The High Court has refused Jusand’s application for special leave to appeal [1] the Full Federal Court’s affirmation that Jusand’s patent was invalid on sufficiency and support grounds under the Raising the Bar tests. In refusing special leave, the High Court simply stated: The proposed appeal does not have sufficient prospects of success. Otherwise, the proceedings are not a suitable vehicle for the point of principle the proposed appeal seeks to raise. I think Perram J’s reasons in the Full Federal Court were the first detailed consideration of the operation of these “new” provisions at th ..read more

Reflection upon those European and UK authorities yields the following principles: (i) The requirement of sufficiency imposed by art. 83 of the EPC exists to ensure that the extent of the monopoly conferred by the patent corresponds with the extent of the contribution which it makes to the art. (ii) In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention. (iii) Patentees are free to choose how widely to frame the range of products for which they claim protection. But they need to ensur ..read more

Judge Manousaridis has had to address whether criticism of the academic skill and rigour of the author of a scientific paper constitutes derogatory treatment in relation to the work. His Honour concluded it was not. Some facts The moral right of integrity Mr Hoser’s argument What the Judge decided Some facts Mr Hoser is the author of a number of papers in which, amongst other things, he describes or identifies new species and/or new sub-species of various animals.[1] Between 2015 and 2021, the respondents published a number of articles referencing Mr Hoser’s papers and making statements that ..read more

The United Kingdom Supreme Court has ruled that DABUS is not an inventor for the purposes of UK patent law and so Dr Thaler’s applications for a patent claimed to be invented by DABUS have failed. You will recall that Dr Thaler has applied in the UK (and many other parts of the world) for the grant of patents in his name for inventions said to have been generated by a machine acting autonomously and powered by the artificial intelligence, DABUS. Section 7 of the UK Patents Act 1977 provides in part: 7 Right to apply for and obtain a patent. (1) Any person may make an application for a patent ..read more

The High Court has unanimously allowed Real Estate Tool Box (RETB) and other parties’ appeals against findings that they had authorised infringements of copyright in Campaigntrack’s “DreamDesk” software. The High Court made a point of emphasising that whether a person can be found liable for authorising copyright infringement depends on “the proper inference to be drawn from all of the facts of the case.” I am afraid that, as their Honours said, “It is therefore necessary to set out those facts in some detail.” Some facts At trial The Full Court The law The High Court Some comments Some fact ..read more

The Commonwealth Attorney-General, Mark Dreyfus, yesterday announced that the Government will form a Copyright and Artificial Intelligence reference group “to better prepare for future copyright challenges emerging from AI.” The Attorney-General and his department have held a number of roundtables during the course of the year to consult about a range of issues. One of the issues discussed included the issues arising from the use of AI tools. According to the Media Release: AI gives rise to a number of important copyright issues, including the material used to train AI models, transparency of ..read more

In what is surely only the first step on the long road to the High Court, Yates J has ruled that Lavazza qualità Oro coffee does not infringe Cantarella’s ORO trade mark – because Cantarella’s trade mark was invalidly registered. As you probably recall, Cantarella famously has registered trade marks for ORO (and also CINQUE STELLE) for, amongst other things, coffee and coffee beverages.[1] Lavazza has been importing Lavazza qualità Oro coffee into Australia since at least 1979. In about 2017, however, it introduced new packaging in the following form: Cantarella sued Lavazza for infringing it ..read more

I shall be giving an annual update on Copyright & Designs on 19 October at Corrs Chambers Westgarth in Melbourne. My talk is scheduled to start around 1:00 pm following the Victorian Local Elections. Details and registration via here. I hope to see you there ..read more

O’Bryan J has ruled that Vehicle Management Systems (VMS) is not estopped from seeking revocation of Orikan’s patent despite earlier opposition proceedings in which VMS could have raised the allegations, but did not. Under the pre Raising the Bar versions of the Patents Act, it was clearly established that an unsuccessful opponent was not estopped from subsequently seeking revocation on the same grounds. This was at least because of the different onus: an opponent had to show that it was “practically certain” the patent application was invalid to succeed whereas a party seeking revocation only ..read more

In a rare case of a successful opposition under s 59, Energy Beverages has successfully opposed in the Court KMA’s attempt to register KANGAROO MOTHER. Overview As you might recall, Energy Beverages is the owner of registered trade marks in Australia for MOTHER in respect of amongst other things, non-acoholic beverages in class 5 and pharmaceutical and veterinary preparations, dietetic substances and food and beverages for babies in class 32.[1] A New Zealand company, Erbaviva, applied to register KANGAROO MOTHER for a range of goods in classes 5, 29, 30, 31 and 32. Subsequently, the applicati ..read more