AU Patent Attorney flashcards

32 cards. Read the term and the definition here. The deck at the top of this page is optional.

Novelty under s 7

A claimed invention lacks novelty if it is not novel over the prior art base; a single enabling disclosure before the priority date destroys novelty, and mosaicking is not permitted for novelty.

Inventive step test

Assessed using 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 in light of common general knowledge.

Manner of manufacture

An artificially created state of affairs in a field of economic endeavour producing a useful result; mere discoveries, schemes, and abstract information are excluded from patentability.

Utility requirement

The specification must disclose a specific, substantial and credible use for the invention; mere speculation or a mere object of research is insufficient to satisfy utility under s 18.

Priority date under s 43

The date of the first application disclosing the invention; a provisional or basic application gives priority only for matter disclosed in it, and added matter takes the later filing date.

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.

Claim transitional phrases

Comprising is open-ended and permits additional integers; consisting of is closed and excludes additional integers; consisting essentially of permits only integers that do not materially affect the invention.

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.

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 in the specification.

Purposive construction

The court asks what the person skilled in the art would have understood the patentee to mean, having regard to the whole specification, rather than applying a literal meaning.

Pith and marrow doctrine

Infringement may be found where the defendant takes the essential features of the invention even if non-essential integers are omitted or substituted with equivalents.

Claim differentiation

Dependent claims are presumed to have a narrower scope than the independent claim from which they depend, and this presumption informs construction of the claims.

Prosecution history estoppel

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.

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.

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 such as delay or capturing competitors' products.

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.

Contributory infringement

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

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.

Prior use defence 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.

Remedies for infringement

Injunction, damages, account of profits, delivery up, and declaration of validity or infringement; the patentee must elect between damages and account of profits.

Interlocutory injunction test

The court applies the balance of convenience and the strength of the prima facie case; an undertaking as to damages is normally required from the applicant.

Unjustified threats 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.

Paris Convention priority

A 12-month priority right for patents and 6 months for designs and trade marks; national treatment and independence of patents are core principles.

PCT national phase

An international application filed with a receiving office; international search report and written opinion; national phase entry within 30 months from the priority date.

TRIPS Article 27

Patentability criteria are novelty, inventive step, and industrial applicability; exclusions include diagnostic, therapeutic and surgical methods, plants and animals, and essentially biological processes.

Trade mark distinctiveness s 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.

Trade mark infringement 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.

Design novelty and distinctiveness

The design must not be identical to a prior design and must not be substantially similar in overall impression to a prior design, assessed from the perspective of the informed user.

Informed user standard

A person familiar with the product and its design corpus; the court considers the freedom of the designer to create variants when assessing overall impression.

Duty to the court

The 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.

Confidential information elements

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.