Robert Miller of Spruson & Ferguson provides a guide to patent protection and enforcement in Australia

1. What are the procedures for filing patent applications in your jurisdiction?

Three different types of patent applications can be filed in Australia: a provisional application, a standard application, and an innovation application. A reasonably uncommon patent of addition is also available, as are divisional applications. Each of these types of application requires, as a minimum, the filing of:

• a patent specification; and
• a patent request form that includes the names and addresses of the applicants, the names and addresses of the inventors, and any convention priority details; and
• payment of the relevant official fees.

Where the priority application is not in English, a verified English translation must be filed by the 12 month Convention or the 31 month PCT deadline. No extension of time or late filing of such translations is possible. An officially certified copy of the priority application is not required to be filed unless specifically requested by the Patent Office during examination.

No power of attorney is required to be filed, and no documents are required to be executed by the applicant or inventors.

2. How long will it take to register a patent and what are the standard costs?

It can take from one to three years to obtain the grant of a patent in Australia. The time depends on whether the applicant wants the application to be expedited or to take the usual course. A representative cost is A$5,000 to A$7,000 ($5,370 to $7,500).

3. What is the scope of patent protection in your jurisdiction?

A patent gives the patent owner the exclusive right, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention. In other words, the patent protects against unauthorised exploitation of the invention, determined by the scope of the granted claims. Exploitation is defined in the Patents Act to include, among others, the following acts:

(a) where the claimed invention is a product – make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purposes of doing any of those things; and

(b) where the invention is a method or process – use the method or process to do any act mentioned in (a) in respect of a product resulting in such use.

As can be seen, Australia provides protection for a product resulting from a patented process or method, even where the process or method has been performed outside of the jurisdiction.

The use of a patented product or method for the purposes of conducting scientific research probably does not constitute an infringing act, although the position is not clear and there is legislation before the Australian Parliament that, if passed, will codify this exclusion.

There are only limited exceptions to infringement, including the exploitation of a product, method or process before the priority date done in a more or less continuous manner, such as prior continuous use.

There also is an exemption to infringement of a patent for a pharmaceutical product, method or process for the purposes of obtaining inclusion of that pharmaceutical on the Australian Register of Therapeutic Goods, where the pharmaceutical is intended for a therapeutic use. This is a very general statement of a pharmaceutical approvals exemption and specific advice should always be sought.

4. Is there substantive examination and if so what is typically the nature and extent of correspondence with the patent examiner?

A provisional patent application is not examined in any form. An innovation patent application can only be examined after grant, at the explicit request of the patent owner or another party. A standard patent application undergoes substantive examination.

The substantive examination is by way of one or more written reports outlining the examiner’s objections on any of the available grounds for examination, which require a written response on behalf of the applicant containing amendments to the specification, such as the claims and possibly also the description, and/or arguments seeking to overcome the objections. There is only limited scope for oral arguments with the examiner.

The grounds for examination include novelty, inventive step, fair basis – support and breadth of claims – clarity, double patenting, usefulness, enablement, and entitlement, namely from the inventors to the applicant.

5. What are the requirements on novelty and inventive step/non-obviousness?

The test for novelty is whether each and every claimed feature is disclosed in any single prior art document or use. The document or use can be published or performed anywhere in the world before the priority date. The prior art document or use must itself be enabling.

The formal test for inventive step is to ask whether the claimed invention would have been obvious in light of the prior art, which, of course, is somewhat circular.

There are a number of specific tests for non-obviousness that have arisen from the case law. In Australia, non-obviousness is not confined to a problem or solution approach. One other test is to ask whether the relevantly skilled person would have been motivated to try an experimental approach to achieve a goal with the reasonable expectation of success. This test is usually applied in the chemical and life sciences field.

Other tests ask whether there is any unexpected result achieved or a disadvantage avoided. The concepts of mere workshop improvements or technical equivalents are also sometimes used in the inventive step analysis. The test applied is usually adapted to the circumstances arising from the closest prior art.

6. What types of inventions or ideas can be patented? Are there any notable or unusual exceptions?

The principal test for patentable subject matter is provided by the case law, and asks whether the claimed subject matter results in an artificially created state of affairs having value in a field of economical activity. The case law has acted to exclude mere schemes or plans, and mere admixtures, working directions, ideas, fine arts and collocations. More controversially, claims that are considered to have no “threshold inventive merit” are excluded, which tends to confuse patentable subject matter with inventive step, in our view.

The Patents Act itself provides limited exclusions. For standard patents, these are human beings and the biological processes for their generation. For innovation patents, plants and animals, and the other biological processes for the generation of plants and animals are also not patentable inventions; this does not, however, include microbiological processes or the products of such processes.

7. How can you appeal a denied application? Are there any limits on making an appeal?

There is no avenue for appeal within the Patent Office from a decision of an examiner to refuse an application. The only possibility is an appeal to the Federal Court.

8. Is it possible to file pre-grant or post-grant oppositions? And if so how do these work?

There is a pre-grant opposition procedure for standard patents, which enables a third party to instigate an inter partes opposition in the limited period following acceptance. In broad terms, the opposition includes the opponent preparing a Statement of Grounds and Particulars (pleadings), and consequential evidence in support. The applicant then has an opportunity to file evidence in answer. The opponent then has the opportunity to file any evidence in reply.

The opposition is set down for a hearing at the Patent Office once the evidentiary steps are completed. A written decision will be issued after a period of time either dismissing the opposition, requiring the applicant to propose amendments in the claims, or refusing the application. The decision of the Commissioner in an opposition is appealable to the Federal Court. It is possible to amend the pleadings during the course of the opposition, and the timetable for filing of the evidence can be reasonably easily extended.

There is a post-grant opposition procedure available against certified innovation patents. The procedure follows similar steps to the opposition regime for standard patents.

There also are post-grant ex parte reexamination procedures for both standard patents and innovation patents.

9. What is the process for modifying patents?

The claims of a granted patent can be amended before the Patent Office, but only if no litigation involving the patent is taking place, and only if the amendments result in a narrowing of the claims, and the resultant claim is fairly based (supported) by the specification as originally filed.

Where a patent is being litigated, amendments in the claims can only be made on the direction of the court.

A granted patent also may be amended on the direction of the Commissioner of Patents as a result of a reexamination procedure.

10. Is there anything else about the filing system in your jurisdiction that patentees should be aware of?

Australian patent law has a grace period provision, where any public disclosure of an invention by or with the consent of the inventor or the inventor’s assignee within 12 months of the Australian filing date of a standard patent application is excluded from the prior art.

11. How can patents be enforced in your jurisdiction? What options do patent owners have?

It is usual – though not strictly necessary – for a patent owner to firstly issue a cease and desist letter to an infringer.

A patent can only be enforced by starting legal proceedings in an appropriate court, usually the Federal Court, against an infringer. It is almost always the case that the alleged infringer will file a counterclaim alleging invalidity of the patent.

12. Are there some types of patents that are harder to enforce than others?

In a general sense the answer is no. All subject matters are treated equally. There is, however, an additional hurdle to overcome for patents for therapeutic goods, including pharmaceutical products.

In simple terms, a patent owner must, before starting proceedings, provide a certificate to the Australian Therapeutic Goods Administration to the effect that any intended infringement litigation will be started in good faith, have reasonable prospects of success, and will be conducted without unreasonable delay.

13. Where does the burden of proof lie for infringement allegations?

The onus of proof lies with the patent owner to establish, on the balance of probabilities, that a claim is infringed. An exception exists in the case of a claim for a process for obtaining a patent. In this special case the defendant must prove that a different process is used if the court is satisfied that it is very likely that the product was made by the patented process and the patent owner has taken reasonable steps to find out the process actually used but has not been able to do so.

14. What are the other typical remedy options for infringement? How are damages/awards calculated?

The remedies are explicitly provided for in the Patents Act, and are an injunction, and either damages or an account of profits. Injunctions are available both on an urgent or interim basis and on a final basis. Special considerations are applied by the court in granting urgent or interim injunctions. Other interim remedies include a search and cessation order, and an order freezing the infringing party’s assets pending conclusion of a full trial. A court also may grant at its discretion an order requiring forfeiture of infringing products.

Damages are compensatory and require evidence of economic loss. Some judges prefer to take a reasonable royalty approach. The Patents Act was recently amended to provide for additional (special) damages. The broad idea is to deter other infringers or to penalise particularly flagrant acts of infringement.

15. How can you appeal an enforcement decision? How long and how costly is the process?

A trial court decision can be appealed to an appellate division of the court, usually the Full Federal Court, constituted by three judges. Appeals are relatively expeditious, since they deal only with questions of law and do not involve the preparation of fresh expert evidence. An appeal typically costs 25% of the initial trial. In some limited instances a second appeal is possible to the High Court, although only on important questions of patent law.

16. Who holds the burden of proof for patent invalidity claims?

The defendant bears the burden of proof to prove invalidity on the balance of probabilities.

17. What kind of expertise does your patent court system hold?

There is a specialist panel of IP judges in the Federal Court, all of whom have considerable experience in hearing patent matters. It is possible also to bring patent infringement and invalidity proceedings in the State Supreme Courts, although the experience of the judges in these courts is far less than in the Federal Court.

18. Who can act in a litigation case in court?

Litigation proceedings can only be instituted by attorneys at law, whether a solicitor or a barrister.

19. What are the alternatives to litigation in courts?

There are established forms of alternative dispute resolution (ADR). Parties may agree in advance to resolve any disputes by ADR before starting any court action, or a court may order the parties to pursue a specific form of ADR.

Mediation involves a mutual third party assisting in the negotiation of a settlement. The mediator will only act as a facilitator to assist the parties to reach a settlement and has no formal power to force the parties to settle.

An arbitrator, on the other hand, involves a mutual third party acting as a private judge in a closed and private court context where each party has the opportunity to present its evidence and testimony. The parties need to agree in advance to be bound by the arbitrator’s decision. The arbitrator’s decision is usually final and legally binding, however there may be a route of appeal to the relevant court of law depending on the rules governing the arbitration.

20. Are there any other issues relevant to your jurisdiction?

There are no significant peculiarities in Australian patent law.