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Patents. Intellectual Property LPAB Winter Session Therese Catanzariti.

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patents

Patents

Intellectual Property

LPABWinterSession

Therese Catanzariti

Therese Catanzariti

slide2

Every person who shall build any new and ingenious device in this City not previously made in our Commonwealth shall notice of it to the office of our General Welfare Board when it has been reduced to perfection so that it can be used and operated. It is forbidden to every other person in any of our territories and towns to make any further device conforming with and similar to said one without the consent and licence of the author for the term of 10 years…

  • We have among us men of great genius, apt to invent and discover ingenious devices… more such men come to us every day from diverse parts. Now if provision were made for the works and devices discovered by such persons so that others who may see them could both build them and take the inventor’s honour away, more men would then apply their genius, would discover, and would build devices of great utility and benefit to our Commonwealth.
  • Venice Statute 1474

Therese Catanzariti

slide3

A monopoly being a derogation from the common right of freedom of trade could not be granted without consideration moving to the public .. In the case of new inventions the consideration was found either in the interest of the public to encourage inventive ingenuity or more probably in the disclosure made to the public of a new and useful article or process

Attorney General (Cth) v Adelaide Steamship Co[1913] AC 781 at 394 per Lord Parker

Therese Catanzariti

slide4

The main purpose of a patent system is to stimulate industrial invention and innovation by granting limited monopoly rights to inventors and by increasing public availability of information on new technology

  • Second Reading Speech,
  • Patent Amendment Bill 1981

Therese Catanzariti

s cope
scope
  • Pharmaceutical products and processes
  • Engineering products and processes
  • Medical and therapeutic devices
  • Micro-organisms
  • Computer technology
  • Chemical compounds
  • Consumer electronics

Therese Catanzariti

csiro wi fi patent
CSIRO wi-fi patent
  • 1992, 1996 - CSIRO Radio-Physics team develop technique to to cut through atmospheric distortion and “unsmear” the signal to measure the pulses emanating from exploding black holes
  • 1994 - IEEE 802.11 telecommunications standard
  • allows an electronic device to exchange data wirelessly (using radio waves) over a computer network, including high-speed Internet connection
  • 1998 - CSIRO assert rights in 802.11 standard
  • April 2009 - CSIRO royalties $250 million (Dell, HP, Microsoft, Intel, Nintendo and Toshiba)
  • total royalties $440 million

Therese Catanzariti

method of exercising a cat with a laser pointer http www google com patents us5443036
method of exercising a cat with a laser pointerhttp://www.google.com/patents/US5443036

Therese Catanzariti

apparatus for facilitating the construction of a snow man http www google com patents us8011991
Apparatus for facilitating the construction of a snow manhttp://www.google.com/patents/US8011991

Therese Catanzariti

background
background
  • Venice 1474 – privileges for inventors of new arts and machines
  • Elizabeth I –royal prerogative to grant privileges
  • Darcy v Allin– monopoly for foreign playing cards

Court declared monopoly void because monopolies raise prices, debase quality, cause unemployment

but could grant monopoly for inventions

  • James I - Statute of Monopolies 1624

declare monopolies void except for inventions

“sole working or making of any manner of new manufacture …[granted] to the true and first inventor

Therese Catanzariti

t ypes of patents
types of patents
  • Standard patents
  • Innovation patents (introduced 2001)
  • Patents of addition
    • protect improvements and modifications of granted patent
  • Standard patents may be
  • Standard
  • Selection patents
    • Select member/s from previously known class and find new uses and qualities
  • Combination patents
    • elements or integers in claim interact with each other to produce new result or product

Therese Catanzariti

innovation patents
Innovation patents
  • Replace petty patents
  • Only require “innovative step” (not inventive step)
  • Up to 5 claims
  • Max term 8 years
  • Presumed valid – formality check only
  • no extensive examination

tho can’t enforce unless certifed after examination

  • not plants or animals or biological processes for their generation
  • Dura-Post v Delnorth Pty Ltd

Therese Catanzariti

a pplication s40
application – s40
  • Provisional
    • Describe invention
    • Secure priority date
    • 12 months to file full application
  • Complete – s40(2) – (4) and Sched 3, Regulations
    • Fully describe invention

including best method for performing it known to A

    • claims defining invention and delineating monopoly
    • claims must be clear, succinct and fairly based on matter described

Therese Catanzariti

priority date
Priority date
  • patent subsist from priority date
  • prior art base examined from priority date
  • date file complete specification
  • date file provisional specification if – s43, r3.12-3.13
    • file complete specification within 12 months
    • complete specification fairly based on provisional specification
  • for amendments, date file amendments – s114, r3.14
  • date file application in Paris Convention country

provided file in Australia within 12 months – s94-96, r3.12

  • date file Patent Co-operation Treaty application – s88-93

Therese Catanzariti

c omplete fairly based on provisional
complete fairly based on provisional

Mond Nickel Company

  • has claimed invention been broadly described in provisional specification
  • Does provisional specification contain anything which is inconsistent with claimed invention
  • Does claim include a feature which the provisional specification is silent

CCOM v Jiejing

  • not over-meticulous verbal analysis

Rehm v Webster Security System International

  • Specification contained a real and reasonably clear disclosure of invention
  • Alleged invention as claimed is broadly, in a general sense, described in specification

Therese Catanzariti

process flowchart s4
Process – flowchart s4
  • Preliminary processing and publish details – s53
  • After 18 months from priority date, publish specification for open public inspection (OPI) s54 – 55, r4,2, 4.3
  • Request examination (lapse if no request within 5 years) – s44
    • Applicant must disclose foreign documentary searches
    • Person eligible under s15
    • Application satisfy formal requirements s29
    • Specification complies s40
    • Invention is manner of new manufacture, novel and inventive (balance of probabilities)
    • Invention not excluded from patentability – s18, 50
    • Application not “double patenting”
  • Acceptance – s49

or adverse report – can amend application – s104, 107

  • 3 months for opposition – s59, r5.3
    • Applicant not entitled
    • Invention not patentable – s18
    • Specification not comply s40
  • Sealed grant – s61 -62
  • Re-examination (on request) – s97 - 98
    • Novelty and inventive step

Therese Catanzariti

t erm
term
  • 20 years from date of complete specification – s65 and r6.3(date), s67 (term)
  • extend max +5 yrs for pharmaceutical substance – s70
    • included in Register Therapeutic Goods
    • at least 5 years between patent date and first regulatory approval date for substance

because health and safety laws reduce effective term because need provide extensive trial and test data

  • 3rd party can use pharma patent for non-therapeutic or making application to get marketing approval – s119A

Therese Catanzariti

revocation s138
Revocation – s138
  • Patentee not entitled
  • Not patentable invention
  • Patent obtained by fraud or misrepresentation
  • Specification not comply s40
  • Infringer can counter-claim revocation – s121

Therese Catanzariti

v alidity patentable invention s18
validity – patentable invention – s18
  • “manner of manufacture” within Statute of Monopolies
  • Novel
  • Involves an inventive step
  • Useful
  • Not been the subject of secret use
  • not human beings and biological processes for their generation

distinct requirements of a patentable invention – CCOM v Jiejing

Therese Catanzariti

m anner of new manufacture s18 1 a
manner of new manufacture – s18(1)(a)
  • refer to 1624 Statute so import caselaw

– NV Phillips v Mirabella

  • Products or processes that have an industrial application
  • If follow specification, produce product or produce results
  • A27 TRIPS – capable of industrial application

Therese Catanzariti

re gec application uk
Re GEC Application (UK)
  • "a method or process is a manner of manufacture if it
  • (a) results in the production of some vendible product or
  • (b) improves or restores to its former condition a vendible product or
  • (c) has the effect of preserving from deterioration some vendible product to which it is applied

Therese Catanzariti

nrdc v commissioner of patents
NRDC v Commissioner of Patents
  • new method of killing weeds (thistle, nettle) in broadleaf crops (celery, parsnip, clover, lucerne) using known product
  • Word “manufacture” used not to reduce patentability but as part of general title for whole category of patentability
  • May be discovery without invention – discovery of some piece of abstract information without any suggestion of a practical application of it to a useful end
  • method’s end result is artificially created effect
  • the result possesses its own economic utility consisting in an important improvement in the conditions in which the crop is to grow, whereby it is afforded a better opportunity to flourish and yield a good harvest.

Therese Catanzariti

nrdc v commissioner patents
NRDC v Commissioner Patents
  • The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art - that its value to the country is in the field of economic endeavour.

Therese Catanzariti

nrdc v commissioner of patents1
NRDC v Commissioner of Patents
  • “what is meant by a "product" in relation to a process is only something in which the new and useful effect may be observed. Sufficient authority has been cited to show that the "something" need not be a "thing" in the sense of an article; it may be any physical phenomenon in which the effect, be it creation or merely alteration, may be observed: a building (for example), a tract or stratum of land, an explosion, an electrical oscillation.

Therese Catanzariti

p roduct result effect application
product, result, effect, application
  • discovery is only patentable when embodied in practical, technical or industrial application
  • Diamond v Diehr
  • Process for molding raw, uncured rubber into cured precision products
  • Arrhenius equation (rubber burning point) - not patentable
  • Use Arrhenius equation in a computer program to open the press and remove the rubber - patentable

Therese Catanzariti

computer programs
Computer programs
  • Computer program is algorithm

but if applied for a particular result

  • IBM v Commissioner of Patents

improved method for producing curved images in computer graphics

Controlling computers to operate in a particular way

  • CCOM v Jiejing

Assemble text in Chinese characters on computer screen

mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour

Therese Catanzariti

b usiness methods
business methods

Welcome Real Time SA v Catuity Inc

  • method involving credit smart cards that included computer chip that recorded loyalty points from multiple distinct retailers onto a computer file on chip
  • No physically observable end result in the sense of a tangible product, but tangible result from POS terminal writing information into computer file and print coupon

Grant v Commissioner of Patents 2005

  • Method to protect assets against unsecured creditor’s claims – create trust, gift to trust, trustee loan sum from trust, secure loan by charge
  • “the method of his patent does not produce any artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect”
  • Physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required.
  • Mere scheme, abstract idea, intellectual information

Therese Catanzariti

b usiness methods1
business methods
  • Research Affiliates LLC v Commissioner of Patents
  • method for calculating an Index for using in financial investing
  • akin to a mere scheme, abstract idea or mere information and not resulting in a physical effect
  • the index generated is nothing more than a set of data. The index is simply information: it is a set of numbers. It is no more a manner of manufacture than a bank balance, whether represented as data in a bank’s computer, written on a piece of paper or kept in a person’s memory
  • the method of the claimed invention does not involve a specific effect being generated by the computer.

Therese Catanzariti

h uman treatment
human treatment
  • Some countries expressly exclude – TRIPS A27 exception
  • Initially excluded as essentially non-economic
  • Joos v Commissioner of Patents – strengthen hair and nails
  • commercial application in hairdressing
  • Anaesthetic Supplies v Rescare – method and device for reducing sleep apnoea
  • Bristol Myers Squibb v Faulding – method of administering drug to treat cancer
  • Patient may be denied medical treatment
  • but no distinction in principle between product treating human and method of treating human
  • but encourage research especially new uses of existing drugs – eg aspirin

Therese Catanzariti

g ene sequences
gene sequences
  • Cancer Voices Australia v Myriad Genetics Inc
  • patent for isolated gene sequences relating to BRCA1 (breast cancer gene)
  • the nucleic acid or gene sequence in its isolated form was sufficient to qualify as an artificially created state of affairs
  • the nucleic acid did not exist in isolated form in the cell

Therese Catanzariti

novelty s18 1 b i
novelty - s18(1)(b)(i)
  • Is novel when compared to prior art base at priority date
  • New – not been done before
  • even if the reason that it has not been done before is because it is silly or obvious

Therese Catanzariti

anticipate
anticipate
  • whether prior art base anticipates the invention
  • prior art base reveal essential features of invention
  • Hill v Evans

A person of ordinary knowledge of the subject would at once perceive, understand, and be able to practically to apply the discovery without necessary of making further experiments and gaining further information… Whatever is essential to the invention must be read out of the prior publication

  • Meyers Taylor v Vicarr Industries

Reverse infringement test – if the patent was valid, would the prior art infringe the patent

Therese Catanzariti

advanced systems v ramset
Advanced Systems v Ramset
  • System of using “tilt up walls” device to quickly build concrete walls
  • Ramset – essential feature was extended length of lever arm, designed to prevent premature release of clutch not provision of cable
  • Advanced – essential feature are hoisting cable, shackle, anchor in wall section, ring clutch and a release cable
  • Release cable is essential because specification emphasis that invention is quickly releasable
  • prior art does not disclose release cable so not anticipated

Therese Catanzariti

p rior art base sched 1 definitions
prior art base – Sched 1 (definitions)
  • Information in document that is publicly available
  • Information made publicly available through doing an act
  • Information in complete specification with earlier priority date even if unpublished at date of application
  • Information in single document
  • Information in single act
  • information in documents or acts if relationship between documents and acts that person skilled in the relevant art would treat as a single source of information – s7(1)
  • Can’t mosaic if information is not otherwise cross-referenced or connected
  • “the picking out of individual items from prior publications… and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed… not a permissible process” - 3M v Bieirsdorf

Therese Catanzariti

p ublicly available
publicly available
  • If the public has access to it, free to use information
  • Even if disclosed to one w/o obligation confidentiality

Fomento v Mentmore – ballpoint pen given to govt dept

Merck v Arrow Pharmaceuticals – Lunar News given to some hospitals/universities and not catalogued

  • Even if no-one but an expert can understand it
  • Even if in a foreign language

Dennison Manufacturing v Monarch Marketing Systems –specification about plastic tags to attach price labels

“document resting quietly in French language in Canberra”

Therese Catanzariti

p ublicly available examples
publicly available - examples
  • Distribute samples
  • Manufacture devices and products
  • Display at public event
  • Offers to sell
  • Description in obscure publication
  • Information on internet
  • Images on internet

Therese Catanzariti

did kubrick s 2001 anticipate ipad
did Kubrick’s 2001 anticipate iPad
  • http://www.youtube.com/watch?v=JQ8pQVDyaLo

Therese Catanzariti

e xceptions s24 r2 2
exceptions – s24, r2.2
  • must file within 12 months (some 6 months)
  • Publication without patentee’s consent
  • Disclosure to public authorities
  • Showing or use at recognised exhibition
  • Publication in paper and read or published by learned society
  • Working in public of invention for reasonable trial if necessary for working to be in public
    • Newall & Elliott – laying submarine telegraph cable
  • Patentee’s use or disclosure in the previous 12 months (general grace period)

Therese Catanzariti

novelty methods
Novelty - methods
  • can’t be novel if method uses known substances for purposes consistent with known properties
  • Only if method uses unknown or unsuspected property of the material so that it serves a new purpose
  • NRDC v Commissioner Patents

Therese Catanzariti

i nvolves inventive step s18 1 b ii
involves inventive step – s18(1)(b)(ii)
  • real advance and more than an obvious extension, variation or combination of prior art
  • invention involves inventive step – s7(2)

unless obvious to person skilled in art in light of

    • common general knowledge in Australia
    • certain prior art

(from April 2013 – common general knowledge anywhere, any prior art)

  • certain prior art – s7(3)

prior art information / combination of prior art information

skilled person reasonably expected to have ascertained, understood, regarded as relevant and combined

Therese Catanzariti

slide40

Identify relevant art

  • Construct hypothetical skilled person

Skilled but non-inventive ,not particularly imaginative worker in relevant field – 3M v Beiersdorf

  • Identify scope
    • common general knowledge

common general knowledge of person skilled in art, information known or used by those in relevant trade, background knowledge and experience – 3M v Beiersdorf

may not include all public knowledge, published specs

standard textbooks, technical manuals, trade magazines

    • prior art

notional skilled reasonably expected to ascertain, understand, regard as relevant, and combine if separate

Emperor Sports – not reasonably expect ARL coach, referee, umpire or administrator to conduct USPTO search

  • Would hypothetical skilled person knowing the information have found it obvious to take the step

Therese Catanzariti

w ould skilled person find obvious
would skilled person find obvious?
  • even if simple
  • not merely skill, tenancy, managerial efficiency using familiar theory
  • not if difference plain or very plain
  • not if take routine steps/experiments that try as matter of course
  • Aktiebolaget Hassle v Alphapharm – active ingredient coated to allow tablet to pass through stomach but dissolve in intestine

Therese Catanzariti

evidence
evidence
  • solution to a problem

(but inventiveness may be in articulating the problem)

  • Satisfy long felt need
  • Commercial success of the invention

(but may be good workmanship, price or other qualities)

  • Willingness of rivals to create imitation
  • may be slow and laborious or brilliant coup

Therese Catanzariti

useful s18 1 c
useful – s18(1)(c)
  • Results promised in the specification can be achieved by following the instructions in the specification
  • Does what the patentee intended, achieves intended result
  • not if the apparatus does not work as claimed
  • read in light of specification as a whole according to what an intelligent person skilled in art and desirous of making use of invention would do
  • from April 2013 - a specific, substantial and credible use for the invention is disclosed in the Patent specification – s7A

Therese Catanzariti

n ot secretly used s18 1 d
not secretly used – s18(1)(d)
  • Prevent patentee effectively prolonging monopoly
  • Whether patentee obtained a commercial benefit from activity before priority date – Azuko v Old Digger

exceptions – s9

  • reasonable trial and experiment
  • Use by a public authority
  • Use solely in course of confidential disclosure (eg to patent attorney, potential investor)
  • Other uses for purpose other than trade or commerce

Therese Catanzariti

not human beings s18 2
Not human beings – s18(2)
  • “manner of manufacture” exclude patents that are contrary to law or generally inconvenient
  • A27 TRIPS – members may exclude patentability …to protect human life
  • Re Woo-Suk Hwang
  • No patent for method of producing hybrid embryo created by transferring nucleus of human cell into bovine ovum and activating the ovum
  • Fertilitescentrum AB and Luminis Pty Ltd
  • Method of growing pre-blastocyst human embryos in a specifed medium

Therese Catanzariti

c omplying specification s40
complying specification – s40
  • Describe invention fully, including the best method known to the applicant of performing the invention
  • claims must be clear and succinct and fairly based on the matter described in the specification

Therese Catanzariti

f ull description s40 2
full description – s40(2)
  • sufficiency - describe invention fully
  • describe fully enough to allow informed reader with reasonable skill in trade to perform
  • disclose best method known of carrying out invention

from April 2013 - specification discloses invention in manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art

Therese Catanzariti

claims clear and succinct s40 3
Claims clear and succinct – s40(3)
  • public has right to know what may/may not do
  • define clearly and with precision the monopoly claimed so that others know the exact boundaries of area
  • Skilled addressee applying common sense and common knowledge

ambiguous if claims lack clarity

Therese Catanzariti

f airly based s40 3
fairly based – s40(3)
  • Compare claims with invention disclosed in specification

Lockwood Security Products v Doric Products

patent for a key controlled latch

Whether real and reasonably clear disclosure in body of specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say, in a general sense, described in the body of the specification

  • from April 2013 - claims are fully supported by the description

Therese Catanzariti

slide50
who
  • Eligible person – s15
    • inventor
    • assignee of inventor (person who would be entitled to have patent assigned to them)
    • Successor to inventor or assignee
    • Legal personal representative
  • Joint owners – s16
    • own as tenants in common
    • can work patent without accounting
    • can’t grant licence or assign without other’s consent

Therese Catanzariti

inventor
inventor
  • objectively assess contributions - if person’s contribution had a material effect on the final concept of the invention
  • concept of invention from whole of specification in claims
  • don’t look at inventiveness of the contribution
  • Polwood v Foxworth –method and apparatus for producing potting mix from waste organic materials

Polwood – steam treatment and de-watering proces

Foxwood – extended range of materials, design and build apparatus to put process into effect

  • joint inventors

Therese Catanzariti

employees
employees
  • Employers not automatically entitled
  • Only if entitled to be assignee – s15(2)
  • Employment contract
    • Express term
    • Implied term

UWA v Gray – UWA professor research use of microspheres for treatment of cancerous tumours especially liver

not necessary to imply term

obliged to conduct research but no duty to invent

Therese Catanzariti

e mployee contract
employee contract
  • Nature of invention
  • Duties employee engaged to perform
  • Employee’s position in the company
  • Circumstances invention made
    • Whether made during working hours
    • Whether useful to employer business
    • Whether employee responding to employer instructions

Therese Catanzariti

rights s13
Rights – s13
  • Exclusive right to exploit invention and authorise others to exploit – s13(1)
  • Exploit – Sched 1
  • Product - make, use, sell or otherwise dispose, import or keep for purpose of exploiting
  • Process – use the method, and exploit any resulting product

Therese Catanzariti

p ersonal property
personal property
  • Assignment
    • capable of assignment – s13(2)
    • assign in writing signed by assignor – s14
  • Security interests
    • Register interests Register of Patents – s187, r19.1
    • Personal Property Securities Act
  • Licence
    • register interest Register of Patents – s187,r19.1
    • Co-owners must all consent to licence – s16

Therese Catanzariti

other licences
other licences
  • Implied licence
    • Purchaser’s right to use product
    • right to repair product
  • Compulsory licence – s133, r12.1

Person may apply to Federal Court for licence to work invention

    • Patentee fail to satisfy reasonable requirements of public
      • trade or industry unfairly prejudiced or demand not met because fail manufacture to adequate extent, supply on reasonable terms or grant licences on reasonable terms – s135
      • applicant made reasonable efforts for reasonable time to obtain licence on reasonable terms
      • Patentee no satisfactory reason for failing to exploit
    • Patentee using exclusivity to act anti-competitively contravening Consumer and Competition Act
  • Crown use for services of Commonwealth or State – s163

Exploitation necessary for proper provision of services

Must pay remuneration – s165

Therese Catanzariti

infringement
infringement
  • applicant is registered proprietor or exclusive licensee
  • patent in force
  • defendant perform act in Australia
  • after date of publication
  • act within patent owner’s exclusive rights

Therese Catanzariti

s cope of invention
scope of invention
  • Claims determine legal limits of monopoly
  • construe claims then compare infringing article
  • Decor Corporation v Dart Industries
  • Kinabulu Invstments v Barron and Rawson
  • Purposive construction
  • Read specification as whole
  • Don’t confine claims by limitations in specification

(tho specifications may define or qualify words in claims, may resolve ambiguity and provide background

  • Court construe not expert
  • Terms given ordinary English meaning

(tho evidence from experts on scientific or technical terms)

Therese Catanzariti

p urposive approach
purposive approach
  • purposive construction rather than literal construction
  • essential requirements of invention – essential integers of claim

still infringe if replace inessential with mechanical equivalents

  • Catnic Components v Hill & Smith
  • lintel in spanning space above window and door openings
  • Claim – supporting back plate extending vertically
  • Infringer – back plate 6o from vertical, with no significant change of strength or function
  • whether persons with practical knowledge and experience of kind of work in which invention intended to be used would understand that strict compliance with a particular descriptive word was intended to be essential requirement so any variation was outside monopoly

Therese Catanzariti

make product
make product
  • must complete finished article including all integers
  • Dunlop Pneumatic Typre v David Moseley

bicycle wheel – hub, spoke, rim, tubeless tyre

not infringe to manufacture tyre only

even if intend consumers to combine with other integers

  • include if manufacture product in course of manufacturing non-infringing product
  • Bedford Industries v Pinefair

garden edging product including pine logs arranged side by side and connected by two strands of bands

changed product by severing strip so secured by hinges

Therese Catanzariti

h ire sell or otherwise dispose
hire, sell or otherwise dispose
  • not if merely possess, purchase, own
  • not if merely warehouse or transport
  • infringe even if selling components that consumer must assemble
  • Windsurfing International v Petit

sale sailboard in kit of parts

esp because common way of selling sailboard

Therese Catanzariti

slide62

use

  • Product – unauthorised commercial use
  • Process – any unauthorised use

import

  • Patentee may control import

but only where patentee imposes conditions

otherwise exhaustion of rights

Therese Catanzariti

c ontributory infringement
contributory infringement
  • supply integer knowing that recipient will combine with other integers
  • supply unpatented product with instructions to recipient to use in infringing way

=>supplier not infringing

=>supplier may not be joint tortfeasor

because merely facilitating not participating

because no common design

Therese Catanzariti

c ontributory infringement s117
contributory infringement – s117
  • If use of product would infringe patent

then supply of product is infringement

  • Use of product
    • Use if only one reasonable use
    • Any use if supplier reason to believe that person would put to use (unless staple commercial product)
    • Use of product in accordance with supplier’s instructions
    • Use of product pursuant to any inducement by supplier

Therese Catanzariti

c ontributory infringement s1171
contributory infringement – s117
  • Bristol Myers v Faulding
  • method of administering anti-cancer drug
  • Faulding provide hospitals with product information guides and protocols
  • If the doctor’s use of drug would infringe BM patents, F’s supply to doctor infringes patent
  • NT v Collins
  • method for producing blue essential oils ffrom cypress pine
  • NT grant licence to ACOC to enter NT land and take timber
  • Product is any product - not limited to product from use of patented method

Therese Catanzariti

contributory infringement
Contributory infringement
  • Authorise

more than countenance or enable

  • Misleading and Deceptive – s18 ACL
  • Advanced Building Systems v Ramset Fasteners

supplier may be guilty of misleading and deceptive conduct for failing to warn customers of real possibility that use of products infringe patentee’s patent

Therese Catanzariti

e xemption regulatory experimental use
exemption - regulatory / experimental use
  • act to include therapeutic goods on Register of Therapeutic Goods s 119A
  • act to obtain approval required by Cth / State law to exploit a non-pharma product, method or process - s119B

(eg conduct research and trials necessary to gain regulatory approval)

  • experimental uses of the patented invention – s119C

Therese Catanzariti

exemption
exemption
  • foreign vessels temporarily in patent area – 118
  • prior use – s119

person exploiting, or taken definite steps to exploit product or process before priority date

not if stop exploiting or abandon steps to exploit before priority date except temporarily

Therese Catanzariti

apple v samsung
Apple v Samsung
  • Apple claim Samsung Galaxy infringe claims in two Apple patents
  • touch screen patent
  • heuristic patent
  • Samsung seek revocation
    • Leeper article
    • Mulligan patent application

Therese Catanzariti