1. Varian Australia Pty Ltd – Some Patenting Issues David Carmichael 6 th May 2004

2. Patenting – Broad Overview (I) Provisional Application International Search Report (ISR) and Opinion International Publication Examination National/ Regional Phase Entry EPUSJPAUCA Priority Date 12 Month (3 months) 18 months 30 months International (PCT) Application Filing date

3. Patenting – Broad Overview (II) Request for exam Prosecution (Examination – Amendments/Responses) Opposition Grant /Sealing Filing date ~ 1 to ~ 8 years 20 years Maintenance fees (annual) End of term National/ Regional Phase Entry

4. Patentability Subject matter Novelty Inventive Step (not obvious) Exclusions

5. Patentability – Subject Matter (I) Must be “industrially applicable” Virtually anything (or a method/process) having a “technical” character which relates to a useful or practical art (as distinct from an aesthetic or fine art)

6. Patentability – Subject Matter (II) Computer Software related inventions Generally patentable – country differences US : practical application (must be “useful”) : technological EP :“computer programs as such” excluded, but? AU : test: “mode or manner of achieving an artificially created state of affairs (end result) of utility in field of economic endeavour Could characterise as a method or process Policeability?

7. Patentability – Novelty The invention must be new Must not have been “made available to the public” before its “priority date” DO NOT DISCLOSE/PUBLISH AN INVENTION BEFORE A PATENT APPLICATION IS FILED

8. Patentability – Inventive Step Equals not obvious Can be difficult to assess – subjective Many “legal tests” A person of ordinary skill in the art Different standards in different countries Generally involves solving a problem or providing an advantage. A qualitative difference over the “state of the art”

9. Prior Art / State Of The Art EPC definition (Art 54(2)) : …everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the … patent application. Absolute and Relative Novelty Important : maintain confidentiality until … (publish and perish!)

10. Searching – Why Search? State of the art Novelty Infringement clearance Monitoring competitors

11. Searching – How? Patents databases/Classification Systems By name of Company or inventor(s) (name index searches) By subject matter By class(es) (manual) By keywords (computer)

12. Searching – Limitations! Selection of databases Accuracy of databases Keywords cf other words? Accession vs publication vs filing (priority) dates Time and cost (cf commercial value) Search Result – No guarantee of novelty/inventiveness

13. To Patent Or Not? Commercial/marketing advantage Vehicle for licensing? Costs vs Commercial value (Monitor and Review!) Company Policy – Offensive/Defensive strategy Likely scope of protection ease of avoidance by competitors? Policing? can infringements be detected?

14. To Patent Or Not? - Yes Provisional application in Australia Requirements Legally : must describe the invention; no claims (Patents Act 1990, subsection 40(1)) For effective priority: enablement (sufficiency) 12 Months Convention priority period

15. Infringement Infringing Acts No evidence of copying required Ignorance is no excuse Infringing when using your own patent

16. Infringement – Maybe? Is the “problem” patent in force? What does the problem patent protect? Claims Scope Reading a claim onto your product How strong is the problem patent? Get professional advice

17. Infringement – Avoiding? Conduct patent searches (cf novelty searches) Be original/don’t copy Get a licence Design around Get professional advice

18. Questions? Thank you – Any questions? David Carmichael Phillips Ormonde & Fitzpatrick www.pof.com.au