AU Patent Attorney common mistakes
AU Patent Attorney · Understand the traps and how to avoid them.
Treating a novelty analysis as satisfied by pointing to a single prior-art document without checking whether that document expressly or implicitly discloses every integer of the claim, including functional and result-to-be-achieved features.
Candidates learn the 'anticipation requires all features in one disclosure' slogan but practise it at the level of claim titles and general descriptions, so they miss that a claimed range or an unstated parameter is not disclosed by a document that merely mentions the field. Under Australian practice the disclosure must be clear and unmistakable, and candidates under-rehearse the 'clear and unmistakable' threshold.
What to do instead
For every novelty question, build a feature-by-feature table mapping each integer of the claim to a pinpointed passage, and record 'not disclosed' where the document is silent. Where a numerical range is claimed, check whether the prior document discloses the endpoint, the overlap, or a value falling inside the range, and state the legal consequence explicitly. Practise on claims containing functional language and product-by-process wording until the mapping is automatic.
Assessing inventive step by asking whether the invention is 'clever' or 'different' rather than applying the structured obviousness inquiry: identify the person skilled in the art, the common general knowledge at the priority date, the problem, and whether the claimed step would have been obvious to that notional person.
The inventive step standard feels intuitive, so candidates substitute a gut reaction for the legal test and then cannot explain why an obvious combination of two references is or is not obvious. They also forget that the notional skilled person may be a team and that common general knowledge must be established, not assumed from a single patent.
What to do instead
Write out the four elements as headings before analysing: skilled addressee and their common general knowledge; the problem to be solved; the differences between the claim and the closest prior art; whether those differences would have been obvious. Then address secondary considerations such as unexpected advantage or long-felt need only after the primary analysis, and cite the evidence relied on for common general knowledge.
Confusing the manner of manufacture threshold with novelty or utility, and dismissing a business method, computer-implemented process or biological material as inherently unpatentable subject matter without applying the Australian approach.
Candidates import a rigid 'technical effect' or 'physical transformation' test from other jurisdictions and apply it as a categorical bar, whereas Australian law asks whether the claimed subject matter is a proper subject for a patent having regard to the existing law and practice, with the boundary being developed case by case. The resulting answers are conclusory and unsupported.
What to do instead
For each subject-matter question, state the claimed invention precisely, identify what is said to be the contribution, and apply the recognised Australian authorities and principles rather than a foreign checklist. Where the law is unsettled, say so and reason by analogy. Keep manner of manufacture, novelty, inventive step and utility in separate paragraphs so the tests are not blended.
Drafting or construing claims using the specification as if it overrides the claim language, or conversely reading claims in isolation from the specification, instead of construing the claim in the context of the whole specification as a matter of law.
Candidates oscillate between literalism and purposivism depending on which produces the answer they want, and they do not separate the question of construction from the question of infringement. They also ignore the role of the consistory clauses and the description in resolving ambiguity.
What to do instead
Adopt a fixed sequence: identify the integer in dispute, read the claim in light of the specification as a whole, consider whether the patentee acted as its own lexicographer, and only then apply the construction to the alleged infringement. State the construction before applying it, and flag where a 'purposive' reading would change the outcome. Practise on claims with relative terms such as 'substantially' and 'adapted to'.
Missing prosecution deadlines and failing to use the available extension and amendment mechanisms correctly, including the time limits for responding to examination reports, for placing the application in order for acceptance, and for requesting extensions of time.
The Patents Act and Regulations contain layered time limits with different extension regimes, and candidates memorise headline periods without the associated extension provisions, the notice requirements, and the consequences of lapse. Under exam pressure they also confuse the acceptance deadline with the examination response deadline.
What to do instead
Build a one-page timeline for a standard application from filing through acceptance, opposition and grant, listing each deadline, the regulation that sets it, and the extension mechanism available. Redo past questions on extensions of time by writing the procedural steps in order. When answering, cite the specific provision rather than describing the deadline in general terms.
Treating amendment as a purely formal step and ignoring the substantive limits: that an amendment must not claim matter not in substance disclosed in the specification as filed, and must not result in a claim that is not clear or that extends beyond the scope of the claims as accepted.
Candidates focus on the mechanics of filing an amendment and overlook that the allowability of an amendment is judged against the disclosure of the specification as filed and against the accepted claims. They also forget the relevance of the amendment to pending opposition or infringement proceedings.
What to do instead
For every amendment question, apply the substantive tests in sequence: is the amended matter in substance disclosed in the specification as filed; does the amendment broaden the claim impermissibly; is the amended claim clear and fairly based. Then consider procedural constraints such as the stage of proceedings. Draft the amendment wording and test it against each limb before concluding.
Answering an infringement question without first determining the scope of the monopoly and the relevant acts of infringement, and without addressing the available defences and the effect of any counterclaim for revocation.
Candidates jump straight to comparing the product with the claim and then declare infringement or non-infringement, skipping the antecedent questions of whether the patent is in force, whether the acts fall within the exclusive rights, and whether a defence such as experimental use or prior use applies. They also forget that invalidity is a defence and a counterclaim.
What to do instead
Use a checklist: is there a valid and in-force patent; what does the claim mean on its proper construction; does each integer read onto the alleged act; which exclusive right is engaged; which defences are arguable; what relief follows. Answer each in turn and only then reach a conclusion. Where the facts are thin, state the assumptions and the further information needed.
Treating the Paris Convention, PCT and TRIPS as interchangeable, and stating priority and foreign filing rules without identifying which instrument governs the particular step and what it actually requires.
All three instruments concern international protection, so candidates blur them and produce answers that mix convention priority, PCT procedural steps and TRIPS minimum standards. They also misstate the priority period or the effect of a priority claim on novelty.
What to do instead
Keep a comparison table with columns for subject matter, priority effect, formal requirements, time limits and enforcement obligations, and populate it from the instruments themselves. For any scenario, first name the instrument that governs, then state its rule, then apply it. Pay particular attention to the 12-month priority period and to what the PCT does and does not do.
Confusing trade mark and design registrability criteria with patent criteria, for example assessing a trade mark for novelty or a design for inventive step, or ignoring the distinct tests of distinctiveness, prior continuous use and the design's visual features.
Candidates study the three regimes together and carry over concepts from patent law because those are the most heavily practised. The Trade Marks Act and Designs Act each have their own grounds of rejection and their own notion of prior rights, and the overlap is superficial.
What to do instead
Write a separate one-page summary for each regime listing the registrability criteria, the grounds of rejection, the opposition grounds and the term of protection, and check that no patent concept has leaked in. When a question spans regimes, answer each regime under its own heading and expressly note where the tests diverge.
Handling professional conduct and client-duty issues by reciting generalities about acting in the client's best interests, without identifying the specific conflict, confidentiality or competence obligation engaged and the practical step required.
Ethics questions look easy, so candidates give broad answers that do not engage with the facts, such as a conflict between two clients, a mistake by the attorney, or a request to act outside the attorney's competence. They also overlook duties owed to the Commissioner and the court, which can qualify duties to the client.
What to do instead
For each conduct scenario, identify the duty engaged, the person to whom it is owed, the conflicting duty if any, and the concrete action required, such as declining the retainer, obtaining informed consent, ceasing to act, or correcting the record. Cite the applicable professional rules or statutory obligations and state the consequence of non-compliance.