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Needtoknow Newsletter Archive

Interlocutory injunction granted in a pharmaceutical patent infringement case (Nov 2008)
The latest pharmaceutical patents to come under attack in court in Australia are two patents for Lilly’s Gemzar oncology drug. The active agent in Gemzar is gemcitabine hydrochloride. Gemzar is protected, in Australia, by two patents – one for the compound (the compound patent) and one for a process relating to the manufacture of gemcitabine hydrochloride (the process patent).

A change to UK trade mark Examination practice (July 2007)
Ownership of an earlier UK and/or European Community trade mark will no longer automatically prevent the registration of a later conflicting trade mark in the UK.

United States: proposed changes to continuation practice - Europe: divisional practice clarified (July 2007)
The Bush administration continues to approve preliminary rule changes to continuation practice suggested by the US Patent and Trademark Office (PTO).

The overlap between copyright and designs: the confusion continues (July 2007)
It is vital, now more than ever, that designers take a proactive approach in addressing intellectual property protection issues prior to the public disclosure and commercialisation of new products.

Trade mark opposition upheld for Pfizer (June 2007)
The decision in Pfizer Products Inc V Karam [2006] FCA 1663 raises the issue of the standard of proof in trade mark opposition proceedings.

Trade mark and design dispute resolution - Trade mark opposition proceedings (April 2007)
The owners of trade mark and design rights will now be able to pursue dispute resolution through the Federal Magistrates Court, after the Australian Government agreed to extend its jurisdiction.

In order to dispel uncertainty in the minds of parties involved in opposition proceedings, IP Australia has recently clarified the proper treatment of confidential material served on a party to a trade mark opposition or on their legal representative.

Increase in Australian patent acceptance fees - Griffith Hack recognised as a tier one IP firm (February 2007)
The Australian Patent Office has announced that fees payable on acceptance of an application will increase from $20 a claim to $100 a claim for each claim in excess of 20 (about US$80 per excess claim).

In the latest worldwide survey from Managing Intellectual Property magazine, Griffith Hack has been ranked as one of the leading IP firms in Australia.

Intellectual Property Laws Amendment Bill 2006 Passed - Significant Changes to Australian IP Law (September 2006)
The Bill, which proposed significant changes to Australian intellectual property law and in particular the Patents Act and the Trade Marks Act, was passed in Parliament without amendment on 14 September 2006.

Full Federal Court to order removal of BP's "green" trade marks from the Register (September 2006)
In this important decision, the Full Court had the opportunity to fully explore the registrability of, and distinctiveness required to register colour trade marks in considering an appeal under the Trade Marks Act 1995.

Grant v Commissioner of Patents Appeal (July 2006)
Although the Full Court affirmed the decision of Justice Branson, when handing down it's decission in Grant v Commissioner of Patents, its decision is an affirmation of accepted principles regarding patentability of business methods.

Intellectual Property Laws Amendment Bill 2006 - Significant Proposed Changes to Australian IP Law (April 2006)
On 30 March 2006 the Intellectual Property Laws Amendment Bill 2006 (the “Bill”) was introduced into the House of Representatives. The Bill proposes significant changes to Australian intellectual property law. The main changes involve proposed amendments to the Patents Act and the Trade Marks Act, including proposed grant of significant additional rights to both patentees (eg new flagrancy damages) and potential infringers (compulsory licences and widened scope of the prior user defence and springboarding).

An Innovative Step for IP Australia (April 2006)
Innovative Step has now been tested in the Patent Office by asking whether the essential features have a practical effect on the functionality of the invention - this is likely to require a small distinction with any prior art.

Federal Court discusses operation of Section 7(3) of the Patents Act (March 2006)
In the case of Emperor Sports v Commissioner of Patents, the Full Federal Court has dismissed the Commissioner’s Appeal of Justice Lindgren’s decision which reviewed the steps involved in a re-examination of a granted standard patent.

U.S. Bill could significantly expand the scope of method patents (March 2006)
"Companies conducting research using US patented methods and providing information from research to the US may infringe those US patents."

Trade mark validity battle: UGG BOOT 1 - DECKERS OUTDOOR CORPORATION 0 (Jan 2006)
"To prevent removal of a mark for non use, generally an owner must use the mark within a prescribed 3 year period (ending one month before an application for removal is made)."

ACIP Report Released – Experimental Use Exemption Recommended (Dec 2005)
"Having identified a definite need for clarity in the law on this issue inhibiting scientific research and development, the Advisory Council on Intellectual Property (“ACIP”) has released a report recommending the inclusion of an express experimental use exemption."

The law of inventive step in Australia - a recent development (Nov 2005)
"Australian law on inventive step is quite different to that in Europe and the United States. In patent oppositions and revocation actions, evidence should be led by both parties as to the searching activities or otherwise of the person(s) skilled in the relevant art."

Opportunity to object to geographical indications proposed by the European Union (Oct 2005)
"The deadline for concerned trade mark owners to object to any of the 725 Gls proposed by the EU is 19 October 2005"

An update on the practice of the Australian Patent Office towards business method patents (Aug 2005)
"Business method patent claims need to indicate some form of technical implementation"

Research exemption to patent infringement to be introduced in Australia (Aug 2005)
"There is no general equivalent to 'safe harbour' exemption under the Australian Patents Act"

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