#patents

Steve Davey

Dec 10, 2019
13 min

Is software patentable in Australia?

The short answer is that the Australian Patents Office will grant patents for software that has a technical purpose which is connected with hardware, but not for pure software for a purely business purpose (that is, an app). This is because business schemes are not patentable per se. The long answer is as follows: NRDC v Commissioner of Patents The threshold test for an invention to be patentable was explained by the High Court in National Research Development Corporation v

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Is the Australian Innovation Patent the same as the Chinese Utility Model Patent?

Steve Davey

Mar 9, 2019
5 min

Is the Australian Innovation Patent the same as the Chinese Utility Model Patent?

Both Australia and China have two grades of patents. The top grade is harder to obtain than the lower grade, but the top grade lasts longer. The top grade patent in Australia is called the ‘Standard Patent’ and the lower grade patent is called the ‘Innovation Patent’. The top grade patent in China is called the Invention Patent and the lower grade is called the ‘Utility Model Patent’. Details of the similarities and differences between each type of patent are follows: WHAT A

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Are perpetual motion machines patentable?

Steve Davey

Feb 20, 2019
2 min

Are perpetual motion machines patentable?

The short answer is 'no'. Perpetual motion machines allegedly produce endless motion without any external source of energy. However, all machines naturally lose energy due to friction, heat and sound. Therefore, no machine can be 100% efficient and run perpetually. In practice, perpetual machines are impossible to build. They do not work. Therefore, the Patents Offices can reject such applications on the grounds that the claimed invention does not achieve the use promised

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What is a divisional patent application?

Steve Davey

Feb 10, 2019
2 min

What is a divisional patent application?

A patent can only claim one invention. Sometimes during the course of examination, an Examiner identifies more than one invention in the claims. In that instance, a divisional application can be filed for the second invention. The divisional receives the same filing date as the parent. You can add new material in a divisional, although any claims based on the new material will not be given the priority date of the parent. At any time during the lifetime of the application,

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Are methods of medical treatment patentable?

Steve Davey

Oct 27, 2018
1 min

Are methods of medical treatment patentable?

Methods of medical treatment are patentable in Australia, but not in New Zealand. The Australian High Court decision of Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50, Sanofi-Aventis claimed that Apotex’s supply of a leflunomide formula to treat rheumatoid arthritis infringed their patent. Apotex argued that Sanofi-Aventis’ patent should be revoked on the ground that a method of medical treatment of the human body was not a patentable invention. On appeal,

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Are methods of psychological treatment patentable?

Steve Davey

Oct 31, 2017
3 min

Are methods of psychological treatment patentable?

In the Patent Office decision of First Principles, Inc. [2011] APO 1 (5 January 2011), the Hearing Officer Phil Spann refused standard patent application number 2007221889 for a method of psychological analysis and therapy on the grounds that it was not patentable subject matter. The inventor is Keith Raniere. He ran a cult called NXIUM. He literally branded his female devotees on their pelvic region and used them as sex slaves. He was later imprisoned. The invention was d

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Can I get compensation for the damage to my business as a result of threats of patent infringement?

Steve Davey

Mar 19, 2017
2 min

Can I get compensation for the damage to my business as a result of threats of patent infringement?

A person or company that has been unjustifiably threatened with patent infringement litigation may seek an injunction to prevent the threats from continuing, and the recovery of any damages sustained as a result of the threats. However, the case of Australian Mud Company Pty Ltd v Coretell Pty Ltd [2017] FCAFC 44 has shown that a party is not entitled to compensation as a result of court proceedings about those threats, but only for damage sustained as a result of unjustified

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Steve Davey

Nov 14, 2016
1 min

Can I patent my recipe?

Recipes are most effectively protected by the law of trade secrets, rather than copyright or patents. Well known secret recipes were KFC's Kentucky-Fried Chicken and McDonald's Big Mac Special Sauce. However, the law of trade secrets will only protect a recipe if it remains secret. It will not protect the recipe if it is reverse-engineered. If the recipe can be easily reverse-engineered, it may not constitute a real trade secret. In the US case of Vraiment Hospitality, LLC

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How can I avoid claims of co-ownership or co-inventorship of my invention?

Steve Davey

Oct 5, 2016
1 min

How can I avoid claims of co-ownership or co-inventorship of my invention?

The case of Kafataris v Davis [2016] FCAFC 134 shows that you only disclose your invention to interested third parties under a confidentiality agreement or consultancy agreement to avoid claims of co-ownership or co-inventorship. In this case, Mr Davis filed a provisional patent application for a new method of playing card games. He subsequently had conversations with Mr Kafataris regarding his invention, in which Mr Kafataris suggested additional embodiments of the invention

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Can I patent an isolated nucleic acid for genetic testing?

Steve Davey

Oct 6, 2015
2 min

Can I patent an isolated nucleic acid for genetic testing?

In the case of D'Arcy v Myriad Genetics Inc [2015] HCA 35, the High Court of Australia unanimously determined that the isolated nucleic acids are not patentable in Australia. Neither are they patentable in the US. However, they are still patentable in Europe. An isolated nucleic acid is a sequence of nucleotides derived from DNA or RNA which have has been 'isolated' or 'removed' from a cell nucleus. Nucleotides form the basic structural unit of nucleic acids such as Deoxyr

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How can I stop an infringer before my patent is granted?

Steve Davey

Aug 19, 2015
2 min

How can I stop an infringer before my patent is granted?

If you ask someone to sign a confidentiality agreement before you disclose your provisional patent application to them, then you can sue them for breach of confidentiality if they steal your idea, even if your patent is not yet granted. In almost all cases, a dishonest person won't run with your exact idea, but will run their own variation of your invention. Therefore, its important that the confidentiality agreement requires that recipient assigns their rights in any variat

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How do I know if a prior publication will invalidate my patent?

Steve Davey

Jan 22, 2015
2 min

How do I know if a prior publication will invalidate my patent?

The Full Federal Court of 5 judges held in Bristol-Myers Squibb Company (BMS) v Apotex Pty Ltd [2015] FCAFC 2 that a patent will be invalid for lack of novelty based on a disclosure in a previously published document (so called "prior art") if the prior art contains directions which, if followed, would inevitably result in the patented invention. But if more than one outcome is possible from the directions in the prior art, the patent is not invalid. This case builds on previ

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Steve Davey

Dec 4, 2013
2 min

Are methods of medical treatment patentable?

The High Court affirmed that methods of medical treatment can be patented in Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50. Sanofi-Aventis Deutschland GmbH was the registered owner of a patent which claimed a method of preventing or treating psoriasis by using a compound called leflunomide. Apotex Pty Ltd made a generic version of leflunomide to treat rheumatoid arthritis and psoriatic arthritis. However, most people with psoriatic arthritis will develop ps

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