Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202

The Full Court unanimously allowed an appeal from a decision which had held a claim to an electronic gaming machine patentable. The Full Court did not accept that questions posed by the primary judge were appropriate where there is a question as to whether what is claimed is in substance a computer-implemented invention or something else. The Full Court essentially affirmed principles accepted in previous judgments of the Full Court in relation to computer-implemented inventions but identified the need, as a first step, to examine what is claimed to determine if it is in substance a claim to a computer, rather than a method of using one (formerly [6550]-[6740] and [PA 18.300]-[PA 18.335]; now [6500]-[6700] and [PA 18.300]-[PA 18.330]).

Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2021] FCAFC 224

The Full Court dismissed an appeal from the primary judge and in doing so adopted principles previously set out by the Full Court in relation to the issue of Inventorship ([36130] and [PA 15.100]) and included some clarifying observations about what is to be understood by the word “invention” in this context ([36210] and [PA 15.180]) as well as what constitutes a material contribution to an invention ([36140]-[36160] and [PA 15.120]-[PA 15.140]).
 
Boehringer Ingelheim Animal Health USA Inc v Elanco New Zealand [2021] FCA 1457

The Court held that an amendment to a claim excluding a specific component from a more broadly-defined composition was allowable in view of the fact that the specification disclosed compositions which lacked that specific component and contained no recommendation to include the component ([61620] and [PA 102.250]).

Biogen International GmbH v Pharmacor Pty Ltd [2021] FCA 1591

The Court construed a claim of the type “pharmaceutical substance for some specific therapeutic purpose” as not being directed to the pharmaceutical substance per se ([22160], [PA 40.780]).

Generic Partners Pty Ltd v Neurim Pharmaceuticals Ltd [2022] APO 2

The Commissioner’s delegate confirmed that extension of time to file a patent application may be available to take advantage of the grace period that applies following unauthorised publication of an invention ([76180] and [PA 223.180]). Deferral of opposition proceedings in respect of the amendment application had been allowed pending the outcome of the extension of time application ([68120] and [PA 59.1400]).

Commentary currency

The following chapters have been reviewed in their entirety for this release:

- "The Australian Patents System: An introduction" (from [1010]);
- "The statutory definition of invention" (from [6010]); 
- "Novelty" (from [11010]);
- "Inventive step and innovative step" (from [16010]);
- "The internal requirements for validity (from [21010]);
- "Utility (from [26010]);
- "Who may be granted a patent?" (from [36010]); 
- "Rights of the patentee" (from [41010]); 
- "Patents of addition" (from [56010]);
- "Amendments" (from [61010]); 
- "Patent office proceedings" (from [66010]);
- "Extensions of time" (from [76010]); and
- "Hearings and appeals" (from [81010]). 

Currency of annotations to the Patents Act 1990 (Cth)

The annotations to the following chapters to the Patents Act 1990 (Cth) have been reviewed in their entirety for this release:

- Patents Act 1990 (Cth) – (Annotated) (from [PA 1.20]); 
- Chapter 2 – Patent rights, ownership and validity (ss 13–28) (from [PA 13.20]); 
- Chapter 3 – From application to acceptance (ss 29–52) (from [PA 29.20]); 
- Chapter 4 – Publication (ss 53–58) (from [PA 53.20]); 
- Chapter 5 – Opposition to grant of standard patent (ss 59–60) (from [PA 59.20]); 
- Chapter 6 – Grant and term of patents (ss 61–79A) (from [PA 61.20]); 
- Chapter 6A – Divisional applications (ss 79B–79C) (from [PA 79B.20]); and 
- Chapter 7 – Patents of addition (ss 80–87) (from [PA 80.20]).

The Patent Law in Australia online service continues to be an indispensable guide to obtaining, maintaining, enforcing and challenging the validity of patents in Australia. Balancing both the practical nature of IP Australia processes and in-depth analysis of statute and case law, Patent Law in Australia navigates every aspect of the patenting process, with detailed commentary on the law pertaining to each stage and therefore provides relevant and effective advice for patent attorney's, intellectual property lawyers and barristers. The publication launched in 2008 and is published both as an online subscription service and as a book. The third edition of Patent Law in Australia was published in 2018.

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