Publications Archive

Publications Archive - Griffith Hack

  • February Edition: Clean IP

    February 13, 2013


  • Off the Shelf Patent Protection - the interplay between patent rights and offshore operations

    February 4, 2013

    The Australian oil and gas sector, much of which operates offshore, represents an enormous economic opportunity for the nation. However, few – if any – of the companies that operate in Australian waters have considered their exposure to IP risks.


  • AusIndustry's R&D tax incentive working group update-Key Insights

    November 19, 2012

    Last week Tracey Murray from Griffith Hack (GH) attended an R&D Tax Incentive workshop for tax agents in Canberra. The workshop was convened by AusIndustry in order to provide key consulting and industry participants with the opportunity to review and discuss two draft guidance documents planned for release in December, as well as to discuss and workshop any issues related to the implementation of the new R&D Tax Incentive regime...


  • Voucher program provides $8 million to companies for technology development

    November 15, 2012

    The Victorian Government has announced an $8 million Technology Voucher Program that allows companies to trial new technologies in industrial biotechnology, small technologies and information and communication technologies. The Program follows the successful STIUP voucher program...


  • If it's not written down, it didn't happen

    November 8, 2012

    Whilst the title of this alert may appear trite, it embodies the Administrative Appeals Tribunal’s (AAT) reasons for rejecting an R&D claim made by Queensland based information technology company, NaughtsnCrosses Pty Ltd...


  • Trade Marks eNewsletter November 2012

    November 8, 2012

    Click here to view the full November edition of the Trade Marks eNewsletter.


  • Breakthrough Issue 2 2012

    October 30, 2012

    This publication covers recent developments in the world of Intellectual Property (IP) and from within Griffith Hack.


  • NeedtoKnow: Trade Marks eNewsletter

    September 27, 2012

    Click here to view the full September edition of the Trade Marks eNewsletter.


  • Fix your warranty documentation before 30 September 2012!

    September 5, 2012

    Do you provide voluntary warranties with your products or services? If so, it is important that you are aware of the requirements for warranties against defects under the Australian Consumer Law (ACL)...


  • NeedtoKnow: Trade Marks eNewsletter

    August 14, 2012

    Click here to view the full August edition of the Trade Marks eNewsletter.


  • August Edition: Clean & Sustainable Technologies

    August 8, 2012


  • Innovation and IP falling off SME's radar

    July 30, 2012

    Statistics recently released by the Australian Bureau of Statistics (ABS) have shown that the percentage of Australian businesses engaged in innovative activity in the 2011 financial year fell from 2010. Interestingly, the figures also highlight a discrepancy between the level of innovative activities undertaken by large businesses and small to medium enterprises (SMEs)...


  • Australian sporting innovation - patently better

    July 24, 2012

    With the 2012 London Olympics about to commence, anticipation for the Games and talk of sport is reaching fever pitch. Against this background, it is worthwhile to look at ten great Australian sporting innovations.


  • July Edition: Clean & Sustainable Technologies

    July 5, 2012


  • NeedtoKnow: Trade Marks eNewsletter

    June 25, 2012

    Click here to view the full June edition of the Trade Marks eNewsletter.


  • NeedtoKnow: Domain Names eNewsletter

    June 14, 2012

    Click here to view the full June edition of the Domain Names eNewsletter


  • 2012 Federal Budget brings changes to IP Australia's fees

    May 30, 2012

    Key points you need to know in the forthcoming revisions to official fees for patents, trade marks and designs commencing on 1 July 2012.


  • May Edition: Clean & Sustainable Technologies

    May 7, 2012


  • NeedtoKnow: Trade Marks eNewsletter

    April 24, 2012

    Click here to view the full April edition of the Trade Marks eNewsletter.


  • Securing the way forward on Alzheimer's

    April 23, 2012

    Leading Australian intellectual property law firm, Griffith Hack has partnered with patent analyst specialists Ambercite to apply sophisticated analysis in a newly released report on Alzheimer's treatments. The report considers 48,000 patents in the area of Alzheimer’s treatment to show the leading patents, patenting areas, patent owners and inventors...


  • February Edition: Clean & Sustainable Technologies

    February 29, 2012


  • NeedtoKnow: Trade Marks eNewsletter

    February 22, 2012

    Click here to view the full February edition of the Trade Marks eNewsletter.


  • January Edition: Clean & Sustainable Technologies

    January 30, 2012


  • December Edition: Clean & Sustainable Technologies

    December 15, 2011


  • NeedtoKnow: Trade Marks eNewsletter

    December 8, 2011

    Click here to view the full December edition of the Trade Marks eNewsletter


  • Protected by Design: The changing face of registered design protection in Australia

    December 5, 2011

    Interested in protecting your designs in Australia? In 2003 Australia made a major change in its design law with the introduction of the 2003 Designs Act. But what has been its impact on the IP landscape? How can design registrants adopt a best practice approach to protection?


  • November Edition: Clean & Sustainable Technologies

    November 28, 2011


  • NeedtoKnow: Trade Marks eNewsletter

    October 27, 2011

    Click here to view the full October edition of the Trade Marks eNewsletter.


  • October Edition: Clean & Sustainable Technologies

    October 20, 2011

    Griffith Hack Clean & Sustainable Technologies Group Blog Digest, a monthly digest keeping you up to date with the latest news.


  • September Edition: Clean & Sustainable Technologies Digest

    September 19, 2011

    Griffith Hack Clean & Sustainable Technologies Group Blog Digest, a monthly digest keeping you up to date with the latest news.


  • NeedtoKnow: Trade Marks eNewsletter

    September 4, 2011

    Click here to view the full September edition of the Trade Marks eNewsletter.


  • Network Patent Analysis update: Toyota under attack again!

    September 1, 2011

    Toyota has just filed suit against Californian based company Efficient Drivetrain (ED), seeking a declaratory judgement of non-infringement against allegations that Toyota’s hybrid cars infringe some US patents licensed to ED. So does ED have a case against Toyota? We use NPA to find out.


  • NeedtoKnow: Domain Names eNewsletter

    August 16, 2011

    Click here to view the full August edition of the Domain Names eNewsletter.


  • NeedtoKnow: Trade Marks eNewsletter

    August 4, 2011

    Click here to view the full August edition of the Trade Marks eNewsletter.


  • The social engineer

    June 14, 2011

    Griffith Hack client Lu Papi, has cemented his place in the Australian engineering and design folklore, courtesy of the revolutionary Freedom Wheelchair...


  • Breaking up is hard to do

    June 14, 2011

    The Civil Dispute Resolution Act 2011 comes into full effect in October 2011. We look at the new dispute resolution process and how this will affect you and your business...


  • London calling

    June 14, 2011

    The Global Partnerships Programme is a free service offered by UK Trade & Investment to assist Australian organisations involved in research activities to find UK research and/or development partners for mutual collaboration...


  • Commercial contracts for dummies – part 1

    June 14, 2011

    Do you like reading detailed Terms and Conditions? Do you enjoy incurring legal costs for basic contracts? We will keep you up to speed with the basics of commercial contracts...


  • Are you Franchising Code compliant?

    June 14, 2011

    Businesses need to be aware that the Franchising Code of Conduct applies to franchising agreements in essence rather than name...


  • Insider’s guide to cloud computing

    June 14, 2011

    Our IP Law Group explain how to adopt a best practice approach to the IT buzzword of the minute - cloud computing...


  • Preparation the key to patent law changes

    June 14, 2011

    Some changes proposed to Australia’s patent laws that are adverse to patent applicants, could have a negative impact on the patent applications you have already filed...


  • Biotech sector survives Federal Budget

    June 14, 2011

    The biotechnology sector breathed a sigh of relief in May having been spared further funding cuts in the Australian Federal Budget. Dr Stuart Boyer looks at the impact...


  • Handle with care

    June 14, 2011

    If you own a registered patent and/or trade mark, you may find yourself the target of unsolicited Intellectual Property (IP) services. Proceed with caution...


  • Raising the bar

    June 14, 2011

    Intellectual Property legislation in Australia is in the process of being amended to improve the fit and function of the IP system. In line with this objective, the Trade Marks Act 1995 will be amended in several respects...


  • The value of new designs

    June 14, 2011

    Two recent Australian Federal Court decisions provide real world examples of what will and what will not infringe a registered design...


  • All systems go

    June 14, 2011

    IP Australia has launched a new version of AusPat, the online record of Australian patents and patent applications. Its improved features include 28 searchable fields, and more comprehensive data on opposition and ownership...


  • Sydney Angels Sidecar Fund completes initial capital raising

    June 14, 2011

    Griffith Hack partner Sydney Angels has recently completed an AUD$10 million capital raising for the Sydney Angels Sidecar Fund, with their partner in the Sidecar Fund, Proto Investment Partners...


  • Phosphagenics’ new skincare product line launched

    June 14, 2011

    Griffith Hack client, Phosphagenics has just launched a new product in the ELIXIA® range, which aims to reduce the appearance of cellulite...


  • Griffith Hack proudly supports MS Angels

    June 14, 2011

    Griffith Hack was proud to recently host an evening with the Melbourne group of ‘MS Angels’...


  • Griffith Hack Trainee Patent Attorney accolade

    June 14, 2011

    Griffith Hack Trainee Patent Attorney, Jing Fung Tan, has been awarded the University of Melbourne’s Melbourne Engineering Research Institute (MERIT) prize for the Best PhD Thesis in Engineering in 2010...


  • NeedtoKnow: Trade Marks eNewsletter

    June 3, 2011

    Click here to view the full June edition of the Trade Marks eNewsletter.


  • NeedtoKnow: Domain Names eNewsletter

    May 11, 2011

    Click here to view the full May edition of the Domain Names eNewsletter.


  • May Edition: Clean & Sustainable Technologies Digest

    May 2, 2011

    Griffith Hack Clean & Sustainable Technologies Group Blog Digest, a monthly digest keeping you up to date with the latest news.


  • Getting the Deal Through - Life Sciences 2011: Australian Chapter

    March 25, 2011

    In the latest edition of this international comparative legal guide, Wayne Condon, Geraldine Farrell and Su-Ann Burke provided the Australian legal analysis of key issues in our pharmaceutical and health care industries, including legislative compliance issues for pharmaceutical and medical device manufacturers, the funding of our health care system and access to medicines...


  • NeedtoKnow: Domain Names eNewsletter

    March 23, 2011

    Click here to view the full March edition of the Domain Names eNewsletter.


  • NeedtoKnow: Trade Marks eNewsletter

    March 22, 2011

    Click here to view the full March edition of the Trade Marks eNewsletter.


  • A whole new light on patents

    March 15, 2011

    Griffith Hack has partnered with Ambercite to make the innovative patent analysis technique Network Patent Analysis (NPA) available to its clients to support their research and development (R&D) and intellectual property (IP) management strategies...


  • Get smart

    March 14, 2011

    Smartphones are now a way of life for many, be it the trendsetting iPhone, business-tool BlackBerry, or competing phones from the likes of Samsung, HTC and Nokia. Smartphones integrate advanced technologies, and companies leading the smartphone revolution are filing thousands of patent applications to protect their innovations...


  • Changes on the horizon

    March 14, 2011

    In 2009, IP Australia (IPA) presented a number of consultation papers aimed at improving Australia’s patent laws. On 3 March 2011 IPA published a draft Bill to amend the Patents Act 1990 (Cth) (the Act) (and other IP legislation) which is due to be presented to the Australian Parliament in the 2011 autumn session...


  • Revocation by the backdoor?

    March 14, 2011

    Kimberly-Clark brought infringement proceedings against Multigate for infringement of three patents, including Australian Patent No 758905 (the patent). Multigate cross-claimed that the patent was invalid...


  • Stitching in time

    March 14, 2011

    A recent case demonstrates the importance of obtaining advice as early as possible as to whether problematic claims in granted patents should be amended. Amending a granted patent may become necessary to maintain its validity. Relevant prior art may come to light only after grant, or through prosecution in other countries...


  • Full disclosure

    March 14, 2011

    In a recent decision, the Australian Patent Office (APO) refused a patent application for lacking sufficient technical disclosure in the specification. The decision in First Principles, Inc. [2011] APO 1 concerned a patent application in respect of a ‘rational inquiry method’ relating to educational methods for personal improvement...


  • What is patentable?

    March 14, 2011

    On 16 February 2011, the ACIP published a report on Patentable Subject Matter. ACIP concluded the current ‘manner of manufacture’ test for patentability under the Patents Act 1990 (Cth) (the Act) is obscure and ambiguous. To improve the clarity of the Act, ACIP recommended bringing the statutory language of the Act into line with current practice...


  • Framing designs for optimal protection

    March 14, 2011

    The assessment of a registered design in Australia is made with reference to a notional ‘informed user’. The informed user considers the visual features of the design rather than any functional aspects. Businesses need to understand the informed user concept in order to secure the strongest possible registered design protection...


  • Beware the traps of social media

    March 14, 2011

    The social media phenomenon has changed the way people view their world and many businesses have adopted this shift into their marketing strategy. However, there are also many potential pitfalls which all businesses should be aware of...


  • Catch me if you can

    March 14, 2011

    Counterfeit goods and digital piracy are major global concerns, costing brand owners and rights holders up to an estimated $600 billion per annum. While a recent international agreement signals a real intention to tackle this issue on a global level, brand owners in Australia are already well placed to take effective action against counterfeiting on a local level...


  • Holding onto your rights

    March 14, 2011

    Two recent Australian and US cases demonstrate how inadequately drafted contracts can leave employers empty handed when it comes to owning employee-generated IP...


  • Naming rights

    March 14, 2011

    A recent celebrity domain name dispute highlights the common practice of using misspelt domain names to divert internet traffic. Paris Hilton succeeded in a dispute involving Dimitrij Timofeev, who had registered a misspelling of Hilton’s name, paris-hillton.com...


  • Computer says no

    March 14, 2011

    On 15 December 2010, the Full Federal Court of Australia unanimously held that copyright did not subsist in the compilation of listing data in the White Pages Directory (WPD) or Yellow Pages Directory (YPD). Of critical importance was the factual finding that the form of expression of this data in both directories was produced using an automated computer process...


  • Talkin' bout a revolution

    March 14, 2011

    Following the implementation of the new Therapeutic Goods (Medical Devices) Regulations 2002, there have been multiple independent reviews of these regulations which all call for further reform...


  • A new era for trade practices

    March 14, 2011

    On the 1 January 2011 the Trade Practices Act 1974 (Cth) (TPA) was renamed the Competition and Consumer Act 2010 (Cth) (CCA). The ACL has maintained the existing prohibitions against misleading, deceptive or false statements and unconscionable conduct but also introduces new provisions...


  • Joining forces

    March 14, 2011

    The move towards a Trans Tasman Single Economic Market (SEM) (which began on 20 August 2009) received a boost on 16 February 2011 when Prime Minister Gillard and New Zealand Prime Minister Key announced the framework will include a single patent examination process...


  • The gene debate continues

    March 14, 2011

    A hotly debated issue over the last three months is the ongoing review in Australia of a proposal to exclude the patenting of human genes and biological materials by amending the Australian Patents Act 1990 (Cth) (the Act). We now look at the virtually identical bill that was introduced into the Australian House of Representatives on 21 February 2011...


  • March Edition: Clean & Sustainable Technologies Digest

    March 11, 2011

    Griffith Hack Clean & Sustainable Technologies Group Blog Digest, a monthly digest keeping you up to date with the latest news.


  • Smartphone patent wars - Network Patent Analysis

    March 1, 2011

    In this white paper, NPA is applied to the patents wars currently underway between major smartphone companies such as Apple, Nokia and Motorola to answer such questions as ‘who has the leading patents?’, and ‘which areas are being litigated the most?’.


  • Diagnostics and the ‘Gene Patent’s Bill

    February 28, 2011

    The Patent Amendments (Human Genes and Biological Materials) Bill 2010 seeks to exclude from patentability biological materials per se, but does not exclude from patentability the uses of the biological material. Methods or apparatus for diagnosis are therefore likely to remain patentable even if the Bill is passed into legislation.


  • ACCC's power to issue substantiation notices

    February 25, 2011

    As a result of the introduction of the Australian Consumer Law in 2010, the ACCC can now issue notices to individuals or corporations requiring the production of information or documents capable of substantiating claims or representations made in the marketplace...


  • Navigating your way around the important provisions of the Competition and Consumer Act 2010

    February 18, 2011

    The ACL has maintained the existing prohibitions against misleading, deceptive or false statements and unconscionable conduct but also introduces new provisions of the Competition and Consumer Act 2010...


  • NeedtoKnow: Legal Update eNewsletter

    February 17, 2011

    Click here to view the full Legal Update eNewsletter.


  • January Edition: Clean & Sustainable Technologies Digest

    January 24, 2011

    Griffith Hack Clean & Sustainable Technologies Group Blog Digest, a monthly digest keeping you up to date with the latest news.


  • Hybrid car technologies – Network Patent Analysis

    January 21, 2011

    In this white paper NPA is applied to the area of hybrid car patents to illuminate the key developments.


  • NeedtoKnow: Domain Names eNewsletter

    January 18, 2011

    Click here to view the full January edition of the Domain Names eNewsletter.


  • Breakthrough Issue 3 2010

    December 21, 2010

    This publication covers recent developments in the world of Intellectual Property (IP) and from within Griffith Hack.


  • The Great Leap Forward

    December 13, 2010

    The Intellectual Property (IP) landscape in China is changing with the Chinese Government’s recent announcement of campaigns to target breaches of IP rights at both production and distribution levels, which means more enforceable rights for Australians in China. This article looks at recent developments in both the key areas of Patents and Trade Marks.


  • The New Inventors

    December 13, 2010

    Iowa Lottery [2010] APO 25 is one of two recent decisions which may provide guidance as to where the Patent Office will draw the line in respect of business method inventions. Inventions which only have application in business have been recognised as patentable in Australia.


  • November Edition: Clean & Sustainable Technologies Digest

    November 18, 2010

    Griffith Hack Clean & Sustainable Technologies Group Blog Digest, a monthly digest keeping you up to date with the latest news.


  • The Green Trade Mark Boom - Gold Or Grey?

    October 12, 2010

    An investigation into the boom in green trade marks - registering terms such as 'green', 'eco' and 'enviro' to support a product or service - has found these terms are becoming so commonplace that they risk losing their impact in a cluttered marketplace, and companies need to be more upfront and smarter about how they portray and leverage their eco credentials.

    The analysis has been completed by the Trade Marks Group of Griffith Hack - a leading firm of patent and trade marks attorneys and intellectual property (IP) lawyers.


  • Green Trade Marks: Turning Green into Gold? The rise and risks of green trade marks and branding.

    October 12, 2010

    An investigation into the boom in green trade marks - registering terms such as 'green', 'eco' and 'enviro' to support a product or service - has found these terms are becoming so commonplace that they risk losing their impact in a cluttered marketplace, and companies need to be more upfront and smarter about how they portray and leverage their eco credentials.


  • Update on ICANNs Release of New gTLDs

    October 6, 2010

    The board of the Internet Corporation for the Assignment of Names and Numbers (ICANN) met in Trondheim Norway on 24 and 25 September to discuss key issues relating to the release of new generic top-level domains (gTLDs).


  • The International Comparative Legal Guide to: Patents 2011

    October 6, 2010

    Principal and National Practice Group Leader of the IP Law Group, Wayne Condon and Associate Eliza Saunders recently contributed the Australian Chapter of The International Comparative Legal Guide to: Patents 2011.


  • October Edition: Clean & Sustainable Technologies Digest

    October 1, 2010

    Griffith Hack Clean & Sustainable Technologies Group Blog Digest, a monthly digest keeping you up to date with the latest news.


  • Update on Divisional Applications in Australia

    September 10, 2010

    Last year IP Australia, which administers the Australian Patent Office, proposed a series of measures to reduce delays in considering divisional applications (IP Australia June 2009 Consultation Paper entitled “Resolving Divisional Applications Faster”).


  • Breakthrough Issue 2 2010

    September 7, 2010

    This publication covers all the latest developments in the world of Intellectual Property and from within Griffith Hack.


  • Griffith Hack announces expansion

    July 7, 2010

    Griffith Hack is pleased to announce a significant expansion, with specialist WA firm Mallon & Co. Mallon & Co specialises in technology and intellectual property (IP) law, and has an impressive client base ranging from the mining and resources sector to retail, food and beverage, pharmaceuticals and skincare.


  • Water innovation in Australia: pipeline to profit?

    July 7, 2010

    A detailed analysis of our water innovation patents by Griffith Hack in the report 'Water Innovation in Australia: Pipeline to Profit?' has found Australian companies are failing to leverage their valuable intellectual property (IP) into global markets.


  • Bilski Decision

    June 29, 2010

    The US Supreme Court has returned to basic principles in a landmark case that explored the patentability of method inventions in the US. Over the last couple of years, there had been increasing uncertainty about the patentability of methods, and in particular business methods, in the US. The Bilski case required the Court to re-examine the US Patent Act and review years of established case law to determine whether particular methods such as business methods would fall within the definition of patentable subject matter, as set out in the Patent Act.


  • Mind the gap: medical technology innovation in Australia

    June 1, 2010

    A detailed study of patents in the US$300bn and expanding medical technology market has identified significant areas of potential for Australian companies to pursue on a global scale.


  • Should Genes be Patentable?

    April 29, 2010

    There has been heated discussion in the media lately about the validity of gene patents.


  • Breakthrough Issue 1 2010

    April 1, 2010

    This publication covers all the latest developments in the world of Intellectual Property and from within Griffith Hack.


  • $50K to assist small to medium sized companies:Time to review your IP Strategy?

    March 9, 2010

    Commercialisation Australia has announced grants of up to $50,000 to assist small to medium sized companies to commercialise their ideas.


  • Breakthrough Issue 4 2009

    November 4, 2009

    Welcome to Issue 4 of Breakthrough, 2009! The attached publication covers all the latest developments in the world of intellectual property and from within Griffith Hack.


  • Lessons from Hybrid Car Innovation for Clean Technologies

    October 13, 2009

    Griffith Hack is pleased to announce the launch of the report: ‘Who holds the power? Lessons from hybrid car innovation for clean technologies.’


  • Breakthrough Issue 3 2009

    August 4, 2009

    Welcome to Issue 3 of Breakthrough, 2009! The attached publication covers all the latest developments in the world of intellectual property and from within Griffith Hack.


  • Warning to Australian Trade Mark Owners

    July 16, 2009

    IP Australia, which administers the Australian Trade Mark Registration system, has issued a warning to owners of trade marks in Australia


  • Defining Innovation: Delnorth Pty Ltd v Dura-Post

    July 8, 2009

    The 2008 decision of Justice Gyles in Delnorth Pty Ltd v Dura-Post addressing the meaning of ‘innovative step’, when considering the patentability of inventions for the purposes of innovation
    Patents, has recently been upheld by the Full Federal Court.


  • Facebook Usernames

    June 12, 2009

    Facebook has announced that it will allow usernames to be reflected in URLs as from tomorrow, 13th June 2009.


  • Australian Solar Innovation: Losing Our Place in the Sun

    June 2, 2009

    The report ‘Australian Solar Innovation – Losing Our Place In The Sun’ finds that we are being left behind, in the race to properly protect the ideas that will drive economic benefits into the future.


  • Clean Coal Technologies

    April 6, 2009

    Analysis of patents for clean coal technologies, filed during the past five years, indicates Australia is at risk of losing its competitive edge on its biggest export earner.



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