Proposition 1: A patent gives the patentee the exclusive rights, during its term, to exploit the invention and to authorise exploitation by another. Patents Act 1990 (Cth), s 13(1).
Exploit means:
- where the invention is a product – make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or
- where the invention is a method or process – use the method or process or do any act motioned in paragraph (a) in response of a product result from such use. Patents Act 1990 (Cth), s 3 and Sch1 (‘exploit’).
Proposition 2: Exclusive rights are given to the first to file a patent based on the filing priority date. Patent Act 1990 (Cth) ss 13(1) and 43(2).
Proposition 3: In order to be standardly patentable, the invention must satisfy the threshold criteria of being suitable subject matter. Patents Act 1990 (Cth), ss 18(1)(a).
Suitable subject matter “offers some advantage which is material, in the sense that the process belongs to a useful art, as distinct from a fine art . . . that its value to the country is in the field of economic endeavour.” National Research Development Corporation v. Commissioner of Patents (1959) 102 CLR 252, 275.
In CCOM Pty Ltd. v. Jiejing Pty Ltd this was refined to “a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour.” (1994) 51 FCR 260, 295.
Proposition 4: Some subject matter is excluded from patentability; therefore there is no exclusive right. Examples of recited excluded subject matter include human beings and biological processes for their generation, Patent Act 1990 (Cth), s 18(2), invention, the use of which would be contract to law, Patent Act 1990 (Cth), s 50(1)(a), a mere mixture of known ingredients for use as food or medicine or a process for producing such an admixture, Patent Act 1990 (Cth), 50 (1)(b)(i), and inventions involving the design, production, operation, testing or use of equipment or plant for the production, enrichment, the reprocessing of nuclear material nuclear explosive devices. Patent Act 1990 (Cth), s 148(1).
Proposition 5: To be standardly patentable, an invention must be non-obvious, novel, and adequately described. Patent Act 1990 (Cth), ss 18 (1)(b)(ii), 18 (1)(b)(i), and 40.
Bibliography
Ann L. Manotti, ‘The Scope of ‘Manner of Manufacture’ Under the Patents Act 1990 (Cth) After Grant v. Commissioner of Patents.’ (2006) 34 Federal Law Review 461.
Charles Lawson. ‘Juridifying the Self-Replicating to Commodify the Biological Nature Future: Patents, Contracts, and Seeds.‘ (2011) 20 Griffith Law Review 851.
