University of Technology, Sydney

Staff directory | Webmail | Maps | Newsroom | What's on

78190 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: 8 cp
Result type: Grade and marks

Requisite(s): ( 78100c Postgraduate Legal Research OR ((102 credit points of completed study in spk(s): C04236 Juris Doctor OR 102 credit points of completed study in spk(s): C04250 Juris Doctor Master of Business Administration)))
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
There are course requisites for this subject. See access conditions.
Anti-requisite(s): 77898 Patent Law

Recommended studies:

students who have previously not completed a basic intellectual property subject are recommended to enrol in 78185 Intellectual Property: Law and Policy before this subject

Description

This subject provides an understanding of the principles of patents and the patent system in Australia. Topics covered include subject matter, section 40 of the Patents Act 1990 (specifications), infringement, inventorship, ownership and breach of confidence. 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 interest of patent owners; the use of traditional knowledge of indigenous communities in biodiscovery processes can complicate the availability of patent protection; US pharmaceutical companies demand a greater role in determining what drugs should be available under Australia's Pharmaceutical Benefits Scheme; 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, 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 varieties rights and the use of the action for breach of confidence to protect trade secrets.

Subject learning objectives (SLOs)

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

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;
2. demonstrate 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;
3. identify the requirements for patent protection under statute and common law as well as the requirements for protecting confidential information;
4. demonstrate strategies to problem solve and resolve legal disputes involving patent rights and/or confidential information;
5. accept individual responsibilities and obligations including engagement in and receipt of constructive criticism and argument.

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)
  • Self Management
    A high level of autonomy, accountability and professionalism, the ability to implement appropriate self-management and lifelong learning strategies including initiating self-directed work and learning, judgment and responsibility, self assessment of skills, personal wellbeing and appropriate use of feedback and, a capacity to adapt to and embrace change (6.0)

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 (topics)

  • History of and Rationale 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 task 1: Continuous on-line individual assessment

Objective(s):

This task addresses the following subject learning objectives:

1, 2 and 5

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

1.0, 3.0 and 6.0

Weight: MIP STUDENTS 10% LLM STUDENTS 10%
Length:

Each assessment is 500 words in length excluding footnotes and bibliography.

Assessment task 2: Continuous on-line group assessment

Objective(s):

This task addresses the following subject learning objectives:

2, 3, 4 and 5

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

1.0, 3.0 and 6.0

Weight: MIP STUDENTS 10% LLM STUDENTS 10%
Length:

1000 words excluding footnotes and bibliography.

Assessment task 3: Research Essay

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:

1.0, 3.0, 4.0 and 6.0

Weight: MIP STUDENTS 30% LLM STUDENTS 80%

Assessment task 4: Take-home exam

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 and 3.0

Weight: MIP STUDENTS (only) 50%

Required texts

Textbooks

Legislation and Conventions

Australia

New Zealand

International

Recommended texts

  • C Bodkin, Patent Law in Australia, 2nd Edition, Thomson Lawbook Co. 2014 (UTS Library 347.3771 BODK (ED.2)) also available online through the UTS Library at Databases > Law > Westlaw AU > Legislation and Commentary)
  • J McKeough, K Bowrey and P Griffith, Intellectual Property Commentary and Materials, 4th Edition, Thomson Lawbook Co. 2007 (UTS Library 347.37 MCKE (ED.4))
  • S Ricketson, M Richardson, M Davison, Intellectual Property: Cases, Materials and Commentary, 5th Edition, LexisNexis Butterworths, 2012 (UTS Library 347.37 RICK (ED.5))
  • 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) (UTS Library 347.37 MCKE (ED.3))
  • R Dean, The Law of Trade Secrets and Personal Secrets, 2nd Edition, Thomson Lawbook Co. 2002 (UTS Library 347.3773 DEAN (ED.2))
  • P Drahos, A Philosophy of Intellectual Property, Aldershot, Brookfield USA Dartmouth 1996 (UTS Library 347.34 DRAH)
  • P Drahos and R Mayne, Global Intellectual Property Rights: Knowledge, Access and Development, Palgrave Macmillan, 2002 (UTS Library 341.43 DRAB)
  • A Stewart, P Griffith and J Bannister, Intellectual Property in Australia, 4th Edition, LexisNexis 2010 (UTS Library 347.37 MCKU (ED.4))
  • K Bowrey, M Handler and D Nicol, Australian Intellectual Property, Commentary Law & Practice, Oxford University Press 2010 (UTS Library 347.37 BOWR)
  • P Sumpter, Intellectual Property Law: Principles in Practice, 2nd Edition, CCH 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 Inc, 3rd ed, 2012) http://www.law.unimelb.edu.au/files/dmfile/FinalOnlinePDF-2012Reprint.pdf

Other resources

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