Madderns

On 27 February 2020, amendments to the Australian Patents Act 1990 introduced, among other things, a new objects clause, providing a framework within which the provisions of the Patents Act are to be considered.

Section 2A states that:

“The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.”

For the first time since its introduction, the objects clause has been referenced in a decision of Australia’s High Court, no less.

In Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41, the question of whether the sale of a patented product exhausts the patentee’s exclusive rights in that product was considered.

The product in question was a printer ink cartridge, the subject of patent protection, and the question being considered was whether the resale of a refurbished and refilled cartridge by a third party was an infringement of the patent.

The High Court held (in a 4-3 majority) that the patentee’s rights in the specific cartridge are exhausted upon the first sale of that cartridge and that there was, in this case, no infringement¹.

In reaching this decision, reference was made to this new objects clause.

The Decision at [92] states that:

[92]” It may be taken from the object stated in s 2A that one component of that object is to ensure the efficiency of the market economy. This topic has been dealt with earlier in these reasons[132]. Another is to encourage innovation. This latter objective is achieved by ensuring that a patentee is rewarded for the often considerable efforts and expense which have contributed to a useful invention. That reward is obtained on the sale of a product on terms for which the patentee has negotiated. There is nothing in the Patents Act 1990 to suggest that a patentee is to be rewarded more than once.”

 The Explanatory Memorandum² in reference to the proposed introduction of the objects clause stated in paragraph 10 that:

 “10.  The introduction of an objects clause will clarify the underlying purpose of the patent system and over time will reduce uncertainty in the operation of the Patents Act. It will also provide broad guiding principles that will help ensure that the patent system remains adaptable and fit-for-purpose as new innovations are developed in the future.”

However, when the objects clause was being considered for introduction into the Patents Act, a number of parties, including the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) expressed concerns that the introduction of an objects clause as proposed would have the potential to be used to restrict the scope of patents and patentable subject matter. In particular, it stated that:

“… despite comments suggesting the contrary in the Explanatory Memorandum, it is clearly intended to significantly change the manner in which judicial patent decisions are made in relation to many aspects of patent validity, including the assessment of patent eligible subject matter and inventive step. In particular, the introduction of the word ‘technological’ to qualify the term “innovation” has the potential to cause significant misunderstandings and significant harm.” ³

While many of these concerns were raised in the context of patentability issues, the principle extends to the general application of the objects clause and in particular, to its judicial application in patent decisions.

Now that specific reference to Section 2A has been made by the High Court, It will be interesting to see how this is used by other courts in the future to shape their decisions, and whether the concerns raised against the introduction of the objects clause of acting to dilute patent rights will come to be realised.

1. For more on this aspect of the case, refer to this article written by Madderns’ Dr Kin Seong Leong.

2. Explanatory Memorandum, Intellectual Property Laws Amendment (productivity commission response part 2 and other measures) Bill 2019.

3. Institute of Patent and Trade Mark Attorneys of Australia (IPTA), Submission to the Senate Economics Legislation Committee, Inquiry into the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019, [Submission no. 50], 15 August 2019, p. 8.

Many people are aware that for an invention to be patentable, the invention must not have been publicly disclosed prior to filing a patent application for the invention (i.e. must be “novel”). Public disclosure of the invention as claimed in a patent application may prevent grant of the patent application, or may later invalidate an Australian patent granted for the invention.

Less well-known, is the fact that “use” of the invention, even if under confidential terms (or “in secret”), can, in some cases, equally invalidate a patent granted for the invention, if that use was made before the earliest priority date of the patent¹.

The philosophy behind the secret use provisions is to prevent a patentee from obtaining a “de-facto extension” of term of the patent, beyond the normal 20 year term² (or 8 years for an Innovation Patent). The classic example of this is in the case where a company makes and sells a product that is manufactured using a secret manufacturing process and then some years later, seeks to obtain patent protection for the process to obtain a 20-year monopoly, thus having effectively had over 20 years of protection. Under the normal “novelty” requirements, because the process was never made public (i.e. had been kept secret), the invention is novel at the time of filing a patent application and would, but for the secret use provisions, mean that a valid patent may be able to be obtained.

Section 9 of the Australian Patents Act 1990 sets out the provision of Secret Use, and in particular, sets out what is not to be taken as secret use, as paraphrased below:

(a)  use of the invention for the purpose of reasonable trial or experiment only;

(b)  any use of the invention occurring solely in the course of a confidential disclosure of the invention

(c)  any other use of the invention for any purpose other than the purpose of trade or commerce;

(d)  any use of the invention by or on behalf of the Commonwealth, a State, or a Territory where the patentee or nominated person, has disclosed the invention, to the Commonwealth, State or Territory.

Thus, it can be seen that a number of factors will exclude use as “secret use” for the purposes of considering the validity of a patent. One of these factors is whether the “use“ was for “reasonable trial and experiment” (subsection 9(a)), rather than for the main purpose of gaining commercial benefit..

In a recent Federal Court Decision, SNF (Australia) Pty Limited v BASF Australia Ltd², this concept of what is “reasonable trial and experiment” was considered. In this case, SNF (Australia) Pty Limited (SNF) attacked the validity of Australian Patent App Nos. 2004203785 and 2013204568   entitled “Treatment of Aqueous Suspensions”, and directed to a process of treating a material, claiming that they were invalid because Ciba Specialty Chemicals Water Treatments Limited (Ciba), the previous owner of the patent applications, had secretly used the claimed inventions on a number of field sites prior to filing any patent application.

SNF contended that Ciba had (among other things), used the claimed invention at 3 mines between Dec 2002 and the priority date (2003); sold 29 tonnes of flocculent for a value of $93,915 for use in the claimed invention before the priority date; and sold or licensed equipment for use in the claimed invention before the priority date and derived at least $50,000 from that use.

SNF argued that these examples of use clearly provided Ciba with a commercial advantage and was thus not solely for “reasonable trial and experiment”.

BASF Australia Ltd (BASF) countered that the use was for reasonable trial and experiment because (among other things); the trial team at Ciba were involved in the use at all times and the results of the trials were discussed at monthly meetings; the work was undertaken to support patent applications and further data collection; secrecy agreement was in place, which is only really used when trialling an invention; both CRL (the owner of the sites and for whom the invention was being trialled) and Ciba made R&D tax claims for the work; the nature of the invention required testing in the field – not just in the laboratory; and that at no point during the trial work did CRL accept the technology to be proven, even well into 2003 (and well after the earliest priority date of the patent applications of 7 May 2003).

In deciding whether the use was for “reasonable trial and experiment”, despite the fact that some monies were charged during the trials, Justice Beech noted the following considerations:

First, the relevant enquiry is whether the true purpose of the use was reasonable trial or experiment. If the true purpose of the use is found to be for trial or experimentation, the fact that there may be some commercial benefit to the patentee will not constitute invalidating prior use.

Second, the assessment of whether a series of activities can be characterised as trials or experiments must be made in light of the nature of the invention to be claimed and the tasks and conditions for which it was designed.

Third, to constitute reasonable trial or experiment there must be some intention to use the invention to be claimed with a view to its development or validation including proof of concept.

Fourth, it may be significant that no remuneration was received for any of the trials. To receive remuneration may point away from reasonable trial or experiment; and

Fifth, it may be significant that although there have been negotiations for the supply and manufacture of the invention, the negotiations were not concluded until after the priority date. If they have been concluded beforehand, that may support an invalidating secret use.

Taking all considerations and facts into account the use by Ciba was held to be for reasonable trial and experiment and thus not to be secret use for the purposes of invalidating a patent.

Thus, when considering whether use is made of the invention in secret, and even in cases where monies were charged or other commercial events took place, that use may be excluded from secret commercial use if it falls under one of the exemptions of Section 9, including “reasonable trial and experiment”, and thus the specific details of the use must be sought and considered.

It is also worth noting that under the current patent law, which was not applicable in this case, any use which would otherwise be considered to be “secret use”, and thus potentially invalidating, is to be disregarded if a Complete patent application is filed within 12 months of the first of that use³.

1. Paragraph 18(1)(d) of the Patents Act 1990 states that an invention is patentable if (among other things), the invention “(d)  was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.”
2. SNF (Australia) Pty Limited v BASF Australia Ltd [2019] FCA 425 (20 march 2019)
3. Section 9(e) Australian Patents Act 1990

Australia’s patent law requires that, in additional to describing the invention “fully”, a patent specification must also disclose the “best method of performing the invention”.

Sub-section 40(2) of the Australian Patents Act 1990 requires that:

A complete specification must:

(a)  disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and

(aa)  disclose the best method known to the applicant of performing the invention

This requirement stems from the need to fully describe the invention claimed so as to not keep any details of the invention secret which would otherwise need to be shared with the public to allow the person skilled in the art to recreate the invention to the best level known to the applicant. This is part of the bargain of teaching society the invention in exchange for a limited term of monopoly afforded by a patent.

Failure to disclose the best method known to the applicant can result in the invalidation of any patent subsequently granted on the application.

In a recent Decision¹ by the Australian Patent Office, one of the issues considered was that of best method. In Merial, Inc. v Bayer New Zealand Limited, the Hearing Officer considered the issue of best method in the form of three questions:

1. what is the invention for which a best method must be provided;
2. what method is described in the specification; and
3. was the applicant aware of a better method?

While it is established law that the best method known to the applicant that must be disclosed in the specification is that known by the applicant at the time of filing the application,² there is still some question as to when this requirement needs to be fulfilled, i.e. is it possible to subsequently amend the specification as filed to add the best method should the specification as filed be deemed to be lacking disclosure of the best method?

In the Full Federal Court decision of Pfizer Overseas Pharmaceuticals v Eli Lilly,³ it was held that the specification can be amended to include the best method at least until the time of grant, but left open the possibility of including the best method even after grant of the patent.

This decision therefore made it quite possible to correct an otherwise-deficient specification in regards to best method and did not necessarily result in the automatic invalidation of a patent (although great care should be taken not to fall foul of the provisions⁴ of the Patents Act which give a court discretion in allowing (or refusing) amendments, which in one case resulted in a patentee being refused the opportunity to amend their patent to overcome a finding of lack of best method, resulting in the ultimate revocation of the patent).⁵

Pre-Raising the Bar Amendment Provisions

These latter decisions were made in respect of patents filed prior to the “Raising the Bar” provisions,⁶ which governed all patent applications for which a Request for Examination was filed on or after 15 April 2013. These provisions served, in part, to increase the validity thresholds for the granting of a patent in Australia.

Prior to Raising the Bar, the provisions dictating what amendments were not allowable, were set out in Section 102.  In particular, subsection 102(1) provided:

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

Thus, under the “old law”, it was possible to amend a specification which added new matter, provided that it did not result in the claiming of that new matter.

Accordingly, the scope to add new matter to add a best method description after the application was filed, and therefore correct an otherwise deficient specification, was quite generous.

Post-Raising the Bar Amendment Provisions

Under the current Act as amended under the Raising the Bar provisions, the equivalent subsection 102(1) provides:

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:

(a)  the complete specification as filed;

(b)  other prescribed documents (if any).⁷

It will be noted that the new provision now prohibits the making of an amendment which would result in disclosing matter that extends beyond that disclosed in the specification as filed.

In the context of amending a specification after filing to correct a deficient specification by adding information relating to a best method, this tightened provision appears to close off (or at least severely restrict) any opportunity to correct a best method defect. This effectively requires that the specification include the best method at the time of filing the application.

In the Patent Office Decision referred to above (Merial, Inc. v Bayer),⁸ the Hearing Officer found the opposed patent application not to have disclosed the best method of performing the invention. While the opposed patent was governed by the Raising the Bar provisions, the Hearing Officer nevertheless allowed the Applicant a period of 2 months to propose amendments to overcome the deficiency (of the finding of lack of best method). The Officer however stated that “It is not clear to me how the deficiencies in the opposed application may be overcome since it appears that any proposed amendments would result in adding new matter that was not present in the originally filed specification, and therefore would not be allowable under section 102 of the Act.”

It remains to be seen how the Applicant responds.

The new requirement that the specification as proposed to be amended does not claim or disclose matter that extends beyond that disclosed in the complete specification as filed in combination with the prescribed documents has yet to be considered fully by the courts. However, in another, even more recent Patent Office Decision⁹ in Steven Borovec v K-Fee System GmbH, the Hearing Officer in considering this question, cited guidance provided by the Australian Patent Examiner’s Manual of Practice and Procedure¹⁰:

“The effect of sec 102(1) is that an amendment must not add new matter that the hypothetical person skilled in the art could not directly derive by reading the information in the complete specification as filed and other documents prescribed by regulation 10.2A  i.e. the explicit and/or implicit disclosure of the complete specification as filed, taken together with the other documents prescribed in reg 10.2A.  However, where the person skilled in the art could directly derive the matter sought to be added to the specification from this combination of documents, an amendment will be allowable under sec 102(1).”

Thus, the correct approach to considering whether an amendment adds new matter is to ask whether the skilled person would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn from the combined disclosure of the complete specification as filed and other prescribed documents.  This comparison is a strict one in the sense that subject matter will be added unless it is clearly and unambiguously disclosed, either explicitly or implicitly, in the relevant documents”.

Accordingly, while the new provisions appear to be extremely limiting in allowing amendments to overcome a finding of lack of best method in a specification for an application governed under the Raising the Bar law, there may well be some small “wiggle room” in some cases by being able to combine information from the specification as filed with information in the “prescribed documents”, as well as the possibility of relying on information that is “implicitly” disclosed in the combination of these documents.

With the ground of lack of best method being used more frequently in recent years to attack the validity of an Australian patent, and with more patents being granted under the Raising the Bar provisions, it is only a matter of time until a case comes before the courts to provide more guidance on the issue.

1. Merial, Inc. v Bayer New Zealand Limited [2018] APO 14 (22 February 2018) [Merial]
2. Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992), 25 IPR 119
3. Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224
4. Section 105 Australian Patents Act 1990
5. Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 (8 March 2016)
6. IP Laws Amendment (Raising the Bar) Act 2012
7. Regulation 10.2A of the Patents Regulations 1991 defines “prescribed documents” for the purpose of paragraph 102(1)(b) as an abstract filed with the complete specification; any part missing from the compete specification at filing that was later incorporated into the specification under reg.3.5A or PCT Rule 20.5 or Rule 20.6; and an amendment that has been made to the complete specification after filing, for the purpose of: I. Correcting a clerical error or obvious mistake; or ii. complying with sec 6(c) (micro-organism deposit requirements).
8. Merial, supra note 1 at 239
9. Steven Borovec v K-Fee System GmbH [2018] APO 18 (9 March 2018)
10. Australian Patent Examiner’s Manual of Practice and Procedure Section 2.23.8.1A

Last year saw a great many exciting developments in space exploration.

Starting with our own solar system, we discovered that Venus (our nearest planetary neighbour, depending on the relative orbits of Venus and Earth around the Sun at a given time) shows some evidence that it may have once had oceans that may have supported life.

Our next planetary neighbour, Mars, has been the subject of significant exploration for many years, including by many robotic probes that have landed on its surface. Each exploration yields new insights, with last year’s discoveries including an ice sheet over 170 metres thick.

New evidence for oceans on other planets, dwarf planets and moons also came to light last year, including suggestions of an ocean on Pluto.

September 2016 also saw the launch of NASA’s first asteroid sampling mission, called the OSIRIS-Rex spacecraft. The craft will study the asteroid Bennu, and return a sample to Earth in 2023.

Moving even further beyond our solar system to the hunt for exoplanets (planets orbiting other stars), in May 2016, an announcement was made by astronomers who are using NASA’s Kepler space telescope, that a further 1284 planets had been found, bringing the number of confirmed new exoplanets to over 2000, and the number of identified potential planets to over 4000.

These discoveries are the result of great human ingenuity, including designing, building and deploying of space craft, as well as the use of innovative detection and data analysis techniques. While many discoveries are made using a variety of earth-based and space-based sensors and devices, space telescopes play a very important role in our current knowledge of our own solar system, our galaxy and the Universe.

Telescopes such as the legendary Hubble Space Telescope (capturing images in visible light), the Spitzer Space Telescope (with infrared vision), the Kepler telescope and the yet-to-be-launched James Webb Space Telescope with its 18-segment primary mirror that will unfold once launched, each drive our knowledge of the Universe further.

This article looks at some patents behind a few of the technologies related to space telescopes, including optics, craft design, sensors and signal processing. The patents discussed below are not necessarily covering technologies currently being used in deployed telescopes, and the patents are not analysed in detail from a technical or legal position, but have been selected simply to provide an indication of the range of technologies developed for such application.

One particularly interesting area of application is in relation to segmented mirrors. A segmented mirror provides a primary mirror made of multiple sub-mirror elements. Such a mirror is part of the design of the James Webb Space Telescope. In this design, 18 hexagonal sub-mirror elements together form a 6.5 metre-wide primary mirror. The design allows the mirror to be folded for launch and then to unfold once in space. The 18 sub-mirror elements may be individually aligned to produce the best optical performance for the mirror.

A number of the patents and patent applications referred to below are directed to aspects of segmented-mirror design.

1. Autonomously Assembled Space Telescope US20050088734 (The Boeing Company)

This patent application was filed on 28 October 2003 and is directed to a space telescope having a primary mirror comprising a plurality of modular, segmented mirrors. The segments of the primary mirror are supported by a backing structure which itself comprises a plurality of interlocking mirror backing structure elements.

The invention provides a system for forming a large mirror in space, by assembling multiple segments, once launched. These segments can be launched in separate launch vehicles, thus enabling a completed mirror to be larger than one that could be launched in a single launch.

2. Achromatic shearing phase sensor for generating images indicative of measure(s) of alignment between segments of a segmented telescope’s mirrors US7106457 (NASA)

This granted patent in the name of NASA, provides a sensor for assisting in the alignment of the segments of a multi-segmented mirror. As will be appreciated, for a multi-segment mirror to perform optimally, the different segments must be aligned such that they operate as a single contiguous surface. When properly aligned, each segment produces an image at the same place in all three spatial dimensions. The alignment of the segments in the x and y dimensions perpendicular to the direction of propagation is achieved by direct measurement of the irradiance from a particular segment. The third dimension, the z-axis, involves measurement of the phase of a wavefront.

The invention of this patent provides an achromatic shearing phase sensor for use in alignment of a segmented telescope’s mirrors.

3. Apparatus and method for a light direction sensor US7924415 (NASA)

This granted patent filed on 19 February 2009, is directed to a light direction sensor for determining the direction of a light source. Knowledge of the precise direction of a light source such as the Sun or Moon, can be used for various applications including spacecraft navigation.

The sensor comprises a Cartesian mask, an array image sensor and an image processing algorithm.

4. Hybrid architecture wavefront sensing and control system and method US8044332 (NASA)

This granted patent is directed to an optical system for providing both fine guidance sensing and wavefront sensing in a single instrument. In some applications, the system can generate instructions to adjust the position of at least one mirror comprising the optical assembly of the telescope in accordance with the sensing operations.

5. Device for protecting optical and/or electronic apparatuses, space telescope comprising said device, and device for removably occluding an aperture US8064154 (Thales Alenia Space Italia SpA)

This granted patent is directed to a protective device to protect sensitive optical and/or electronic apparatus mounted to a spacecraft such as a space telescope.

The protective device is mounted over an aperture through which the optical and/or electronic apparatus is accessed. The device comprises a plurality of pairs of elements, each of which can be actuated between a first position and a second position, to provide a closed cover or screen for the aperture when the elements are in the first position, and an open aperture when the elements are in the second position.

This provides protection for the sensitive instrumentation which can be easily damaged if struck by small objects or particles in space.

6. NanoStructured additives to high-performance polymers for use in radiation shielding, protection against atomic oxygen and in structural applications US20130161564 (International Scientific Technologies, Inc.)

This patent application, filed on 22 December 2011, is directed to nanostructured additives for improving the shielding capabilities of a high-performance polymer to which the additive is added, without significantly affecting the thermal and mechanical properties of the polymer.

The environment in space can be extremely harsh to craft and objects, with cosmic radiation being a significant danger. Sensitive electronics and instruments can be damaged when exposed to certain types of radiation, and there is a need to protect against the adverse effects of radiation. The invention is concerned with general Galactic Cosmic Radiation, Solar Energetic Particles, as well as secondary particulate and electromagnetic radiation resulting from nuclear reactions from power sources within the shield.

7. Occulter for exoplanet exploration US8480241 (Lockheed Martin Corporation)

This patent is directed to a space based occulter to block out starlight emitted from a star, to facilitate the detection of planets orbiting that star. The occulter comprises a base portion and a blanket section extending radially from the base portion. A plurality of starlight blocking petals is attached to the base portion and the blanket section, with each of the panels being hingedly connected to an adjacent petal.

8. Deployable telescopic shade US7557995 (Itt Manufacturing Enterprises, Inc.)

The image quality of a telescope can be adversely affected by the presence of stray light – ie light not produced by the object being imaged. This granted patent is directed to an imaging apparatus comprising a telescope and a shade. The shade comprises a plurality of pivotable panels which act to provide a collapsed state of the shade to block light from reaching the telescope, and a deployed state of the shade to expose the telescope to light.

The selected patents are but a small sample of patents representing this very active area of development.

For more information on the achievements of space exploration and research in 2016 and news on upcoming developments, see NASA’s website here.

NOTE – images from respective patent publications on Google Patents

Most users of the patent systems around the world will be familiar with the “standard” patent which can last for up to 20 years and requires that the invention claimed by the patent be new and involve some level of inventiveness. Fewer users however, are aware that there are other types of patents provided for in some countries. These types of patents, often referred to as “utility model patents” can have lower thresholds as to the level of inventiveness required, and are provided to allow protection for innovations that may not meet the higher requirements of the “standard” patent and thus not be otherwise protectable.

These types of patent systems are often also associated with a more simplified registration process which can provide cost savings in some cases, as well as provide a faster means of obtaining enforceable rights.

Australia is one of the countries that provide this second tier patent, referred to as an Innovation Patent. The Innovation Patent has a very low threshold requirement for inventiveness, and can essentially provide strong protection for inventions that may otherwise not meet the higher inventiveness requirements of the Standard Patent.

China is also a country that provides a second-tier patent system, referred to as a Utility Model Patent. The Australian Innovation Patent system and the Chinese Utility Model Patent system can be utilized to benefit patent applicants in protecting inventions that may otherwise not meet the inventive requirements of the Australian Standard Patent or the Chinese equivalent – the Invention Patent or who wish to obtain enforceable rights more quickly than the corresponding Standard or Invention patents.

Although the Australian and Chinese systems can be used together, there are some important differences between the two systems of which users should be aware.

Inventiveness Requirement:

The Australian Innovation Patent generally has a markedly lower level of inventiveness requirement over the Standard Patent. The invention can be protected, provided that the claimed invention is new and that the difference between what is claimed and what is known before (the “prior art”), provides “a substantial contribution to the working of the invention”.¹ In fact, in some cases, the difference between the claimed invention of the Innovation Patent and the known prior art can even be obvious, provided that the difference provides the required contribution to the working of the invention.

The wording in the Chinese Patent law defining the levels of inventiveness required for the Utility Model Patent and the Invention Patent differs slightly, and the ability to combine multiple prior art documents to challenge inventive step is more restricted for Utility Model Patents than for Invention Patents. In practice however, the inventiveness requirements of the Chinese Utility Model Patent are closer to those of the Invention Patent than the inventiveness requirements for an Australian Innovation Patent are to those of the Standard Patent.

In particular, according to the guidelines for examination, at most two pieces of prior art documents can be used to challenge inventive step of a Utility Model Patent, while there is no restriction with respect to how many prior art documents can be used to challenge an Invention Patent. In practice, there is negligible difference in the inventiveness requirements of the two Chinese patent types. The inventiveness requirements of a utility model are that the utility model has substantive features and represents progress. The inventiveness requirements of an Invention Patent are that the invention has prominent substantive features and represents notable progress.² When challenging inventiveness of a Utility Model, only prior art documents in the same field as that of the Utility Model Patent at issue can be considered. However, as for an Invention Patent, prior art documents in the same or similar field to that of the Invention Patent can be considered.

Examination:

When an Australian Innovation Patent application is filed, it only undergoes a formalities examination and then proceeds to grant usually within 4 to 8 weeks. The granted Innovation Patent may then simply be kept in its granted state for the remainder of its 8 year term. However, if the Innovation Patent is to be enforced, then substantive examination (Certification) must be requested. The Innovation Patent is then examined for the normal patentability requirements (with the lower inventive step requirement), before being Certified.

The Chinese Utility Model Patent undergoes a preliminary examination before proceeding to grant (usually completed within 6 to 18 months). This preliminary examination is more extensive than the formalities examination of the Australian Innovation Patent, but less extensive than the substantive examination carried out on the Chinese Invention Patent. In contrast to the Australian Innovation Patent, the Chinese Utility Model Patent does not legally require any further substantive examination to be enforced before a Court. However, in practice, the patentee of a Chinese Utility Model Patent is almost always required to provide a patentability evaluation report issued from the Chinese State Intellectual Property Office (SIPO) to the Chinese People’s Court during enforcement.  This report is similar to the Certification of Australian Innovation Patent.

Concurrent Innovation/Utility Model and Standard/Invention applications

One of the more powerful aspects of the Australian Innovation Patent system is that it is very flexible, and allows the filing of multiple Innovation Patents directly and/or as divisional patent applications from a pending Standard Patent application. While strict double patenting is not permissible, multiple Innovation Patents can be directed to different aspects of the same invention, provided that the scope of the claims of each patent does not overlap. It is also possible to retain these multiple Innovation Patents when the main Standard Patent is granted.

It is also possible to convert from a Standard Patent application to an Innovation Patent (under certain circumstances) and from an Innovation Patent Application to a Standard Patent application (under much more restricted circumstances).

While it is in some cases possible to have both a Chinese Utility Model and an Invention Patent directed to the same invention in China, there are severe restrictions relating to what can be done and the timing of filings. The rules governing this aspect can be quite complex and it is advisable to seek advice from a local Chinese patent attorney in each circumstance in good time to avoid irrevocable lapsing of rights.

Patentable Subject Matter

Almost any subject matter that can be protected under an Australian Standard Patent can be protected under an Innovation Patent. The only exception to this is plants and animals, which can be protected under Standard Patents but not under Innovation Patents.

The Chinese Utility Model Patent is more restricted, in that it can only protect a physical product. Methods, processes and chemical compounds for example, cannot be protected under a Utility Model Patent and such protection would need to be sought under the Invention Patent.

The table below compares some main features of each system:

The above highlights some of the main differences and similarities between the Australian Innovation Patent and the Chinese Utility Model Patent systems, but it should be noted that there are many other subtle features of each system. Professional advice should be sought in each case to ensure that full advantage can be taken of both systems in each circumstance and to avoid inadvertent loss of rights.

1. Australian Patents Act 1990, ss7(4)
2. Article 22.3 of the Chinese Patent Law