77898 Patent Law

Warning: The information on this page is indicative. The subject outline for a particular semester, location and mode of offering is the authoritative source of all information about the subject for that offering. Required texts, recommended texts and references in particular are likely to change. Students will be provided with a subject outline once they enrol in the subject.

UTS: Law
Credit points: 6 cp

Subject level:

Postgraduate

Result type: Grade and marks

Requisite(s): (77885c Legal Process and Legal Research OR (70115 Perspectives on Law AND 70120 Legal Method and Research) OR 77896c Legal Process and Intellectual Property Overview OR 60 credit points of completed study in spk(s): C04148 Master of Law and Legal Practice OR 77905c Preparing for Intellectual Property Practice)
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
These requisites may not apply to students in certain courses.
There are course requisites for this subject. See access conditions.
Anti-requisite(s): 78190 Patent Law

Handbook description

This subject provides an understanding of the principles of patents and the patent system in Australia. Topics covered include subject matter, s 40 of the Patents Act 1990 (specifications), infringement, inventorship, ownership and breach of confidence.

Subject objectives/outcomes

This subject will assist students to develop graduate attributes by pursuing the following learning objectives. Students will undertake class activities to practise their development of these attributes, and will complete a range of assessment tasks designed to assess their attainment of the identified attributes.

1. describe, evaluate and be able to critically and creatively analyse the nature and scope of patent law and the law relating to confidential information in Australia including international obligations, underlying policies and reforms (GA 1, 2 & 9)
2. develop a coherent and extensive knowledge of both patent law and the law relating to confidential information in Australia and a capacity to continually update that knowledge (GA 4, 5 & 6)
3. identify the requirements for patent protection under statute and common law as well as the requirements for protecting confidential information (GA 2 & 5)
4. develop strategies to problem solve and resolve legal disputes involving patent rights and/or confidential information (GA 1-5)
5. accept individual responsibilities and obligations including engagement in and receipt of constructive criticism and argument.( GA 7-10)

Contribution to course aims and graduate attributes

The UTS, Faculty of Law has identified a number of professional attributes that graduates from the Faculty will possess upon graduation.

INTELLECTUAL
1. Critical Thinking: An appropriate level of independent thinking, creativity and critical analysis.
2. Analysis and Evaluation: An ability to strategically analyse issues of law, evaluate options and viewpoints to reach and implement decisions.
3. Spoken and Written Communication: Advanced oral and written communication skills.
4. Legal Research and Technological Literacy: Appropriate research techniques to acquire, distil and utilise legal information.

PROFESSIONAL
5. Disciplinary Knowledge: A coherent and extensive knowledge of substantive and procedural law.
6. Lifelong Learning: A capacity to continually update the knowledge skills and awareness appropriate to the practice of law.
7. Ethics: A capacity to value and promote honesty, accountability and ethical standards.

PERSONAL
8. Self and Cooperative Work Management: Self and priority management skills including cooperative work.
9. Cultural Awareness and a Global Outlook: An appreciation and valuing of cultural and intellectual diversity and an ability to function in a global environment.
10. Social Justice: An acknowledgement and acceptance of individual responsibilities and obligations and of the assertion of the rights of the individual and the community.

Teaching and learning strategies

Strategy 1 Throughout this subject the aim will be to encourage students to think critically and analytically and develop an understanding of patent law, plant breeders rights and confidentiality within the Australian legal system. The weekly discussion questions will assist in this process.
Strategy 2 This subject adopts a system of self-managed learning that offers you choices about how and when you study. Additionally, there are opportunities for you to interact with fellow students and course teachers.
Strategy 3 You will need to implement an effective time management strategy in order to complete this subject within the time allocated. In particular you will need to manage your time in order to contribute to the web discussions and complete the assessment tasks.

Content

• History of and Rational for Patent Law
• International Aspects
• Overview of Patent Registration Process
• Elements of Patentability: Invention and “manner of new manufacture”
• Elements of Patentability: Particular subject matter
• Elements of Patentability: Novelty
• Elements of Patentability: Inventive Step & Innovative Step
• Elements of Patentability: Utility & Secret Use
• Elements of Patentability: Patent Specification Rules – section 40 requirements
• Exclusive Rights & Dealing with Patents
• Infringement
• Confidential Information

Assessment

Assessment Item 1: Continuous on-line individual assessment

Objective(s):	Objectives 1-5 Graduate Attributes 1-10
Weighting:	MIP STUDENTS 10% LLM STUDENTS 10%

Assessment Item 2: Continuous on-line group assessment

Objective(s):	Objectives 1-5 Graduate Attributes 1-10
Weighting:	MIP STUDENTS 10% LLM STUDENTS 10%

Assessment Item 3: Research Essay

Objective(s):	Objectives 1 & 2 Graduate Attributes 1,2,4,5,6 & 9
Weighting:	MIP STUDENTS 30% LLM STUDENTS 80%

Assessment Item 4: Take-home exam

Objective(s):	Objectives 3 & 4 Graduate Attributes 1-5
Weighting:	MIP STUDENTS (only) 50%

Required texts

• R Reynolds N Stoianoff, A Adrian and A Roy Intellectual Property: Text and Essential Cases, 4th edition, Federation Press 2012(referred to as RS in the reading guide).
• Australian Patent Office Manual of Practice and Procedure, Volume 2 - National, IP Australia Canberra (referred to as the Manual in the reading guide) available online at: http://www. ipaustralia. gov. au/ pdfs/ patents manual/ WebHelp/ Patent _Examiners _Manual.htm

Legislation & Conventions:

• Patents Act 1990 (Cth) (consolidated)
• Patents Regulations 1991 (consolidated)
• Patents (World Trade Organisation Amendments) Act 1994 (Cth) Part 2 s7
• Patents Regulations Amendments 1998
• Patent Regulations Amendments 2007
• Patents Amendment (Innovation Patents) Act 2000 (Cth)
• Patents Amendment Act and Regulations 2001 (Cth)
• Intellectual Property Laws Amendment Act 2006 (Cth)
• US Free Trade Agreement Implementation Act 2004 (Cth) schedule 8
• Plant Breeders Rights Act 1994 (Cth)
• Plant Breeders Rights Regulations 1995 (Cth)
• Please note that all the consolidated Acts and Regulations and amending Acts listed above are available in rich text or PDF format from ComLaw at: http://www. comlaw. gov. au/ com law/ comlaw .nsf /sh/ homepage
• Agreement on Trade Related Aspects of Intellectual Property Rights 1994 at: http:// www. wto .org /english /tratop _e/ trips _e/ t_ agm0 _e.htm
• Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure (see Patent Regulations 1991)
• Patent Cooperation Treaty (see Patent Regulations 1991)
• International Convention for the Protection of Industrial Property (Paris) http:// www. wipo. int/ treaties/ en/ ip/ paris/ trtdocs _wo020 .html

Recommended texts

1. C Bodkin, Patent Law in Australia, Thomson Lawbook Co. 2008 (a comprehensive text but very expensive) This is also available as an online resource.
2. J McKeough, K Bowery and P Griffith, Intellectual Property Commentary and Materials, 4th Edition, Thompson, 2007
3. S Ricketson, M Richardson, M Davison, Intellectual Property: Cases, Materials and Commentary, 4th edition, LexisNexis Butterworths, 2009
4. J McKeough, A Stewart and P Griffith, Intellectual Property in Australia, 3rd edition, Butterworths, 2004 (this text has an excellent bibliography but does not include amendments introduced as a result of US Australia Free Trade Agreement)
5. R Dean, The Law of Trade Secrets and Personal Secrets, Thomson Lawbook Co. 2nd Ed, 2002
6. P.A. Drahos, Philosophy of Intellectual Property, Aldershot, Brookfield USA Dartmouth 1996
7. P. Drahos and R. Mayne, “Global Intellectual Property Rights: Knowledge, Access and Development” Palgrave Macmillan 2002.
8. Stewart, Griffith and Bannister, 'Intellectual Property in Australia', Lexis Nexis 4th Ed 2010.
9. Bowrey, Handler and Nicol, Australian Intellectual Property, Commentary Law & Practice, Oxford University Press 2010.

Other resources

Australian Reports

• Industrial Property Advisory Committee (IPAC Report) “Patents, Innovation and Competition in Australia” Report to the Hon Barry Jones MP Minister for Science and Technology, 28 August 1984, Canberra.
• Intellectual Property Competition Review Committee “Review of Intellectual Property Legislation under the Competition Principles Agreement” Final report September 2000
• Advisory Council of Industrial Property (ACIP) “Review of the Petty Patent System, A Report to Senator the Hon Chris Schact, Minister for Small Business, Customs and Construction” Oct 1995, Canberra AIPO.
• Office of the Chief Scientist Department of the Prime Minister and Cabinet “The Role of Intellectual Property in Innovation” AGPS Canberra, 1993.
• House of Representatives Standing Committee on Industry, Science and Technology “Genetic Manipulation: The Threat or the Glory?” AGPS, Canberra, 1992
• “Patent Office Notes on the History of The British and Australian Patents Acts and the Law Relating to Letters Patent for Inventions in Australia” Patent Office, Canberra (5th Ed 1974)
• Industry Commission “Extending Patent Life: Is it in Australias Interests?” June 1996
• Advisory Council on Intellectual Property (ACIP) Report, Should plant and animal subject matter be excluded from protection by the innovation patent? 2004 Canberra
• Australian Law Reform Commission: ALRC 99 Genes and Ingenuity: Gene Patenting and Human Health, 2004
• Australian Advisory Council on Intellectual Property (ACIP) Issues Paper, Patentable subject matter, July 2008

Other Reports

• Report of the Committee to Examine the Patents System (Banks Committee Report) Cmnd. 4407 (UK) (1970)
• Commission on Intellectual Property Rights, Integrating Intellectual Property Rights and Development Policy, London, September 2002.
• Accessible at: http:// www. iprcommission. org/ graphic/ documents/ final _report .htm

Looseleaf service

• Lahore Patents, Trade Marks and Related Rights, 1996 - 2007 Butterworths
• Volume 1: Commentary and Volume 2: Legislation.
• CCH Australian Industrial & Intellectual Property Service

Journals

• Australian Intellectual Property Law Bulletin [AIPLB]
• Australian Intellectual Property Journal [AIPJ]
• Australian Trade Practices Reports [ATPR]
• European Intellectual Property Review [EIPR]
• Intellectual Property Forum
• International Review of Industrial Property and Copyright Law [IIC]
• Industrial Property (WIPO)
• Journal of the Patent and Trade Mark Society of USA
• The Journal of World Intellectual Property

Case Reports

• Intellectual Property Reports (Lexis/Nexis Butterworths) (IPR)
• Australian Industrial & Intellectual Property Cases (CCH) (AIPC)
• Reports of Patent Cases (RPC)
• Fleet Street Reports (FSR)
• Australian Official Journal of Patents, Trade Marks and Designs (AOJP)

Websites

• Australasian Legal Information Institute (AustLII): http://www.austlii.edu.au/
• Intellectual Property Australia (IP Australia): http://www.ipaustralia.gov.au/
• World Intellectual Property Organisation (WIPO) – http://www.wipo.org
• World Trade Organisation (WTO) – WTO Intellectual Property – http:// www. wto. org/ wto/ intellec/ intellec .htm
• Intellectual Property and Competition Review Committee – http://www.ipcr.gov.au/
• Australian Advisory Council on Intellectual Property: http://www.acip.gov.au/