Interpretation and Validity of Patents

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 equivalent subject:

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.

Reading and interpreting patent specifications is a central part of a patent attorney’s daily practice. It is also a critical feature of any patent litigation where both sides will be competing for alternative interpretations that favour their client. This subject is intended to hone these skills of analysis and interpretation, working on the basic legal principles that students seeking Professional Standards Board (PSB) accreditation have already obtained through their study of patent law and patent practice. It is taught by experienced attorneys and litigators, and meets the PSB requirements for Topic Group H.

This subject will be conducted with of a number of case studies carried out by a team of practitioners to develop skills in the application of the rules of interpretation to an Australian patent specification and in the application of Australian patent law.

Principal topics include:

• The validity of an Australian patent or patent application under the provisions of section 40 of the Patents Act 1990
• The validity of an Australian patent or patent application in the light of prior art information supplied, including through prior published specifications and prior user
• The scope for making amendments of patent applications
• The infringement of an Australian patent by a competitor’s product or process.

A student who has successfully completed this subject will:

• Have an advanced and integrated understanding of the principles and rules of Australian patent law relating to the reading and interpretation of patent specifications, with particular regard to issues of validity over prior art, amendment (where relevant) and infringement
• Be able to critically examine, analyse, interpret and assess the application and effectiveness of these principles and rules
• Be an engaged participant in debate regarding emerging and contemporary issues in the field of interpretation of patent specifications
• Have an awareness of the factors and processes influencing governmental and parliamentary revision of the relevant legal framework, including recent initiatives to align Australian patent law more closely with the patent laws of important trading partners
• Have the cognitive and technical skills to independently examine, analyse and interpret patent specifications and to advise clients on issues of validity, amendment and infringement
• Have the communication skills to clearly articulate and convey complex information regarding these matters to relevant specialist and non-specialist audiences, in particular to clients
• Be able to demonstrate autonomy, judgement and responsibility as a practitioner and learner in this field.

4-hour examination (100%) (2 December, am)

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.