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Monday, December 11, 2017

Subscribe to our new publication, InIP

The Allens IP team is changing the way we share our insights with you.

It's out with the old blog Scintilla and in with our exciting new publication – InIP.

We invite you to subscribe to InIP and look forward to continuing to share the latest and greatest developments in IP law with you.

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Thursday, September 7, 2017

Australian patents continue to be bested by 'best method' requirement

By Claire Gregg, Associate

Australia's unique statutory 'best method' requirement continues to get the better of patent applicants and patentees, as highlighted in the recent decisions of the Australian Patent Office in Kineta, Inc. [2017] APO 45 and the Full Federal Court in Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138.

These decisions emphasise the importance for anyone seeking a patent in Australia of disclosing the best method known to the applicant of performing the invention at the time of filing the complete patent specification, the absence of which can be fatal to an application or granted patent. The decisions also reiterate that the nature of the invention around which the claims are drawn, as determined from the specification as a whole, is critical to determining what is 'best' in the circumstances.

Tuesday, September 5, 2017

Unjustified threats and damage – no longer clear as mud

By Elliott Burton, Lawyer

Two recent decisions by the Federal Court have reinforced that, in patent litigation, simply showing that you have been a victim of unjustified threats under section 128 of the Patent Act is not, by itself, enough to claim compensation.

Monday, September 4, 2017

IP Australia commences consultation on IP reforms

By Lauren John, Senior Associate

IP Australia has commenced public consultation on proposed reforms to Australia’s intellectual property laws, to implement the Government's response to some of the recommendations made by the Productivity Commission following its inquiry into Australia's intellectual property arrangements.

Friday, August 25, 2017

Full Federal Court confirms 'Swiss-style' claims are not eligible for PTE

By Claire Gregg, Associate and Lauren John, Senior Associate

The Full Federal Court of Australia has unanimously confirmed that 'Swiss-style' claims involving recombinantly produced products for a new medical use are not eligible for patent term extension (PTE) under the Patents Act 1990 (Cth) (the Act), in Commissioner of Patents v AbbVie Biotechnology Ltd [2017] FCAFC 129.

Wednesday, August 16, 2017

Calmer waters ahead for Bondi Wash after choppy waves?

By Nick Li, Associate

This is the story of a small but industrious Sydney retailer of scented fragrances, looking to expand into the US market, and coming up against the international fashion Goliath Abercrombie and Fitch before the United States Patent and Trade Mark Office. 

The story is set for a happy ending, but the struggles of our persistent protagonist serves as an example of some of the challenges faced by Australian small businesses trying to make it big. 

Thursday, July 13, 2017

While the US says yes to the Wayback Machine, Australia says: what is it?

By Elliott Burton, Lawyer

We're big fans of the Wayback Machine here at Scintilla, so you can imagine our excitement when we heard about the case Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2) [2017] FCA 474 (Shape Shopfitters), where the Federal Court was directly asked whether Wayback Machine records constitute admissible evidence. So, is Shape Shopfitters Australia's Marten Transport, which confirmed that Wayback Machine is good evidence in the US? Are Australian courts ready to welcome Wayback Machine records with open arms?

Monday, July 10, 2017

Breakfast of (tennis) Champions: Kellogg versus Kokkinakis

By Kim Evans, Senior Associate, and Isabel Burraston, Law Graduate

Australian tennis player, Thanasi Kokkinakis, has found himself in a battle on a different kind of court in a trade mark dispute against cereal giant, Kellogg. In an appeal made to the Federal Court in May 2017, Kellogg is challenging Kokkinakis' application to register the trade mark 'Special K'.

Tuesday, June 6, 2017

Cleaning up the franchising sector – car wash franchisor Geowash next on ACCC's list

By Julia Kovarsky, Associate, and David Hunt, Lawyer

The Australian Competition and Consumer Commission (ACCC) is backing up with decisive action its commitment in this year's Compliance and Enforcement Policy to ensuring small businesses receive the full scope of protection of industry codes, including the Franchising Code of Conduct (the Code). The latest in a string of announcements by the ACCC relating to the franchising sector is that it has commenced action against a national car wash franchisor, Geowash Pty Ltd (Geowash). In doing so, it has again demonstrated its intention to clean up franchising operations. This comes mere weeks after the ACCC obtained penalties from Domino's Pizza and commenced proceedings against Ultra Tune for breaches of the Code (see our earlier articles about Domino's and Ultra Tune).

Wednesday, May 24, 2017

Car Trouble – ACCC pursues Ultra Tune for Franchising Code breaches

By David Hunt, Lawyer

Less than two weeks after the Australian Competition and Consumer Commission announced that Domino's Pizza paid penalties for alleged non-compliance with the Franchising Code of Conduct (see our earlier article), the ACCC has commenced proceedings against Ultra Tune for a number of alleged breaches of the Code.

In its media release, the ACCC states that it has commenced proceedings in the Federal Court against the entity responsible for the car-servicing franchisor's operations in NSW, Queensland, Victoria and Western Australia. The ACCC is alleging that Ultra Tune failed to act in good faith when dealing with a prospective franchisee and failed to provide that prospective franchisee with all required documentation before accepting a non-refundable payment, failed to provide marketing fund financial statements and audit reports to its franchisees and failed to update its disclosure document or provide it to franchisees within the prescribed time.

Tuesday, May 16, 2017

The Dating Game: Divisional Patents

By David Hunt, Lawyer

The Full Court of the Federal Court has clarified the date from which infringements of a divisional innovation patent will give rise to a right to recover compensation.

In Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 the Full Court decided that owners of divisional innovation patents will only be entitled to compensation in respect of acts of infringement occurring from the date the patent is granted. This overturns an earlier Federal Court decision that identified the relevant date as the date the standard patent on which the divisional application is based was filed.

The innovation patent provides Australia's 'second tier' of patent protection, being quicker and easier to obtain than a standard patent but offering a shorter period of protection. Such patents may be applied for independently or as divisional applications based on an existing standard patent application.

The Full Court's decision has the potential to significantly reduce the amount of compensation that may be recovered in respect of the infringement of a divisional innovation patent. As a result, the decision limits the advantages of strategically filing divisional patents to directly target infringers.

Monday, May 15, 2017

Pharmaceuticals and the budget – An interesting compromise, particularly for biosimilars

by Ric Morgan, Special Counsel

As part of the budget deluge, the agreement between Medicines Australia and the Commonwealth was released.  It seems designed to strike a balance between the commercial interests of pharmaceutical manufacturers who will or have brought new medicines to Australia, the Commonwealth's concerns about the cost of the pharmaceutical benefits scheme, and the other players in the sector.

Pharmaceutical manufacturers are agreeing to significant price cuts.  The agreement explicitly limits the increased price cuts to the period of the agreement. Theoretically, this means that the system could revert to the current price cut regime from 1 July 2022.  However, this seems unlikely in practice. The fact that a new agreement must be negotiated in the last year of the current agreement provides significant leverage for the Commonwealth to maintain the accelerated price cuts in this agreement.  The legislation necessary to implement these might provide clarification by including time limited changes or sunset clauses.  However, even if it does the Commonwealth can always amend that legislation later..

Wednesday, May 10, 2017

ACCC goes in for a slice of the pie – Domino's first to pay penalties under Franchising Code of Conduct

By Julia Kovarsky, Associate

The Australian Competition and Consumer Commission (ACCC) has published a media release announcing that Domino’s Pizza Enterprises Ltd (Domino’s) is the first franchisor to have faced and paid penalties for an alleged contravention of the Franchising Code of Conduct (the Code). This reaffirms the ACCC's focus, as stated in its Compliance and Enforcement Policy for 2017, on ensuring small businesses receive the full scope of protection of the Code.

Tuesday, April 18, 2017

Fizzy fight froths up again

By David Bennett, Law Graduate

The makers of V energy drink have improved their position a little bit by beating back a pre-trial application by nemesis Coca-Cola Company to block crucial evidence from being read in the appeal to register the colour mark.

Frucor Beverages now has the go-ahead to refer to affidavit evidence that describes two market surveys which may prove crucial in its de novo appeal against the Registrar's refusal in 2016 to register Pantone 376C green (which they called V green) in respect of energy drinks.

Thursday, April 13, 2017

Online advertisers beware: the Federal Court draws a distinction between using a competitor's trade mark in AdWords vs metatags

By Natasha Dixon, Lawyer

A curious Full Federal Court decision has left Australian trade mark law in the context of online advertising in a state of confusion. Last week, the court held that use of a competitor's trade mark in metatags does constitute use as a trade mark, and is therefore trade mark infringement. That conclusion is perhaps difficult to reconcile with a 2016 Federal Court decision that ruled that use of a mark in Google AdWords does not constitute trade mark use.

Wednesday, April 12, 2017

Social Innovation Startup Bootcamp – Register now!

Is your startup focussed on social innovation? Are you an Indigenous-owned startup?

If the answer to either of the above was yes, and you (or someone you know) would you like to learn more about the challenges facing social innovation enterprises and Indigenous  entrepreneurship, and how to overcome them, then Allens invites you to attend the Social Innovation Startup Bootcamp!

Monday, April 10, 2017

Clipso/Clipsal confusion causes cancellation

By David Hunt, Lawyer

It's lights out for Clipso Electrical after the Federal Court determined that registration of its CLIPSO trade mark should be cancelled.

The Court reached its decision on the basis that the CLIPSO mark was deceptively similar to Clipsal Australia's CLIPSAL mark and had been registered in bad faith. The Court also found that, through use of the CLIPSO mark, Clipso had infringed Clipsal's mark, engaged in misleading and deceptive conduct and was liable in passing off.

However, in a small victory for Clipso, it was found that it had not infringed Clipsal's 'famous' Dolly Switch shape mark; a decision that further illuminates the difficulties of successfully prosecuting infringements of shape marks.

Thursday, April 6, 2017

Justifying damages for unjustified threats

By Lauren John, Associate

The Full Federal Court recently overturned an award of damages for unjustified threats totalling $1.5 million, and, in doing so, has emphasised that the key question the court must ask itself in every unjustified threats claim is: what damage was sustained as a result of the threats?

Section 128(1) of the Patents Act provides that, where a person, by means of circulars, advertisements or otherwise, threatens a person with infringement proceedings, or other similar proceedings, a person aggrieved may apply to a court for a declaration that the threats are unjustifiable, an injunction against the continuance of the threats, and the recovery of any damages sustained as a result of the threats.

We previously reported on two decisions which shed light on the sorts of communications that are likely to constitute threats. The recent Full Federal Court decision in Australian Mud Company Pty Ltd v Coretell Pty Ltd [2017] FCAFC 44 will provide some comfort to patentees, as it makes clear that only damage sustained as a result of the threat of infringement proceedings is compensable, not damage sustained as a result of infringement proceedings themselves.

Wednesday, March 22, 2017

Beat It

By Nick Li, Lawyer

The Australian Trade Marks Office has amped up Dr Dre's BEATS brand in its trade mark battle against an upstart rival's ATOMIC BEATS speakers.

In so doing, ATMO has confirmed that it can consider evidence in opposition proceedings which was not filed in time, under regulation 21.19 of the Trade Marks Regulations 1995 (Cth).

The decision of the Delegate in Beats Electronics LLC v Strategies Unleashed Pty Limited [2017] ATMO 6 follows another recent decision of the Australian Trade Marks Office in Apple Inc v Healthkit Pty Ltd [2016] ATMO 112 which also considered the operation of regulation 21.19. Together, the two decisions assist practitioners sound out the scope and limits of using regulation 21.19 as a means of getting in evidence which would otherwise not have been taken into account.

Thursday, February 9, 2017

US draft guidelines on interchangeability of biosimilars require repeat switches – why doesn't Australia switch over too?

By Sarah Matheson and Ric Morgan

As we have previously reported, it has long looked like Australia is determined to take a unique stance on interchangeability of biosimilars. This was confirmed with the PBAC recommending the a-flagging of Brenzys in September 2016.  The recent release for comment by the US FDA of its much awaited draft industry guidance on demonstrating interchangeability of biosimilars reinforces that Australia is indeed an island when it comes to biosimilars.

If adopted, as seems likely, the separate assessment of interchangeability under US legislation will require specific clinical trials. For biosimilars intended to be administered more than once, dedicated switching studies will need to:

Friday, January 27, 2017

Patent data reveals autonomous vehicle surprises

By Richard Hamer

Any reader of social media knows that the leaders in autonomous vehicle research are Google and Tesla. Right?

In fact, the most active patent filer in the field is General Motors. Other traditional car companies also have a bigger presence than the well promoted and popularly perceived leaders. Chinese companies are very active in the field also.

Although not all patents are commercialised, the level of patent filings is a good indicator of a general level of research activity. Patent filing data throws up some other initially surprising information.

For example, around half the autonomous vehicle/robotics patents are not for on-road vehicles at all, but for domestic, industrial and off-road use, such as autonomous farming or mining. The autonomous lawnmower is big. With some thought this makes sense. It would be great to automate jobs like ploughing, harvesting, hauling minerals or for that matter mowing the lawn. The environment is less complex than the on-road environment and automated equipment can feed back real time information, for example about soil properties or yield, and facilitate planning and management.