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78191 Patent Systems

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 AND 78190 Patent Law) OR (78190 Patent Law AND (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): 77891 Patent Systems

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

The subject is designed to equip students with knowledge and skills appropriate to representing the interests of a client in the prosecution and maintenance of patent applications – including advising on the desirability of seeking patent protection and provision of alternative protection in Australia and other countries. Topics covered include types of patent applications; claiming priority; Patent Office practice; amendment practice; opposition; re-examination; the maintenance of patents and patent applications; extension of term; extension of time; revocation; treaties and conventions including the Patent Cooperation Treaty (PCT), the Paris Convention and the Budapest Treaty; searching; assignment; licensing; compulsory licenses; Crown use; restrictions on exploitation; circuit layout legislation and practice; plant protection legislation and practice; patentability in other countries (particularly with reference to New Zealand, the United States, European Union, People's Republic of China, Japan); and petty patents.

Subject learning objectives (SLOs)

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

1. advise and handle the interests of a client in the prosecution and maintenance of patent applications and patents in Australia, including the advising on the desirability of seeking patent protection and the provision of alternative forms of IP protection in Australia, such as Plant Breeder???s Rights and circuit layout protection;
2. understand the treaties and conventions which influence Australian and international patent law and practice;
3. understand the processes for parties to challenge the grant of a patent, processes for challenging the validity of a patent post-grant, and processes for challenging or correcting entitlement to a patent or patent application;
4. advise a client regarding patent procedure and patentability in other countries, and in particular the USA, countries of the European Patent Convention, New Zealand, Japan and the People???s Republic of China, and the provision of alternative protection in these countries;
5. advise on various approaches to commercial dealings in patent rights, including assignments and licence agreements.

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)
  • Ethics and Professional Responsibility
    An advanced and integrated capacity to value and promote honesty, integrity, accountability, public service and ethical standards including an understanding of approaches to ethical decision making, the rules of professional responsibility, an ability to reflect upon and respond to ethical challenges in practice, and a developing ability to engage in the profession of law and to exercise professional judgment (2.0)
  • 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)

Assessment

Assessment task 1: Online Discussion

Intent: A series of web discussions is designed to provide you with an opportunity to participate in group discussion covering the materials of this subject. The more informed you are through reading the materials for each topic the more you will be able to contribute to web discussion and benefit from this aspect of the subject.
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, 2.0 and 5.0

Weight: 20%

Assessment task 2: Mid Semester Examination

Intent: The exam will evaluate your understanding of Australian patent practice, including the prosecution and maintenance of Australian patents and applications, opposition and re-examination of Australian applications, and International treaties and agreements relating to patent practice.
Objective(s):

This task addresses the following subject learning objectives:

1, 2 and 3

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

1.0 and 2.0

Weight: 30%

Assessment task 3: Professional Conduct

Objective(s):

This task addresses the following subject learning objectives:

1 and 2

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

2.0 and 5.0

Weight: 10%
Length:

Approximately 500 words

Assessment task 4: Take Home Exam

Intent:

The exam will evaluate your understanding of all the material presented this semester, including Australian and foreign patent practice, International treaties, Plant breeder's rights and circuit layouts, assignment and licence practice, restrictions on exploitation, extensions of time, revocation, and innovation patents.
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 and 2.0

Weight: 40%

Required texts

Recommended texts

(both of the above are quite expensive and are not essential for this course)

  • Intellectual Property – Cases, Materials and Commentary – Ricketson, S.; Richardson, M., Davison, M. – Butterworths Casebook Series – 2012 Edition.
  • Australian Patent Law - Bucknell, D; Beattie, K; Goatcher, A; Rofe, H – LexisNexis 2004 – ISBN 9780409319873
  • Industrial & Intellectual Property Law – CCH Online (via UTS Library)
  • Lahore et al. 'Patents, Trade Marks & Related Rights' Butterworths loose-leaf service, red volumes); Vol 1 Commentary; Vol. 2 & 3 Legislation (should also be available via UTS Library databases)
  • World Patent Law and Practice' Baxter et al Release June 2000, Lexis Publishing.
  • Katzarov's Manual on Industrial Property All Over the World. Prepared by A. Reverdin & A. Manola, 9th edn, 19th Revision 1999
  • Manual for the handling of applications for patents, designs and trademarks throughout the world (Utrecht: Manual Industrial Property BV, 1936-)
  • Mueller, Patent Law 3rd ed, (2009) Wolters Kluwer
  • for US patent laws, US patent Rules and US Manual of Patent Examining Procedure:
  • for European Patent Convention:
  • Implementing regulations to the convention on the grant of European patents:
  • European Manual of Examination (EPO Patent Manual):
  • Bently and Sherman, Intellectual Property Law, Part II Patent Law, 3rd ed, (2008) OUP