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WIN In-House Counsel Day Melbourne Wednesday 16 March 2016
Trends and Developments in Intellectual Property
Robynne Sanders, Partner, Intellectual Property and
Technology
Overview
IP is one of the fastest moving areas of law, striving to keep pace with technology and marketing
It is also one of the most international areas of law, with treaties, agreements and the judiciary harmonizing Australian law with that of, particularly, Europe and the US.
It is critical to be aware of developments in these key jurisdictions as a likely indication of future trends in Australia
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Summary
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• copyright
• designs
• trade marks
• patents
In this hour we will look at recent trends and developments in:
• Australia and New Zealand
• US
• Europe
Across
Trade Marks – Trends in Australia
Obtaining registration
Trade Mark assisted filing
following examination pilot project with NZ it is becoming
increasingly difficult to obtain registration for marks that are to
some degree descriptive
Opposition procedures
Following Raising the Bar amendments opposition are becoming
increasingly legalistic
Extensions for filing of evidence are all but impossible to obtain
There are still questions over due process at hearing
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Trade Marks – Cases to watch
Insight Clinical Imaging Pty Ltd v Insight Radiology
More reasons not oppose registration
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Trade Marks – Cases to watch
Playgro Pty Ltd v Playgo Art & Craft Manufactory
Taking action against foreign manufacturers of counterfeit
products
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Manufactured in China by
HK company
Sold to HK subsidiary of
Australian retailer
Shipped from China to Australia
(FOB)
Sold in Australia
Trade Marks – European Trade Mark
Directive
New Trade Mark Directive and EU Trade Mark regulations
were published in December 2015. Member States have up to
3 years to implement. Changes include:
over one third reduction in renewal fees
seizing counterfeit goods in transit
office based opposition and cancellation actions
harmonisation of practices of member states
for AU companies this will significantly reduce the cost and
complexity of European trade marks
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Designs
There continue to be very few designs cases in Australia
Design filings are being foregone in favour of innovation
patents
The latest IP review is again looking at discontinuing design
protection
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Patents – Genetic Material
Myriad v D'Arcy [2015] HCA 35
Patent claims directed to "an isolated nucleic acid coding for a
mutant or polymorphic BRCA1 polypeptide" unanimously held to
be invalid by the High Court.
Brings Australia closer into line with the position in the USA and
Europe.
In December 2015 IP Australia issued Examination Practice
Guidelines for determining whether biological inventions are
patentable. Suggests the High Court's decision will have
limited effect on IP Australia's examination practice.
Contrasts with the USPTO's broad interpretation of the US
Supreme Court's 2013 Myriad decision.
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Patents – Computer Implimented
Methods
Commissioner of Patents v RPL Central
Claims to a computer implemented method for assessing a users
competency or qualifications with respect to recognised standards
(i.e. for RPL)
Previously:
Patent Office – not valid
Federal Court (Middleton J) – valid
Full Federal Court unanimously found the invention not patentable
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Computer retrieves
assessment criteria from a
remote location
Computer processes criteria
and generates relevant questions
for user
Questions are presented to user
User's responses (and supporting documents) are
received from user
Patents – Computer Implimented
Methods
Relevant considerations:
is the invention in substance a scheme or plan can it broadly be
described as an improvement in computer technology?
Is the computer merely the intermediary, configured to carry out
the method, but adding nothing to the substance of the idea?
A computer-implemented business method can be patentable
where the invention lies in the way in which the method is carried
out in the computer. This necessitates some ingenuity in the way
in which the computer is utilised.
Distintion between the "mere implementation of an abstract idea in
a computer" and "the implementation of an abstract idea in a
computer to create an improvement in the computer" (Alice
Corporation)
US position post Alice
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Patent Litigation – Mechanical
Products
Continuing to be the growth area for
patent litigation are mechanical
products:-
mining and automotive products
hardware
heavy machinery
manufacturing equipment and processes
Increased litigation between
competitors, and also with government
purchasers and customers
Continuing issue that patents are not
routinely considered in these areas so
litigation a 'surprise'
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Innovation Patents
Innovation patents continue to come under criticism for being a
litigation tool
Previous consultation concluded that innovation patents were
a valuable part of the IP matrix, but variation to the test
recommended.
ACIP recommendation (May 2015) for abolition of Innovation
Patent system
Presently been referred to Productivity Commission as part of
inquiry into Intellectual Property – draft report due end April
2016
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Europe
Unitary Patent and the Unified Patents Court
European patent similar to CTM for trade marks
Single infringement action for whole of EU
Will not come in to force prior to 1 January 2017, but likely by
mid 2017
Opt out process for existing patents. Significant strategic
considerations (not just cost)
Likely that UPC will be the next location for NPE
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Copyright – Trends in Australia
There have been no significant legislative changes in this area
However, improvements in technology have spawned new
cases
audio/video file trawling software
literary work trawling software
Copyright in 'less artistic' works
plans, manuals, instructions
Copyright as the last available action
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Questions
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