AU Patent Attorney key terms

The threshold requirement that an invention be a proper subject for a patent, assessed by asking whether it is an artificially created state of affairs yielding an economically useful result rather than a mere discovery or abstract idea.

The body of publicly available information against which novelty and inventive step are measured, including earlier publications, public use and, for inventive step, documents a skilled person could reasonably be expected to find.

The requirement that each claim define something not previously disclosed in a single item of prior art, so that anticipation is found only where all integers appear in one disclosure.

Destruction of novelty by a prior disclosure that clearly teaches every essential feature of the claim, optionally with immaterial additions, so the skilled reader could perform the invention from that disclosure alone.

The requirement that the claimed invention not be obvious to a person skilled in the art in light of the prior art base and the common general knowledge, considering the problem the invention addresses.

The hypothetical non-inventive worker in the field, equipped with the common general knowledge and capable of routine experimentation, whose perspective governs obviousness and sufficiency analysis.

Information generally known and accepted by workers in the relevant field, typically drawn from textbooks and handbooks, as distinct from isolated papers a skilled person might locate only with effort.

Combining two or more prior art documents to attack inventive step, permitted where a skilled person would be motivated to consult and combine them, but not permitted when assessing novelty.

The requirement that the invention do what the specification says it does, with a specific, substantial and credible use, so that inoperative or wildly speculative embodiments fail this test.

The requirement that the complete specification describe the invention clearly enough and completely enough for a skilled person to perform it across the scope claimed, without undue burden or inventive effort.

The obligation to describe the best known method of performing the invention at the filing date, so that withholding a preferred embodiment or optimised condition can invalidate the patent.

The requirement that claims be supported by the matter disclosed in the specification, so that the claimed scope is consistent with the description and does not extend beyond the technical contribution described.

The document ending with claims that defines the invention and the scope of the monopoly sought, accompanied by a description, and required to satisfy disclosure and clarity standards.

An initial filing that need only describe the invention, securing a priority date, and which must be followed by a complete specification within the prescribed period for the application to proceed.

The court's determination of the meaning and scope of claim language, read in context of the whole specification and the common general knowledge, giving words their ordinary meaning to a skilled reader.

Interpreting claims by reference to the purpose the integers serve, rather than literal dictionary meanings, so that variants achieving the same function may still fall within the claim.

A feature of the claimed invention that is indispensable to the way the invention works, so that substituting or omitting it takes the product outside the claim.

The test for anticipation asking whether a product or process falling within the claim would, if carried out, infringe it, thereby linking novelty analysis to claim construction.

Unauthorised exercise of the exclusive rights in a patented invention, such as making, using, selling or importing a product within the claims, or working a patented process, during the term.

Liability for a variant that does not literally fall within the claim but performs substantially the same function in substantially the same way to achieve substantially the same result, subject to prosecution history limits.

A discretionary equitable order restraining continued infringement, commonly granted where damages would not adequately protect the patentee, and available on interlocutory or final basis.

A remedy requiring the infringer to surrender the profit attributable to the infringing conduct, an alternative to damages that the patentee must elect and that excludes profits from non-infringing features.

Compensatory monetary relief for losses caused by infringement, assessed by comparing the patentee's position with and without the wrong, and subject to limitations such as marking and innocent infringement.

The statutory entitlement of the Commonwealth or a State to exploit a patented invention on terms agreed or fixed by the court, including for defence purposes, without committing infringement.

A licence granted by the Commissioner over a patentee's objection, typically where the invention is not being worked in Australia or where competition or public interest concerns arise.

A pre-grant administrative proceeding in which a third party challenges an accepted application before the Commissioner on grounds such as novelty, inventive step or manner of manufacture.

A procedure in which the Commissioner reconsiders an accepted or granted patent, often after a court or third party raises issues, and may revoke or amend claims in light of the findings.

A post-filing change to the specification or claims, permitted only within the disclosure of the original specification and subject to requirements that the scope not be impermissibly broadened.

Cancellation of a granted patent, whether by the Commissioner or a court, on proof of a ground of invalidity such as lack of novelty, obviousness, inutility or insufficient disclosure.

The statutory bases on which a granted patent may be challenged, including want of novelty, obviousness, inutility, insufficiency, lack of fair basis and improper manner of manufacture.

The right, under the Paris Convention, to claim the filing date of an earlier application in a convention country when filing a later application within twelve months for patents.

The effective date for assessing novelty and inventive step, ordinarily the filing date of the application or of the earlier application whose priority is validly claimed.

An international application filed under the Patent Cooperation Treaty, providing a unified search and preliminary examination before entry into national or regional phase before designated offices.

The WTO agreement setting minimum standards for intellectual property protection, including patent term, available subject matter, compulsory licensing conditions and enforcement obligations for member states.

A sign used or intended to be used to distinguish goods or services dealt with in trade from those of others, registrable where it is distinctive and not otherwise barred.

The capacity of a trade mark to distinguish the applicant's goods or services from others, assessed inherently or through acquired use, and central to registrability.

The ground of opposition or infringement where a mark is substantially identical or deceptively similar to an earlier mark, judged by impression and recollection rather than side-by-side comparison.

A registrable visual feature of shape, configuration, pattern or ornamentation applied to an article, judged by overall appearance rather than by function or hidden internal features.

A situation where an attorney's duties to one client, or personal interests, may compromise duties owed to another client, requiring disclosure, informed consent or refusal of the engagement.

The attorney's duty not to disclose or misuse information received in the course of the retainer, surviving termination of the engagement and subject only to limited legal exceptions.

The protection of attorney-client communications from compulsory disclosure in legal proceedings, extending to patent and trade marks attorneys in professional advisory communications.