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77898 Patent Law

Warning: The information on this page is indicative. The subject outline for a particular session, 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.

Subject handbook information prior to 2017 is available in the Archives.

UTS: Law
Credit points: 6 cp
Result type: Grade and marks

Requisite(s): ( 77885c Legal Process and Legal Research OR 78101c Postgraduate Legal Research OR ((22 credit points of completed study in spk(s): C07122 Graduate Diploma Legal Studies OR 22 credit points of completed study in spk(s): C04147 Master of Legal Studies OR 22 credit points of completed study in spk(s): C07074 Graduate Diploma Legal Studies OR 22 credit points of completed study in spk(s): C04264 Master of Legal Studies)) OR 77905c Preparing for Intellectual Property Practice OR ((94 credit points of completed study in spk(s): C04236 Juris Doctor OR 142 credit points of completed study in spk(s): C04250 Juris Doctor Master of Business Administration) AND 70106c Principles of Public International Law AND 70107c Principles of Company Law) OR (94 credit points of completed study in spk(s): C04320 Juris Doctor Graduate Certificate Professional Legal Practice AND 70106 Principles of Public International Law))
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

Description

This subject provides an understanding of the principles of patents and the patent system in Australia. Patents have been the subject of much controversy in recent times: biotechnology challenges our traditional distinction between nature and invention; the health demands of developing countries come into conflict with the private interests of patent owners; the use of traditional knowledge of Indigenous communities in biodiscovery processes can complicate the availability of patent protection; the computer software industry demands patent protection to supplement their rights in copyright; and in a growing number of cases patents can be granted for 'business methods'. In this subject, students are introduced to the law of patents: what is patentable subject matter; what are the threshold requirements of patentability; what level of disclosure is required to justify the grant of the patentee's monopoly rights (section 40 of the federal Patents Act 1990); the rights of the patent holder; exploitation of patent rights; and actions for infringement. In addition, special issues relating to biotechnology patents and the international context in which Australia's patent law operates are considered. There is some attention to plant breeders' rights and the law relating to breach of confidence.

Students develop legal knowledge and analytical skills through problem-solving activities that mirror the legal and factual issues that arise in legal and business practice. These activities provide opportunities for students to develop commercial skills and become solution-focused practitioners. The subject builds students' skills of critical analysis and oral communication through discussion of different theoretical, jurisprudential and policy issues underlying areas of patent law. Students also undertake research that enables them to critically evaluate laws, practices and policies. The subject combines a practical with a theoretical approach, enriching students' understanding of the complex public and private interests at play, and preparing them for careers in professional practice or general commerce.

Subject learning objectives (SLOs)

Upon successful completion of this subject students should be able to:

1. Identify and apply legislation and case law relating to patents, plant breeders??? rights and breach of confidence to resolve complex problem-based scenarios.
2. Critically analyse and evaluate the legal framework pertaining to the regulation of patents, plant breeders??? rights and breach of confidence in Australia.
3. Construct and articulate logical, reasoned, persuasive and justifiable legal and scholarly arguments in response to complex scenarios involving patent law, plant breeders??? rights and breach of confidence.
4. Identify and locate research material relevant to contemporary policy debates in the fields of patent law, plant breeders??? rights and breach of confidence and creatively and analytically evaluate the factual, legal and theoretical issues which arise.
5. Think critically and strategically in relation to complex problems involving patent law, plant breeders??? rights and breach of confidence and adopt a solution-focused approach to legal practice.

Course intended learning outcomes (CILOs)

This subject also contributes specifically to the development of the following graduate attributes:

  • Legal Knowledge
    An advanced and integrated understanding of a complex body of legal knowledge including the Australian legal system, social justice, cultural and international contexts, the principles and values of ethical practice, and contemporary developments in law and its professional practice (1.0)
  • 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)
  • Research Skills
    Well-developed cognitive and practical skills necessary to identify, research, evaluate and synthesise relevant factual, legal and policy issues and demonstrate intellectual and practical skills necessary to justify and interpret theoretical propositions, legal methodologies, conclusions and professional decisions (4.0)

Teaching and learning strategies

Strategy 1 – Self-managed learning: Students prepare for each topic by: completing prescribed readings (in accordance with the Reading Guide); listening to podcasts for each topic (available on UTSOnline); and reflecting on and answering discussion questions on the Discussion Board on UTSOnline. Engaging in these activities enables students to develop their understanding of key concepts and develop skills in interpretation and analysis of complex legal problems. The subject adopts a system of self-managed learning that offers students choices about how and when to study. Online learning materials are released in grouped modules allowing students to work through topics at their own pace. Opportunities are provided to interact with fellow students and teaching staff via UTSOnline. Students are required to implement an effective time management strategy to complete the topics within the session while contributing to online discussions and completing the assessment tasks in a timely manner.

Strategy 2 – Learning through discussion and problem solving: The ability to solve problems is an essential professional skill for any legal advisor or patent attorney. Problem solving involves interpreting and analysing legislation and cases, and applying the legislation and principles developed through the case law to novel and complex factual situations. All students participate in problem solving exercises throughout the session. Students will be presented with discussion questions for each topic and students will engage in discussion of the legal issues and problems that arise. Students are allocated to a group in the second half of the session and work collaboratively to prepare a group response to a discussion question.

Strategy 3 – Applying Research Skills: Students undertake independent research relevant to discussion questions and assessment tasks. The research essay and discussion questions require students to identify relevant case law and secondary material on their own. Being able to engage in research to find relevant material is a key skill for a legal practitioner or patent attorney. Critical reading and analysis of judicial and scholarly material are also crucial skills in practice. The discussion questions associated with each topic will test students understanding of the subject content and ability to apply legislation and legal principles to complex legal problems. Students will develop and refine skills in identifying and synthesising relevant material and employ these skills to make reasoned, logical, justifiable and persuasive written arguments. Students will apply these skills in written assessment tasks and receive further feedback.

Strategy 4 – Feedback: Detailed guidance as to the assessment criteria and the provision of timely feedback are an importance part of the learning process. Students will complete assessment tasks across the course of the session with an early assessment task scheduled to enable the provision of early feedback to students. Written feedback on each assessment task will be provided addressing the assessment criteria for each task. Feedback will also relate to general skills that will be relevant to each assessment task (such as written expression). Ongoing feedback is provided to students via the Discussion Boards on UTSOnline.

Subject delivery: The subject is delivered wholly online and requires no on-campus attendance.

Content (topics)

  1. Introduction to Patent Law
  2. History of and Rationale for Patent Law; International Aspects
  3. Overview of Patent Registration Process
  4. Elements of Patentability: Invention and “manner of new manufacture”
  5. Elements of Patentability: Particular subject matter
  6. Elements of Patentability: Novelty
  7. Elements of Patentability: Inventive Step & Innovative Step
  8. Elements of Patentability: Utility & Secret Use
  9. Elements of Patentability: Patent Specification Rules – section 40 requirements Exclusive Rights & Dealing with Patents
  10. Infringement
  11. Plant Breeders’ Rights
  12. Confidential Information

Assessment

Assessment task 1: Continuous online individual assessment

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 5

This task contributes specifically to the development of the following graduate attributes:

1.0 and 3.0

Weight: 10%
Length:

Total of 1,000 words: each part of the assessment is 500 words in length excluding footnotes and bibliography.
Criteria:

Your assessment mark for this item is measured against a set of criteria, not against the performance of other students. In each assessment task we will be looking for evidence that you have achieved the learning objectives set out in the Subject Outline as well as evidence that you have met the following criteria:

  • Identification of relevant legal, policy and theoretical issues and demonstration of insight into the issues raised.
  • Critical analysis and evaluation of legal, policy and theoretical issues raised.
  • Evidence of research and appropriate consideration of relevant authorities and literature.
  • Articulation of a clear and coherent argument.
  • Clear written expression with correct use of grammar, punctuation and spelling.
  • Accurate, consistent and complete referencing according to AGLC that demonstrates judgement and responsibility in terms of academic integrity, in particular honest and complete acknowledgement of sources.

Assessment task 2: Continuous online group assessment

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 5

This task contributes specifically to the development of the following graduate attributes:

1.0 and 3.0

Weight: 10%
Length:

750 words excluding footnotes and bibliography.
Criteria:

Your assessment mark for this item is measured against the following set of criteria, not against the performance of other groups.

  • Identification of relevant legal, policy and theoretical issues and demonstration of insight into the issues raised.
  • Critical analysis and evaluation of legal, policy and theoretical issues raised.
  • Evidence of research and appropriate consideration of relevant authorities and literature.
  • Articulation of a clear and coherent argument.
  • Clear written expression with correct use of grammar, punctuation and spelling.
  • Accurate, consistent and complete referencing according to AGLC that demonstrates judgement and responsibility in terms of academic integrity, in particular honest and complete acknowledgement of sources.

Assessment task 3: Research Essay

Objective(s):

This task addresses the following subject learning objectives:

2, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

1.0, 3.0 and 4.0

Weight: 30%
Length:

The word limit for this assessment is 2,000 words. This excludes the footnotes and the bibliography. A penalty of 5% of the result will be imposed for each 100 words that the essay exceeds the 2000 word limit. The word limit will be strictly enforced.

Criteria:

As for other assessments in this subject, your assessment mark for this item is measured against a set of criteria, not against the performance of other students.

  • Identification of relevant legal issues and demonstration of insight into the issues raised.
  • Critical analysis and evaluation of legal, policy and theoretical issues.
  • Comprehensive and appropriate consideration of relevant authorities and literature.
  • Articulation of a clear and coherent argument which is logically structured and supported by evidence.
  • Clear written expression with correct use of grammar, punctuation and spelling.
  • Accurate, consistent and complete referencing according to AGLC that demonstrates judgement and responsibility in terms of academic integrity, in particular honest and complete acknowledgement of sources.

Assessment task 4: Take-home exam

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 5

This task contributes specifically to the development of the following graduate attributes:

1.0 and 3.0

Weight: 50%
Length:

2,500 words in total: 500 words per response to each of the 5 exercises
Criteria:

You will be assessed on:

  • Identification of the relevant legislative provisions and case law applicable to the problem.
  • Application of the relevant law to the facts as presented in an articulate, reasoned and logical manner.
  • Coherent analysis of the legal issues (and policy issues if relevant).
  • Strategic problem-solving offering viable commercial solutions.
  • Concise and coherent articulation of complex ideas.
  • Clear written expression with correct use of grammar, punctuation and spelling.

Required texts

Textbooks

Legislation and Conventions

Australia

New Zealand

Recommended texts

  • Colin Bodkin, Patent Law in Australia (Thomson Lawbook, 2nd ed, 2014) (UTS Library 347.3771 BODK (ED.2)) also available online through the UTS Library at Databases > Law > Westlaw AU > Legislation and Commentary)
  • Kathy Bowrey, Michael Handler, Dianne Nicol and Kimberlee Weatherall, Australian Intellectual Property: Commentary, Law and Practice (Oxford University Press, 2nd ed, 2015) (UTS Library 347.37 BOWR (ED.2))
  • S am Ricketson, Megan Richardson and Mark Davison, Intellectual Property: Cases, Materials and Commentary (LexisNexis, 5th ed, 2012) (UTS Library 347.37 RICK (ED.5))
  • Robert Dean, The Law of Trade Secrets and Personal Secrets (Lawbook, 2nd ed, 2002) (UTS Library 347.3773 DEAN (ED.2))
  • Peter Drahos, A Philosophy of Intellectual Property (Aldershot, 1996) (UTS Library 347.34 DRAH)
  • Peter Drahos and Ruth Mayne, Global Intellectual Property Rights: Knowledge, Access and Development (Palgrave Macmillan, 2002) (UTS Library 341.43 DRAB)
  • Andrew Stewart, P B C Griffith, Judith Bannister and Adam Liberman, Intellectual Property in Australia (LexisNexis, 5th ed, 2014) (UTS Library 347.37 MCKU (ED.5))
  • Paul Sumpter, Intellectual Property Law: Principles in Practice (CCH, 2nd ed, 2013) (UTS Library 347.377 SUMP (ED.2)) Note: This book covers intellectual property law in New Zealand.
  • Australian Guide to Legal Citation (Melbourne University Law Review Association, 3rd ed, 2012) <http://www.law.unimelb.edu.au/mulr/aglc>.

See the Subject Resources folder on UTSOnline for other resources

Other resources

(See Subject Resources folder on UTSOnline for links)

Australian Reports

  • IP Australia, Public Consultation, ACIP Recommendation on the innovation patent system,
  • IP Australia, The Economic Impact of Innovation Patents, May 2015
  • Australian Government, Competition Policy Review: Final Report March 2015
  • IP Australia, Australian Intellectual Property Report 2015
  • IP Australia Consultation Paper, Getting the Balance Right: Toward a Stronger and More Efficient IP Rights System, March 2009
  • Advisory Council on Intellectual Property (ACIP) Final Report, Review of the Innovation Patent System, June 2014
  • Advisory Council on Intellectual Property (ACIP) Options Paper, Review of the Innovation Patent System, August 2013
  • Advisory Council on Intellectual Property (ACIP) Final Report, Patentable Subject Matter, December 2010
  • Advisory Council on Intellectual Property (ACIP) Final Report, Should plant and animal subject matter be excluded from protection by the innovation patent?, November 2004
  • Australian Law Reform Commission (ALRC), Genes and Ingenuity: Gene Patenting and Human Health, ALRC Report 99, 2004
  • Intellectual Property Competition Review Committee, Review of Intellectual Property Legislation under the Competition Principles Agreement – Final Report, September 2000
  • Industry Commission, Extending Patent Life: Is it in Australia’s interests?, June 1996
  • Advisory Council on Industrial Property (ACIP), Review of the Petty Patent System, October 1995
  • House of Representatives Standing Committee on Industry, Science and Technology, Genetic Manipulation: The Threat or the Glory?, March 1992
  • Industrial Property Advisory Committee (IPAC Report), Patents Innovation and Competition in Australia, 28 August 1984, Canberra

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

Looseleaf service

  • Lahore, Patents, trade marks and related rights, Butterworths (available online via the UTS Library website – LexisNexis AU database)
  • CCH Australian Industrial and Intellectual Property Service (available online via the UTS Library website – CCH Online database)

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