Latest IP News

Australia’s Extension-of-Time Policy in Patent Oppositions

Author: Philip Gehrig & Grant Shoebridge

Time for a Change? Australia has a pre-grant patent opposition procedure.  This means that, after a patent application has been advertised as accepted (i.e., “allowed” in US terms), any third party has a period of three (3) months in which



Author: J.A. McStea, Teemacs GmbH

11 December 2022 And so, it begins… …well, eventually. All of the nefarious schemes that were supposed to derail the Unitary Patent and the Unified Patent Court don’t seem to have arrived, and, so the theory went, the Brave New


“Attorney Direct” telephone service at IP Australia


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Author: J.A. McStea, Teemacs GmbH

Oddfellow 15 July 2022 Here come de judges… So, appointment of judges for the UPC has started. Apparently 90 appointments


Encouraging SMEs to engage with the patent system


In 2021 the Department of Industry, Science, Energy and Resources released an independent review that considered issues in relation to


Oddfellow July 2021

Author: J.A. McStea, Teemacs GmbH

Oddfellow 2021_2 Bubendorf, 19 July 2021 Hooly dooly! It’s happening! Well, OK, a substantial step towards its happening has been


New Zealand’s highest court find that “zombies” do exist in New Zealand after all

Author: Nick Holmes

In October 2020 The Supreme Court of New Zealand, New Zealand’s highest court, effectively held that “zombie” trade marks do


DCC New Zealand Trade Mark Kete

Author: Nick Holmes

Welcome to the DCC kete (basket) of recent New Zealand trade mark cases, and other developments in kiwi trade mark law and


Sweet escape for would-be copyright infringers: Copyright found not to subsist in State of Escape tote bag

Author: Beata Khaidurova

When State of Escape created its perforated neoprene tote bag, it is likely to have regarded the bag to be


High Court of Australia allows sale of modified cartridges, adopts exhaustion doctrine over implied licence

Author: Nik Ramchand, Suzy Roessel and Lachlan Sadler

The High Court has delivered its eagerly anticipated judgment in Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41


Australian Patent Office Opposition Update

Author: Donna Meredith

Gliknik, Inc. v CSL Behring Lengnau AG [2020] APO 46 (“Gliknik”) On 12 October 2020, IP Australia handed down its


The Australian Federal Court Hands Down Its First Decision on Support Under the Raising the Bar Act

Author: Bindhu Holavanahalli

Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 In a recent decision concerning Wyeth’s Prevnar



Is an advertisement prior to the priority date a Secret Use of an Invention? In Australia, an invention may only


The Internet is not the Wild West – (although it can seem to be)

Author: Margaret Ryan

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Software Patents: Australian Federal Court finds aspects of Aristocrat’s ‘Lightning Link’ electronic gaming machine to be patent eligible

Author: Sam Mickan and Isaac Tan

The Australian test for the eligibility of software inventions for patenting has evolved with a decision by Justice Burley of


BLACK SHEEP Trade Mark Dispute – Not all Sheep are the Same

Author: Sean McManis and Danielle Spath

Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd & Anor [2020] FCAA 1718 (30 June 2020) On 30


Flawed mental function saves the day in patent opposition

Author: Mark Williams

In a recent Australian Patent Office decision[1], an extension of time to file a complete Australian patent application was allowed despite


Unproven hypotheses in clinical trials can be novelty-destroying

Author: Bryan Leaw and Karen Sinclair

In a unanimous decision (Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd [2020] FCAFC 116), an enlarged full


Consider copyright ownership when applying for a logo trade mark

Author: Anita Brown

In the rush to file a trade mark application, it is important not to overlook the issue of copyright ownership


What the heck is a Retroactive Foreign Filing Licence, and why should you care?

Author: Bill McFarlane

Does your company employ US residents, and do those employees or contractors sometimes invent while they are living or working


Failure to avoid contributory infringements, a Fuchs up

Author: Nick Mountford

Chemical manufacturer Quaker own two patents relating to a method for detecting high pressure fluid injection (“HPFI”) injuries. When a


Rokt unsuccessful in the Full Court

Author: Nick Li

The Full Court in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 reversed the decision of the trial


Added matter matters in Australia: Impermissible amendments to patent specifications after Raising the Bar

Author: Jarrod Voss

CSIRO v BASF Plant Science GmbH [2020] FCA 328 is the first decision of an Australian court which specifically concerns


Co-pack causes patent term extension problems for Patentee

Author: Anna Goldys & Simon Potter

Pharma Mar S.A. applied for a patent term extension (PTE) for their Australian patent 754073 on the basis of the


Hashtag Burgers Down-N-Out – Trade Mark Infringement, Misleading Conduct and Passing Off

Author: Sean McManis, Shelston IP

In the case of In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd, in considering whether use of Down-N-Out infringed a



Author: Paul Malony, Blackwattle IP

The Federal Court in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 has overturned a decision of the


Whisky trade mark opposition requires stiff dram by the river Clyde

Author: Mark Williams, Phillips Ormonde Fitzpatrick

IP Australia have dismissed a trade mark opposition[1] by the Scotch Whisky Association against a trade mark for CLYDE RIVER in class


When requesting a patent term extension, review claims early

Author: Dr Malcolm Lyons, Griffith Hack

Pharma Mar S.A. [2020] APO 8. A Patent term extension cannot be requested based on a claim directed to a


Ale Dispute Leaves Trade Mark Owner Feeling Pale

Author: Simon Gapes & Bridget Renehan, Griffith Hack

The trade mark Urban Ale from Urban Alley Brewery was found to be descriptive rather than distinctive, in a recent


When Does Use On A Website Infringe An Australian Trade Mark Registration?

Author: Kathy Mytton & Sean McManis, Shelston IP

Lamont v Malishus & Ors (No.4) [2019] FCCA 3206 On 14 November 2019, Manousaridis J of the Federal Circuit Court


Sorting Mined Ore Not A Mere Scheme: And Other Lessons In Patentable Subject Matter

Author: Lily Brennan-Xie and Sam Mickan, Davies Collison Cave

The Federal Court of Australia has allowed an appeal in favour of patent applicant and appellant Technological Resources Pty Ltd


BlueScope Steel Buckles Under ‘Best Method’ Pressure

Author: Claire Gregg & Michael Caine, Davies Collison Cave

In a spate of recent patents to bite the ‘best method’ dust, two patents owned by BlueScope Steel Limited (BlueScope)


WIPO Releases Draft Issues Paper on IP Policy for AI Inventions

Author: Matthew Ford, Senior Associate, Phillips Ormonde Fitzpatrick

On 13 December, the World Intellectual Property Organization (WIPO) issued a draft paper on IP policy in relation to Artificial


The Curious Case of Pinnacle and the Bikinis

Author: © Margaret Ryan, Melbourne, Australia, 2020

Facts The case of Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662 (10 October 2019) considered whether Pinnacle’s


Purposive construction and Cinderella’s glass slipper

Author: Justin Negler and Sanjan Srivelan, Davies Collison Cave

CASE NOTE: Liberation Developments Pty Ltd v Lomax Group Pty Ltd [2019] FCA 1180 “Purposive construction” is now well entrenched


Howden Australia Pty Ltd v Minetek Pty Ltd [2019] FCA 981

Author: Lucy Hartland (Senior Associate), Khajaque Kortian (Principal),Spruson & Ferguson

This unsuccessful application for an interlocutory injunction highlights some of the difficulties involved in establishing that a breach of confidential


Descriptive trade marks: can David, Goliath and all their mates now use “community bank”?

Author: Lara Gun, Senior Associate, FB Rice

Community First Credit Union Limited v Bendigo and Adelaide Bank Limited [2019] FCA 1553 (20 September 2019) Markovic J In


Trade mark registration stacks up for JB Hi-Fi

Author: Anita Brown, Partner, Phillips Ormonde Fitzpatrick

JB Hi-Fi has won its battle to retain its Australian trade mark registration for STACK, its popular entertainment news brand,


Oaths and Affirmations Act 2018

Author: Department of Justice and Community Safety Victoria

The Notice below from the Department of Justice and Community Safety Victoria provides advice that Oaths and Affirmations Act 2018


Save the innovation patent campaign


For the past year, IPTA has been actively lobbying the Government to retain the innovation patent system. This work has


Funding Grants For Women’s Leadership Development

Author: Alistair Young - Women & Leadership Australia

IPTA has been asked to draw its members attention to the following: FUNDING GRANTS FOR WOMEN’S LEADERSHIP DEVELOPMENT Women &


Innovation patents; Safe for now.

Author: Grant Shoebridge, Convenor, IPTA Public Relations Committee

For several months, IPTA has been actively coordinating discussions between IP Australia, Government Ministers, the Opposition, cross-bench Senators and innovators


Boost for cancer research – accelerated examination of US patent applications for cancer immunotherapy

Author: Mark Roberts, Patent Attorney, Alex Tzanidis, Senior Associate, Rachel Stevenson, Associate, Davies Collison Cave

On 12 June 2016, US President Barack Obama announced the “National Moonshot Initiative”, which aims to make more therapies available


Faulty Towers The Dining Experience – no laughing matter

Author: Megan O'Callaghan and Vicky Mullins, Baldwins

  John Cleese is back in the limelight and not too pleased with a live theatre show called Faulty Towers,


Indications for use not sufficient to satisfy Australian patent term extension criteria

Author: David Koedyk, Baldwins

Two recent Australian Patent Office decisions have clarified the criteria on patent term extension for patents covering combinations of active


The Power of Design Registrations

Author: Tim Francis, Principal and Andrew Mullane, Senior Associate, Wrays

Registered designs are sometimes overlooked in favour of their patent and trade mark cousins. However, the Federal Court’s latest decision


Full Court Shines A Light on Claim Construction

Author: Adrian Crooks, Phillips Ormonde Fitzpatrick

It is a well-established principle of claim construction that it is not permissible to vary or qualify the plain and unambiguous


Full Court Looks Into Best Method Requirements

Author: Malcolm Bell, Phillips Ormonde Fitzpatrick

Ever since its introduction into the 1952 Patents Act, there has been a statutory requirement for an Australian complete patent


The impact of Brexit on intellectual property in the UK

Author: Julian Curwen, Davies Collison Cave

Following a referendum 23 June 2016, the UK has voted to exit the European Union (EU), an outcome coined “BREXIT”.


The future of Plant Breeder’s Rights in Australia

Author: David Longmuir, Phillips Ormonde Fitzpatrick

The Australian Productivity Commission’s overarching recommendations seek to rebalance IP policy more in favour of Australian interests. Whilst the draft


Federal Court rules on Trade Marks as keywords

Author: Russell Waters, Phillips Ormonde Fitzpatrick

The increase in businesses using the internet to promote their products and services has prompted a corresponding growth in the


2015 Malcolm Royal Prize Winner – Whose monopoly is it?

Author: Robert Cross

The trade mark MONOPOLY® identifies one of the world’s favourite board games. There are several versions, including “The Junior”, “Classic”,


Opportunities and risks for existing and future brand owners in new EU Trade Marks regulation

Author: Kellie Jukkola, Fisher Adams Kelly Callinans

New European legislation which came into force last month has made important changes to the European trade mark system which,


Poisonous Priority Arrives in Australia and New Zealand

Author: Michael Caine

Updated 22 June 2016 The term, “poisonous priority”, is a relatively recent term used to describe an unusual phenomenon encountered


Does the Trans-Pacific Partnership Agreement (TPP) mandate change to Australian IP law?

Author: Dr Tim Fitzgerald and Ernest Graf, Fisher Adams Kelly Callinans

  The Australian Minister for Trade and Investment, Andrew Robb, signed the Trans Pacific Partnership Agreement (TPP) on 4 February


First test for new ‘Disclosure’ and ‘Support’ standards points the way to the future of patent specifications in Australia

Author: David Loch, Fisher Adams Kelly Callinan

In patent regimes around the world, the conferring of exclusive legal rights to an invention has long been part of


Lowering the risks associated with overseas intellectual property disputes


The Japan Patent Office (JPO) has established Japan’s first insurance scheme to cover the cost of overseas intellectual property (IP)


IP Australia backs hacking competition

Author: P S News

IP Australia has announced it is to be the lead Agency sponsor for GovHack 2016. GovHack will be held in


IP litigation and Brexit

Author: Solicitors Journal

Giovanni Guglielmetti and Marco Blei discuss how the outcome of the referendum could affect the new EU-wide patent system The


Mark Zuckerberg Can’t Dodge Deposition In Oculus IP Row

Author: Y. Peter Kang

A Texas federal judge on Monday said Facebook CEO Mark Zuckerberg can’t avoid a deposition in a trade secrets suit


Government’s Innovation Statement puts renewables back on the Agenda

Author: Chelsea Roche - Solicitor, Patrick Sands – Partner

Release of the Federal Government’s much-anticipated National Innovation and Science Agenda (the Agenda) on 7 December is expected to boost investor


Re-engineering Australia’s approach to innovation

Author: Brent Balinski

The federal government will release its heavily anticipated innovation statement today. There’s been a lot of talk, but what hope


Inside Views: Impact Of The TPP On The Pharma Industry

Author: D G Shah

The final text of the Trans-Pacific Partnership confirms beyond doubt the apprehensions expressed by civil society, academia and the generic