When will a boast be misleading and deceptive? - Friday, June 27, 2008
The recent decision of Edmonds J in Bannerhey Pty Ltd v 1800 000 000 Pty Ltd [2008] FCA 53 considers whether the respondents engaged in misleading and deceptive conduct. The allegations were based upon representations made in relation to the sale of master licences to use, and to licence others the use, the telephone number ‘1800 000 000’ and relevant know-how. This case highlights the fact that findings on issues of credit will be critical when the majority of the alleged representations are oral. This is because whether conduct is misleading or deceptive is ultimately a question of fact, to be determined in the context of known facts and circumstances, and in situations where there is conflicting evidence a Judge’s findings on credibility will determine which evidence is to be preferred.
e-patents - June 2008 - Tuesday, June 10, 2008
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Developments in Australian Trade Mark Law - Friday, May 30, 2008
The Trade Marks Amendments Act 2006 (Cth) and Intellectual Property Laws Amendment Act 2006 (Cth) have introduced significant changes to the Trade Marks Act 1995 (Cth).
Please click on the article to read more.
Government Review of Copyright Exceptions that Permit Format Shifting – Submissions Invited - Monday, February 25, 2008
The Government is currently reviewing the operation of two copyright exceptions which allow for "format-shifting", that is, they permit photographs and cinematograph films to be produced in a different format for private use, subject to certain conditions. These exceptions are found in sections 47J and 110AA of the Copyright Act 1968 (Cth).
To contuine reading please click on the attached pdf.
Submissions are required to be made by 29 February 2008.
Design/Copyright update - June 2007 - Thursday, June 07, 2007
Designers are encouraged to protect the appearance of new products by registration under the Designs Act rather than by reliance on underlying copyright which will subsist in most cases. This results from the legislative framework of the Copyright Act which limits the applicability of copyright when products have been produced in quantity (industrial application of the design). The part of the Copyright Act by which this regime is put in place (Part III, Div VIII) is quite complex and has given rise to a number of difficulties in interpretation. Exemptions from copyright infringement arise when the design is the subject of a design registration or, if not registered, by the industrial application and sale of products in accordance with the design. However in the latter case, an exception arises when the copyright work is a work of artistic craftsmanship.
e-patents - June 2007 - Thursday, June 07, 2007
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
World Trademark Review - Key aspects of trademark enforcement in Australia - Thursday, March 29, 2007
Many countries have similar systems for the registration and enforcement of trademarks. However, there will inevitably be differences, often borne out of the different jurisprudential bases on which these systems are based.
This article looks at trademark enforcement in Australia and highlights some aspects of the Australian legislation which differ from the US system. It also examines the main border protection methods available in Australia to trademark owners.
To contuine reading please click on the attached pdf.
Pharmaceutical Extensions: A listing in the ARTG is an inclusion - Friday, March 09, 2007
The Full Federal Court has affirmed the previous findings of the Commissioner of Patents and a single judge of the Federal Court that, where no pre-TGA marketing approval was given, an export listing in the Australian Register of Therapeutic Goods (ARTG), prior to registration to permit marketing in Australia, is to be considered as the first inclusion in the ARTG for the purpose of determining the first regulatory approval date in calculating a patent extension term.
Filing Design Applications in Australia - Friday, March 09, 2007
There are no forms in Australia that require the applicant’s signature at the time of filing. No Power of Attorney is necessary, however a number of documents and particulars are required to process an application.
Changes to IP Australia’s Fees - Friday, March 09, 2007
Changes to IP Australia’s fees and costs under the Designs, Patents, Plant Breeder’s Rights and Trade Marks Acts came into effect on 1 March 2007.
e-patents - February 2007 - Friday, February 09, 2007
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Passing of New Copyright Laws - Tuesday, February 06, 2007
Amendments made to the Copyright Act 1968 (Cth) in Australia by the Copyright Amendment Act 2006 (Cth) are now in full force.
Changes to the Australian Trade Marks Act 1995 - Friday, November 24, 2006
The Trade Marks Amendment Act 2006 (“the Amendment Act”) received Royal Assent on 23 October 2006. The Amendment Act results from a review undertaken by IP Australia to ensure the Act was meeting the needs of Australian businesses and users of the Australian trade mark system.
Swiss-style use claims vs method of treatment claims - Friday, November 24, 2006
A recent patent office decision has held that addition of “method of treatment” claims to a specification that has “Swiss-style use” claims is not an allowable amendment after acceptance of the application.
Injunction granted against PBS-listed generic - Friday, November 24, 2006
Merck & Co Inc v GenRx Pty Ltd [2006] FCA 1407 (31 October 2006, Moore J)
The Federal Court has granted an injunction restraining GenRx from importing into Australia a generic version of Merck’s FOSAMAX osteoporosis treatment (alendronate). Moore J granted the injunction in a judgment delivered two days after the hearing and on the day of the scheduled importation.
Serious questions headed for a High Paced Verdict - Monday, October 23, 2006
CSL Limited v GlaxoSmithKline Australia Pty Ltd [2006] FCA 1301 (3 October 2006, Weinberg J). Also discussed in this case note are the amendments to the Australian Patents Act 1990, to allow springboarding for purposes connected with obtaining regulatory approval.
The change is here - The Intellectual Property Laws Amendment Act 2006 (Cth) - Sunday, October 22, 2006
In our May IP Law Update we reported on the changes that the Intellectual Property Laws Amendment Bill 2006 proposed to make to several pieces of Australia’s intellectual property legislation. On 27 September, 2006, the Intellectual Property Laws Amendment Act 2006 received Royal Assent.
Are you aware of your new document retention obligations? - Monday, September 18, 2006
Both individuals and organisations should be aware of the new Victorian laws that create increased document retention obligations. As part of the Victorian government’s response to the legal and policy implications of the McCabe tobacco case, new Victorian legislation came into effect on 1 September 2006.
Pharmaceutical Extensions - Monday, September 18, 2006
The topic of pharmaceutical patent term extensions has again recently been the subject of consideration before the Patent Office and the Federal Court. In two separate proceedings, the issue of whether the Commissioner is entitled to amend the Register to reflect a new (shorter) extension period was considered by the Federal Court.
Assessing Sufficiency: A Temporal Problem - Monday, September 18, 2006
The Patents Act 1990 (Cth) requires that a specification fully describe the invention, including the best method known to the applicant for performing the invention. However, the Act is silent on the actual date at which the specification is to be considered for compliance with these requirements.
Kovan Engineering (Aust) Ltd v Gold Peg International Pty Ltd - Monday, September 18, 2006
Often in the commercial world, parties rely on a common under-standing or the otherwise inadequate protection of a handshake (or even a “shrugging” of the shoulders) rather than take the time to formally document the terms of an agreement. The recent decision of the Full Court of the Federal Court of Australia in Kovan Engineering (Aust) Ltd v Gold Peg International Pty Ltd illustrates why this is not a good idea.
e - patents August 2006 - Wednesday, August 09, 2006
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Business Method Patents in Australia - Tuesday, August 08, 2006
The Australian Full Federal Court has recently clarified the extent to which business methods can be patented in Australia. A business method will be patentable provided it involves a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation. It cannot be a mere scheme, abstract idea or mere intellectual information. The court also made it clear that an invention did not have to be within an area of science or technology to be patentable.
Protection for Colour Purple by Cadbury - Monday, July 31, 2006
What do you think of when you see chocolate in a Purple wrapper? Recent decisions of the Australian Trade Marks Office and the Federal Court issued on the same date throw light on this question.
Legal Professional Privilege - Waiver Principles - Thursday, July 20, 2006
Commissioner of Taxation v Rio Tinto [2006] FCAFC 86 (2 June, 2006)
A recent Full Federal Court case has held that there has been an implied waiver of legal professional privilege (“LPP”).
Shifting the law on copyright infringement - Monday, June 19, 2006
The Federal Government has recently announced that it will be introducing some important reforms to the Copyright Act to legalise the (temporary) recording of a TV or radio program known as “time-shifting”) and the transfer of music from a CD to a portable MP3 player or a video tape to DVD (known as “format-shifting”).
Time for a change to Australian Intellectual Property Laws? - Tuesday, May 09, 2006
On 30 March, 2006 the Intellectual Property Laws Amendment Bill 2006 (Cth) (“the Bill”) was introduced into the House of Representatives. The Bill proposes to make some significant amendments to the Patents Act 1990 (including amendments to clarify the prior use defence, to add another ground upon which a compulsory licence may be sought, to allow the award of exemplary damages and which affect the ability to “springboard” on pharmaceutical patents), and to the Trade Marks Act 1995 (including amendments which affect the revocation of trade mark rights and access to trade mark documents filed with the Trade Marks Office).
Freeze dried generics frozen in their extended tracks - Tuesday, May 09, 2006
In February 2006 in an article titled “Freeze-dried generics frozen in their tracks”, we reported on two separate Federal Court decisions relating to a patent owned by Pharmacia Italia S.p.A. (Pharmacia). In those decisions, the court found infringement by Mayne Pharma Pty Ltd (Mayne) and granted an injunction against Interpharma Pty Ltd (Interpharma).
King Gee licence rights Undermined? - Tuesday, May 09, 2006
In Pacific Brands Sport & Leisure Pty Ltd v Underworks Pty Ltd, the Full Court of the Federal Court found that a purchaser of a business did not acquire the right to terminate a trade mark sub-licence the vendor had granted to a competitor.
The decision provides some pertinent reminders for those involved in assigning contractual rights, especially in the context of acquiring businesses. In particular,
it would seem that a novation agreement rather than a standard assignment agreement is required in virtually every instance concerning intellectual property rights.
e-patents May 2006 - Wednesday, April 26, 2006
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
Fairly based but obvious - Wednesday, April 05, 2006
Following the High Court’s decision in late 2004 that the claims of the patent were fairly based, the remaining issues to be determined concerning infringement, obviousness and insufficiency were remitted to the Full Federal Court. In its recent decision, the Full Federal Court overturned the primary Judge’s decision and held that the patent is invalid on the ground of obviousness.
