Using Evidence to Overcome Lack of Distinctiveness Trade Mark Office Objections
Under the Australian Patents Act, an invention will be patentable unless it doesn’t comply with a number of requirements set out in the Act.
Two critical requirements are that the invention must be ‘novel’ (i.e. new) and that it must be inventive (or innovative in the case of innovation patents) in light of the prior art base as it existed at the priority date of the patent application.
The prior art base for Australian patents includes the collection of publicly available documents and publicly performed acts, that were put into the public domain before the priority date of the patent application.
There’s no requirement though that for an invention to be patentable no one else must ever have thought of it before the priority date or otherwise secretly used, discussed or written about the invention.
It is quite possible that other people may have thought of the invention and perhaps even discussed it between themselves confidentially at some time in the past without putting knowledge of the invention into the public domain.
Imagine then a scenario where you are accused of infringing a patent for an invention that you yourself had thought of, some years before the priority date of the patent.
Even if you can demonstrate that you knew of the invention, perhaps by providing a diary entry for example, that will not be enough to invalidate the patent.
This is the reason why intellectual property savvy companies have a defensive publication program.
A defensive publication is one that is made to deliberately put information into the public domain so that competitors cannot subsequently patent an invention.
One reason why defensive publication should be considered very seriously by Australian businesses is that innovation patentsmake it possible for competitors to obtain enforceable patents for new products that don’t involve any inventive step.
Innovation patents have been around since 2002 but it is still taking time for Australian businesses to realise that their competitors are now able to apply for patent protection for products that aren’t inventive and which often seem quite run of the mill.
So, if in your business you’ve come up with an idea for a new product but decided not to apply for patent protection for it yourself, and instead to shelve it for the moment, give serious consideration to putting it into the public domain by making a defensive publication.
So, how can you make a defensive publication? There are many ways but the critical point is that if you’re ever required to, you must be able to demonstrate that you made information clearly describing the new product available to people outside your business, on a non-confidential basis, from a particular date onward.
Enough information should be included in the defensive publication so that other people working in the same technical area can readily understand how the product is made and what it does to the point that they would be able to perform the invention without undue trial or experiment.
Publication on a website or in a newsletter, for example, may be sufficient to constitute a defensive publication so long as sufficient technical information is provided.
Defensive publication and a patenting strategy are both important for the comprehensiveintellectual property management of your business.
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