The regime under the Australian Patents Act (1990) (‘the Act’) to determine the allowability of amendments is governed by s102. This article aims to shed some light on this somewhat unique aspect of Australian practice. The Act was amended in 2012 by the Raising the Bar Act and the following discussion relates to s102, as amended, in regard to standard patents only. The statutory regime under s102 dictates what amendments are not allowable to a complete specification. s102 constitutes three subsections that are to be taken together, and is reproduced below: Amendment of complete specification ..read more

It is not often that the High Court of Australia considers the law relating trade marks. In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 a critical issue for consideration was whether reputation is relevant to the consideration of deceptive similarity as it pertains to infringement under s120(1) of the Trade Marks Act (1995) (the “Act”). In a unanimous decision, the Court found that reputation in a trade mark or its owner is irrelevant to the deceptive similarity enquiry for alleged infringement under s120(1). Allergan Australian Pty Ltd (“Allergan”) is the owner of ..read more

The Research & Development Tax Incentive scheme is one of several measures used by the Australian government to incentivise investment in R&D. The R&D Tax Incentive system is implemented by AusIndustry and the Australian Tax Office (ATO). AusIndustry handles the compliance aspects, that is, the determination of whether the applicant complies with the requirements. The ATO determines whether the expenditure claimed in the applicant’s tax return is eligible. What is on offer? The rates of the R&D tax incentive offset are set out here. The incentive has two core components. For in ..read more

What constitutes a non-descriptive trade mark is a constant minefield for many Australian trade mark practitioners when advising clients on what the courts have described as “allusory trade marks” that make a “covert and skilful allusion” to the relevant goods or services rather than a direct reference to the goods or services. Unfortunately, many examiners adopt an approach during examination that any word or combination of words that may have a meaning that vaguely or tangentially relates to the goods or services is not capable of distinguishing the Applicant’s goods or services to those of ..read more

The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (the Amendment Act) received the Royal Assent on 10 September 2021. A summary of the changes hse been published here by IP Australia. The Amendment Act puts in place a number of provisions summarized below, all of which, apart from the grounds of revocation described below that are already in force, commence on 10 March 2022. Grace Period Schedule 1 of the Amendment Act sets out that a person deciding whether a design is new and distinctive must disregard various publications or uses that occur in a period of 1 ..read more

Overview Currently, it is necessary to validate a European patent in those European Patent Office (EPO) member countries in which protection is required. Here is a list of the countries. On 1 June 2023, the Unitary Patent (UP) system will come into effect. The UP system can replace or be used in addition to national validations in Europe. Thus, a portfolio can contain a UP and national validations. The Unitary Patent will be a single patent with a unitary effect in a number of European countries. Enforcement and revocation of the UP will take place at the Unitary Patent Court (UPC). Revocation ..read more

The decision in Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643 is notable for several reasons. The ever-pragmatic Justice Beach presided over an appeal of a patent term extension (PTE) decision by the Commissioner of Patents. The first point to note is that the heart of the case turns on statutory construction of the patent term extension provisions in the Patents Act 1990 and whether the construction advanced by the Commissioner is correct. The second noteworthy point is the language used by Justice Beach in his conclusion. This article will not delve into the detailed st ..read more

Manner of manufacture (the Australian equivalent of patentable subject matter) is having its judicial moment in the sun across all technology fields. The Full Court decision in Ariosa Diagnostics, Inc v Sequenom, Inc [2021] FCAFC 101 adds yet another piece to that puzzle in the diagnostic method space. The first instance decision and background to the patent under suit is discussed in a previous article, which can be accessed here. In short, the manner of manufacture question relates to Claim 1 of Australian Patent No. 727919, entitled “Non-invasive prenatal diagnosis”: A detection method per ..read more

We counsel clients about the importance of how their trade marks are used, protecting the trade marks that are in commercial use, and creating a thicket of protection around the trade marks that are valuable. Underpinning this counsel is that the rights inherent in a trade mark accrue through use. Although the broadest form of protection is desirable (e.g., a word only), it may not be wise to rely solely upon this form of the mark for registration, maintenance, and/or enforcement if the mark has been used predominantly in conjunction with another mark (e.g., a logo). The decision in QWB Reside ..read more

This year, we see the unfortunate demise of the innovation patent system. We have written a post about that here. That this is unfortunate is exacerbated by the recent amendments to the Patents Act 1990 (No. 83) as a result of the enactment of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The amendments have made it difficult for those innovators with simple mechanical devices to achieve patent protection. The innovation patent system has provided a mechanism for the protection of inventions that would not be expected to meet the “raised bar” of the amendments to the Act ..read more