BTC3300 Study Guide - Final Guide: Shopping Cart, Surgical Tape, Purposive Approach
13 Jun 2018
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Summary patents;
Requirements to prove a patent-
Elements 1. S18(1)(a)Patents Act – patent subject matter- manner of manufacture- this interpreted
to mean product, process or device- giving an economically useful result- NRDC case. Things that are
not patentable- human beings, discoveries of nature-and items, but computer programs are for what
the idea is behind them- IBM case, and methods of treatment are Restacare case- anaesthetic
treatment.
Element 2- s18(1)(b)(i) PA invention must be new= novel= test not anticipated by the Prior Art
Base(PRB) s 7 (1) PRB for novelty – prior patent applications and single documents that disclose
publicly the invention or means of deriving the invention. If find some document in PRD then use
the reverse infringement test- Vicarrs industry case- does my invention do what the PAB says it does-
if yes then it has been anticipated and is not novel. If no is novel. Cases on disclosure before the
priority date (date of filing patent)- Bic Biro case sent example to min of Science before filled for
patent,- Windsurfer case- disclosure in TV program.
Element 3- s18(1)(b)(ii) PA inventive step- test is obviousness test- s7(2)would the invention be
obvious to a non inventive skilled worker with the knowledge of the prior art Base. If it is obvious
then no inventive step- but ALphafarm case only need a scintilla of invention- does not need to be
rocket science-. Different ways of looking at this has industry been looking for a solution for ages and
it comes from a different area- 3m v Beirsdorf- 10yrs seeking breather able surgical tape and solved
different area. Doesn’t have to e roket siene- Amazon v Barnes & noble- didn’t think that it
could be that simple – shopping trolleys on internet- one click wonder-The WOW factor- surprise
test?
At end of these elements is patentable- the next two can undo patent even if granted
Element 4- s18(1)(c) PA Useful- must do what it says it does by reading the specification.
Elemnt 5 s18(1)(d) PA there must be no secret use- Re Wheatley Patent- no commercial use of the
patent before the filling date of the patent.
Ownership; s 15(1)(a)- general rule the inventor- or s15(1)(b) PA person claiming through the
inventor or assigned to them- this is the issue of employment- TEST is one of Control does the
employer control what the inventor does- if they pay salary and pay for income tax and workers
comp and their job description includes inventing then employer owns it. If done solely in their own
time at home in their garage then inventor owns it- cases Hudson v Electrolux- inventory officer not
an inventive job- inventor owns; Kwan v QCS-prisoner not employed to invent-
Other issue Wilson v VUT- here Wilson owned patent not in job description- but as had used uni
equipment and grants etc- was owned in equity the shares in the company that was promoting and
selling the invention. Gray v Uni WA- here research does not include a duty to invent and obtain
patents- need clear words in their contracts.
Infringement- doing one of the rights to owner s13 to exploit= make use hire etc the product process
or method without their permission-s117 is an issue of interpretation of claims- use purposive
approach – what is the aim of the claim plain meaning of words- cases Roots case or Catnic case.
find more resources at oneclass.com
find more resources at oneclass.com
Document Summary
S18(1)(a)patents act patent subject matter- manner of manufacture- this interpreted to mean product, process or device- giving an economically useful result- nrdc case. Things that are not patentable- human beings, discoveries of nature-and items, but computer programs are for what the idea is behind them- ibm case, and methods of treatment are restacare case- anaesthetic treatment. Element 2- s18(1)(b)(i) pa invention must be new= novel= test not anticipated by the prior art. Base(prb) s 7 (1) prb for novelty prior patent applications and single documents that disclose publicly the invention or means of deriving the invention. If find some document in prd then use the reverse infringement test- vicarrs industry case- does my invention do what the pab says it does- if yes then it has been anticipated and is not novel.
