IPRIA Working Paper Series
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Intellectual Property Research Institute of Australia Working Paper No. 09/2006 A Comparative Analysis of The Australian Patent Office's Examination of Biotechnology Reach-through Patent Claims by Amanda S Y Lim and Andrew F Christie Date: May 2006 Abstract: “In an earlier study we analysed how the United States Patent and Trade Mark Office, the European Patent Office and the Japan Patent Office (jointly referred to as the ‘Trilateral Offices’ or TOs) assessed reach-through patent claims in biotechnology. Our analyses utilised a comparative study undertaken by the TOs towards biotechnology patent claims when assessments were made for the patent law requirements of utility, written description and enablement, as they are referred to in the USA. We found that any claim that was a reach-through claim was assessed to be invalid by the TOs, and therefore filtered out from grant. The patent law requirement of written description alone or enablement alone would operate to invalidate the reach-through claims of that study. This study analyses how the same claims from the Trilateral Offices’ study are assessed by the Australian Patent Office (APO). Firstly, we determine that the APO in their examinations map the patent law requirements of ‘utility’, ‘written description’, and ‘enablement’ to the equivalent Australian patent law requirements of ‘manner of manufacture and description of use’, ‘clarity, succinctness and fair basis’, and ‘full description and best method’, respectively. We then compare the biotechnology patent examination practices of the APO with those of the TOs in respect to each of the mentioned patent law requirements. Finally, we analyse the approach of the APO towards reach-through claims in biotechnology. We find that under Australian practice not all types of reach-through claims in the field of biotechnology are filtered out from grant of a patent. The Australian patent law requirements of fair basis and full description, whether alone or in combination, are unable to invalidate all types of reach-through claims. It seems, therefore, that the APO is more generous than is the TOs in relation to reach-through claims in biotechnology.” Downloads: PDF [172K] |
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