77894 Drafting of Patent Specifications
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Subject handbook information prior to 2017 is available in the Archives.
Credit points: 6 cp
Result type: Grade and marks
Requisite(s): 77898 Patent Law
These requisites may not apply to students in certain courses.
There are course requisites for this subject. See access conditions.
Description
This subject sets the foundations for the most important skills that a patent attorney can have, namely, the ability to draft competent independent and dependent patent claims with an accompanying patent description:
- Independent claims that are valid, clear and succinct and whose scopes are not too broad and not too narrow so as to be difficult for competitors to avoid. It is particularly important to direct the main independent claim in a patent specification in a way that not only achieves the client's main objective but is also differentiated from and arguably has an inventive step over the known prior art.
- A set of dependent claims that provide adequate fallback positions should the independent claim upon which they depend be found invalid.
- A patent description that supports the claims, which is 'clear enough and complete enough for the invention to be performed by a person skilled in the art' (Patents Act 1990 (Cwlth), s. 40(2)(a)) and which discloses the best method of performing the invention (Patents Act, s. 40(2)(aa)).
Students develop practical patent drafting and analytical skills through online group assessments, individual assessments and case studies that mirror the legal and factual drafting issues that arise in practice.
Subject learning objectives (SLOs)
Upon successful completion of this subject students should be able to:
| 1. | obtain relevant information about an invention and from that, given the prior art, draft a patent specification to accompany a provisional application, a standard complete application, an international application or an innovation patent application; |
|---|---|
| 2. | draft claims that define an invention that is novel over the given prior art and, arguably, includes an inventive step; |
| 3. | critically and succinctly analyse a complete patent specification, and particularly the suitability of the claims given the prior art; |
| 4. | analyse the support for the claims in light of the given description of the invention; |
| 5. | understand and apply various 'common practice' based aspects of drafting of patent specifications. |
Course intended learning outcomes (CILOs)
This subject also contributes specifically to the development of the following graduate attributes:
- Critical Analysis and Evaluation
A capacity to think critically, strategically and creatively including an ability to identify and articulate complex legal issues, apply reasoning and research to generate appropriate theoretical and practical responses, and, demonstrate sophisticated cognitive and creative skills in approaching complex legal issues and generating appropriate responses (3.0) - Communication and Collaboration
Effective and appropriate professional communication skills including highly effective use of the English language, an ability to inform, analyse, report and persuade using an appropriate medium and message and an ability to respond appropriately (5.0)
Teaching and learning strategies
Strategy 1 - The provision of lectures to outline and explain the applicable law and practice of drafting.
Strategy 2 - The use of the discussion board and review of students’ answers to practical drafting exercises to develop and refine the requisite knowledge and skills to achieve the above objectives.
Strategy 3 - On-line delivery of lectures (both audio and materials)
Strategy 4 - E-tutoring and on-line discussion board to reinforce learning.
Strategy 5 - Various modes of assessment (i.e. claim drafting exercises, on-line input from students, written assessment tasks and final exam) to provide a broad basis for determining if the above objectives have been achieved.
Subject Delivery
The aim of the teaching strategies for this subject is to foster an effective learning environment for students. This subject is taught using UTS Online. Students will be expected to have read and completed the various work tasks and assessments required by the Lecturer for any particular week. UTSOnline is a web based tool used at UTS to deliver online learning to students. UTSOnline is accessible by most web browsers. For further details about studying online and accessing UTSOnline see http://www.law.uts.edu.au/onlineguide/
Students must have access to a personal computer, a reliable commercial Internet service provider and as a minimum a good modem telephone connection. In addition, students must have Internet Explorer or Netscape installed on their computer and some additional software is required to playback lectures. Each lecture can be accessed via the ‘Course Materials’ folder on UTSOnline. In turn, the materials for each lecture comprise a PowerPoint presentation and/or recorded audio lectures and other task related documents.
Lecture Format
Early lectures provide formal tuition in the structure of a patent specification (including claims) and approaches to patent description and claim drafting. This is followed by a series of lectures that examine particular case studies and effective claim
drafting strategies for the scenarios presented.
Content (topics)
Topic 1 - Introduction and overview
Topic 2 - Terminology and format
Topic 3 - Approaches to claim drafting
Topic 4 - Practical Exercises in drafting: Case studies 1 – 7 over various weeks
Topic 5 - Drafting for specific technologies
Topic 6 - Discuss answers to 1st Written Assessment Task (WAT)
Topic 7 - Discuss answers to 2nd WAT, and revision
Assessment
Assessment task 1: Two group claim drafting exercises (5% each group claim drafting exercise)
| Objective(s): | This task addresses the following subject learning objectives: 2, 4 and 5 This task contributes specifically to the development of the following graduate attributes: 3.0 and 5.0 |
|---|---|
| Weight: | 10% |
| Criteria: | Claims to be drafted in the light of a given description of the invention and given prior art, and must be clear, succinct, novel and arguably inventive. Claim scope will also be considered under relevant provisions. These claims will be drafted on the discussion board set up. The process that each group goes through to explore the possible scope and wording of the final claims must appear on the discussion board for the group we assign you to and is as important as the final wording of Claim 1 and the dependant claims. |
Assessment task 2: Two claim drafting exercises (10% each claim drafting exercise)
| Objective(s): | This task addresses the following subject learning objectives: 2, 4 and 5 This task contributes specifically to the development of the following graduate attributes: 3.0 and 5.0 |
|---|---|
| Weight: | 20% |
| Criteria: | Claims to be drafted in the light of a given description of the invention and given prior art, and must be clear, succinct, novel and arguably inventive. Claim scope will also be considered. |
Assessment task 3: Professional Conduct Exercise
| Objective(s): | This task addresses the following subject learning objectives: 1 This task contributes specifically to the development of the following graduate attributes: 3.0 and 5.0 |
|---|---|
| Weight: | 10% |
| Length: | Approximately 500 words not including number of words in footnotes |
Assessment task 4: Two Written Assessment Tasks (WATs) (10% each WAT)
| Objective(s): | This task addresses the following subject learning objectives: 1, 2, 3, 4 and 5 This task contributes specifically to the development of the following graduate attributes: 3.0 and 5.0 |
|---|---|
| Weight: | 20% |
Assessment task 5: Final Exam
| Objective(s): | This task addresses the following subject learning objectives: 1, 2, 3, 4 and 5 This task contributes specifically to the development of the following graduate attributes: 3.0 and 5.0 |
|---|---|
| Weight: | 40% |
Required texts
1. Topic Materials and Case studies provided on UTS Online.
2. The “WIPO Patent Drafting Manual” available online from WIPO.
3. “Invention Analysis and Claiming – A Patent Lawyer’s Guide”, (2nd edition) by Ronald D. Slusky, published by the American Bar Association.
4. The “Glossary of Patent Terms” by John McCann (supplied).
Recommended texts
- “Faber on Mechanics of Patent Claim Drafting" by Robert C. Faber, Practising Law Institute (Sixth edition) (loose leaf text) ISBN: 978-0-87224-054-4.
- "How to write a patent application" by Jeffrey G Sheldon, Practising Law Institute, (loose leaf text) ISBN: 978-1402425608.
- “Fundamentals of Patent Drafting”, by Paul Cole, The Chartered Institute of Patent Agents, 2006.
- “A Practical Guide to Drafting Patents”, Gwilym Roberts, Law Book Company, Sydney, 006, ISBN: 10 0-421-938-609.
References
1. “Patent Law In Australia” by Colin Bodkin, 2nd edition, Thomson Reuters, Sydney 2014 (available online in the Westlaw AU database via the UTS library).
2. Lexis Nexis Patent Commentary (available online in the Lexis Nexis Australia – Intellectual Property database via the UTS library).
3. Lexis Nexis Halsbury’s Laws of Australia – Intellectual Property (available online in the Lexis Nexis Australia – Intellectual Property database via the UTS library).
Other resources
- 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/ patentsmanual /Web Help/ Patent _Examiners _Manual .htm
- www.ipaustralia.gov.au
