A patent is a set of exclusive rights granted over any device, substance, method or process that is new, inventive and useful (an Invention), for a limited time after a successful application process. Similar to trade marks, it is a registrable right granted by the country of registration. An applicant for a patent has to disclose the substance of the invention, making the information available to the public. Consequently, some inventors make the business decision not to disclose their patents, instead opting to keep their invention confidential as a trade secret.
If you are granted a patent, you have exclusive rights during the patent term to exploit it. However, a patent will only be protected if all statutory criteria are satisfied. In addition to meeting the criteria for a patentable subject matter, a patent application must include a patent specification that satisfies the legislative requirements for adequate disclosure. These are also known as patent disclosure requirements.
Legislative requirements for disclosure
A patent must meet specification requirements set out in section 40 of the Patent Act. Broadly speaking, the requirements are that the claim(s) made in a patent specification must describe the Invention fully, clearly and succinctly. If the patent specification does not meet the requirements prescribed under section 40, their patent application may be knocked back even if the Invention is deemed a patentable subject matter. Most notably:
- Clear description: The description within a patent application must detail the best method known to the patent applicant for performing the invention.
- Clear and succinct claims: The claims made within a patent application must be clear and supported by what is provided in the description. Although claims define the legal monopoly, if what the claim cannot be supported by the description, the patent will not be protected.
If a claim is not clear or complete enough, and does not disclose the best method known to the applicant of performing the invention, the patent may be knocked back on the ground of ‘insufficiency’. If the matters set out in the patent specification are not supported, the patent may be rejected on the ground of ‘fair basis’.
Reasons behind the strict requirement
It is important to remember that a claim defines the boundaries of a patent (i.e. it marks the territory of your legal claim). This concept is similar to trade mark classes but instead of selecting the classes of goods or services to which a patent will be used, the patent is bound by specifications(s), which sets the legal boundary of patents’ legal rights. This means, if you own a patent, you will have monopoly over how your exploit your method or product within your claim(s). The broadness of this monopoly makes it crucial that a patent accurately specifies the scope of its legal claim.
Intellectual property can be a valuable commodity and should be protected. However this is not always an easy task. If you require assistance in gaining a better understanding of your intellectual property rights, including satisfying patent disclosure requirements, our IP lawyers have extensive experience in this area and would be happy to assist with protecting and registering your intellectual property. To speak with one of our lawyers today, contact LegalVision on 1300 544 755.