Presented by: Barry Eagar ([email protected]) blog: AUSTRALIAN PATENT PRACTICE Successful...

Presented by: Barry Eagar ([email protected])

www.enb.com.au

blog: www.bazpat.blogspot.com

AUSTRALIAN PATENT PRACTICE

Successful Preparation & Prosecution

By

Barry Eagar


www.enb.com.au


INTRODUCTION

1. An Overview.

2. Post National Phase Entry Conformity and Examination.

3. The Innovation Patent – Early Enforcement.

4. Pre-PCT Activity – Claim Interpretation.


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CONFORMING THE APPLICATION

1. “Comprising” and “Including”.

2. Multiple Dependencies.

3. Omnibus Claims.

4. Addressing Australia’s Fair Basis Requirements.


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THE MODIFIED EXAMINATION OPTION

1. Fast track to acceptance.

2. Corresponding patent must be granted.

3. Deferring Normal Examination.

4. Warning – specification must conform to granted patent.


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THE PATENT PROSECUTION HIGHWAY

1. IP Australia volunteered to ease USPTO backlog.

2. Trial PPH process commences 14 April 2008.

3. Similar to PPH with CA, JP, KR & GB.

4. If USPO is OFF with allowable claims then can request accel. exam @ IP Aus.


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THE INNOVATION PATENT

1. Low “innovative” step bar with broad scope.

2. Reduced options for defending an infringement action.

3. Certification required for enforceability.

4. Early enforcement of patent rights.

5. Overcoming prosecution difficulties.


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FILING THE INTERNATIONAL PATENT APPLICATION

1. Only “essential” integers define scope

2. Construe the claims in the context of the specification as a whole

3. Most important – Hypothetical Skilled Person

4. Common sense assessment of what the words convey in the context of the

common general knowledge


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“Blade”

Patent Alleged Infringement

KnifeRounded edge


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“parallel sidewall portions";

"end portions received in sockets in a close-fitted engagement between the parallel facing sidewall portions".

Infringement


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5. Avoid indicating importance and object statements

6. No File Wrapper Estoppel

7. No “Incorporation by Reference”


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TO SUMMARIZE

1. Relatively simple procedure

2. Conform and broaden with amendments

3. Enhance and expedite with Innovation Patent

4. Disclosure is most important pre-filing activity

Presented by: Barry Eagar ([email protected]) blog: AUSTRALIAN PATENT PRACTICE Successful...

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