Google revises AdWords trademark policy: keyword advertising to go unchecked
17 Apr 2013 - Google will no longer monitor or restrict keyword advertising following receipt of trademark complaints in Australia and certain other countries. The announcement follows a recent decision of the High Court of Australia that Google was not responsible for the misleading use of the AdWords service by advertisers that paid Google to display their sponsored links in response to particular search terms. Full text

Functional ingredients: the past may come back to bite you!
10 Apr 2013 - A recent decision by the Full Bench of the Federal Court may have a far-reaching impact on the food technology sector in Australia. The case raises concerns for developers of food products with ingredients which impart beneficial functions other than supporting good nutrition. Full text

Government pledges new equity funding for innovative start-ups
13 Mar 2013 - The Australian government’s recently released Industry and Innovation Statement contains a number of measures aimed at securing and increasing the number of Australian jobs. It also contains legislative measures that directly affect existing small and medium-sized enterprises and large companies, as well as start-up businesses, engaged in developing new and innovative products and processes. Full text

Extension of time provisions to extend patent terms
27 Feb 2013 - In an appeal from a Patent Office decision to grant an extension of time, the Administrative Appeals Tribunal recently considered whether the Patent Office had the power to grant an extension of time to apply for an extension of a patent term outside the prescribed period, and whether the office’s use of discretionary powers in awarding the extension was justified. Full text

Federal Court of Australia confirms that human genes are patentable
20 Feb 2013 - In Cancer Voices Australia v Myriad Genetics Inc – a landmark decision concerning the patentability of BRCA genes which are found in sufferers of breast and ovarian cancers – a single judge of the Federal Court of Australia has held that human genes are patentable. The judge distinguished this case from the US Court of Appeals decision in Association for Molecular Pathology v United States Patent and Trademark Office. Full text

Are you ready for the raised bar in Australia?
06 Feb 2013 - The Australian patent and other IP laws are set to undergo their most significant change in a number of years. The Intellectual Property Laws Amendment (Raising the Bar) Act passed into law last year, and the majority of the provisions will come into effect on 15th April 2013. The changes will affect trademark, design, plant breeders' rights and copyright law, but most notably patent law. Full text

Trademark licensors beware
30 Jan 2013 - A company has registered a logo for solar panels and installation services and licenses the logo to another company for use in relation to marketing solar energy systems. This sounds fairly routine, so what could possibly go wrong? Quite a bit, as shown by a recent Federal Court of Australia decision. Full text

Patent opposition practice: Raising the Bar, considerably!
16 Jan 2013 - The extension of time provisions for the evidentiary rounds of patent oppositions are heavily utilised and a decision usually takes at least two and a half years after the opposition is filed. However, the "Raising the Bar" provisions, which come into force in April 2013, are set to change Australian opposition practice considerably for the better - but potentially for the worse. Full text

Pharmaceutical Patents Review Panel releases background and issues paper
28 Nov 2012 - On 21st November 2012 the Pharmaceutical Patents Review Panel released a background and suggested issues paper for a pharmaceutical patents review. The review will evaluate whether the system for pharmaceutical patents effectively balances the objectives of securing timely access to competitively priced pharmaceuticals, fostering innovation and supporting employment in research and industry. Full text

"Soled" out: Louboutin is hot on his heels
03 Oct 2012 - After successfully protecting his "red sole" trademark in the United States, designer Christian Louboutin has registered a colour trademark in Australia in the particular Pantone shade 18.1663TP, as applied to the sole of a shoe. The developments highlight the real difficulties of obtaining and enforcing a colour trademark. Full text

Adding GRANOLA to the mix? Reviewing the risks of genericism
12 Sep 2012 - The Federal Court's recent decision regarding alleged infringement of Sanitarium's trademark registration for GRANOLA highlights the importance of brand owners taking active steps to prevent their unique brands from becoming generic. This case highlights the real risk of losing one's brand to genericide. Full text

Big tobacco's challenge disappears in a puff of smoke
22 Aug 2012 - The Australian High Court has rejected a constitutional challenge by major tobacco company Philip Morris and others against the government's tobacco plain packaging legislation. The companies had argued that, with compulsory plain packaging laws, the government would acquire their intellectual property unjustly, and that the legislation deprives them of the right to use their intellectual property. Full text

Generating content in the internet age
11 Jul 2012 - In a significant blow to Google’s business model, the Full Court of the Federal Court of Australia has unanimously found that Google engaged in misleading or deceptive conduct by publishing a competitor’s web address in sponsored links appearing in response to an enquiry made through Google’s search engine. The decision overturns an earlier finding that Google was a mere conduit of the misrepresentations. Full text

Gene patent opponents take the fight back to Parliament
13 Jun 2012 - Less than eight months ago the most recent attempt to legislate against so-called "gene patents" was effectively killed by a Senate committee report. Although the Intellectual Property Amendment (Raising the Bar) Act 2012 has since been passed, opponents of gene patents remain unsatisfied. However, it has now been reported that there will be a new push to ban gene patenting through a private member's bill. Full text

A new treatment for business methods
11 Apr 2012 - Over the past two years the Australian Patent Office has issued a string of decisions rejecting applications for so-called "business method patents" on the grounds of unpatentable subject matter. The recent Patent Office decision of Celgene Corporation has been received with interest, as it marks a subtle departure from the prevailing Patent Office treatment of business method patents. Full text

Customs notices of objection – a powerful tool in an IAM strategy
28 Mar 2012 - Brand owners are becoming increasingly concerned about the quality of counterfeit goods imported into Australia. Customs assists brand owners in keeping counterfeit goods from entering Australia by enforcing notices of objection which are in place. Customs notices of objection can therefore be a powerful tool in any intellectual asset management strategy, especially if implemented early. Full text

Driving improved commercialisation outcomes for Australian research
29 Feb 2012 - Approximately 80% to 85% of the value of a company lies in its intellectual assets. However, intellectual assets other than intellectual property can be more difficult to identify. The corporate sector is beginning to appreciate that these other intellectual assets have potential value and is embarking on ways to identify and capture them. Full text

BOOST gets a boost
18 Jan 2012 - The Australian Trademarks Office recently decided in favour of Boost Juice Holdings Pty Ltd in its opposition to an application by Boost Foods Holdings Pty Ltd to register the mark BOOST FOODS. The BOOST FOODS application was rejected in its entirety, as Boost Juice had established the "reputation" opposition ground under Section 60 of the Trademarks Act. Full text

Preliminary skirmish concludes in Apple versus Samsung down under
21 Dec 2011 - The opening gambit in the Australian arm of the global dispute between Apple and Samsung has finally drawn to a close. The High Court of Australia refused Apple's request for special leave to appeal from a decision of the Full Bench of the Federal Court denying a preliminary injunction against the launch of the Galaxy Tab 10.1. Full text

Plain packaging tobacco products: is there a trademark issue?
23 Nov 2011 - As part of reforms to reduce smoking and the harmful effects of tobacco, the government has passed the Tobacco Plain Packaging Act 2011. The act restricts trademarks from being placed on tobacco products or their retail packaging, thus preventing such trademarks from being used as a design feature to divert attention away from health warnings. Full text

Protecting biologicals down under
09 Nov 2011 - Following public consultation, the Senate Legal and Constitutional Affairs Committee has concluded that the current patent system is adequate to allow access to genes and biological materials, making proposed amendments to the Patents Act unnecessary. Therefore, it recommended that Parliament should not pass the Patent Amendment (Human Genes and Biological Materials) Bill 2010. Full text

Extending the deadline to claim Paris Convention priority
14 Sep 2011 - A recent decision of the Australian Designs Office confirmed that an extension of time to claim convention priority is possible under the Designs Act. However, it clarified that there are onerous grounds to establish how the error or omission occurred and how it resulted in the relevant act not being completed. Full text

Are Australia and New Zealand the same? Patentability and computer programs
03 Aug 2011 - Draft examination guidelines recently developed by the Intellectual Property Office of New Zealand highlight a marked distinction in how the patentability of inventions is viewed in Australia and New Zealand. With the proposed changes, it seems that the protection of computer programs in both countries will become diametrically opposed. Full text

Does the mere naming of a chemical compound destroy novelty?
20 Jul 2011 - It is well established in Australia that a claim will lack novelty if each essential feature is disclosed in a prior art document. What remains less clear, however, is the level of disclosure required to destroy novelty, particularly in chemical cases. The apparent tension between the existing lines of authority is now set to come under the judicial spotlight again in Albany Molecular Research v Alphapharm. Full text

Should you renew a trademark that you're not using?
06 Jul 2011 - A trademark is one of the most cost-effective assets of a business. However, a prudent owner of an intellectual asset never spends money on it unless the cost of doing so is justified by the needs of the business in which it is used. If an asset such as a trademark is not being used, it should not be renewed - should it? Full text

Raising the bar on inventive step
29 Jun 2011 - Australia currently measures inventive step with reference to an imaginary person skilled in the art in Australia. Although developments in case law have sought to extend the test to cover common general knowledge outside Australia where an art is “global”, the statutory test is about to change as the government has recognised that the current test is too limiting. Full text

Getting tough on imitators
15 Jun 2011 - The Advisory Council on Intellectual Property recently carried out reviews looking at post-grant patent enforcement strategies and the enforcement of plant breeders' rights. The reviews found that owners of patents and plant breeders' rights encounter significant barriers when enforcing their rights, and made a number of recommendations to address the issues raised. Full text

Copyright law amendments shut down litigation options for proprietary drug owners
01 Jun 2011 - Following approval of the Therapeutic Goods Legislation Amendment (Copyright) Bill 2011 by the Senate, Australian consumers and health professionals will have more ready access to generic drugs, but proprietary drug companies will have fewer options in the twilight years of patent protection for shutting down access to Australian markets by generic medicines. Full text

Aligning the IP systems of Australia and New Zealand
18 May 2011 - For many years there has been a high level of cooperation between the Australian and New Zealand governments. In this spirit, Australian Prime Minister Julia Gillard and New Zealand Prime Minister John Key recently committed to establishing a joint patent examination system between the two countries. This initiative is part of the Single Economic Market outcome framework. Full text

Providing better access to pharmaceuticals for countries in need
06 Apr 2011 - The government has announced its intention to empower the Australian courts to grant compulsory licences to manufacture and export patented pharmaceuticals to countries suffering medical epidemics and other health crises. While this news represents a potential windfall for the Australian pharmaceutical industry, questions arise as to how the government will ensure that a pharmaceutical exported under the system is not diverted to other markets. Full text

IP Australia curbs prosecution delay tactics
23 Mar 2011 - The Australian Patent Office has implemented measures to expedite the resolution of divisional patent applications. The measures are directed at applications which, at face value, appear to be the re-filing of a parent (or grandparent) patent application with claims for which a ground of objection has previously been raised but not addressed. Full text

What is patentable in Australia? The ACIP reports
02 Mar 2011 - The Australian Advisory Council on Intellectual Property recently released its report on patentable subject matter. The review undertaken arose from a recommendation made by the Australian Law Reform Commission in 2004 when it stated that “manner of manufacture”, the key concept of patentable subject matter in Australia, was ambiguous and obscure. Full text

A right to damages despite no infringement?
16 Feb 2011 - A recent decision of the Supreme Court of Victoria raises some novel issues concerning the criminal provisions of the Trademarks Act, and illustrates how brand owners can use trademark law to make life difficult for parallel importers. Full text

Rights when automation plays a major role in creation
02 Feb 2011 - The Full Federal Court recently determined whether a literary work which was substantially compiled by automation met the requirements for copyright protection. It considered that although there was substantial effort, including intellectual effort by many employees in the collection phase, their efforts had no influence on the actual material form of the work. Full text

Alternative legislative options in the gene patent debate
15 Dec 2010 - The patenting of genetic technologies and its impact on both the provision and cost of healthcare and progress in medical research have been the cause of much debate. The recent Senate committee inquiry appeared unwilling to recommend major changes to legislation to prohibit gene patents. However, alternatives to banning DNA and related technology from patentability can be found in the Patents Act. Full text

Outlawing of gene patents remains on political agenda
17 Nov 2010 - The gene patent controversy continues to enjoy political momentum in Australia, despite some recent indications that it may have been placed on the backburner. Significantly for companies involved in the development of genetic technologies, the case against gene patents appears to be gaining the upper hand in the ongoing public debate. Full text

To sue or not to sue (but amend the claims first)? That is the question
13 Oct 2010 - Where there is a real risk that a claim will be found invalid during infringement proceedings, the patentee must decide whether to sue for infringement (and try to amend the claims before the court during the infringement proceedings), or to amend the claims before instituting proceedings (where the amendments are dealt with by the Patent Office). Full text

Ownership of designs in an employment relationship
15 Sep 2010 - The Federal Court recently held that an employee and his company were entitled to be the registered owners of various rainwater tank designs which the employee's employer had argued were created during the course of his employment. This case highlights the importance of a detailed written employment agreement addressing the issue of ownership of any intellectual property created. Full text

When did your patent portfolio last have a health check?
25 Aug 2010 - Like all other assets, intellectual assets require proper care and maintenance. In the case of patents, there is more to this than just paying periodic renewal fees. Aside from managing the content of your patent portfolio to ensure that it has continuing relevance to your commercial strategy, you must also review your important patent assets to ensure that they remain valid and useful. Full text

The Australian innovation patent: the "perfect storm" loses a little wind?
11 Aug 2010 - The Australian innovation patent has a number of real advantages when considering a holistic view of protection for an invention. In practice, these have led to innovation patents being extremely difficult to invalidate. However, a recent decision provides a reminder that there are limitations as to how robust an innovation patent can be considered to be. Full text

Why the Bilski decision matters in Australia
21 Jul 2010 - Innovative Australian companies that do business in the United States can take comfort from the recent US Supreme Court decision in Bilski, which confirmed the availability of patent rights for processes generally and did not exclude business processes and methods. Full text

Gene patents under the microscope
30 Jun 2010 - The Senate Community Affairs Committee has again extended the reporting time for the Gene Patents Enquiry.The decision may well reflect the fact that a consortium has lodged an application in the Federal Court of Australia against four companies seeking revocation of the Australian patent that protects the breast and ovarian cancer marker genes BRCA1 and BRCA2. Full text

Getting your design protection into shape
16 Jun 2010 - Are you considering the manufacture of products intended for the Australian market? If so, design registration can be a useful, relatively quick and cost-effective form of formal IP protection. Design registration provides a monopoly right in the aesthetic appearance of a two-dimensional or three-dimensional design used in relation to a product. Full text

Out of the lion’s den – High Court clarifies trademark use
02 Jun 2010 - The recent High Court decision in E&J Gallo Winery v Lion Nathan Australia Pty Limited has come as a relief to many international trademark owners who may have been questioning whether the use of their trademarks in Australia would be sufficient to overcome a potential non-use action. The High Court upheld an appeal by E&J Gallo against the removal of its mark from the Trademarks Register for non-use. Full text

What does the solar energy patent landscape look like?
28 Apr 2010 - Patent systems exist to encourage innovation by providing a government-granted monopoly in return for public disclosure of new inventions. Thus, analysis of published patent data can provide a useful indicator of research and development activity in any field of technology. An analysis of solar energy inventions reveals some interesting trends. Full text

Towards a stronger and more efficient IP rights system: part two
14 Apr 2010 - IP Australia has issued the second of two papers setting out details of proposed changes to Australia's IP system initially discussed in its earlier series of consultation papers. The paper further explains how IP Australia intends to deal with proposals tabled in the first-round consultation papers. Full text

Trademarks and brands: maximising the value of trademark practitioners and marketers
10 Mar 2010 - A trademark is what the business says it is, while a brand is what the consumer sees it as. What differentiates successful businesses from their competitors is the ability to market a brand effectively by integrating and implementing the perspectives of both trademark practitioners and marketers. Full text

The probably invalid patent: is clearing the way a necessary strategy?
17 Feb 2010 - Occasionally a question arises regarding the proposed exploitation of a patent that is considered to be invalid. However, there is also a further question as to whether Australian law imposes a legal duty for the "infringer" to take action to revoke the patent(s) blocking its strategy. Full text

The Australian innovation patent: a "perfect storm" for rights enforcement?
03 Feb 2010 - Two recent decisions of the full bench of the Federal Court of Australia have confirmed the significant potential of the innovation patent as a powerful weapon in the arsenal of proprietors of patentable intellectual assets. Innovation patents were introduced in 2001 with the intention of providing second-tier protection for innovative technologies. Full text

Towards a stronger and more efficient IP rights system
13 Jan 2010 - IP Australia has issued the first of two papers setting out details of proposed changes initially discussed in its earlier series of consultation papers. The new consultation paper explains how IP Australia intends to progress each of the proposals put forward in the first-round consultation papers. Full text

Proposed changes to the patent enforcement regime
09 Dec 2009 - The Advisory Council on Intellectual Property (ACIP) has prepared an interim report following its review of the issues relating to post-grant patent enforcement strategies. Following further consultation, the ACIP expects to submit its recommendations in a final report to the government. Full text

IP Australia proposes Peer-to-Patent pilot project
25 Nov 2009 - IP Australia continues to examine avenues for improving the patent system in Australia. Its latest initiative is a web-based Peer-to-Patent joint trial with the Queensland University of Technology, aimed at supporting the patent examination process and improving the quality of issued patents. Full text

Australia concentrates the patent system on climate change
11 Nov 2009 - The government has declared a policy to "help green innovators find a fast track to market". In offering expedited examination to environmentally friendly technologies, the Australian Patent Office is following the lead set by several of its international counterparts. Full text

Australia – the latest target for unsolicited offers of IP services
07 Oct 2009 - The issue of unsolicited correspondence from a range of organisations has been an ongoing problem in Australia. In the latest development on the issue, IP Australia has issued a warning on its website regarding a company known as TMP, Trademark Publisher, which requests payment for publication of the trademark owner's trademark details in a register. Full text

A Gray day for UWA - ownership of inventions by university employees
23 Sep 2009 - In its keenly awaited decision in UWA v Gray, the Full Federal Court of Australia has issued a ruling that will have a significant impact on ownership of inventions by university academics. Full text

Patent legislation – proposals for improving the IP system
09 Sep 2009 - IP Australia is continuing to consider various ways in which the Australian patent system can be improved. It recently released two new papers: “Streamlining the Patent Process” and “Flexible Search and Examination”. As with previously released papers, the intention is to create a more robust system which encourages and supports innovation in Australia. Full text

Guylian unsuccessful in attempt to register chocolate "seahorse" shape
26 Aug 2009 - The Federal Court of Australia has confirmed the Australian Trademarks Office's decision to reject an application to register well-known Belgian chocolatier Guylian's chocolate "seahorse" shape. The court held that the seahorse shape was incapable of distinguishing Guylian’s chocolate products. Full text

Copyright in compilations: the start of the Ice Age
12 Aug 2009 - The High Court of Australia has issued a landmark judgment in IceTV Pty Limited v Nine Network Australia Pty Limited regarding copyright in compilations and databases. The decision has significantly scaled back the scope of copyright protection for compilations. Full text

Getting the balance right
29 Jul 2009 - IP Australia is seeking comment on a number of proposed changes to the Patents Act 1990 directed at improving the patentability standards of Australian patents. Among other things, the consultation proposes changes to the inventive step threshold in order to align Australian practice with that of its major trading partners. Full text

Unregistrability of marks consisting of exact geographical indiciations
08 Jul 2009 - In a recent decision the Federal Court of Australia gave, for the first time, judicial interpretation of Section 61 of the Trademarks Act, which deals with the registrability of marks consisting of or containing recognised geographical indications. Full text

A controversial end for a controversial patent application
17 Jun 2009 - IP Australia recently announced the official lapse of Australian patent application 2004309300, which relates to a human embryonic stem cell line generated by the process of somatic cell nuclear transfer. The question has been raised of whether the patent application lacks utility; however, this particular issue is beyond the considerations required for examination. Full text

Utilising the Australian Customs Service to protect trademark rights
08 Apr 2009 - Brand owners are increasingly utilising the Australian Customs Service (ACS) to assist in keeping counterfeit goods from entering Australia by filing a trademark notice of objection with the ACS. Seizure of goods at the border can prevent, or at least substantially reduce, the amount of counterfeit products that are available for sale. Full text

Pharma losing ground in pharmaceutical patent extensions of term
18 Mar 2009 - In several recent court and Patent Office decisions previously granted patent extensions of term have been reduced by the court and the commissioner of patents in light of information brought to their attention. Such decisions have provided interpretation of aspects of the provisions of the Patents Act 1990 relating to extensions of term of pharmaceutical patents. Full text

Anti-ambush marketing legislation – does it work?
25 Feb 2009 - The Australian government recently released a report on the effectiveness of specific legislation enacted to enhance protection against ambush marketing associated with the staging of the Commonwealth Games in Melbourne in 2006 and in relation to Australia's ongoing participation in the International Olympic Committee. Full text

Is the presence of overseas trademarks on the shelves enough to constitute use?
21 Jan 2009 - A recent Federal Court decision that a small number of sales of a particular wine did not constitute adequate use came as a shock to many international trademark owners and has led them to question whether the use of their trademarks in Australia would be sufficient to overcome a potential non-use action. Full text

Innovative inventions? Obviously!
17 Dec 2008 - Australian law provides for a two-tiered patent system: the standard patent and the innovation patent. Innovation patents not only are useful to protect those incremental inventions that cannot be protected under the standard system, but can also be wielded as a powerful tool by the patentee when faced with an allegedly infringing product of a competitor. Full text

How to cut the budget without losing the intellectual asset farm
19 Nov 2008 - In these times of financial uncertainty, many enterprises are obliged to review costs, minimise expenditure (at least in the short term) and try as best they can to preserve the strategic assets of the business for better times. Intellectual assets are not immune from these demands. Full text

High Court considers contributory infringement provisions of Patents Act 1990 for the first time
05 Nov 2008 - The recent decision of the High Court of Australia in Northern Territory of Australia v Collins provides guidance as to the meaning of the contributory infringement provisions under Section 117 of the Patents Act 1990 in patent infringement proceedings. Through the decision, a controversial issue of Australian patent law has been laid to rest. Full text

Implementing the Cutler Review recommendations in the current economic climate
22 Oct 2008 - The recently published Cutler Review made many recommendations regarding the Australian innovation economy, including that IP policy making should form part of the general economic policy-making process. However, as the government has just allocated A$10 billion to “pump prime” the national economy, it is unclear whether the Cutler recommendations will be taken forward. Full text

Impact of showing at trade exhibitions on design novelty
01 Oct 2008 - It is not unusual for companies to display new developments at trade shows and exhibitions as early as possible in order to showcase their latest products and technology. However, unless such exposure is planned to fit in with a formal IP protection strategy, it can raise questions over whether the product remains novel for the purposes of patent or design protection. Full text

Climate change: opportunities and challenges for patent owners
17 Sep 2008 - Although there is often talk of the challenge posed by climate change, it also presents an opportunity. One key indicator of the amount spent on research and development in the area of wind energy over the past decade is the number of patent applications filed – and these have increased significantly in recent years. Full text

Harmonisation: are we one step closer?
13 Aug 2008 - The Australian Patent Office (IP Australia) and the US Patent and Trademarks Office (USPTO) have reached an agreement whereby IP Australia will act as an international search and examination authority for international patent applications filed with the USPTO via the Patent Cooperation Treaty. Full text

Patentable subject matter under review
30 Jul 2008 - The Advisory Council on Intellectual Property is conducting a review of patentable subject matter in Australia. The most fundamental threshold for granting a patent involves the basic question of whether an innovation relates to the kind of thing for which patent protection should be granted in view of the policy objectives of the patent system. Full text

Judging the distinctiveness of designs: the standard of the informed user
16 Jul 2008 - In determining whether one design is substantially similar to another in overall impression, the Designs Act 2003 requires an assessment made through the eyes of a person who is familiar with the product to which the design relates. Although this ‘informed user’ standard has yet to be applied by the courts, it has been applied in a number of recent decisions issued by the Australian Designs Office. Full text

Patenting information technologies, computer software and business methods
02 Jul 2008 - As a result of the increasing economic importance of technology, the number of computer software and business method patents filed and granted has increased significantly in recent years. While trends among Australian and foreign applicants are similar, research shows that foreign entities are major users of the Australian patent system in the IT sector. Full text

IP ownership in the academic sector: a new perspective
18 Jun 2008 - A recent decision of the Federal Court that the University of Western Australia had no claim to certain intellectual property created by Professor Bruce Gray has provoked heated debate over the ownership of patents in the university and research community. The case raises many important issues for commercialisation in the academic sector. Full text

Why patent professionals should take a second look at re-examination
23 Apr 2008 - The Australian patent profession appears reluctant to use re-examination as an alternative to seeking revocation before the courts. While there are some disadvantages, re-examination is cheaper and faster than revocation proceeding, and can be an effective strategic tool where a patent of dubious validity affects business activities in the Australian market. Full text

Patent Prosecution Highway gets on the road in Australia
16 Apr 2008 - IP Australia and the US Patent and Trademark Office have announced the launch of a new trial cooperation initiative in line with the existing Patent Prosecution Highway. It is hoped that this pilot programme will significantly reduce pendency times and help to raise the efficiency and quality of patent examination in both the United States and Australia. Full text

Government looks to the future with innovation review
02 Apr 2008 - The government has launched a consultation for its Review of the National Innovation System, which is designed to identify drivers for innovation and help to optimise the innovation process in Australia. Although directed at the broader public benefits of innovation, many aspects of the review will resonate with practitioners of intellectual asset management. Full text

Tax office targets multinationals over IP rights transfers
30 Jan 2008 - The Australian Taxation Office is considering new rules for brand names, trademarks, copyright and licences to deter multinational companies from transferring billions of dollars in IP rights overseas. The news follows analysis suggesting that several big multinationals have been transferring large amounts of IP rights to overseas parent companies. Full text

Challenging an Australian patent
16 Jan 2008 - There are a number of options available to challenge an Australian patent depending on what stage of the examination/grant process the patent has reached. Some commentators have suggested that, as opposition procedures are becoming considerably more rigorous, it may be preferable to seek revocation in the courts. Full text

IP Australia raises the bar for validity of Australian patents
05 Dec 2007 - The Australian Patents Regulations 1991 have been amended so that patent applicants are no longer required to disclose the results of documentary searches carried out by foreign patent offices for corresponding applications. Instead, IP Australia will use online searches to fulfil its mantra of “one search, one examination” as its vision of the future. Full text

Patent application changes could force companies to rethink strategy
21 Nov 2007 - Consultations are underway between the Australian patent office and interested parties on a number of proposals that would drastically curtail the existing divisional application regime. However, there are fears that reforming this practice could have dire financial consequences for small and medium-sized enterprises. Full text

Qantas logo change shows how to strike the right balance
10 Oct 2007 - When and whether to change a logo is one of the greatest challenges for businesses. A dramatic change can alienate customers, while refusing to update a logo can be seen as a failure to move with the times. Qantas’s alterations to its FLYING KANGAROO logo illustrate how businesses can strike the right balance, staying current while keeping customers happy. Full text

Patents versus generics in a changing legal landscape
26 Sep 2007 - The Australian pharmaceutical market, like many others, is a battleground for patentees and generic manufacturers. Changes in so-called ‘springboarding’ provisions aim to create a level playing field. However, the relatively low cost of litigation means that more companies are challenging each other through the court system. Full text

Tactics for opposing patents in Australia
19 Sep 2007 - Australia’s pre-grant patent opposition system means that companies keeping a weather eye on the acceptance and/or grant of patents by competitors have the chance to file oppositions. However, such oppositions can go a number of ways – companies are advised to approach the opposition tactically in order to achieve the best result. Full text

Tips on planning an overseas IP filing programme
22 Aug 2007 - Seeking overseas IP protection is a significant yet commonplace step in the commercialisation of intellectual property. However, it has the potential to take significant time and expense if not planned well. The following review suggests recommendations for handling the overseas filing process that can generate dramatic time and cost savings. Full text

The innovation patent – a missed opportunity in Australia?
01 Aug 2007 - New figures from IP Australia show that fewer than 5% of patent filings in Australia are for so-called ‘innovation’ patents, and that a disproportionately high number of these are made by private applicants. This suggests that few patent holders are using the system strategically, and that many patent holders are missing available opportunities. Full text

IP Australia consults on streamlining patent prosecutions
11 Jul 2007 - The government has launched a consultation on the possibility of abolishing the requirement for patent applicants to provide details of prior art cited by foreign patent offices. Removing this requirement would significantly reduce the cost and administrative burden to patent applicants and is part of IP Australia’s plan to achieve an ideal patent system. Full text

High Court Clarifies Overlap
01 Jun 2007 - On 26 April 2007, the High Court of Australia delivered its long awaited judgement in Burge v Swarbrick ([2005] FCAFC 257). The judgement has clarified the “overlap” between copyright protection and design protection, and laid down important guidelines for the coverage of each form of intellectual property protection. Full text

Inventorship and Entitlement
01 Jun 2007 - In an earlier edition of this Journal the outcome of a case concerning patent entitlement issues arising from multiple inventors and joint patentees was reported (Journal vol 23, No 2*). At that time the case (Conor Medsystems, Inc v The University of British Columbia (No. 2) [2006] FCA 32) was on appeal to the Full Court of the Federal Court of Australia. The decision on the appeal has now been handed down. Full text

Mining Resources Industry Patenting Statistics and IP Issues
01 Jun 2007 - The Australian mining and resources industry is a long-established industry with an emerging technology base and is a global leader in several specialist areas, including software applications for the mining and mineral industries. Full text

Australian Designs - Who’s Filing What?
01 Jun 2007 - The Australian Designs Act 2003 (the new Act) was introduced on 17 June 2004. To date there have been approximately 10,000 design applications filed under the new Act. Full text

Recent Changes to the Trade Marks Act 1995
01 Jun 2007 - Trade mark owners should be aware that significant amendments to the Australian Trade Marks Act 1995 (“the Act”), outlined in the Trade Marks Amendment Act 2006, have now come into effect. Full text

What Constitutes An Innovative Step? Are We Any Closer To Knowing?
01 Mar 2007 - Innovation patents are a second tier form of patent protection in Australia. A patent monopoly is granted for eight years for globally novel ‘innovations’, an ‘innovation’ being the inclusion of a feature that ‘makes a substantial contribution to the working’ of the product or method. While this legislation remains untested in the Australian Court system, for many inventions which would not qualify as ‘inventive’ it is difficult to determine by what criteria they would qualify as ‘innovative’. Full text

New Excess Claims Fees in Australia
01 Mar 2007 - The Australian Patent Office has implemented a five-fold increase in excess claims fees. Accordingly, applicants may now wish to consider strategies to reduce or avoid these charges. Full text

NO to Counterfeiting and Piracy
01 Mar 2007 - Customs Services throughout the world manage and protect their countries’ borders, working to detect and deter the movement and trafficking of illegal goods such as illicit drugs, endangered species, nuclear/hazardous waste, weapons and goods which contravene the intellectual property rights (IPR) of third parties (counterfeit and pirated goods). Full text

Springboarding into the Australian Pharmaceutical Market
01 Dec 2006 - There is no doubt that much of the biotechnology and pharmaceutical industry, is contingent on there being a robust Intellectual Property (“IP”)system to maintain the value of innovative products. It is often the case, particularly in relation to start–up biotech companies, that IP is one of, if not the most important and major assets of the company. Full text

The High Court of Australia and IP Matters
01 Dec 2006 - The High Court of Australia hears appeals against the decisions of lower courts in Australia including the Federal Court of Australia. However, there is no automatic right to have an appeal heard by the High Court. The aggrieved party must apply for leave to appeal and persuade the Court in a preliminary hearing that there are valid reasons for the appeal to be heard. Full text

Trends in Australian Nanotechnology Patent Filings
01 Dec 2006 - A brief review of the Australian Patent Office database has been conducted with the aim of gaining an understanding of nanotechnology patenting trends in Australia. Full text

Patenting Nanotechnology In Australia
01 Sep 2006 - The unique behaviour of materials at the nanoscale offers countless opportunities. Where opportunities with potential industrial applications arise in the emerging field of nanotechnology, intellectual property considerations must be addressed at the outset. Relevant considerations include both the options for protecting inventions, and the risk of infringing the rights of others at the point of commercialisation. Full text

Trade Mark Licensors Beware!
01 Sep 2006 - The Australian Government recently announced that it would be conducting a review of the disclosure requirements of the Franchising Code of Conduct. According to Government figures, franchising in Australia is an $80 billion industry that employs more than 600,000 people. The Federal Minister for Small Business and Tourism, Fran Bailey, states that franchising in Australia “is growing rapidly and an undoubted small business success story”. Full text

The Use of Expert Evidence in Court Proceedings and Oppositions
01 Sep 2006 - Now that the Australia-United States Free Trade Agreement is in force intellectual property disputes and litigation events are expected to increase. In any court proceeding or opposition whether involving patents, trade marks, designs or copyright, one of the most critical aspects of the case is the preparation and filing of evidence. Full text

Entitlement Issues with Multiple Inventors and Joint Patentees
01 Sep 2006 - A recent case highlights the importance of correctly identifying inventors, and ensuring that applicants and patentees are legally entitled to the grant of a patent in Australia, especially in cases of joint applications arising from the contributions of multiple inventors. Full text

Significant Changes to the Patents Act 1990
01 Jun 2006 - In the last week of March, the Australian Federal Government introduced into parliament the Intellectual Property Laws Amendment Bill 2006. While the bill addresses a number of the intellectual property laws of the country, the most significant of these are to the Patents Act 1990. Full text

Don’t let your Mark get Booted off the Register
01 Mar 2006 - Further to our article “Trade mark rights lost through incorrect use” (October to December 2004 Watermark Journal*), a recent Australian case has again reiterated that unless a trade mark is used in its registered form, it may be vulnerable to removal from the Register for non-use. Full text

Viagra® Patent Appeal Case Clarifies Best Method Disclosure Requirements in Australia
01 Mar 2006 - The full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCA 67 (while confirming that the relevant claim was invalid) rejected Eli Lilly’s contention that a failure to include the best method known to the applicant of performing the invention in a patent application, at the date of filing cannot be overcome by later amendment. Full text

Patent Marking
01 Mar 2006 - Most of us are accustomed to seeing patent numbers and terms such as “patented” or “patent pending” on many products or packaging. This practice is often referred to as “patent marking”. However, the importance of correctly utilising patent marking is sometimes not so well understood. Full text

Marking Your Goods - Trade Marks
01 Mar 2006 - One of a company’s most valuable assets may be its trade marks. They provide a means of access to the marketplace and are the instrument by which customers and competitors identify goods and services. Full text