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Patents & Trade Marks

Our team keeps you informed of developments in patents, trade marks, designs, ecommerce and biotech. If you'd like to be notified when we add new 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 our IP Blog, Scintilla, which provides regular insights and analysis on intellectual property law.

Patents & Trade Marks Publications

  • 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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  • 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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  • 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: 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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  • 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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  • Allens insights: Patent case a win for everyone

    22 February 2013

    There has been a long-standing public debate as to whether genes and their biological products should be patented. The Australian Patent Office has consistently recognised isolated DNA and RNA as patentable but that hasn't quietened debate.

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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.

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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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  • 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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  • 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.

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  • Client Update: IP Australia announces fee changes

    18 May 2012

    IP Australia has recently announced changes to many official fees for patent, trade mark and design matters, including the introduction of a new fourth year patent continuation/renewal fee. Partner Chris Bird reports

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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: 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

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  • Focus: Medical patent fatally wounded by 'fundamental' lack of clarity

    21 September 2011

    In a 'rare case' in patent law, a fundamental lack of clarity concerning the performance and function of an aspect of the claimed invention doomed the relevant claims of the patent to invalidity. Partner Sarah Matheson, Senior Associate Tom Reid and Law Graduate Courtney McLennan report on this recent case

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  • Focus: Coffee appeal grounds upheld

    16 August 2011

    The Full Court of the Federal Court has overturned an earlier decision that servingware maker Bodum's reputation in its 'Chambord' coffee plunger was 'distinctly tied' to its Bodum name. Partner Tim Golder and Senior Associate Anna Thorburn report on this latest decision

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  • Audio: Tablet patent wars

    4 August 2011

    A high-stakes patents war between the world's leading smartphone and tablet companies is currently taking place. Partner Chris Bird spoke to Boardroom Radio about the issues surrounding the current battle and what it means for consumers

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  • Client Update: Seafood v Bass - a commonsense approach

    5 July 2011

    The Full Federal Court has unanimously overturned a controversial decision concerning patent infringement, holding that commonsense should prevail when approaching the construction of patent claims. Ordinary words in claims should be given their plain and ordinary meaning, as a person skilled in the art would understand them. Partner Chris Bird and Senior Associate Lester Miller report on a case that will be welcome news to patentees

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  • Focus: Trade mark infringement on the web - a hairy problem

    28 April 2011

    A recent Federal Court case looked at the issue of whether the use of a trade mark on an 'international' website constituted a trade mark infringement in Australia. Partner Tim Golder and Senior Associate Mark Williams discuss the case, and highlight the difficulties presented by the online environment when a mark is owned by different parties in different jurisdictions

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  • Focus: New practice for divisional applications, trans-Tasman examination integration and review of patentable subject matter

    6 April 2011

    Our lawyers and patent attorneys look at IP Australia's revised practice guidelines for the examination of divisional patent applications and their implications; a joint NZ/Australian initiative to integrate their respective patent examination services; and the Federal Government's review of the law relating to patentable subject matter

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  • Focus: Major IP reforms under consideration

    5 April 2011

    IP Australia is currently considering draft legislation that proposes some major changes to, and developments in, IP protection in Australia. This will include consideration of submissions made by all interested stakeholders over recent weeks. In this article, Partner Trevor Davies and PTA Technical Assistant Sean Blasdall highlight some of the key features covering patents, and Partner Tim Golder and Senior Associate Anna Thorburn highlight some of the key features covering copyright, trade marks and designs

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  • Audio: Senate Inquiry into gene patents

    2 December 2010

    A Senate committee has released its long-awaited report into gene patents. Partner Trevor Davies spoke to Boardroom Radio about the report's major findings, as well as a Private Member's Bill introduced into the Senate that could have serious consequences for the Australian biotech industry

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  • Focus: Amendments pop cork on new GIs and traditional expressions

    10 November 2010

    Recent amendments to the Trade Marks Act 1995 (Cth) now make provision for the amendment of trade mark registrations affected by the inclusion of new EU geographical indicators and traditional expressions on the Register of Protected Names. Trade Mark Attorney Carissa Apps and Senior Associate Mark Williams report on the effect and implications of these changes

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  • Intellectual Property Bulletin - October 2010

    19 October 2010

    Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments regarding copyright, trade marks, patents and anti-counterfeiting

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  • Audio: Whiskas purple trade mark allowed

    25 June 2010

    Mars Australia has recently secured trade mark protection for a particular shade of purple, which it refers to as 'Whiskas Purple', for cat food. Partner Tim Golder speaks to Boardroom Radio about the case and the difficulties and consequences of obtaining trade mark protection of colours

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  • Intellectual Property Bulletin

    13 April 2010

    Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments regarding intellectual property - including passing off, confidential information, patents, trade marks and copyright

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  • Intellectual Property Bulletin

    18 December 2009

    Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments affecting trade marks, copyright, patents and sponsorship/marketing

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  • Focus: Use of another's trade mark in search engine marketing

    28 October 2009

    While a recent opinion of the Advocate General to the European Court of Justice indicates that use of another's trade mark as a keyword in search engine marketing will not, of itself, constitute trade mark infringement in Europe, the position in Australia remains unsettled. Lawyer Nicholas Tobias reports on the aggressive and defensive uses of search engine marketing that can promote or protect a business's reputation

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  • Intellectual Property Bulletin

    22 July 2009

    Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments affecting copyright, patents and trade marks. Articles include 'Bavaria NV wins beer appeal', 'Utility requirements for Australian patents', and discussion of the interlocutory injunction in Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth and the software copyright appeal decision in Software AG (Australia) Pty Ltd v Racing and Wagering WA

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  • Focus: Full Court united on grace period for divisional patents

    14 July 2009

    Patentees can breathe a sigh of relief now that the Full Court of the Federal Court of Australia has unanimously overturned a controversial decision of a single judge of the Federal Court. Partner Chris Bird and Senior Associate Linda Govenlock report on the appeal decision, in which the Full Court affirmed that a divisional application may be saved by the grace provisions afforded by section 24(1) of the Patents Act 1990, provided that the parent application from which it was divided was a complete application filed within the 12-month grace period

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  • Focus: Brand reputation - Hansen Beverage Company v Bickfords

    28 January 2009

    The Full Federal Court of Australia recently allowed an appeal by a US-based beverage company against an Australian competitor in a case that looked at the test that is to be applied when determining whether sufficient product recognition has been established in a relevant jurisdiction through indirect marketing. Partner Jim Dwyer and Law Graduate Joanne Been look at this important decision on brand reputation in Australia

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  • Intellectual Property Bulletin

    19 December 2008

    Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments affecting copyright, patents, trade marks, designs and personal property. We also include important Christmas/New Year closure dates for IP registration services in Australia, New Zealand, Hong Kong and mainland China.

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  • Focus: High Court decision on contributory infringement of patents

    18 November 2008

    For the first time, the High Court has considered the operation of section 117 of the Patents Act 1990 (Cth), which imposes liability in certain circumstances for contributory infringement of a patent. Senior Associate Rob Silberstein and Law Graduate Nicholas Tobias examine the decision and its likely impact

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  • Focus: Patent and Designs

    11 November 2008

    We look at three court decisions that provide some judicial guidance on three important patent and design issues

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  • Focus: Registrability of a chocolate shape

    7 October 2008

    A recent Australian Trade Marks Office decision found that the evidence did not demonstrate use as a trade mark of the shape of a four-bar chocolate and consequently, registration for that shape was refused. Partner Andrew Butler and Senior Associate Garen Holopikian review the case

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  • Intellectual Property Bulletin

    7 May 2008

    Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments affecting patents, trade marks, copyright, domain names and related developments

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  • Focus: Trade Marks - The Colorado appeal

    5 February 2008

    This case concerned two retailing interests using the same word mark in respect of overlapping goods and where one of the two retailing interests, which had obtained registration of the mark, commenced proceedings against the other for trade mark infringement.

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  • Focus: Patents, Designs and Trade Marks

    18 December 2007

    We look at the abolition of the duty of disclosure for patent applicants; the Sportsgirl trade mark case; the dangers of choosing marks of a general character; changes to the trade mark renewal grace period; and practice changes with regard to letters of consent in cases of conflicting marks

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  • Intellectual Property Bulletin

    12 December 2007

    Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments affecting patents, trade marks, copyright, domain names and related developments

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  • Focus: Pharmaceuticals - Draft human rights guidelines for access to medicines

    5 November 2007

    Partner Annette Hughes and Senior Associate Rachel Nicolson provide an overview of the UN's draft Human Rights Guidelines for Pharmaceutical Companies in relation to Access to Medicines, released for public consultation in September 2007

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  • Focus: Trade Marks - Infringement – genuine products, counterfeit packaging and invoices

    24 October 2007

    In the recent case of Brother Industries Ltd v Dynamic Supplies Pty Ltd, the Federal Court of Australia considered an unusual set of facts and held that the importation and sale of non-branded products, manufactured by the trade mark owner but imported and sold in counterfeit packaging, constituted trade mark infringement, misleading and deceptive conduct in breach of the Trade Practices Act 1974 (Cth) and passing off

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  • Client Update: Australian duty of disclosure requirements abolished

    23 October 2007

    Changes to the duty of disclosure obligations for applicants and patentees of Australian patents have now been implemented. The requirement to inform the Australian Patent Office of the result of prior art searches conducted by overseas patent offices has now been substantially abolished. Partner Chris Bird and Patent Attorney Anthony Selleck report

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  • Focus: Pharmaceuticals - Amendments to the Pharmaceutical Benefits Scheme – Part 3

    13 September 2007

    In the final instalment of our three-part series examining the amendments to the Pharmaceutical Benefits Scheme, Senior Associate Ric Morgan addresses the price disclosure obligations and how the information will be used to further reduce the price of pharmaceutical benefits to government

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  • Intellectual Property Bulletin

    11 September 2007

    Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments affecting patents, trade marks, copyright and designs

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  • Focus: Pharmaceuticals - Amendments to the Pharmaceutical Benefits Scheme – Part 2

    7 September 2007

    In Part 2 of our Focus: Pharmaceuticals series examining amendments to the Pharmaceutical Benefits Scheme, Senior Associate Ric Morgan examines the way the statutory price cuts operate and details the supply guarantee requirements

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