Improvements and modifications occur regularly throughout a
product's lifecycle. In some cases, a desire may arise to
obtain patent protection over such developments. However,
particularly at later stages in the lifecycle, complications can
arise due to the nature of an organisation's own patent
Australian law provides a useful mechanism for managing such
complications: patents of addition. In overview, where a patent or
patent application claims patent of addition status, there is scope
to circumvent inventive step objections raised based on one's
own patent portfolio. Such status can be claimed at any stage
during the pendency of an application, and even after the grant of
a patent (although the procedure is slightly more complicated). In
this manner, addition status can be helpful in overcoming
objections raised during prosecution, and for strengthening granted
rights where enforcement proceedings are foreseeable.
Australian law describes a patent of addition in terms of
requiring an improvement or modification to the
"invention" of the parent application. In practice, the
general test is effectively the same as for unity of invention.
That is, were the claims of a patent of addition included in the
parent application, no unity of invention objection should arise.
This does not necessarily mean that the patent of addition must
have narrower claims than the parent; simply that there should
generally be a common inventive feature.
Other than the modified inventive step requirements, other
general principles of validity apply as per usual. It is important
to note that the priority date of a patent of addition is typically
the date of filing, and there is no protection for novelty against
publications or disclosures before that date, including prior
publication by the disclosure of the parent application.
Additionally, the patent of addition shares the same term as its
It should also be noted that there is scope to amend a pending
application to claim divisional status, provided the parent
application remains pending, or provided the relevant filing date
requirements for divisional applications are met at the time of
filing the later pending application. This has a similar effect in
terms of avoiding inventive step objections in light of one's
own patent portfolio, and can have additional advantages in terms
These and other artefacts of Australian law can be a useful part
of strategic portfolio management; and this is of course an area
with which Shelston IP is well positioned to advise.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
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