Patents 

A patent protects a new and inventive product or process by giving its owner an exclusive, time-limited right to exploit it, in exchange for the invention being disclosed to the public. Where copyright arises automatically, a patent must be applied for, examined and granted — and that difference in method reflects a real difference in what each right is trying to achieve.

What a patent protects

A patent protects an invention: a defined product or process, rather than a particular expression of it. Once granted, the patent owner has the exclusive right to make, use, sell, import or otherwise exploit the invention within Australia for the life of the patent, and to license others to do so. Because a patent can, in effect, protect the underlying technical idea once it is reduced to a sufficiently defined and new form, the gateway requirements for obtaining one are considerably stricter than for copyright.

The gateway: patentability requirements

An invention must satisfy three basic requirements before a patent will be granted.

• Novelty — the invention must not already have been made publicly available, anywhere, before the relevant priority date. Prior publication or prior public use of the same invention, even by the applicant, can destroy novelty.
• An inventive step — the invention must not be obvious to a person skilled in the relevant field, having regard to the prior art. A development that any competent practitioner in the field would have arrived at as a matter of course will not clear this bar.
• Manner of manufacture — the invention must produce an artificially created, economically useful result, rather than being a mere abstract idea, a discovery of a law of nature, or bare information. This requirement has a long history and its outer boundary is genuinely contested in some areas, particularly for computer-implemented inventions and business methods, where courts continue to work out when an underlying idea has been given enough technical substance to qualify. D'Arcy v Myriad Genetics Inc (2015) 258 CLR

334¹ shows this boundary has real teeth even outside software: an isolated naturally occurring gene sequence was held not patentable, because it was not itself an artificial creation.

Examination and registration

Patent applications are examined against these requirements by the patent office before a patent is granted — a substantive, adversarial-in-effect process that copyright has no equivalent of. A standard patent, once granted, lasts for a limited term, generally up to twenty years, with narrow extensions available in limited circumstances such as certain pharmaceutical patents. When the term expires, the invention falls into the public domain and anyone may use it freely.

The trade-off: disclosure for monopoly

Patent law rests on a deliberate bargain: the inventor discloses, in the patent specification, enough information for a person skilled in the field to understand and eventually reproduce the invention, and in return receives a temporary but genuinely exclusive right to exploit it. The disclosure is the point — it adds to the store of public technical knowledge immediately, even though exploitation is reserved to the patent owner until the term expires. An inventor who instead keeps an invention secret gets no patent monopoly at all, but may still be able to rely on the law of confidential information for as long as the secret is kept.

Contrast with copyright

Copyright and patents sit at opposite ends of the same spectrum. Copyright protects a broad range of expressive subject matter automatically, without examination, for a very long term, but never protects the underlying idea. A patent protects a narrow category of new, inventive, useful technical subject matter, only after examination and registration, for a much shorter term — but it can protect the idea itself, once properly claimed. A single piece of work, such as software, may attract copyright in its code as written expression while remaining entirely unprotected by patent law unless the underlying technical solution independently satisfies the patentability requirements.

Applying this in a problem question

1. Identify precisely what is claimed as the invention — a product, a process, or both — before testing anything else.
2. Test novelty: has the substance of the invention already been made public anywhere before the priority date?
3. Test inventive step: would it have been obvious to a person skilled in the relevant field, in light of the prior art?
4. Test manner of manufacture: does it produce an artificially created, useful result, rather than being an abstract idea, discovery, or other excluded subject matter?
5. If a requirement looks doubtful, consider whether the client is better served, at least for now, by confidentiality, copyright or trade mark protection rather than assuming a patent is the only avenue.