Allens

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

  • 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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  • 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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  • 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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