Patent Practice

This subject has the following teaching availabilities in 2016:

This subject has a quota of 30 students. Please refer to the Melbourne Law Masters website for further information about the management of subject quotas and waitlists.

136-150 hours

The pre-teaching period commences four weeks before the subject commencement date. From this time, students are expected to access and review the Reading Guide that will be available from the LMS subject page and the subject materials provided by the subject coordinator, which will be available from Melbourne Law School. Refer to the Reading Guide for confirmation of which resources need to be read and what other preparation is required before the teaching period commences.

Successful completion of the below subject, or an equivalent subject, or appropriate practical experience in this field:

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 Student Equity and Disability Support.

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 international 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 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))
• New Zealand patent practice (relevant issues).

A student who has successfully completed this subject will:

• Have an advanced and integrated understanding of the filing, prosecution and maintenance of applications for patent protection under the Patents Act 1990 (Cth) for local and overseas inventions
• Have an advanced and integrated understanding of the filing and prosecution of patent applications under the Patent Co-operation Treaty (PCT)
• Have the cognitive and technical skills to advise on the obtaining of overseas patent protection for local clients
• Have the cognitive and technical skills to research and apply established principles to the filing and prosecution of patent applications in Australia and overseas, particularly USA and Europe
• Have the cognitive and technical skills to critically examine, analysis, interpret, apply and assess Australian patent law in relation to complex issues
• Have the communication skills to clearly articulate and convey knowledge, skills and ideas in the field of patent law to specialist and non-specialist audiences
• Be able to understand the purpose, intent and scope of circuit layouts rights protection in the Circuit Layouts Act 1989 (Cth)
• Be able to understand the purpose, intent and scope of plant variety rights protection in the Plant Breeders Rights Act 1994 (Cth)
• Be able to demonstrate autonomy, expert judgement, and responsibility as a practitioner or learner in the field of patent law.

Take-home examination (5,000-6,000 words as specified in the subject reading guide) (100%) (7 - 12 September).

A minimum of 75% attendance is a hurdle requirement.

Specialist printed materials will be made available free of charge from the Melbourne Law School prior to the pre-teaching period.

This subject is not available as a breadth subject.