AU Patent Attorney cheat sheet

Novelty under s 7: prior art is measured against the priority date; a single disclosure that enables the invention destroys novelty, and mosaicking is not permitted for novelty but is permitted for inventive step.

Manner of manufacture is assessed by the NRDC/Philips test: an artificially created state of affairs in a field of economic endeavour, producing a useful result; mere discoveries, schemes and abstract information are excluded.

Inventive step under s 7(2) uses the problem-solution approach with the common general knowledge of the notional skilled addressee; secondary indicia include commercial success, long-felt need and unexpected results.

Utility under s 18(1)(c): the specification must disclose a specific, substantial and credible use; mere speculation or a mere object of research is insufficient.

Priority under s 43: a provisional or basic application gives priority only for matter disclosed in it; added matter not in the priority document takes the filing date, and multiple priorities may be claimed.

Secret use under s 9 defeats validity only if it occurred before the priority date and was by the patentee or a person deriving title; use by a third party without authority does not count.

Section 18 grounds of invalidity: lack of novelty, lack of inventive step, non-manner of manufacture, lack of utility, inutility, failure to disclose best method, and non-compliance with s 40 (sufficiency, clarity, fair basing).

Section 40 requirements: the specification must describe the invention fully, including the best method known to the applicant, and the claims must be clear and fairly based on the matter described.

A complete specification must contain a title, a description of the invention (including the best method), one or more claims, and any drawings referred to; claims define the monopoly and must be supported by the description.

Claim structure: a preamble identifying the category (product, process, apparatus, system), transitional phrase (comprising, consisting of, consisting essentially of), and body of integers; 'comprising' is open-ended, 'consisting of' is closed.

Antecedent basis rule: every claim term must have an antecedent in the claims or an explicit definition in the description; inconsistent terminology creates clarity objections under s 40.

Functional language is permitted only if the description provides a correlation between the function and the structure or provides sufficient examples; otherwise the claim is not fairly based or lacks sufficiency.

Omnibus claims ('as herein described') are objectionable unless the invention cannot be defined otherwise; they are construed narrowly and risk insufficiency.

Best method requirement: the specification must disclose at least one practical method known to the applicant at the filing date; later-acquired knowledge need not be included.

The description should state the problem, the solution, the advantages, embodiments, and a dictionary of defined terms; the claims should be drafted from broadest independent claim to dependent fallbacks.

Drafting for infringement: include product, process, and apparatus claims where possible, and use means-plus-function language sparingly to avoid clarity objections under s 40.

Construction is a question of law for the court, not the jury; the court determines the meaning of the claim to the notional skilled addressee at the priority date.

Under the purposive approach (Catnic, Kirin-Amgen), the court asks what the person skilled in the art would have understood the patentee to mean, having regard to the whole specification.

Prosecution history is generally not admissible to construe claims, except to resolve ambiguity or to show the patentee's intention; the specification is the primary source.

The 'variants' question: an immaterial variant that works in substantially the same way to achieve substantially the same result infringes; a variant that avoids the inventive concept does not.

The 'integers' rule: each integer in a claim is material unless the claim or specification makes it clear that it is optional; omission of a material integer avoids infringement.

Method claims cover use of the method; product-by-process claims are construed as limited to products made by that process unless the process is the only way to define the product.

Pith and marrow: infringement may be found where the defendant takes the essential features of the invention even if non-essential integers are omitted or substituted.

Claim differentiation: dependent claims are presumed to have a narrower scope than the independent claim from which they depend, and this presumption informs construction.

Filing: a provisional application secures a priority date for 12 months; a complete specification must be filed within that period, or the application lapses.

Examination: a request for examination must be filed within the prescribed period; the Commissioner issues a first report, and the applicant may respond with amendments or arguments within the set period.

Section 104 amendments: amendments must not add matter, must be within the scope of the claims as filed, and must not be made for an improper purpose (e.g., to delay or to capture competitors' products).

Opposition under s 59: after acceptance and publication, a third party may oppose within 3 months (extendable), on grounds including novelty, inventive step, manner of manufacture, and s 40 non-compliance.

Re-examination under s 97: the Commissioner may re-examine a patent on request or on the Commissioner's own initiative, and may revoke or amend claims in light of new prior art.

Hearings: the Commissioner may decide on the papers or hold a hearing; parties have a right to be heard before an adverse decision, and reasons must be given.

Appeals: decisions of the Commissioner are appealable to the Federal Court; the appeal is a hearing de novo on the merits in some respects, but leave may be required for interlocutory matters.

Extension of time: the Commissioner may extend time under s 223 for up to 3 months (or longer with special circumstances), but not for filing a complete specification after the 12-month priority period.

Direct infringement under s 117: a person infringes by exploiting the patented invention in Australia without the patentee's authority, including making, using, selling, offering for sale, importing, or keeping for those purposes.

Indirect or contributory infringement: supplying a product that is not itself patented but is used to infringe, where the supplier knows or ought to know that the product is suitable for and intended for use in the infringement.

The 'staple commercial product' defence: supply of a staple commercial product is not infringement unless the supplier induces the infringement or the product is especially adapted for the infringement.

Implied licence: sale of a patented product by the patentee or with authority carries an implied licence to use, resell, and repair the product, but not to reconstruct it.

Exhaustion: once a patented product is sold with the patentee's authority, the patentee's rights over that product are exhausted; parallel importation of legitimately sold goods is generally permitted.

Experimental use exemption: use of the invention for experimental purposes relating to the subject matter of the invention is not infringement; commercial experimentation may fall outside the exemption.

Prior use defence under s 119: a person who, before the priority date, was using the invention in good faith in Australia, or had made serious preparations to do so, may continue that use.

Limitation period: infringement proceedings must be commenced within 6 years of the act of infringement; continuing infringement may be restrained by injunction and damages or an account of profits.

Invalidity may be raised as a defence in infringement proceedings or by counterclaim; the burden of proving invalidity rests on the party asserting it, on the balance of probabilities.

Revocation under s 138: any person may apply to the court for revocation on grounds including lack of novelty, inventive step, manner of manufacture, utility, and s 40 non-compliance.

Remedies: injunction (interlocutory or final), damages (compensating for loss), account of profits (defendant's profits attributable to infringement), delivery up, and declaration of validity or infringement.

Damages are assessed on the 'but for' principle; the patentee must prove causation and mitigate loss; the court may award additional damages for flagrant infringement.

Account of profits is an equitable remedy and is not available where the patentee has elected damages; the patentee must elect between the two remedies.

Interlocutory injunction: the court applies the balance of convenience and the strength of the prima facie case; an undertaking as to damages is normally required.

Unjustified threats under s 128: a patentee who threatens infringement proceedings without justification may be liable for damages; the threat must relate to a patent that is invalid or not infringed.

Crown use and compulsory licences: the Crown may use patented inventions on terms; compulsory licences may be granted for anti-competitive conduct or for dependent patents.

Paris Convention: priority right of 12 months for patents and 6 months for designs and trade marks; national treatment and independence of patents are core principles.

PCT: international application filed with a receiving office; international search report and written opinion; national phase entry within 30 months (or 31 in some offices) from the priority date.

TRIPS: minimum standards of protection, most-favoured-nation treatment, national treatment, and dispute settlement; patents must be available for inventions in all fields of technology.

TRIPS Article 27: patentability criteria are novelty, inventive step, and industrial applicability; exclusions include diagnostic, therapeutic and surgical methods, plants and animals (other than micro-organisms), and essentially biological processes.

TRIPS Article 33: patent term of at least 20 years from the filing date; Article 34 reverses the burden of proof for process patents in certain cases.

Priority document requirements: the priority application must be the first application for the invention; a later application for the same invention in the same country cannot claim priority from an earlier one.

Foreign filing restrictions: Australia does not generally require a foreign filing licence, but national security provisions may apply to defence-related inventions.

Regional systems: EPO (European Patent Convention), ARIPO, OAPI, and the Eurasian Patent Convention provide centralized filing and grant procedures.

A trade mark is a sign used or intended to be used to distinguish goods or services dealt with in the course of trade from those of others; signs include words, logos, shapes, colours, sounds and scents.

Section 41: the Registrar must reject an application if the trade mark is not capable of distinguishing; the test is whether the mark is inherently adapted to distinguish or has acquired distinctiveness through use.

Section 43: a trade mark is rejected if it contains scandalous matter or is contrary to law; s 42 rejects marks that are not capable of distinguishing.

Section 44: prior conflicting marks are a ground for rejection; the applicant may rely on honest concurrent use, prior use, or consent from the prior owner.

Section 58: the applicant must be the owner of the trade mark at the filing date; ownership derives from authorship and first use in Australia.

Section 59: the mark must be used or intended to be used in good faith; an application made without intention to use is invalid.

Section 60: a mark is rejected if it is substantially identical or deceptively similar to a prior mark that has acquired a reputation in Australia and use would be likely to deceive or cause confusion.

Infringement under s 120: use of a sign as a trade mark that is substantially identical or deceptively similar to the registered mark, in relation to goods or services for which it is registered, without authority.

A design is the overall appearance of a product resulting from one or more visual features of shape, configuration, pattern or ornamentation; it must be new and distinctive.

Novelty: the design must not be identical to a prior design; distinctiveness: the design must not be substantially similar in overall impression to a prior design, assessed from the perspective of the informed user.

The 'informed user' is a person familiar with the product and its design corpus; the court considers the freedom of the designer to create variants.

Excluded designs: designs that are solely functional, designs for building materials, and designs for articles of a purely artistic nature may be excluded or protected by copyright instead.

Priority: a 6-month priority period from the first application under the Paris Convention; a design application may claim priority from a convention application.

Examination: a design is registered after formalities and examination; examination may be requested by the owner or a third party, and certification is required before infringement proceedings.

Infringement: a person infringes by making, importing, selling, offering for sale, or using a product embodying the design, or a fraudulent imitation of it, without the owner's authority.

Defences: prior use, experimental use, and use for repair of a product (the repair defence) may be available; remedies include injunction, damages, account of profits, and delivery up.

Duty to the court and to the administration of justice overrides the duty to the client; an attorney must not mislead the court or the Commissioner.

Confidentiality: client communications are privileged and must not be disclosed without consent, except where required by law or to prevent a serious criminal offence.

Conflict of interest: an attorney must not act for two clients with conflicting interests in the same matter without informed consent; the duty of loyalty continues after the retainer ends.

Competence: an attorney must act with reasonable care and skill, keep clients informed of material developments, and not act outside the scope of their expertise without assistance.

Fees and billing: fees must be disclosed and agreed in advance; contingency fee arrangements are restricted, and an attorney must not charge for work not done or misrepresent costs.

Advertising and solicitation: an attorney must not make false or misleading statements about their services or qualifications, and must not solicit clients in a manner that is misleading or unfair.

Client money: trust account rules apply to client funds; an attorney must keep proper records, account for money held, and not mix client money with the firm's money.

Undertakings: an attorney must honour undertakings given to the court, the Commissioner, or another party; breach of an undertaking is professional misconduct.

Copyright: protects original literary, dramatic, musical and artistic works; the idea/expression dichotomy excludes ideas, and the term is generally life of the author plus 70 years.

Confidential information: protected by equity where the information has the necessary quality of confidence, was imparted in circumstances importing an obligation of confidence, and is used without authority.

Plant breeder's rights: PBR protects new varieties of plants that are distinct, uniform, stable, and have a proposed denomination; the term is 20 years (25 for trees and vines).

Competition law interface: s 46 of the Competition and Consumer Act prohibits misuse of market power; IP rights do not confer immunity from competition law, and compulsory licences may be ordered.

TRIPS and competition: TRIPS permits members to adopt measures to prevent abuse of IP rights, including compulsory licences and control of anti-competitive practices in licensing.

Passing off: protects the goodwill or reputation of a business against misrepresentation; the elements are reputation, misrepresentation, and damage.

Trade secrets and employees: an employee may use general skill and knowledge but must not disclose confidential information or trade secrets obtained during employment.

Design/copyright overlap: the Designs Act provides a defence to copyright infringement for products embodying a registered design, and copyright may be lost once a design is applied industrially.

Novelty is assessed claim-by-claim against the prior art base; a prior disclosure must be enabling to destroy novelty.

Inventive step uses the problem-solution approach: identify the closest prior art, determine the distinguishing features, and ask whether the claimed solution was obvious to the skilled person.

Section 40 objections are frequently raised in examination and opposition: clarity, sufficiency, fair basing, and best method.

Amendments under s 104 must not add matter, must be within the scope of the claims as filed, and must not be made for an improper purpose.

Infringement requires exploitation of the invention in Australia without authority; the patentee must prove the acts of infringement and the defendant's knowledge for contributory infringement.

Remedies include injunction, damages, account of profits, delivery up, and declaration; the patentee must elect between damages and account of profits.

International filing strategies: Paris Convention priority, PCT national phase, and regional systems; the 12-month priority period is critical.

Professional conduct: duty to the court, confidentiality, conflicts of interest, competence, and proper billing are core obligations.

Trade mark distinctiveness: s 41 requires the mark to be capable of distinguishing; acquired distinctiveness may be shown by evidence of use.

Trade mark infringement: s 120 requires use as a trade mark, substantial identity or deceptive similarity, and use in relation to the registered goods or services.

Defences to trade mark infringement: honest concurrent use, prior use, use of own name, and comparative advertising.

Design novelty and distinctiveness: assessed against the prior design corpus from the perspective of the informed user.

Design infringement: making, importing, selling, or using a product embodying the design or a fraudulent imitation without authority.

Design examination: certification is required before infringement proceedings; examination may be requested by the owner or a third party.

Overlap between designs and copyright: the Designs Act provides a defence to copyright infringement for products embodying a registered design.

International protection: Paris Convention priority for trade marks (6 months) and designs (6 months); Madrid System for trade marks.

Duty to the court overrides duty to the client; an attorney must not mislead the court or the Commissioner.

Confidentiality and privilege: client communications are privileged and must not be disclosed without consent, except where required by law.

Conflicts of interest: an attorney must not act for two clients with conflicting interests without informed consent.

Competence and care: an attorney must act with reasonable care and skill and keep clients informed of material developments.

Fees and billing: fees must be disclosed and agreed in advance; contingency fee arrangements are restricted.

Copyright: protects original works; the idea/expression dichotomy excludes ideas; the term is generally life of the author plus 70 years.

Confidential information: protected by equity where the information has the necessary quality of confidence and was imparted in circumstances importing an obligation of confidence.

Competition law: s 46 of the Competition and Consumer Act prohibits misuse of market power; IP rights do not confer immunity from competition law.