77891 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 2025 is available in the Archives.
Credit points: 6 cp
Result type: Grade and marks
Requisite(s): ( 77898 Patent Law 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 OR 94 credit points of completed study in spk(s): C04363 Juris Doctor Master of Intellectual Property OR 94 credit points of completed study in spk(s): C04364 Juris Doctor Graduate Certificate Trade Mark Law and Practice) AND 70106c Principles of Public International Law AND 70107c Principles of Company Law AND 77898 Patent 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 AND 77889 Trade Marks Law))
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
Anti-requisite(s): 76085 Intellectual Property: Trade Marks and Patents AND 78191 Patent Systems
Description
In practice, patent practitioners need to be able to competently advise their clients (external or in-house) in detail with respect to Australian and New Zealand patent law and international systems of filing patents as well as provide general (as opposed to specialised) patent advice in relation to commercially important foreign countries. This subject concentrates on the ability to handle the interests of a client in prosecution and maintenance of a patent application, including advice on the desirability of seeking patent protection and provision of alternative protection in Australia and New Zealand and other commercially important foreign countries. Topics covered include: types of application; patent office practice; amendment; opposition; re-examination; maintenance; extension of term; extension of time; revocation; treaties and conventions; searching; assignment; licensing; compulsory licences and innovation patents; Crown use; restrictions on exploitation; circuit layout legislation and practice; plant protection legislation and practice; patentability in Australia and New Zealand and other commercially important foreign states (particularly the United States, the European Union, the People's Republic of China, South Korea and Japan).
Students develop practical patent knowledge and analytical skills through online group discussions of relevant topics and problem-solving activities, and assessments that mirror the legal and factual issues that arise in practice as a patent practitioner. These activities and assessments are designed to assist students to develop commercial skills and become solution-focused patent practitioners When engaging in the group discussions students are expected to collaborate, thereby building the skills necessary to work as part of a legal team in order to develop clear and comprehensive legal advice. When engaging in the group discussions students are required to undertake research to critically evaluate national and international areas of patent law relevant to patent practitioners. Apart from the online group discussions which involve external research, detailed lecture materials are provided to enable students to adequately cover the range of topics assessed.
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, maintenance and restoration of patent applications and patents in Australia and New Zealand, 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; along with the various approaches to commercial dealings in patent rights; |
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| 2. | Identify and apply the relevant 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; |
| 3. | Construct and articulate logical, reasoned, persuasive and justifiable legal and scholarly arguments in response to complex scenarios in relation to patenting procedure and patentability; |
| 4. | Identify and locate research material relevant to patentability and patenting procedure and creatively and analytically evaluate the factual, legal and theoretical issues which arise; |
| 5. | Think critically and strategically in relation to complex problems involving patenting procedure and patentability in Australia, New Zealand and other commercially important foreign countries; |
Course intended learning outcomes (CILOs)
This subject also contributes specifically to the development of the following graduate attributes which reflect the course intended learning outcomes:
- Legal Knowledge
An advanced and integrated understanding of a complex body of legal knowledge including:
a. The Australian colonial and post-colonial legal system, international and comparative contexts, theoretical and technical knowledge;
b. The broader contexts within which legal issues arise and the law operates including cultural awareness, social justice and policy;
c. The principles and values of justice and ethical practices in lawyers' roles;
d. The impact of Anglo-Australian laws on Indigenous peoples, including their historical origins in the process of colonisation and ongoing impact; and
e. Contemporary developments in law and its professional practice. (1.1) - Ethics and Professional Responsibility
An advanced and integrated capacity to value and promote honesty, integrity, cultural respect, accountability, public service and ethical standards including:
a. An understanding of approaches to ethical decision making;
b. An understanding of the rules of professional responsibility;
c. An ability to reflect upon and respond to ethical challenges in practice;
d. A developing ability to engage in the profession of law and to exercise professional judgment; and
e. An ability to reflect on and engage constructively with diversity in practice. (2.1) - Critical Analysis and Evaluation
A capacity to think critically, strategically and creatively, including an ability to:
a. Identify and articulate complex legal issues in context, including the skill of critical reading and writing;
b. Apply reasoning and research to generate appropriate theoretical and practical responses; and
c. Demonstrate sophisticated cognitive and creative skills in approaching complex legal issues and generating appropriate responses. (3.1) - Research Skills
Specialist cognitive and practical skills necessary to identify, research, evaluate and synthesise relevant factual, legal and policy issues including an ability to:
a. Demonstrate intellectual and practical skills necessary to justify and interpret theoretical propositions, legal methodologies, conclusions and professional decisions; and
b. Apply ethical research practices. (4.1)
Teaching and learning strategies
Strategy 1: Self-managed learning
Students prepare for each topic by: completing the prescribed readings (in accordance with the Reading Guide); listening to recordings for each topic (available on Canvas); engaging in online discussions on Canvas, and reflecting on and answering discussion questions. Engaging in these activities enables students to develop their understanding of key concepts and develop skills in interpretation and analysis of complex legal problems. Students will expand on the information provided in the online lecture materials by self-directed review of the relevant legislation and regulations, treaties, conventions, patent office manuals of practice and procedure and of other secondary materials as the subject progresses. Reference materials are made available in the Resources for Patent Systems Parts I and II, published on Canvas in the introductory week and mid-session respectively. Students will have the opportunity to ask questions of teaching staff to assist them in consolidating their learning.
Strategy 2: Learning through discussion and problem solving
This subject provides the opportunity for students to interact with fellow students through discussion board postings on Canvas. Students engage in group discussions on key topics in patent systems to extend the ideas of the lectures in new directions or in greater depth. By engaging in group discussions, students consolidate and clarify understanding of subject content and challenge ideas. Students are assessed, both individually and as participants in group work, on a number of aspects of the topic addressed, their demonstrated understanding of the topic, the level of engagement with other students (i.e., contributing to a discussion as part of a dialogue) in their subgroup, and referencing of source material.
The ability to solve problems is an essential skill for a patent adviser. Problem-solving involves interpreting and analysing legislation and cases, and applying the legislation and principles developed through the case law to novel and difficult factual situations. All students participate in problem-solving exercises throughout the session, both individually and in groups. Indeed, problem solving through collaboration is an essential skill for a patent adviser, and the group discussions provide this opportunity. In addition to the group discussions and associated submissions, students are presented with a series of non-assessable problem questions to complete. These problem questions provide students with the opportunity to review, consolidate and apply the information provided in the subject content. Sample answers to the non-assessable problem questions are provided to enable students to compare their answers with the sample answers.
Strategy 3: Learning through research
Students undertake independent research relevant to discussion questions and assessment tasks. The questions require students to identify relevant legislation, case law and secondary material on their own. Being able to engage in research to find relevant material is a key skill for a patent advisor. Critical reading and analysis of material are also crucial skills in practice. The discussion questions and assessment tasks will test students understanding of the subject content and ability to apply legislation and legal principles to complex problems. Students will develop and refine skills in identifying and synthesising relevant material and deploy it 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 important part of the learning process. Students complete assessment tasks across the subject of the session. Feedback assessing the assessment criteria will be provided in accordance with the assessment instructions for each task. Feedback will also relate to the general skills that will be relevant to each assessment task (such as written expression). Sample answers are provided for weekly, non-assessable questions. Ongoing feedback is provided to students via the Discussion Boards on Canvas.
Subject Delivery
This subject is offered entirely online by ‘distance’. No on-campus attendance is required for students studying online. The Faculty of Law may use a variety of means to deliver lectures, subject materials and assessments to distance students including: a web-based delivery system and hard-copy materials.
Canvas is a web-based tool used at UTS to deliver online learning to students. Canvas is accessible by most web browsers. For further details about studying on-line and accessing Canvas see https://help.online.uts.edu.au/
Students must have access to a personal computer and a reliable commercial Internet service provider.
In addition, students must have a browser installed on their computer and some additional software is required to play recorded lectures.
Each lecture can be accessed via the ‘Course Materials’ folder on Canvas. In turn, the materials for each lecture may comprise one or more PowerPoint presentations, videos and/or recorded audio lectures.
Content (topics)
- The Australian and New Zealand Patent Systems - types of applications, publication of applications, the nominated person, claiming priority, and interactions with PCT system.
- The Australian and New Zealand Patent Systems - examination of applications for standard and innovation applications, acceptance, divisional standard and divisional innovation patents and patents of addition, priority dates, amendments.
- The Australian and New Zealand Patent Systems - opposition practice, re-examination, entitlement disputes.
- The Australian and New Zealand Patent Systems - patent term, extension of term, maintenance of patents and applications, revocation, unjustified threats, transitional provisions , appeals, extensions of time, lapsing and withdrawal.
- Assignment, licensing, compulsory licences, Crown use.
- International filings: Treaties that affect overseas applications: Paris Convention, TRIPS, Patent Cooperation Treaty. International filings: general issues that need to be considered with respect to a foreign filing program.
- International filings: specific requirements in particular jurisdictions - Canada, China, Japan, South Korea, New Zealand US patent practice and procedure.
- European Patent Convention practice and procedure.
- Validity and infringement searching, circuit layouts, restrictions on patent exploitation in Australia and New Zealand
- Plant protection in Australia, Budapest Treaty, special issues relating to particular technologies
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. |
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| 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: 1.1, 3.1 and 4.1 |
| Weight: | 20% |
| Length: | 1200 words (4x300 words) |
| Criteria: | Your assessment mark for this item is measured against a set of criteria. 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:
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Assessment task 2: Mid-Session 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. |
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| 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: 1.1, 2.1 and 3.1 |
| Weight: | 30% |
| Length: | 2500 words |
| Criteria: | Your assessment mark for this item is measured against a set of criteria. 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:
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Assessment task 3: Professional Conduct
| 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: 1.1, 2.1 and 3.1 |
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| Weight: | 10% |
| Length: | 600 words |
| Criteria: | Your assessment mark for this item is measured against a set of criteria. 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:
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Assessment task 4: Take Home Exam
| Intent: | The exam will evaluate your understanding of all the material presented this session, 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. |
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| 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: 1.1, 2.1 and 3.1 |
| Weight: | 40% |
| Length: | 2500 words |
| Criteria: | Your assessment mark for this item is measured against a set of criteria. 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:
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Required texts
- Patents Act 1990 (Cth) (consolidated)
- Patents Regulations 1991 (consolidated)
- Students will need to be aware of amendments made over the last 20 years.
- Plant Breeders Rights Act 1994 (Cth) Plant Breeders Rights Regulations 1995 (Cth) Please note that all the consolidated Acts and Regulations and amending Acts listed above are available in rich text or PDF format from ComLaw at: https://www.legislation.gov.au/comlaw/comlaw.nsf/sh/homepage
- Patents Act 2013 and its regulations for New Zealand
- IPONZ Patent Practice Guidelines (available at https://www.iponz.govt.nz/about-ip/trade-marks/practice-guidelines/)
- Australian Patent Office Manual of Practice and Procedure, vols 1 to 3 http://manuals.ipaustralia.gov.au/patents/Patent_Examiners_Manual.htm (also may be downloaded as a pdf file, one file per volume)
- Agreement on Trade Related Aspects of Intellectual Property Rights 1994 at: https://www.wto.org/english/tratop_e/trips_e/trips_e.htm
- Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure (see Patent Regulations 1991)
- Patent Cooperation Treaty (see Patent Regulations 1991)
- International Convention for the Protection of Industrial Property (Paris) http://www.wipo.int/treaties/en/text.jsp?file_id=288514
- PCT Applicant’s Guide (available at http://www.wipo.int/pct/en/appguide/index.jsp)
Recommended texts
- Bodkin, Patent Law in Australia, 2nd Ed Thomson (2013)
- O'Sullivan and Rolls, Practical Guide to Australian Patent Law (Law Book Company) <http://www. thomson. com. au/ catalogue/ shopexd. asp ?id =239>
- James & Wells Intellectual Property Law in New Zealand by Ian Finch, 3rd edition, Thomson Reuters, 2017
(the above are quite expensive and are not essential for this subject)
- Ricketson, S.; Richardson, M., Davison, M., Intellectual Property – Cases, Materials and Commentary, Butterworths Casebook Series – 2012 Edition.
- Bucknell, D; Beattie, K; Goatcher, A; Rofe, H, Australian Patent Law, 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)
- Baxter et al, World Patent Law and Practice 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