Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
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Results: 4 Answers
What rights are obtained when a patent is registered?
Upon registration, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise others to exploit the invention.

The patent area is Australia, the Australian continental shelf and waters above the Australian continental shelf and the airspace over those regions.

‘Exploit’ is defined as including:

  • making, hiring, selling or otherwise disposing of a product (or offering to do so);
  • using a product;
  • keeping a product; and
  • using a method or process or dealing with a product arising from the method.

When a patent is registered, the owner has the right to commence legal action with a view to obtaining an injunction, damages or account of profits, as well as a portion of the legal expenses in enforcing the patent. Although a patentee cannot commence infringement proceedings until the patent is registered, any damages or account of profits can be backdated to the date of publication.

There are a small number of statutory defences to infringement, which include the following:

  • The alleged infringement occurred on an aircraft or vessel temporarily in the jurisdiction;
  • The alleged infringement amounted to experimental use;
  • The alleged infringement amounted solely to the registration of a product for therapeutic use;
  • The alleged infringer had prior use of the invention; or
  • The alleged infringement took place when the patent was in a state of temporary lapse.
For more information about this answer please contact: Charles Tansey from Shelston IP
How can a patent owner enforce its rights?
A patent owner can enforce its rights by commencing action for infringement in court - typically, the Federal Court. A patent owner can seek preliminary discovery if it has a reasonable belief that infringement is taking place, but does not have sufficient evidence to definitively conclude that infringement is occurring.

In most cases a patent owner wishing to enforce its rights will commence by writing to the potential infringer, placing it on notice as to the existence of the patent and, depending on the circumstances, seeking an explanation for the conduct complained of or asking the infringer to cease the infringing conduct.

The Australian Patents Act has penalties for unjustified threats of infringement, so a patent owner must have a high level of confidence that infringement is occurring before making such an assertion and practitioners should be cautious in drafting such correspondence. An action for unjustifiable threats is possible in any case in which an infringement action is ultimately unsuccessful; however, damages are unlikely to be awarded unless the threats were of such a nature as to cause demonstrable harm to the defendant (Mizzi Family Holdings Pty Ltd v Morellini (No 3) [2017] FCA 870).

For more information about this answer please contact: Charles Tansey from Shelston IP
For how long are patents enforceable?
Patents are enforceable for a term of 20 years from the filing date. For applications proceeding in Australia as national stage entries via the Patent Cooperation Treaty, the filing date is the international filing date.

The term of any subsequent divisional patent is calculated from the filing date of the earliest parent application.

The term of patents for certain pharmaceutical substances can be extended by up to five years. This is discussed in more detail in question 3.6.

A patent becomes enforceable only upon registration (grant), although remedies for infringement date back to the publication date of the relevant application.

Australia also has a second-tier patent system - the ‘innovation patent’ - for inventions of notionally lower inventive step (“innovative step”) than a standard patent. Innovation patents have a term of eight years from filing. Innovation patents are enforceable only if they have been certified (examined) after having granted.

Both standard patents and innovation patents can be enforced after their expiry in relation to infringing acts that took place prior to expiration.

For more information about this answer please contact: Charles Tansey from Shelston IP