Patent Practice

This subject has the following teaching availabilities in 2014:

Successful completion of Patent Law or an equivalent subject, or appropriate practical experience

Applicants without legal qualifications should note that subjects are offered in the discipline of law at an advanced graduate level. While every effort will be made to meet the needs of students trained in other fields, concessions will not be made in the general level of instruction or assessment. Most subjects assume the knowledge usually acquired in a degree in law (LLB, JD or equivalent). Applicants should note that admission to some subjects in the Melbourne Law Masters will be dependent upon the individual applicant’s educational background and professional experience.

The Melbourne Law Masters welcomes applications from students with disabilities. The inherent academic requirements for study in the Melbourne Law Masters are:

• The ability to attend a minimum of 75% of classes and actively engage in the analysis and critique of complex materials and debate;
• The ability to read, analyse and comprehend complex written legal materials and complex interdisciplinary materials;
• The ability to clearly and independently communicate in writing a knowledge and application of legal principles and interdisciplinary materials and to critically evaluate these;
• The ability to clearly and independently communicate orally a knowledge and application of legal principles and interdisciplinary materials and critically evaluate these;
• The ability to work independently and as a part of a group;
• The ability to present orally and in writing legal analysis to a professional standard.

Students who feel their disability will inhibit them from meeting these inherent academic requirements are encouraged to contact the Disability Liaison Unit: www.services.unimelb.edu.au/disability/

This subject follows on from Patent Law (which is a prerequisite) and provides students with the basic knowledge and skills required for the filing, prosecution and maintenance of an application for protection under the Patents Act 1990 (Cth) for both local and overseas inventions. The lecturers are an expert team of experienced patent attorneys and the subject meets the PSB requirements for ‘Topic Group F: Patent Practice’.

Principal topics will include:

• Patent legislation and practice in Australia
• Patents Acts of 1952 and 1990: standard patents; innovation patents
• Kinds of patent application: provisional, complete, standard, divisional, patent of addition, convention and innovation
• Patent application filing and prosecution: searching, filing, examination, opposition, grounds, practice and procedures, grant and re-examination
• Amendment of patent specifications and other documents: allowable amendments, clerical errors and obvious mistakes
• Duration of patent protection: continuation and renewal fee requirements, lapsing and cessation, restoration of rights and extensions of term for pharmaceutical patents
• The Register of Patents: recordal of assignments, licences, mortgages and changes of name and amendments to the Register
• International conventions and agreements
• Patentability overseas
• Basic considerations of United States and European patent law
• Applications under the Patent Cooperation Treaty, filing applications and entry of national and regional phase
• Circuit layouts legislation (Circuit Layouts Act 1989 (Cth))
• Plant breeders’ rights legislation (Plant Breeder‘s Rights Act 1994 (Cth)).

A student who has successfully completed this subject should:

• Understand and be able to advise on the steps involved in the filing, prosecution and maintenance of an application for patent protection under the Patents Act 1990 (Cth) for local and overseas inventions
• Understand and be able to advise on obtaining overseas patents for local inventions
• Understand and be able to advise on the filing and prosecution of applications under the Patent Cooperation Treaty (PCT)
• Understand the purpose, intent and scope of circuit layout rights protection in the Circuit Layouts Act 1989 (Cth)
• Understand the purpose, intent and scope of plant variety rights protection in the Plant Breeder’s Rights Act 1994 (Cth).

Take-home examination (100%) (27 August – 1 September)

Core subject materials will be provided free of charge to all students. Some subjects require further texts to be purchased. Details regarding any prescribed texts will be provided prior to the commencement of the subject.

This subject is not available as a breadth subject.