Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.






Friday, August 30, 2013

NZ Patents Bill heralds international harmony, but limits scope of protection for some computer inventions

By Partner Chris Bird

Five years after its introduction, and after its third reading, the new Patents Bill was passed by the New Zealand Parliament on 27 August 2013.

The story so far


The current New Zealand Patents Act is 60 years old, and was modeled on the now repealed UK Patents Act of 1949. It has a low threshold for patentability compared with most other countries, thus leading to broader patent rights being granted in New Zealand than elsewhere. The new Bill is intended to create a more balanced patent system, in line with other developed countries, and to protect inventions and encourage innovation.

Tuesday, August 20, 2013

Offers to Compromise: an exercise in discretion

By Lawyer Rob Clark

Regular Scintilla readers may remember John Kismet Jashar, his company Kismet International Pty Ltd, Mr McMahon and those piles of guano. In short, the court had found that while Mr McMahon had infringed the registered trade marks of Mr Jashar in selling his guano, Mr Jashar had been unable to prove that the sales of Mr McMahon's guano occurred because of this infringing use. The upshot was that Mr Jashar was entitled to a mere $5000 for reputational damage, substantially less than the damages he sought.

In Kismet International Pty Ltd v Guano Fertiliser Sales Pty Ltd (No 2) [2013] FCA 705, Justice Murphy dealt with the issue of costs. We focus here on one aspect – Offers to Compromise.

Thursday, August 15, 2013

What's in an image? English High Court finds passing off in Rihanna v Topshop

By Lawyer Jonathan Adamopoulos

The High Court of England and Wales, in Fenty & Ors v Arcadia Group Brands (t/as Topshop) & Ors [2013] EWHC 2310 (Ch), has found that Topshop, a fashion retailer, engaged in passing off when offering for sale t-shirts bearing the image of famous pop singer Rihanna. This is a warning to retailers when selling merchandise associated with celebrities even when the merchandise does not infringe registered trade marks.

Monday, August 12, 2013

Protecting privacy in the digital era


By Lawyer Tessa Meyrick

The arrival late last month of the new heir to the throne was unsurprisingly attended by a flurry of media interest in the UK and beyond, with reports of the royal birth apparently accounting for a staggering 5 per cent of online news content consumed globally on 22 July 2013. When the (yet-to-be-named) Prince George of Cambridge made his first media appearance the following day, every portal, page, RSS and Twitter feed continued to be jammed with details of the Prince's BMI, speculations as to his naming (commiserations to those who'd put their cash on 'James'), and even the Royal swaddle he left wrapped in. 

Somewhere amongst all this emerged concern (including from the media itself) over how the Royal parents are to construct some semblance of an ordinary life for the Little Prince once the natal storm has passed. In the UK Government's official response to the news of the birth, Lord Hill of Oareford, Leader of the House of Lords, shared with his peers a hope that the Prince (and his no doubt fatigued parents) be given some privacy. The media agreed, with one major UK newspaper at pains to stress that 'no one, and certainly not the media, would want to deny the Duke and Duchess some time alone with their baby son'.

Tuesday, August 6, 2013

Federal Court confirms new formulations are eligible for patent term extension


By Senior Associate Alison Beaumer

In its recent decision in Spirit Pharmaceuticals Pty Ltd v Mundipharma Pty Ltd [2013] FCA 658, the Federal Court held that a patent claiming a new and inventive controlled release formulation of oxycodone had been validly granted an extension of term under section 76 of the Patents Act 1990 (Cth). Oxycodone is an opioid drug used to provide pain relief and the controlled release formulation is marketed as OxyContin. Allens acted for the respondents (other than the Commissioner of Patents) in the proceedings. Spirit has now appealed the decision.

The central issue in the case was whether the controlled release formulation was 'a pharmaceutical substance per se' within the meaning of s70(2)(a) of the Patents Act. Spirit contended that only an active pharmaceutical ingredient (API), such as oxycodone itself, and not a formulation, could be 'a pharmaceutical substance per se'.