Author - Liz Bodey

1
New Interim Guidance on Fintiv Factors
2
The NFT Collection: NFT Basics and Opportunities (Part 1)
3
Indirect Patent Infringement Down Under
4
Diving Deeper Into the Amendments to the Australian Designs Act: Tips, Tricks and Risks (Part 2)
5
Ronaldinho and Henry Marks Step Over Bad Faith Finding
6
FTC Imposes Multi-Million Dollar Penalties for Deceptive Consumer Reviews; Best Practices Reminders on Endorsements and Testimonials
7
Does Brexit Always Mean Brexit?
8
Australia Re-Aligned With Major Jurisdictions for AI-Based Inventorship
9
Diving Deeper Into the Amendments to the Australian Designs Act: Tips, Tricks and Risks (Part 1)
10
Even in the Digital Age, Only Human-Made Works are Copyrightable in the U.S.

New Interim Guidance on Fintiv Factors

On 21 June 2022, the United States Patent and Trademark office (USPTO) issued interim guidance on how the Patent Trial and Appeal Board (PTAB) should exercise its discretion when determining whether to institute a post-grant proceeding.

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The NFT Collection: NFT Basics and Opportunities (Part 1)

NFTs have gone mainstream. But what are NFTs? Should your business develop its own NFT? How are they regulated? In The NFT Collection series of alerts, we will delve into these questions to help your business understand this new technology.

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Indirect Patent Infringement Down Under

The issue of contributory infringement of a patent under the Australian Patents Act 1990 (Act) does not often arise for consideration by the Australian judicial system. When it does arise, the question of whether or not the product supplied is a ‘staple commercial product’ under the relevant provisions of the Act is always of particular interest.

In only a few cases has the impugned product been held to be a staple commercial product, and so any case that expands upon that product class is a particularly valuable aid. It is therefore of interest that the Full Court of the Australian Federal Court has recently considered contributory infringement in Hood v Down Under Enterprises International Pty Limited [2022] FCAFC 69.

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Diving Deeper Into the Amendments to the Australian Designs Act: Tips, Tricks and Risks (Part 2)

In part 1 of this series (here), we considered the welcome introduction of a 12 month grace period that came into effect as of 10 March 2022. The grace period protects a design owner against inadvertent disclosure of a design before an application for protection of the design is filed – previously, this was fatal to having enforceable design rights. In part 2, we delve into the prior use infringement exemption that concurrently came into effect to mitigate the commercial risks that might arise as a result of the grace period.

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Ronaldinho and Henry Marks Step Over Bad Faith Finding

Bad faith has been a hot topic in UK and EU trade mark matters in recent years – not least in the sports world where recent prominent cases have concerned the football superstars, and one time teammates, Lionel Messi and Neymar. Whilst in those cases bad faith was found to be a valid ground for refusal of the trade marks in question, which the players did not consent to, a recent decision of the Appointed Person in the United Kingdom has provided an important clarification on how bad faith objections must be raised in the UK.

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FTC Imposes Multi-Million Dollar Penalties for Deceptive Consumer Reviews; Best Practices Reminders on Endorsements and Testimonials

In a widely distributed Notice of Penalty Offense sent to over 700 companies last year, the Federal Trade Commission (“FTC”) warned businesses about use of fake endorsements and consumer reviews. Forewarned should be forearmed.” This is a continuing reminder to companies to have systems in place to ensure endorsements and reviews comply with FTC guidelines. Companies that are found to be in violation after receiving a “we’re watching you” letter can face civil penalties of up to $46,517 per violation.

Recipients of the FTC’s letter included major consumer products companies, retailers, and advertising agencies. Recipients were not accused of any wrongdoing but were put “on notice” of their responsibilities under the FTC Act and the Commission’s increased focus on specific advertising practices, particularly endorsements.

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Does Brexit Always Mean Brexit?

The General Court recently decided the case Nowhere v EUIPO (Case T-281/21) and overturned the EUIPO decision (and general position) on the validity of UK earlier rights in the context of EU oppositions post-Brexit.

The EUIPO Communication No 2/20 made clear that the EUIPO will treat all UK rights to cease to be ‘earlier rights’ for the purposes of inter partes proceedings. However, the General Court held that the EUIPO Second Board of Appeal made an error in rejecting an opposition solely due to the UK earlier rights losing validity in the EU post-Brexit and that the relevant date to assess the validity of UK earlier rights should be the filing date of the opposed application.

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Australia Re-Aligned With Major Jurisdictions for AI-Based Inventorship

In July 2021, Australia was thrust into the spotlight as a favourable country to patent AI-created inventions as a result of the Australian Federal Court’s decision in Thaler v Commissioner of Patents [2021] FCA 879 – see our previous coverage here.

At first instance, the Court construed “inventor” as including “a person or thing that invents”.1 The decision was an appeal from a Patent Office hearing where the Office rejected a patent application in the name of Stephen L. Thaler as the creator of the “inventor”, AI system (Device for the Autonomous Bootstrapping of Unified Sentience (DABUS)). As DABUS had autonomously generated the invention, for the purposes of the patent application Dr Thaler derived title to the invention from DABUS.

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Diving Deeper Into the Amendments to the Australian Designs Act: Tips, Tricks and Risks (Part 1)

Protecting the visual appearance of a product, or its packaging, should be a key consideration in any comprehensive IP protection strategy. We have previously written about amendments to the Australian Designs Act 2003 (Cth) (here and here). All changes to the Designs Act have now come into force as of 10 March 2022. In this first of a series of articles, we delve deeper into amendments that introduce the long awaited grace period.

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Even in the Digital Age, Only Human-Made Works are Copyrightable in the U.S.

The U.S. Copyright Office Review Board refused copyright protection of a two-dimensional artwork created by artificial intelligence, stating that “[c]urrently, ‘the Office will refuse to register a claim if it determines that a human being did not create the work,’” see recent letter. The Compendium of U.S. Copyright Office Practices does not explicitly address AI, but precedent, policy, and practice makes human authorship currently a prerequisite.

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