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Australian Domain Names up for Grabs?
Chris Bevitt June 2008
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| So how much is www.sexy.com.au worth and can I sell the name? Actually, RU Sexy already beat you to that name but substitute another prospective domain name of your choice. |
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The Patent Prosecution Highway
Nicholas Lakatos and Jack Redfern June 2008
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| In an interesting development for those seeking patent protection in both Australia and the US, the Australian Patent Office and the USPTO have announced that, as of 14 April 2008, a Patent Prosecution Highway (PPH) will be introduced on a one-year trial basis. The PPH is intended to shorten patent examination delays before each patent office by leveraging work conducted by the other. |
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Who Owns IP Produced "On the Job"?
Gareth Dixon and Russell Davies June 2008
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| “..[A] duty to research does not carry with it a duty to invent”. These words, handed down in a recent Federal Court judgement by Justice French, have many Australian employers (such as universities and other R&D facilities) now frantically reviewing their contractual arrangements with staff and IP ownership policies, which may no longer afford them the legal protection they once assumed. |
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Australian Full Federal Court Clarifies the Prior Art Base for the Purposes of Assessing Inventive Step
Michael Zammit and Paul Harrison June 2008
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In the recent case of Ajinomoto Co Inc v Nutrasweet Australia Pty Ltd [2008] FCAFC 34, the Full Federal Court considered the construction of section 7(3) of the Patents Act 1990 (Cth) (“Act”), which defines the prior art base for the purposes of assessing inventive step. The decision is relevant for s7(3) prior to the statutory amendments introduced by the Patents Amendment Act 2001 (Cth), and is therefore important for patents having a filing date before 1 April 2002. In particular, the decision is important because of the Court’s construction of the phrase “relevant to work in the relevant art in [Australia]” as well as its findings on the admissibility of a relevant piece of prior art as evidence of obviousness. |
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Alphapharm Pty Ltd v H Lundbeck A/S [2008] FCA 559
Grant Shoebridge and Jacinta Flattery-O'Brien June 2008
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| This decision of the Federal Court is the culmination of a full-scale attack on Lundbeck’s Escitalopram Patent (AU 623144) by Alphapharm and Arrow Pharmaceuticals (Arrow). Although the validity of the patent was upheld, the patent term was slashed by five years after it was held that Lundbeck’s application for an extension of term was made outside the required time frame. The patent’s adjusted expiry date is June 2009. |
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Auspat...What's That?
Frazer McLennan and Jacinta Flattery-O'Brien June 2008
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| AusPat, a new online searching system designed as a single enquiry point for Australian patent information, has been released by IP Australia. AusPat brings together IP Australia’s previous two searching systems: PatAdmin and Patsearch, into a single database covering, eventually, all Australian patent applications from 1904. |
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Understanding Business Methods
Matthew Ward and Stuart Smith June 2008
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| The patentability of so-called “business methods” has been a hot topic in the area of patent law over the past few years. The current position in Australia and the US is that an invention is not excluded from patentability simply because it might involve a method of doing business. However, before delving into the intricacies of what might and might not be patentable, a better place to start is with a more fundamental question: ‘what is a “business method”?’ |
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No Design in Type Font
Andrew Lowe and Stuart Smith June 2008
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| Microsoft Corporation [2008] ADO 2 (16 January 2008) |
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Shape Marks Cannot be used to Extend Patent Monopoly
Peter Treloar June 2008
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| Australia’s Federal Court has thwarted a trade mark owner’s attempts to use a shape trade mark to extend monopoly protection for a utilitarian product. |
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Are You Master of Your Domain?
Michael Deacon and Chris Bevitt June 2008
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| In February 2008, MarkMonitor, Inc released its latest Brandjacking Index. The Index summarises data collected by the US company on how popular brands are abused online. Significantly for trade mark and brand owners, the Index indicates that cybersquatting increased by 33% over 2007. Studies into the practice have found that cybersquatters are now targeting more popular consumer brands over a wider range of industries. Trade mark owners and brand name users must remain vigilant in monitoring use of their brands online to ensure that their interests are not diluted by unauthorised use. |
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New Zealand - Patent Attorney Privilege Clarified by New Evidence Act
Gareth Dixon and Rebekah Gay July 2008
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| New Zealand’s new Evidence Act 2006 came into effect on 1 August 2007. There are significant consequences for patent attorneys practicing both in NZ and abroad, with the net effect being the provision of an extensive patent attorney privilege against discovery during court proceedings. |
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New Acceptance Process for Patent Applications in New Zealand
Simon Ma and Peter Heathcote June 2008
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| The Intellectual Property Office Of New Zealand (IPONZ) has introduced a new, streamlined process that will apply to patent applications accepted on or after 1 June 2008. Under this new process, once an Examiner determines that an application is in order for acceptance, IPONZ will directly issue an official Notice of Acceptance. |
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Unique Opportunities in Australia for Protection of Simple Innovations and Functional Designs
Caroline Bommer December 2007
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In many jurisdictions it is becoming increasingly difficult to get IP protection for inventions that seem relatively simple or incremental, yet which represent significant investment for the commercialising entity. However, Australia has two regimes that may provide a strategically useful solution. The first is via the Innovation Patent system and the second via the route of Registered Designs.
With both systems grant or registration is automatic provided the basic filing formalities have been met. However, they cannot be enforced until they are examined and certified. This means that preliminary rights can be established at a relatively low cost and examination and prosecution costs can then be deferred until the applicant has a need to enforce the properties against third parties. |
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Copyright Cases, The Best of 2007
Chris Bevitt December 2007
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| A selection of the best copyright cases from 2007. |
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Australian Geographical Indications not Governed by EU Considerations
Sean McManis November 2007
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| In a dispute concerning the determination of a geographical indication being a region to be known as “King Valley”, there were appeals from the decision of the Administrative of Appeals Tribunal (the Tribunal) by King Valley Vignerons, which sought to have a larger area included in the region than the area that was the subject of the Committee’s final determination, and by Whitlands Vignerons, who sought to have a Whitlands High Plateaux area (which was included in the King Valley region) classified as a different region. |
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Duty to Amend Remains After Duty to Disclose Abolished
Peter Treloar November 2007
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On 22 October, 2007, the Australian Government eased our “duty of disclosure” provisions.
Previously, applicants had a duty under our legislation to provide our Patent Office with copies of search reports conducted by various foreign patent offices for the corresponding case. This created a significant administrative overhead for applicants. |
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Update on Letters of Consent
Sean McManis November 2007
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| IP Australia, who is responsible for the registration of trade marks in Australia, has updated its practice concerning letters of consent. |
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Removal of Australian Duty of Disclosure Requirements
Andrew Lowe and Caroline Bommer October 2007
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| The Australian Patents Regulations were amended on 22 October 2007 to remove the obligation to provide foreign search results to IP Australia (the Australian Patent Office). |
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Australia to Introduce Experimental Use Exemption for Patent Infringement
Peter Treloar October 2007
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| In a potentially dangerous development for patent holders, the Australian Government, in an adventurous move, has accepted the recommendation of the Australian Council on Intellectual Property (ACIP) to introduce an experimental use exemption (EUE) under the Patents Act. To be clear, this is not an amendment to current law, it constitutes the introduction of a statutory EUE where previously none existed. Moreover, the notion of an EUE does not feature in our precedent law. |
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European Patents - Will Something be Lost in the Translation?
Martin Leeuwangh and Jack Redfern October 2007
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| The cost of obtaining patent protection in Europe seems set to reduce significantly next year
In September this year, a bill was passed by the lower house of the French parliament that has the potential to reduce dramatically the cost of obtaining patent protection in Europe. The bill is now to be considered by the French Senate in October and, if approved, it may become law early in 2008. As a result, the cost associated with preparation of translations of a patent may be reduced by as much as 45%. |
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Has the High Court Unlocked the Door for Patentees?
Jane Choat and Rebekah Gay October 2007
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| The patent dispute between Lockwood Security Products Pty Ltd (“Lockwood”) and Doric Products Pty Ltd (“Doric”) has been running since 2000 and has now been the subject of two decisions of the High Court of Australia. In the second decision handed down by the High Court in May this year,1 the High Court has reiterated the legal principle that a “scintilla of invention” remains sufficient in Australian law to support the validity of a patent. The High Court’s decision also provides guidance in relation to other factors that may be taken into account when assessing whether or not an invention is obvious. |
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Will a US Patent be More Difficult to Obtain After KSR V Teleflex Inc?
Sarah Herbert and Charles Tansey October 2007
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| In what was hailed as a landmark case, the US Supreme Court released the decision in KSR International Co v Teleflex Inc (KSR) in April 2007. This decision was thought to be one that could have a significant impact on patent prosecution and infringement in the U.S., particularly in relation to the number of factors to be considered with regards to obviousness1. |
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A New Domain for Asia
Michael Deacon and Chris Bevitt October 2007
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| The new “.asia” top level domain is to be launched from October 2007. The “.asia” domain is designed for use by individuals or organisations with a presence or interest in the Asia-Pacific community, covering over 70 countries in the Asia-Pacific region. To be eligible for a “.asia” domain, applicants must be registered within the Asia-Pacific region or be able to list an administrative contact who is registered in or is a citizen of a country in the Asia-Pacific region. |
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A Screeemer of an Error: “Best Efforts” in a Patent Licence
Alex Rhydderch and Chris Bevitt October 2007
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Framish Holdings Pty Limited v Force Industries Pty Limited [2007] VCC 680
In a judgement made on 6 July 2007 by Judge Murphy in the County Court of Victoria, the standard imposed on a licensee by a “best efforts” obligation in the context of getting an early stage product to market was examined. |
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Cadbury Successful in Appeal for New Trial over Darrell Lea’s Use of Purple
Sean McManis October 2007
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| In Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd, the Full Court of the Federal Court of Australia has upheld Cadbury Schweppes Pty Ltd’s appeal from a decision of the Federal Court of Australia over its dispute with Darrell Lea Chocolate Shops Pty Ltd arising from Darrell Lea’s use of a particular shade of purple in the get-up of its chocolate confectionary business. |
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Into the Light - Australian Patent Documents Come Out of the Dark
Lee Morrisroe and Jacinta Flattery-O'Brien October 2007
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| With the proliferation of patents and licences with overlapping and competing rights, the ability to interpret and filter patent documents has never been more important. Recently, Australian start-up CAMBIA has improved access to patent texts by creating ”Patent Lens” an open source, freely accessible IP database that contains a large collection of patent documents from the European Patent Office (EPO), the US Patent & Trademark Office (USPTO) and the World Intellectual Property Organisation (WIPO). |
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US Adopts New Rules For Patent Examination
Lyrissa Di Fiore and Ivan Rajkovic October 2007
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| In an attempt to reduce the backlog of patent applications awaiting examination, the United States Patent & Trademark Office (USPTO) has recently published new patent prosecution rules relating to:
- continued examination and continuation application practice;
- the number of claims allowable in a patent; and
- related application (common claims) practice. |
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Shanghai'd Domain Names
Chris Bevitt and Michael Deacon June 2007
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| Registering a Chinese domain name can be an important step for any company wishing to establish a foothold in the Chinese market. Companies considering Chinese domain name registration need to be aware of Chinese registration and administration practices to ensure that their domain name is properly registered and receives protection. |
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Copying your Favourite CD can now be Legal
Chris Bevitt and Michael Deacon June 2007
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| The Australian Copyright Amendment Act 2006 was passed on 11 December 2006 as part of the Commonwealth Government’s copyright reforms in response to new challenges posed by emerging technologies and the growth of the digital environment. |
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Unjustified Threat of Infringement
Caroline Bommer and Rodney Dabboussy June 2007
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| World of Technologies (Aust) Pty Ltd v Tempo (Aust) [2007] FCA 114 (14 February 2007)
A recent decision by the Federal Court has served as a timely reminder to stakeholders to be wary when making any threat of infringement, awarding the respondent in World of Technologies Pty Ltd v Tempo damages to the value $213,059.96 for lost profits due to an unjustified threat of design infringement. |
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Are Type Fonts Registrable Designs
Russell Davies and Andrew Lowe June 2007
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| Re Design Application No. 0040/04 et al. in the name of Microsoft Corporation [2007] ADO 1
Summary
The Australian Designs Office (ADO) has refused registration of 24 design applications filed by Microsoft Corporation (Microsoft) in respect of type fonts because a type font is not a registrable design under the old Australian Designs Act 1906 (the 1906 Act). Whilst decided under the now repealed 1906 Act, this decision may have application to the new Designs Act 2003 (the 2003 Act). |
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Generics Emboldened in Australia
Jacinta Flattery-O'Brien and Patrick Dwyer June 2007
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| Developments in Australian law and practice over the last year have been keenly followed by innovator pharmaceutical/biotechnology companies and generic drug manufacturers alike. Below we review a selection of the relevant cases and changes to Australian patent law. |
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Experimental Use Exemption - Australia and New Zealand
Paul Harrison and Gareth Dixon June 2007
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| Patents legislation throughout the world variously provides that one party shall not “exploit” another’s patented invention. |
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Star Struck Down by Full Federal Court
Sean McManis and Kathy Mytton June 2007
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| In Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42 the Full Court of the Federal Court has reversed the primary Judge’s order dismissing an allegation of trade mark infringement. |
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Amendments to the Trade Marks Act
Sean McManis June 2007
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| In our January newsletter we highlighted proposed changes to the Trade Marks Act 1995. All of those changes have now taken effect, with the exception of the reduction in the grace period for renewals from 12 to 6 months, which takes effect from 27 March 2008. |
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