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.

Patents & Trade Marks Publications

  • Focus: Faster TGA disclosure - what it means for pharmaceutical patent litigation

    23 April 2019

    The Therapeutic Goods Administration has consulted on whether it should disclose earlier that a prescription medicine is under evaluation and what types of prescription medicines should be published. The proposal that it publish the details of applications for generic medicines and biosimilars at the time of application, rather than registration, would, if adopted, have major advantages in terms of facilitating early resolution of pharmaceutical patent litigation in Australia. Partner Richard Hamer and Senior Associate Lauren John report.

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  • InIP: What's happening in intellectual property

    18 April 2019

    • In this issue we examine a patentee's ability to enforce Swiss-style claims against makers of bioequivalent products following the Mylan Health decision; the EU Copyright Directive raises more questions than answers; Jim Beam drives home its trade mark rights; Telstra calls for its right to Belong; IPONZ announces major fee changes for patents and trade marks; NZ accedes to the Budapest Treaty; illegal Banksy merch raises compelling questions over artists' rights; and Cardi B thinks trade marks are OKURRR.

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  • InIP: What's happening in intellectual property

    28 February 2019

    In this issue we we explore how textile merchants can weave in copyright protections when purchasing designs from third-parties; McDonald's loses its iconic 'BIG MAC' trade mark in Europe; 'best method' goes from bad to worse for divisional patents; a deodorant standoff explores the meaning and use of 'clinical strength'; New Zealand introduces a saving grace for inadvertent public disclosures; and the ACCC delivers the goods in its first two decisions on bad faith.

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  • InIP: What's happening in intellectual property

    19 December 2018

    In this issue we report on how a top European court denied copyright protection for taste; ROKT's major win in the fight for software-related inventions; who, or what, is the author of computer-created works, and whether those works are entitled to copyright protection; how the Federal Court is handling the issue of offers of compromise and indemnity costs; the key points from Sigma v Wyeth; the world's first counterfeit and piracy watch list; the brand war between Sportsbet and BetEasy; and the Network 10 rebrand trade mark controversy.

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  • Food Law Bulletin

    17 December 2018

    In this edition: how new technologies can assist in preventing food fraud; two recent cases of interest to food and beverage companies seeking to distinguish their marks from competitors'; what happens when an offshore giant attempts to take on a longstanding local user of a mark; and confirmation from the Federal Court that food and beverage industry participants can be found to have engaged in misleading or deceptive conduct for not complying with relevant regulatory regimes.

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  • Client Update: It's that time of year again - is your product safety house in order?

    21 November 2018

    Product safety has been high on the ACCC's agenda in 2018 and, with the holiday retail frenzy about to begin, it should also be high on the agenda of all retailers and suppliers. Following on from International Product Safety Week last week, it is a good time for businesses to review their processes and procedures to ensure they comply with the Australian Consumer Law's product safety regime. Partner Miriam Stiel and Senior Associate Julia Taylor set out some important considerations.

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  • Client Update: Changes to inventive step requirements postponed

    16 November 2018

    In response to a range of concerns from stakeholders, the Federal Government has decided to postpone controversial amendments to the inventive step requirements. Partner Linda Govenlock and Senior Associate Lauren John report on this significant development.

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  • InIP: What's happening in intellectual property

    31 October 2018

    n this issue: we report on a Bill amending website blocking laws; compensation for Albert Namatjira's descendants for decades of missed royalties; an attempt to trade mark common textspeak abbreviations; amendments to the EU Copyright Directive that have been sending the Twitterverse into a frenzy; how residual reputation in a trade mark stopped a non-use application; and further Australian Patent Office decisions relating to patent ownership.

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  • Client Update: Making sense of human cell and tissue products regulation

    12 September 2018

    The Therapeutic Goods Administration has released guidance on recent changes to the regulation of human cell and tissue products. Special Counsel Ric Morgan and Senior Associate Tracy Lu dissect the complex regulatory framework, particularly in relation to advertising.

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  • Report: Changes to Australia's IP laws take effect

    31 August 2018

    The Intellectual Property Laws (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) commenced on 25 August 2018. The Act implements various recommendations that the Productivity Commission made in its inquiry into Australia's IP arrangements. We discuss the key changes.

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  • InIP: What's happening in intellectual property

    23 August 2018

    In this issue we look at challenges for domain name searching posed by the GDPR, the second round of draft amendments to the Patents Act, developments in the patentability of computer-implemented inventions, the dangers of falsely marking products as 'patented', the latest brand wars in the Federal Court and the US Postal Service's costly case of mistaken identity.

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  • Report: Proposed changes to the Australian Patents Act, and how they will affect you

    15 August 2018

    We discuss draft legislation proposing further changes to the Australian Patents Act in response to the Productivity Commission's recent inquiry into Australia's IP arrangements, and how you can have your say. Key changes include raising the threshold for inventive step (yet again), abolition of the innovation patent system, insertion of an objects clause into the Act, and amendments to the Crown use and compulsory licensing provisions.

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  • Food Law Bulletin

    23 July 2018

    In this edition: why it's vital to pay close attention to get-up; how digital platforms are disrupting the food and beverage industry; the latest on what it means to be 'natural'; and why NZ cracking down on high-calorie advertising to youth affects more than just New Zealanders.

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  • InIP: What's happening in intellectual property

    20 June 2018

    In this issue we provide an update on defamation law in the digital context; look at how having a name famous enough to be registered as a trade mark can be a double-edged sword; give the lowdown on some intriguing new applications for drones; report on a US decision on whether embedded Tweets infringe copyright, which could have important consequences for online media; explain how to take ownership of social media accounts when purchasing a business; and analyse the Federal Court's first look at enablement and support in the patent context.

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  • InIP: What's happening in intellectual property

    24 April 2018

    In this issue we give another update on the proposed changes to Australia's IP laws; examine the impact of the ACCC v Heinz decision on food packaging; look at franchising issues, which are back in the spotlight; show how failure to identify who is an inventor can have serious consequences; give an update on online copyright infringement laws; and look at the difficulties in developing an implementation policy for direct .au registrations.

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  • InIP: What's happening in intellectual property

    22 February 2018

    In this issue we look at a digital rights management platform to help photographers protect their copyright; a new copyright infringement lawsuit against pop superstar Ed Sheeran; an Insta-celebrity clash over the word 'Bod'; changes to Australia's IP laws; the difficulties in comparative advertising; heightened risks that may be faced by patentees when PBS changes take effect; and a Federal Court decision that genetic testing methods continue to be patentable in Australia.

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  • Food Law Bulletin

    19 December 2017

    In this edition we look at the curious case of ‘chicken free chicken’; the fine line between an industry association providing a helping hand and cartel conduct; a rather awkward definition of ‘natural’ from the Federal Court; and changes to the wine equalisation tax regime.

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  • InIP: what's happening in intellectual property

    11 December 2017

    In this issue we look at how you can protect yourself against ambush marketing; a new mandatory data notification regime coming into effect; big data challenges for the healthcare and pharmaceutical sectors; a Full Federal Court decision on preliminary discovery in patent infringement proceedings that will be welcomed by IP owners; and some examples of trade mark infringement; and and issues presented by the use of brands in video games.

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  • Client Update: Bested by 'best method' requirement

    15 September 2017

    Australia's unique statutory 'best method' requirement continues to get the better of patent applicants and patentees. Associate Claire Gregg looks at two recent decisions that provide some insight into the requirement of disclosing the best method known to the applicant of performing the invention at the time of filing the complete patent specification.

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  • Client Update: Full Federal Court overturns decision allowing patent term extension of 'Swiss-style' claims

    11 September 2017

    The Full Federal Court has unanimously held that patent term extensions are not available for second medical use claims involving the use of recombinant DNA technology. This decision overturns a controversial finding of the Administrative Appeals Tribunal last year and means that any patent term extensions granted on the basis of the AAT decision are now invalid. Associate Claire Gregg reports.

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  • Focus: Government responds to Productivity Commission's IP inquiry

    29 August 2017

    The Federal Government has released its response to the recommendations proposed by the Productivity Commission following its inquiry into Australia's IP arrangements. The Productivity Commission's review covered all areas of IP, as well as IP enforcement and international obligations. The Allens Intellectual Property team considers the Government's response to some of the key recommendations.

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  • Focus: Trade mark owners beware

    28 August 2017

    The Federal Court has made it clear that when trade mark applications are filed in the incorrect name, the defect is fatal. Accordingly, it is vital that trade mark owners ensure that valid rights have been secured. Managing Associate Mark Williams reports.

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  • Client Update: Protecting innovation without patents - data exclusivity and market exclusivity

    19 July 2016

    Developments in patent law and the consequential limitations on patentability for biologic medicines mean that data exclusivity and market exclusivity can be the primary protection afforded to originator biologic medicines. This is most stark in the US where patent protection for biologic medicines can be very limited. This seems to be the reason that the US has twelve years of exclusivity, and is pressing for other nations to have similar protection. In the TPP agreement, Australia has committed to providing a comparable outcome in the market to eight years of exclusivity but is robustly resisting extending its current five years of statutory protection. Partner Sarah Matheson and Special Counsel Ric Morgan report.

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  • Client Update: Full Court comes down hard on business method patent, but software remains patentable

    21 December 2015

    In an eagerly awaited appeal decision in RPL Central v The Commissioner of Patents, the Full Federal Court has decided that the evidence-gathering method the subject of RPL Central's innovation patent was a 'mere scheme', abstract idea or business method that did not constitute patentable subject matter. Partner Chris Bird and Senior Associate Anthony Selleck report.

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  • Client Update: Patent examination guidelines in the wake of Myriad

    18 December 2015

    Following public consultation on proposed examination guidelines issued on 16 October 2015, the Commissioner of Patents has established a revised examination practice taking into account the High Court's decision in D'Arcy v Myriad Genetics Inc. Dr Trevor Davies, Partner at Allens Patent & Trade Mark Attorneys, looks at what the new guidelines will mean for innovators.

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  • Client Update: Not quite business as usual - IP Australia takes pragmatic view of Myriad

    19 October 2015

    IP Australia has taken a pragmatic approach to the Myriad decision that will give comfort to Australia's biotechnology industry and research organisations that they can continue to carry out biological R&D and be able to obtain patent protection for innovation in Australia. Partner Dr Trevor Davies reports.

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  • Focus: High Court unanimously finds isolated genetic material not patentable

    8 October 2015

    In the culmination of a hard-fought patent dispute, the High Court of Australia has unanimously ruled that Myriad Genetics' patent claims to isolated nucleic acid coding for the mutant or polymorphic BRCA1 polypeptide are not valid. This overturns the previous decisions at trial and on appeal before the Full Federal Court, and effectively nullifies the long-standing practice that 'isolation' of material from a natural source is sufficient to meet the Australian patentable subject matter threshold. Partner Trevor Davies and Managing Associate Linda Govenlock report.

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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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  • 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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  • 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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  • 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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  • 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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  • 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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