Intellectual Property

Our experienced Intellectual Property legal team regularly publishes articles and updates - the full list of publications appears below. If you'd like to be notified when we add new intellectual property publications to the site, please go to our subscription page to sign up for email alerts or, alternatively, you can subscribe to our RSS feed.

Read about our track record in intellectual property law.

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Intellectual Property Publications

  • Focus: Comply or say bye to your franchise!

    23 October 2014

    With the new Franchising Code of Conduct and civil pecuniary penalties set to commence on 1 January 2015, a recent Full Federal Court decision is a timely warning to franchising parties to ensure their practices comply with the Code. Partner Tim Golder and Associate Nadia Guadagno report on this decision and its significant implications for franchising parties.

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  • Focus: Will Queensland reform its biodiscovery regime?

    14 October 2014

    The Federal Government proposed significant changes to the regulation of biodiscovery earlier this year, when it released a model for the implementation of the Nagoya Protocol. Partner Michael Morris and Associate Julieane Bull report on the potential flow-on effects for Queensland's regulatory regime.

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  • Focus: Isolated genetic material confirmed as patentable

    12 September 2014

    In a unanimous decision, the Full Federal Court has confirmed that genetic materials in their isolated form remain patentable in Australia. The decision related to an appeal from an earlier Federal Court decision in which it was found isolated nucleic acids to be a 'manner of manufacture' as required by Australia's patent legislation and therefore patentable subject matter. The latest decision did not deal with policy, social or moral reasons as to whether nucleic acids or genes should be patentable which, as the court noted, has been considered by the Australian Law Reform Commission and the Australian Parliament. Partner Dr Trevor Davies and Associate Dr Tony Shaw provide an overview of the decision and its implications for patentees, patients, the biotechnology industry and the Australian medical research community.

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  • Food Law Bulletin

    5 September 2014

    we look at the ACCC's current enforcement activities on credence claims in food labelling; the development of a national information standard for the contentious area of 'free-range' eggs in light of the industry's failure to selfregulate; a Federal Court decision that provides some welcome clarification on the issue of certification trade marks; and an ACCC cartel proceeding that highlights the potential dangers of the relationship between producers and the industry bodies that represent them.

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  • Focus: The ending point for 'starting point'

    1 September 2014

    The Full Federal Court has published its much-anticipated judgment in the AstraZeneca v Apotex appeal. A bench of five judges heard the appeal (in contrast to the usual three judges) in order to be able to clarify, or overrule if appropriate, an earlier Full Court decision relating to the correct test for assessing 'inventive step' - known as the 'starting point' issue. This ruling restores the tighter test for obviousness and should be welcomed by patentees. As Managing Associate Clare Young and Senior Associate Suzy Muller report, the court also provided other useful guidance on infringement of method of medical treatment claims, and on the issue of whether injunctions are always the right remedy for patent infringement.

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  • Client Update: Changes to New Zealand patent law - the deadline approaches

    10 July 2014

    Changes to New Zealand's patent legislation, which come into effect on 13 September 2014, will align it more closely to Australia's patent law. Partners Chris Bird and Trevor Davies advise on the importance of acting quickly before the stricter standards of New Zealand's new patent regime apply.

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  • Scintilla: Intellectual Property in Review

    1 July 2014

    The Allens IP blog, Scintilla, provides regular insights and analysis on intellectual property law. We have published a selection of blog posts in a handy digest for clients. In this edition, we cover the latest issues in patents, trade marks, copyright, designs and international issues.

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  • Focus: The ramifications of a Facebook rant

    22 May 2014

    The Full Court of the Federal Court recently handed down its decisions on an appeal that highlights the dangers of making unsubstantiated social media comments. Partner Miriam Stiel and Lawyer Tracy Lu report on a long-running dispute where the court found personal Facebook posts constituted misleading or deceptive conduct.

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  • Focus: TGA confirms its approach to disclosure of commercially confidential information

    21 May 2014

    The Therapeutic Goods Administration has released the final version of a document outlining its approach to the disclosure of commercially confidential information, including information provided by medicine sponsors. This follows the release of a draft version in June 2013 and a period of public and industry consultation. Partner Sarah Matheson and Senior Associate Alison Beaumer report.

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  • Focus: Australia releases model for implementing the Nagoya Protocol

    8 May 2014

    The Federal Government has released a model for the implementation of the Nagoya Protocol that will have major implications for those who use genetic resources and associated traditional knowledge for biodiscovery. Partner Sarah Matheson and Lawyer Julieane Bull provide an overview of changes proposed by the new model and its implications for research and commercialisation pathways.

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  • Focus: Seeing red over yellow

    5 May 2014

    The difficulty of registering a colour mark or word mark denoting a colour (that include issues of market place recognition) was highlighted by a recent set of appeals revolving around the use of the word 'Yellow' in a tussle between various business directory goods and service providers. Partner Sarah Matheson and Lawyer Tracy Lu report on a decision that provides some useful clarification on this complex issue.

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  • Focus: It's crunch time! Changes to the Franchising Code are nigh

    4 April 2014

    The long-anticipated changes to the Franchising Code of Conduct are scheduled to take effect on 1 January 2015. Partners Tim Golder and Andrew Wiseman and Lawyer Nadia Guadagno report on the significant changes.

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  • Focus: Methods of medical treatment of the human body are patentable

    6 December 2013

    In a significant decision, the High Court has confirmed that methods of medical treatment of the human body are patentable inventions in Australia. Partner Sarah Matheson and Lawyer Lauren John report.

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  • Focus: Innovative step on an unsure footing

    1 October 2013

    The Australian Government's Advisory Council on Intellectual Property is currently accepting submissions to its Review of the Innovation Patent System, in which it is considering making changes to the requirement that a valid innovation patent disclose an innovative step. The outcome of this review could have a significant impact on what constitutes a valid innovation patent, and may cut across a number of cases that have sought to clarify the innovative step requirement for these patents. Partner Sarah Matheson, Senior Associate Tom Reid and Law Graduate Israel Cowen report.

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  • Focus: Green light for Franchising Code reform

    29 July 2013

    Changes to the Franchising Code of Conduct and its enforcement may soon take effect, with the Federal Government accepting most of the recommendations in the recent independent review. Partner Andrew Wiseman and Lawyer Nadia Guadagno report on the some of the significant changes.

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  • Focus: Food

    16 July 2013

    We look at a new voluntary labelling system to give consumers greater information about the nutritional content of food; renewed calls for changes to the country of origin labelling regime; a push to loosen the standard of what can be sold as gluten-free; renewed scrutiny of alcohol advertising; defining the difference between a food and a medicine; and the debate around the safety of GM foods.

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  • Focus: Genomic DNA not patent eligible in the US

    8 July 2013

    A recent US Supreme Court decision has provided some important guidance on the patentability of human genomic material in that country. Partners Sarah Matheson and Dr Trevor Davies, and Law Graduate Israel Cowen report on a ruling that puts the US at odds with most of its trading partners.

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  • Linklaters Insights: China's highest judicial body identifies positive steps in the enforcement and protection of intellectual property rights in China

    4 July 2013

    2012 saw some small, but positive, steps in the area of intellectual property enforcement within China, according to the recently released 2012 annual report of China's Supreme People's Court.

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  • Focus: Recommending change to the Franchising Code

    26 June 2013

    The recent independent review has recommended some important changes to the Franchising Code of Conduct. Partner Andrew Wiseman and Lawyer Nadia Guadagno report on some of the significant recommendations to the Code and its enforcement.

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  • Focus: Aggressive regulation of consumer goods - is 'junk food' next?

    6 June 2013

    Governments and public health experts throughout Australia are turning their attention to the health impacts of excessive consumption of 'junk food'. Although the industry is currently subject to reasonably limited regulation, recent events both here and overseas suggest that the status quo may be under threat. Partner Peter O'Donahoo, Senior Associates Susie Stone and Tim Maxwell and Lawyer Mark Hosking report.

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  • Focus: Full Court clarifies online content delivery

    28 March 2013

    A unanimous decision of the Full Federal Court means that online simulcasts of radio programs are not 'broadcasts', meaning traditional radio broadcasters will need to obtain separate licences from, and pay additional royalties to, copyright owners to transmit radio programs on the internet. Partners Ian McGill and Miriam Stiel and Senior Associate Nathan Shepherd report on the case and its ramifications.

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  • Client Update: New generic Top Level Domains to go live shortly - be prepared!

    15 March 2013

    The first of the new generic Top-Level Domain extensions will soon go live, and now is the time for brand owners to implement their brand protection strategies. There have been almost 2000 applications for new TLDs and it is expected that hundreds of new TLD registries will be open by the end of the year. Partner Tim Golder and Senior Associate Mark Williams explain why it is of paramount importance that brand owners take steps to ensure the protection of their brands at the second level of the new domains and what those steps should be.

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  • Focus: Federal Court win for gene patents, their creators and patients

    27 February 2013

    In a landmark decision that resolves the long-standing debate as to whether genes and their biological products warrant patent protection, the Australian Federal Court has found that isolated DNA and RNA are patentable subject matter. Partners Sarah Matheson and Dr Trevor Davies and Lawyer Yan-Lin Lee report.

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  • Audio: Win for gene patents in Federal Court

    18 February 2013

    The Federal Court has recently handed down its decision in the legal challenge by Cancer Voices Australia against a patent owned by Myriad Genetics Inc. Partner Trevor Davies speaks to BRR Media about the issues the ruling raises and how it will impact on innovators and users of Australia's medical system.

  • Focus: Technology triumphs: Google not responsible for misleading and deceptive ads

    7 February 2013

    The long-running battle with the ACCC over Google's AdWords service has been decided in Google's favour. The High Court unanimously held that Google did not engage in misleading and deceptive conduct by displaying advertisements in the form of 'sponsored links'. Partner Carolyn Oddie and Special Counsel Rebecca Sadleir report on the case, which is positive news for companies involved in the dissemination of information on the internet.

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  • Focus: The good oil on new food regulations

    29 January 2013

    The new, long-awaited standard regulating nutrition and health claims has commenced, with food businesses given three years to transition to compliance with the new comprehensive regime. Partners Richard Hamer and Andrew Wiseman, Senior Associate Ric Morgan and Lawyer Claire Agius report on the new standard.

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  • Focus: 'Raising the Bar' - consultation outcomes

    25 January 2013

    IP Australia has released the outcomes of consultation on draft regulations that will give effect to important changes to the intellectual property system that will come fully into force this year. The strong focus on tightening examination and opposition procedures has largely been maintained, despite stakeholders' concerns that some of the proposed regulations are too restrictive and timelines are unreasonably short. Partner Chris Bird and Senior Associate Linda Govenlock report.

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  • Focus: When is a Facebook comment misleading or deceptive conduct?

    21 January 2013

    The Federal Court has found that a Facebook user's posts constituted misleading or deceptive conduct, highlighting the need for businesses to exercise significant caution regarding any social media communications, even when the author has considered them to be personal. Partner Miriam Stiel and Lawyer Tracy Lu report.

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  • Client Update: Pharma patent extensions under attack

    23 November 2012

    IP Australia has released a paper highlighting issues it intends to cover in its review of pharmaceutical patents. Partner Richard Hamer and Law Graduate Laura Myer report.

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  • Client Update: Leave to appeal Optus TV Now decision refused

    10 September 2012

    The High Court has refused leave to appeal the Optus TV Now decision which means that the Full Federal Court decision, which overturned the trial decision and prevented Optus from operating its TV Now service, stands. A review by the Australian Law Reform Commission may however make recommendations that see further changes to the law. Partner Andrew Wiseman and Lawyer Rob Clark report.

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  • Focus: New PBS reforms to affect pharmaceutical manufacturers

    21 August 2012

    The recent pricing reforms to the Pharmaceutical Benefits Scheme, which will come into effect shortly, will have implications for manufacturers of pharmaceuticals. Senior Associate Ric Morgan and Lawyer Ben Mee report.

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  • Audio: Fashion Week: design protection tips

    20 August 2012

    Fashion designers are gathering for Mercedes-Benz Fashion Festival Sydney, Mercedes-Benz Fashion Festival Brisbane and Melbourne Spring Fashion Week. Partners Tim Golder and Miriam Stiel speak to BRR Media about what designers can do to protect the intellectual property of their designs.

  • Focus: TGA review on packaging and labelling

    7 June 2012

    The Therapeutic Goods Administration has recently released the latest consultation paper in its review of packaging and labelling of medicines in Australia, which, on completion, is expected to have a significant impact on the pharmaceutical industry. Partner Richard Hamer and Lawyer Ali Ridley report

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  • Focus: Food Law Bulletin

    1 June 2012

    In this issue: we look at proposals being considered by Food Standards Australia New Zealand to amend the Food Standards Code, the Labelling Logic reforms, the proposed regulation of nutritive substances and novel foods, Truth in Labelling laws and the fast food nutrition labelling regime, and the introduction of a Small Business Commissioner in South Australia. The developments show examples of a trend back to more prescriptive regulation, as well as a splintering of regulation between different states, which reverse recent progress in achieving greater deregulation and national uniformity.

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  • Client Update: Time shift exception to copyright overturned

    1 May 2012

    The Full Court of the Federal Court unanimously overturned the original decision in the Optus TV Now case that had given a very generous interpretation of 'private and personal use' and who 'made' the copies in question. Partner Andrew Wiseman and Paralegal Ashleigh Shand report on the appeal decision that will protect significant revenues for the copyright holders of television broadcasts

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  • Audio: Optus TV Now in limbo

    27 April 2012

    The Full Federal Court has today in a single unanimous decision reversed the lower court's decision in TV Now and found in favour of the AFL, NRL and other rights owners. The Optus service is now in limbo. Partner Andrew Wiseman spoke to BRR Media about the decision and what this means for copyright law in Australia

  • Focus: Is an ISP liable for its customers' copyright infringement?

    24 April 2012

    In a much anticipated judgment, the High Court unanimously upheld the finding of the Full Federal Court and trial judgment that an Internet service provider was not liable for authorising the copyright infringements of its customers. However, the judgment does not entirely close the door to a finding of authorisation by an ISP. Partner Miriam Stiel and Lawyer Rob Clark report on the decision

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  • Audio: iiNet cleared of copyright breach

    20 April 2012

    The High Court has found that Internet service provider iiNet was not liable for the copyright-infringing acts of its customers. Partner Miriam Stiel spoke to BRR Media about what today's decision means for ISPs and copyright owners

  • Focus: Google held responsible for misleading and deceptive ads

    5 April 2012

    The Full Federal Court has unanimously upheld an appeal by the Australian Competition and Consumer Commission, concerning Google's AdWords service. It found that Google was responsible for the content of certain misleading advertisements appearing on its website, and that it, therefore, directly engaged in misleading and deceptive conduct. Partners Miriam Stiel and Carolyn Oddie and Special Counsel Rebecca Sadleir report on the decision

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  • Focus: Australian 'Raising the Bar on IP Rights' Bill passed

    26 March 2012

    Major changes to intellectual property protection in Australia are likely to become law in only a few weeks. Partners Tim Golder and Chris Bird and Lawyer Tracy Lu examine the key substantive features of the new provisions and provide some recommendations for clients to factor into their protection strategies

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  • Focus: Tag a drag for imitators

    13 February 2012

    A recent Federal Court decision expands copyright and trade mark owners' opportunities to argue that imitators' labels constitute infringements. Partner Tim Golder and Lawyer Andrew Wilcock report.

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  • Focus: Government response to gene patenting inquiries

    8 February 2012

    The Federal Government has released a response to three different inquiries relating to the patenting of genes and related biological materials. Partner Sarah Matheson, Senior Associate Tom Reid and Vacation Clerk Lauren John report on the response, which has particular significance to biotech industry participants

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  • Audio: Super Bowl yoghurt ad tastes like John Butler Trio

    8 February 2012

    A dispute over the use of a John Butler Trio riff in a US television ad which went to air during the Super Bowl has raised issues over the appropriate use of music. Partner Andrew Wiseman spoke to BRR Media about the lawful use of music in advertising

  • Client Update: 'TV Now' shifts goalposts on copyright holders' rights

    3 February 2012

    The Federal Court has held that Optus's 'TV Now', which allows users to record and play back free-to-air television programs on various devices, does not infringe the rights of those who own copyright in the television programs. Partner Andrew Wiseman and Summer Clerk Ashleigh Shand report

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  • Audio: Megaupload lessons for cloud computing users

    1 February 2012

    The recent closure of the Megaupload site has raised some questions about the use of cloud computing services. Partner Niranjan Arasaratnam spoke to BRR Media about the implications of the case and what businesses using or looking to use cloud computing need to do to make sure their data is secure

  • Audio: Offensive words as trade marks

    23 January 2012

    A decision last week approving the trade mark 'Nuckin Futs' has highlighted some of the issues surrounding registering potentially offensive words as trade marks. Partner Sarah Matheson spoke to Boardroom Radio about the way the law and attitudes have changed in regard to this issue

  • Focus: IP and the transition to the Personal Property Securities Act

    20 December 2011

    Companies and individuals that own, license or hold security interests in intellectual property should be aware that the Personal Property Securities Register will go live on 30 January 2012, ushering in the reforms implemented by the Personal Property Securities Act 2009. Partner Tim Golder, Senior Associate Tom Reid and Vacation Clerk Geoff McGrath look at the transitional arrangements and the implications of the new regime

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  • Focus: Appeal decision shows new approach to 'fair basis'

    4 November 2011

    A recent decision of the Full Court of the Federal Court will have a major flow-on in relation to the issue of patent validity in Australia. Partner Richard Hamer, Senior Associate Louise Brunero and Law Graduate Claire Agius report on the successful appeal by Alphapharm, Generic Health and Sigma that will open the market to products in competition with Pfizer's highly successful anti-depressant, Efexor XR (venlafaxine hydrochloride).

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  • Focus: Google Ads not misleading or deceptive

    18 October 2011

    In a decision that provides a useful analysis of what constitutes misleading and deceptive conduct in online advertising, the Federal Court recently dismissed the Australian Competition and Consumer Commission's allegations that Google, by publishing 'Sponsored Links' with its search results, had engaged in misleading and deceptive conduct. The ACCC has appealed the court's decision. Partner Miriam Stiel and Lawyer Chris Govey discuss the court's reasons and the possible implications for your business

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  • Focus: Business names registration to be overhauled

    17 October 2011

    A new national register for business names is to be established, to replace the inconvenient and costly state-based systems that are currently in operation. Partner Tim Golder and Law Graduate Claire Agius report

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