University of Technology Sydney

77895 Interpretation and Validity of Patent Specifications

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.

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

Requisite(s): 77898 Patent Law
These requisites may not apply to students in certain courses.
There are course requisites for this subject. See access conditions.

Description

This subject sets the foundations for an important patent attorney skill, namely, the ability to prepare a competent patent opinion as to infringement and/or validity.

Students develop practical analytical and patent opinion skills through online group assessments, individual assessments and case studies that mirror the legal and factual infringement and validity issues that arise in practice. On completion of this subject, students have acquired an ability to express an understanding of a patent specification and what it covers for the purpose of advising on infringement, validity over given prior art, s 40 of the Patents Act 1990 and other grounds of revocation and amendment.

Subject learning objectives (SLOs)

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

1. Apply advanced and integrated understanding of the legal rules of construction to construing patent claims;
2. Identify the legal requirements for the validity of a patent, including the patentability of the claims, and practically apply the relevant legal tests to assess validity, including assessing the novelty and inventive (or innovative) step of patent claims;
3. Identify the legal requirements for the infringement of a patent claim and apply professionally the relevant legal test for infringement;
4. Write succinct and effective letters and accompanying detailed memoranda of advice to clients critically advising on complex matters of patent claim interpretation, validity, infringement, possible amendments and making appropriate, ethically-sound and practical recommendations;
5. Think critically and ethically in relation to a complex professional conduct problem in a patent interpretation and validity scenario and communicate informed professional judgment on identifiable ethical issues in writing.

Teaching and learning strategies

Strategy 1: Learning through engagement with each module

The subject adopts a system of self-managed learning using Canvas, a web-based Learning Management System. Preparation and reflection on the material presented in each module on Canvas is central to the learning in this subject.

Each module contains

  • an overview of the module and the learning outcomes that must be attained by each student for that module
  • teaching material in the form of text, audio and video
  • resources
  • formative activities to consolidate learning and provide feedback
  • a discussion area for students to discuss and analyse the material in each module

Students gain an understanding of the relevant law for the analysis of patents by first completing the readings and activities for each module on Canvas.

Having prepared in this manner, students then engage with the lectures, which are offered as audio materials within each module. Lectures provide formal tuition in the structure of the various parts of a patent opinion and approaches to patent opinion drafting as well as revising the relevant patent law. By engaging with the lectures students obtain clarification of the law and perspectives on the recommended readings from the teacher and guest speakers.

Online learning materials are released as students complete each Canvas module. As subsequent modules are not released until completion of the previous module, students must implement an effective time management strategy to complete the modules as well as any case studies, online discussions, readings and assessment tasks in a timely manner. Additionally, students are required to complete two non-assessable individual case study exercises.

While self-managed learning offers you choices about how and when to study, learning will be most effective if students implement an effective time management strategy in order to complete this subject within the prescribed time. If students plan a timetable carefully and set aside regular times each week to progress in the modules and the ethics and professional conduct case study, they should have no difficulty in successfully completing this subject.

While the activities and web discussion in each module are non-assessable components of this subject, students are strongly encouraged to engage in the activities and discussion in each module in order to:

  • Consolidate their understanding of the material taught in each module
  • Obtain guided feedback on their progress in each module
  • Reflect upon and analyse the subject contents in each module in order to complete the Assessment Tasks in this course successfully

Strategy 2: Practising patent analysis and opinion-writing skills, and collaborative activities

Students have the opportunity to practise their patent opinion analysis and drafting skills by completing case study activities. Students apply the knowledge and skills learnt in the subject modules to the case study scenarios and in this way, gain practice in the professional skills of patent analysis and patent opinion writing.

A series of four non-assessable group case studies are also provided for groups of students to attempt, submit and receive feedback.

Completion of these activities provides students with a gradual introduction to patent analysis and patent opinion writing as well as an opportunity to develop their professional skills and share knowledge and insights with their peers. Individual feedback is provided on completed answers (see ‘Strategy 3: Feedback’ below).

Strategy 3: Feedback

Detailed guidance as to the assessment criteria and the provision of timely feedback enable students to further develop their academic and professional skills and clarify their understanding of relevant materials. Students receive early formative feedback from Week 3 onwards together with early feedback from assessments. By engaging with this feedback and applying the knowledge gained from it in subsequent activities and assessment tasks, students reflect on and further develop their knowledge and skills in patent analysis and patent opinion writing.

Students also receive feedback from their peers as they complete group activities. Ongoing written feedback is provided by the teaching staff.

Strategy 4: Guest Speakers

Students are provided with three instructor-led case studies modeling the process of an expert working through a problem to draft various aspects of a patent opinion along with an expert interview regarding professional conduct issues that arise in patent opinion practice. These guest speakers will provide students with authentic learning experiences demonstrating real world issues and how professionals approach and resolve these issues.

Subject delivery:

This subject is delivered entirely online via six modules in the Canvas Learning Management System.

Lectures will be provided online as videos. Please refer to lecture outlines for further details.

Content (topics)

Topic 1: Introduction and overview

Topic 2: Introduction to the Person Skilled in the Art and Construction

Topic 3: The Person Skilled in the Art

Topic 4: Construction principles

Topic 5: Infringement

Topic 6: Validity

Topic 7: Amendments

Topic 8: Patent Opinion Writing

Topic 9: Review of Case Study 8

Topic 10: Review of Case Study 9

Assessment

Assessment task 1: Professional Conduct Exercise

Intent:

This task assesses students’ understanding of professional conduct issues relevant to carrying out interpretation and validity analyses for clients.
Objective(s):

This task addresses the following subject learning objectives:

5

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

.1, .1, .1 and .1

Weight: 10%
Length:

600 words
Criteria:
  • Reflects on the professional responsibilities of patent attorneys and demonstrates the capacity to exercise ethical judgment (SLO5, GA2).
  • Applies advanced critical thinking in approaching legal issues and generating appropriate responses (SLO 5, GA3).
  • Constructs logical, reasoned and persuasive arguments (SLO5, GA3).
  • Communicates in a clear, logical and succinct manner (SLO 5, GA5).
  • Writes in accordance with Faculty’s preferred style (AGLC3) using appropriate structure, spelling, grammar and referencing (SLO5, GA5).

Assessment task 2: Construction Exercise

Intent:

This task assesses students’ ability to recognise and apply valid approaches to construing claims.
Objective(s):

This task addresses the following subject learning objectives:

1 and 4

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

.1, .1 and .1

Weight: 10%
Length:

2500 words
Criteria:
  • Identifies the skilled addressee for the patent specification in suit (SLO1, GA1).
  • Applies advanced knowledge of the complex principles of claim construction (SLO1, GA1).
  • Provides a logical interpretation of the claim language based on the application of the construction principles to the claim set (SLO1, GA1).
  • Writes succinct and effective detailed memoranda of advice to clients critically advising on matters of patent claim interpretation (SLO4, GA5).
  • Applies advanced critical thinking in approaching legal issues and generating appropriate responses (SLO4, GAs 3 & 5).
  • Constructs logical, reasoned and persuasive professional arguments (SLO4, GAs 3 & 5).
  • Communicates in a clear, logical and succinct manner (SLO4, GA5).
  • Writes in accordance with Faculty’s preferred style (AGLC3) using appropriate structure, spelling, grammar and referencing (SLO4, GA5).

Assessment task 3: Infringement & Validity (Mid-Session) Exercise

Intent:

This task assesses the ability to assess if any of the claims are infringed, and to determine the validity of patent claims using relevant tests for novelty, inventive (or innovative) step and compliance with s40.
Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

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

.1, .1 and .1

Weight: 20%
Length:

3500 words (see Further information below).
Criteria:
  • Identifies the skilled addressee for the patent specification in suit (SLO2, GA1).
  • Applies advanced knowledge of the complex principles of claim construction (SLO1, GAs 1 & 3).
  • Provides a logical interpretation of the claim language based on the application of the construction principles to the claim set (SLO2, GAs 1 & 3).
  • Applies advanced knowledge of the legal basis for infringement and assesses whether infringement has occurred based on their construction of the claims of the specification in suit (SLOs 2 & 3, GAs 1 & 3).
  • Applies knowledge of the legal principles underpinning claim validity (SLO2, GAs 1 & 3)
  • Applies those principles accurately to the claims in suit and provides a logical assessment of the validity of the claims in suit (SLO2, GAs 1 & 3).
  • Applies knowledge of the legal principles that govern appropriate content for a letter of professional advice including the scope of information that should be included in a letter of advice, and how to report relevant information to the client clearly and succinctly (SLO4, GAs 3 & 5).

Assessment task 4: Final Exam

Intent:

This task assesses the ability to prepare detailed memoranda of advice and a clear succinct letter of advice to clients advising on matters of claim interpretation, validity and infringement.
Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

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

.1, .1 and .1

Weight: 60%
Length:

3500 words for summary letter of advice (excluding annexures such as construction table)
Criteria:
  • Identifies the skilled addressee for the patent specification in suit (SLO2, GA1).
  • Applies advanced knowledge of the complex principles of claim construction (SLO1, GAs 1 & 3).
  • Provides a logical interpretation of the claim language based on the application of the construction principles to the claim set (SLO2, GAs 1 & 3).
  • Applies advanced knowledge of the legal basis for infringement and assesses whether infringement has occurred based on their construction of the claims of the specification in suit (SLO3, GAs 1 & 3).
  • Applies knowledge of the legal principles underpinning claim validity (SLOs 2 & 3, GAs1 & 3)
  • Applies those principles accurately to the claims in suit and provides a logical assessment of the validity of the claims in suit (SLO2, GAs 1 & 3).
  • Applies knowledge of the legal principles that govern appropriate content for a letter of professional advice including the scope of information that should be included in a letter of advice, and how to report relevant information to the client clearly and succinctly (SLO4, GAs 3 & 5).
Criteria linkages:
Criteria Weight (%) SLOs CILOs
1 .1
2 .1
3 .1
4
SLOs: subject learning objectives
CILOs: course intended learning outcomes

Required texts

  1. Topic Materials and Case studies provided on Canvas.
  2. Current version of the Australian Patents Act 1990 and the Patents Regulations 1991, available from the Commonwealth Attorney-General’s website: (http://www.comlaw.gov.au/Series/C2004A04014 & http://www.comlaw.gov.au/Series/F1996B02697).
  3. Current version of the New Zealand Patents Act 2013 and the Patents Regulations 1991, available from the Commonwealth Attorney-General’s website: (http://www.legislation.govt.nz/act/public/2013/0068/latest/DLM1419043.html & http://www.legislation.govt.nz/regulation/public/2014/0275/latest/DLM6166201.html).

References

  1. Colin Bodkin, Patent Law in Australia (Thomson Reuters, 2nd ed., 2014). Also available online at the UTS Library via the Westlaw AU database.
  2. Lexis Nexis, Lexis Nexis Patent Commentary (Available online at the UTS Library via the Lexis Nexis Australia – Intellectual Property database).
  3. Lexis Nexis, Lexis Nexis Halsbury’s Laws of Australia – Intellectual Property, (Available online at the UTS Library via the Lexis Nexis Australia – Intellectual Property database).
  4. Ian Finch, James & Wells Intellectual Property Law in New Zealand (Thomson Reuters,3rd edition, 2017).

Other resources

  1. IP Australia, Australian Patent Office Manual of Practice and Procedure, Volumes 2 and 3 - National, IP Australia Canberra, (Available online at http://www. ipaustralia. gov. au/ pdfs/ patentsmanual /Web Help/ Patent _Examiners _Manual.htm).
  2. Decisions of Australian patent cases available from Austlii:( http://www.austlii.edu.au).
  3. Decisions of New Zealand patent cases available from NZlii (http://www.nzlii.org).