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Patent Practice (LAWS70060)

Graduate coursework level 7Points: 12.5On Campus (Parkville)

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As part of the University’s response to COVID-19 and the associated Government restrictions and guidelines, most subjects will continue to be delivered online in Winter and Semester 2.
For information about the University’s phased return to campus and in-person activity in Winter and Semester 2, please refer to the on-campus subjects page.
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Overview

Availability(Quotas apply)
July
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This subject will be delivered online in 2020 over the scheduled dates.

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 Australian and New Zealand patents legislation, for both local and international inventions. The lecturers are a team of experienced patent attorneys and patent lawyers.  The subject meets the Trans-Tasman IP Attorneys Board (TTIPAB) requirements for 'Topic Group F’.

Principal topics include:

  • Australian patent legislation and practice
    • Patents Act 1990; Patents Regulations 1991
    • Kinds of patent application: provisional, complete, standard, divisional, patent of addition, PCT national phase, 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
  • New Zealand patent legislation and practice
    • Patent Act 1953 and Patent Act 2013; Patent Regulation 1954 and Patent Regulation 2014
    • Key practice differences from Australia including transitional provisions between 1953 and 2013 Acts, patentability exclusions, divisional practice, examination deadlines, double patenting, poisonous priority, self-collision, and prosecution strategy
    • Patent practice: kinds of patent application, filing, examination, opposition, grounds, practice and procedures, grant and re-examination, amendment of patent specifications, continuation and renewal fee requirements, restoration of rights, recordal of assignments, licences, mortgages, and changes of name
  • International conventions and agreements
  • Patentability overseas
  • Basic considerations of United States and European patent law
  • Applications under the Patent Cooperation Treaty, filing applications, international phase and entry of national and regional phase
  • Circuit layouts legislation (Circuit Layouts Act 1989 (Cth))
  • Plant breeder's rights legislation (Plant Breeder's Rights Act 1994 (Cth))

Intended learning outcomes

A student who has successfully completed this subject will:



  • Have an advanced and integrated understanding of Australian patent practice including filing, prosecution and maintenance of applications for patent protection under the Australian Patents Act 1990 (Cth) for local and overseas inventions
  • Have a clear understanding of New Zealand patent practice, and in particular a knowledge of key differences and patent prosecution strategies between New Zealand and Australia
  • Have an advanced and integrated understanding of the filing and prosecution of patent applications under the Patent Co-operation Treaty 
  • 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, New Zealand and overseas, particularly USA and Europe
  • Have the cognitive and technical skills to critically examine, analysis, interpret, apply and assess Australian and New Zealand 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.

Last updated: 3 November 2022