose of the product or using, importing or keeping the product for any of those purposes. Where the invention is a process, exploitation encompasses using the process for any of the acts mentioned above in relation to inventive products.

Patents give stronger protection than copyright, because copyright infringement requires proof of copying. Patents can be infringed by a person who comes up with the same invention entirely independently. Because of the strong protection offered by the patent system, the requirements for obtaining a patent are more onerous than for other forms of intellectual property. In addition, the trade off for the grant of a patent is full disclosure of the invention and the best method of performing it.

Patent requirements

There are two main types of patents granted in Australia – standard patents and innovation patents. They differ in terms of cost, length of protection, processing time, and the types of inventions they cover.

A standard patent provides long-term protection and control over an invention for a 20 year period.

Standard patents are only granted by IP Australia if the invention:

• is new;
• involves an inventive step – a step that is not an obvious thing to do for a person with knowledge and experience in the field;
• is useful, in the sense of having industrial applicability;
• is fully disclosed, including the best method of performing it;
• is not otherwise excluded (for example you can’t get a patent over a human being – see below).

Standard patents are only granted after an examination of the application. The process can take between 6 months and several years. The application must meet the standards set out above for the patent to be granted. The claims made in the patent must not go too far beyond the scope of the invention (referred to as the sufficiency requirement).

An innovation patent, although it might sound much better, gives shorter protection for what IP Australia deem to be less inventive patents. The period for which an innovation patent lasts is 8 years. It is quick and inexpensive compared to a standard patent application. Innovation patents:

• are usually granted within a month of filing the complete application;
• have no examination process prior to grant, although they must be examined and certified before they are enforceable;
• require an innovative step rather than an inventive step – this amounts to an incremental advance rather than a groundbreaking invention; an inventive step is ‘different from what is known before … and makes a substantial contribution to the working of the invention’.

The validity of both types of patents can be challenged at any time. Challenges before standard patents are granted are known as opposition proceedings. Challenges after the patent is granted are known as revocation proceedings.

International patents

Both standard and innovation patents only apply in Australia. There is no global patenting system. Patents have to be applied for in a number of different countries to protect the invention. However, there is a Patent Cooperation Treaty (PCT)  which facilitates filing in multiple countries. Australia is a party to the PCT. The application process for an international patent is accessible via the IP Australia website, and can largely be done online (depending on the nature of the invention). The application process is similar to that for a standard patent.

Statutory Exclusions from Patenting

There are only a few express exclusions from patenting in the Patents Act. The most significant exclusion is for human beings and the biological processes for their generation. There is some debate as to whether this exclusion encompasses human DNA sequences and human cloning techniques.
The Commissioner for Patents also has discretion to refuse applications on a number of grounds. These include:

• where the use of the invention would be contrary to law;
• when the invention is either a substance which is capable as being used as food or medicine and is a mere mixture of known ingredients or is a process producing such a substance by mere admixture;
• where the claim includes the name of a person as the name or part of the name of the invention.
• In addition, a number of exclusions are incorporated into the Patents Act from an old English piece of legislation known as the Statute of Monopolies. Patents will not be granted for inventions that are: –
• contrary to law;
• mischievous to the State by raising prices or hurting trade; or
• generally inconvenient.

There is debate about the extent to which the ‘generally inconvenient’ exclusion allows the introduction of ethical and social policy considerations in assessing the validity of a patent.

Exceptions to infringement

The Patents Act includes provision for some uses of patents that do not constitute infringement, even if the patentee does not give permission for those uses. These are:

• certain uses for experimental purposes;
• use for the purpose of gaining regulatory approval, required for the sale of certain products. For example, pharmaceuticals cannot be sold unless they are listed on the Australian Register of Therapeutic Goods; and
• certain prior uses.

Licensing

Patents are expensive to obtain and maintain. The patentee must pay application and registration fees and yearly renewal fees. In addition, the patentee must set aside sufficient funds to take infringement proceedings and defend revocation proceedings or take out insurance in relation to these matters.

To be worthwhile, the invention must be commercially exploited. The patentee will often lack the appropriate set up to commercially exploit the invention in sufficient quantities to make it worthwhile. In such circumstances, it is preferable for the patentee to licence another person to commercially exploit the invention. Licence agreements must be carefully drafted to protect the rights of the patentee. When properly drafted, licence agreements can be very lucrative.

If a patentee and/or licensee fails to adequately exploit the invention, others may apply for compulsory licenses to ensure that the patent is properly exploited. This is one of the safe guards to ensure that the patent system fulfils its purpose of encouraging innovation.

Fees

See the IP Australia website for fees for patent applications and upkeep of your patent. All patents are subject to a yearly fee. If you forget to pay the fee, there is a six-month grace period before your patent will no longer be in force. There is an additional fee for each month of the six months of the grace period. An extension of time may be available if you cannot pay your fees.