Patents

1. Background
2. JCU Policy and Process
3. Publication and Confidentiality
4. The Grace Period
5. Special Requirements for US Patents
6. Microorganisms
7. Computer Software

Background

Owning the patent right to an invention gives one a monopoly over the manufacture and sale of the invention.  These are rights that can be licensed to others, in return for royalties (or some other form of return).  Given that JCU is neither in the business of manufacture nor sales, that is the usual practice here.
Any device, substance, method or process is patentable, so long as it:

• ·is new – ie. has not been publicly disclosed in any form, anywhere in the world;
•  involves an inventive step – ie. it must not be obvious to someone with knowledge and experience in the technological field of the invention; and
•  is useful.

• discoveries or scientific principles without application to a useful purpose;
•  mixtures of known components for use in food or medicine (without synergistic effect);
•  working directions for use of a known apparatus;
•  artistic creations;
•  mathematical methods;
•  plans, schemes or other purely mental processes.

•  an Australian standard patent application;
•  an international patent (Patent Co-operation Treaty or ‘PCT’) application; or
•  a patent application in one or more foreign countries.

An Australian standard patent lasts for 20 years.

Approximate costs for initial filings (including Patent Office fees) are:

• $1,500 - $2,500    provisional application
• $2,000 - $5,000    complete application
• $6,000 - $12,000    PCT application
• $5,000 - $20,000    national filings (including translation costs)

A patent monopoly is granted in return for a full written description of an invention (the patent “spec”).  Such a description is required to ensure that other people are able to make a product or repeat a process once the patent period is over.  A specialist in the particular technology must be able to repeat the process or reproduce the product from the directions given in the written description.  (With microorganisms this can be difficult to comply with, and special arrangements are available (see below).)

The primary source of general information about patents is IP Australia , the Commonwealth body that administers patents, trade marks and design rights.  It is highly advisable that anyone who is thinking about taking out a patent explores the site.  For those who are particularly enthusiastic the Patent Manual ( and especially volume 2) is more than instructive.

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JCU Policy and Process

As is common across most universities, JCU asserts ownership of non-copyright intellectual property generated by staff within the terms of their employment (see part 4 of the Intellectual Property Policy).

When a staff member comes up with something they think might be patentable – or even if not patentable, has some commercial potential (see section on Data & Confidentiality) – they should bring it to the attention of the PVC (Research & Innnovation) (see part 7 of the Policy, and the form that is downloadable there from).

At the same time the scientific literature should be checked for relevant publications, and the inventor should do a preliminary search of the patent databases, at:

• IP Australia

•  US Patent and Trademark Office
•  ESP Net (for European and PCT filings)

JCU has 12 weeks to determine, in consultation with the inventor(s), whether or not to pursue the commercialisation of an invention (with a possible extension of 4 weeks – see part 7 of the Policy).  If it does not wish to do so, the rights to the invention will, at the inventor’s request, be assigned back (part 4).
If commercialisation is an option, JCU will arrange for a patent attorney to evaluate patentability and to file a provisional patent application.

Given that taking out a full patent (and bringing a new invention to the market) is a costly business, it is only in very rare and exceptional cases that JCU can support doing so on its own account.  It is therefore critical for the researcher and the Research Innovation and Development Office to obtain industry participation (via a licence agreement) in commercialisation.  This can be difficult, as potential industry partners often want an invention developed almost to the point of marketability before taking it on – and that point may be some distance from that at which the provisional patent is filed.  If an industry partner is not found it is possible to let the provisional lapse and re-file later, however that does lose the priority date.

One way of dealing with the funding gap between research and commercialisation is with a start-up company.  Rather than have a commercial partner license the research outcome at a fledgling stage, an investor makes a speculative investment in a particular technology to bring it to a point of development at which a commercial partner is more likely to buy in (to the investor's profit).  Typically the patent will be assigned to the start-up, with the researcher (and institution) taking equity in the company (rather than royalties).

Whatever the commercialisation option, it is critical that all sources of origin of a patent are identified, and particularly:

• the presence of any background IP from other research projects (and any consequent claims on that background IP);
• the contribution of any students to the project (students own the IP they generate - see the section on Students).

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Publication and Confidentiality

All information that constitutes and supports an invention must be treated as confidential, preferably up to the point that a full patent application is filed.

A disclosure of such information prior to filing a patent application will constitute prior art against which the patent application will be evaluated for novelty. Normally the first filing date (or “priority date”) will be of a provisional patent application. Publication of the invention described in the patent application prior to that date will (subject to the discussion below,) mean that a patent will not be granted.

Release of information to someone who is not under an obligation to keep that information confidential, is sufficient to constitute publication. Any release to anyone outside of JCU who is not under such an obligation of confidentiality must be made with the protection of a confidentiality (or non-disclosure) deed.

Disclosure after the filing of a provisional application may not jeopardise the patent, but only to the extent that the disclosed information is included in the provisional application. If the specification of the invention develops during the time between filing the provisional and the full applications, then any disclosure of those developments prior to filing the full application will be prior art against which the full application will be evaluated. And likewise for claims made in subsequent secondary patents.

A further reason for not making public disclosures prior to filing a full application is that it is not unusual for provisional patents to be allowed to lapse. Twelve months may prove inadequate to get the research to the point that a full application can be made, or may see developments that alter the patenting strategy. Disclosure under such circumstances could have disastrous consequences for intellectual property protection.

Disclosures should only be made after consultation with RIDO, and, where necessary, must be made with the protection of a confidentiality deed.

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The Grace Period

Despite what is stated in the previous section, there is (as of 1 April 2002) a 12 month grace period for the filing of full applications. That is, where information about an invention is publicly disclosed - for example by the sharing of research results at seminars or conferences, through journals or on the internet - a full application must be filed within 12 months of the date of disclosure.

However, such disclosures are most definitely not encouraged. As IP Australia states:
The grace period may help a patent application succeed in cases where disclosure of an invention has been made by mistake or is ill timed. However, a grace period should not be used as a general strategy for publishing an invention before filing a patent application. The lack of a uniform grace period or grace period requirements around the world could mean patent applications that rely on grace period disclosures may be invalid in other countries. In addition, third parties who use an invention in the grace period and before a patent application is made will retain their rights to use the invention.

The grace period will not provide an earlier priority date, which remains the date of first filing.

As noted in the previous section, any disclosure that is made of a patentable invention prior to the filing of a full application be made under the protection of a confidentiality deed.

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Special Requirements for US Patents

Unlike Australia (and most other countries), the US grants patents according to the date of invention, rather than the date of filing an application to patent the invention.  This means that it is critically important that appropriate records be kept in order to establish the date of invention.

There are no official guidelines, but the following procedures are recommended to maximise the likelihood that an inventor’s records will provide adequate proof for US purposes.  They may be difficult to adhere to, especially where an invention is serendipitous, but it is essential that any statement by an inventor can be independently corroborated.

[These procedures have been published by Griffith Hack, one of the patent attorney firms used by JCU, and thanks are due for their permission to reproduce them.]

• Records should be kept in a bound notebook with consecutively numbered pages.  Records kept on a computer are not currently acceptable as evidence of invention.
• Entries should be made in black pen, not pencil.
• The date should be entered on each page.
• New ideas and plans for experiments should be recorded.
• The purpose of each experiment should be indicated.
• Entries should be made directly in the notebook as the experiment is carried out.  Results should be entered immediately they are obtained.
• Each experiment performed should be described in detail in the past tense.
• If some of the experimental work is carried out by another person, the data generated by that person should be entered in the bound notebook as soon as the researcher receives it.
• All non-standard terms and abbreviations should be defined in the notebook.
• Some results may be difficult to enter directly into the notebook.  Photographs, graphs etc should be stuck in, and signed and dated across the border to show that they have not been added later.  Bulky results such as large computer printouts, may need to be kept separately.  Some laboratories keep separate catalogues of signed and dated printouts numbered by consecutive catalogue numbers, with a description of the results and a cross-reference to the catalogue number entered in the notebook.
• Incorrect entries should never be erased, but should be struck through with a single line.
• Blank sections of pages should be drawn through with a single diagonal line.
• Each page of the notebook should be signed and dated by at least one witness who can understand the experiment and, ideally, has observed the experiment.
• The witness should be someone who is not likely to be a co-inventor of any invention embodied in the experiment being witnessed.  Where possible, critical experiments should be conducted by someone who is not likely to be a co-inventor.  A laboratory technician who is working under the direct instruction of the inventor, using standard manipulations, and who is not required to solve any problems in order to perform the experiment will probably satisfy this requirement.

Microorganisms

The isolation and cultivation of naturally occurring micro-organisms which have some new use satisfy the requirement of intervention (ie. goes beyond mere discovery) and hence are patentable.  As IP Australia notes: "a claim to a biologically pure culture of the naturally occurring micro-organism without any specified ingredients is acceptable provided the micro-organism has a new use".

There are, though, complications with regard to micro-organism descriptions within a patent spec.  The requirement for full description of a microorganism is satisfied if the microorganism is deposited with one of the recognised International Depository Authorities (IDAs) under the Budapest Treaty.  If an invention then involves the use, modification or cultivation of the microorganism, and someone could not be expected to perform the invention without a sample of the microorganism, and the microorganism "is not reasonably available to a person skilled in the relevant art" in Australia, then full description can only be satisfied if there has been lodgement with an IDA.

[Notes on microorganism patenting  and details of deposits under the Budapest Treaty are available online via IP Australia.]

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Computer Software

Software is patentable if it includes a mode or manner of achieving an end result that is artificially created and has economic utility.  In general the invention must be industrially applied.  Software that is merely a procedure for solving a given type of mathematical problem is not patentable.

IP Australia have more information online.

See also the note in the local section on Copyright.

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