IP Law Watch

Legal issues, law and regulations concerning the world of IP.

 

1
Permitted Trade Mark Usage as Google AdText
2
Biosimilars – The New Forefront for Pharmaceutical Litigation
3
IP Haiku: Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (No 2) [2014] FCA 418
4
The USPTO and Laws of Nature, Natural Products and Natural Phenomena
5
Abstract Ideas and the USPTO
6
Ensure That Stock Photos are Licensed
7
Act Promptly and Diligently When Preparing Evidence in Patent Oppositions or Else…
8
Sports Data’s Injuction Refused
9
It’s Not Easy Being Green
10
That’s “a Lot of Kebab”!

Permitted Trade Mark Usage as Google AdText

Google AdWords Policy Change for Australia

As reported in April 2013, Google amended its AdWords policy in Australia allowing a company to purchase a competitor’s trade mark as a keyword in order to trigger sponsored ads during Google searches.

Google has now gone one step further and allowed resellers and informational sites from 27 July 2014 to use trade marks in ad text in Australia and New Zealand under certain circumstances. Read More

Biosimilars – The New Forefront for Pharmaceutical Litigation

A recent United States statute establishes an expedited pathway for FDA approval of biosimilars (also known as follow-on biologics) – the Biologics Price Competition and Innovation Act (BPCIA), part of the Affordable Care Act. A biologic is a drug derived from a living organism or living cells and is best exemplified by Humira®, the branded antibody for treatment of rheumatoid arthritis. Simply put, a biosimilar is a molecule that copies a branded biologic and is for all practical purposes highly identical to the branded biologic in structure and function.  Read More

IP Haiku: Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (No 2) [2014] FCA 418

Your IP Law Report in 17 Syllables

Judgments are just getting longer and more complicated, I can’t keep up with all of them!”

A familiar refrain uttered by many a lawyer and law student alike, especially in the modern, digital age (although we expect the Courts might refer to the increasing volume of electronic evidence filed by parties in proceedings as a contributing factor!)

So, in that context, could the essence of a judgment be distilled into haiku (short form Japanese poetry consisting of three phrases of five, seven and five syllables)?  Well, we are sure going to try! Read More

The USPTO and Laws of Nature, Natural Products and Natural Phenomena

New Approach to Patentable Subject Matter

The United States Patent Office periodically issues guidance for examiners often in response to a recent court decision or new statute.  These guidelines (the Guidance) do not have the force of law but nevertheless establish the specific procedures that the Examiners apply during examination of patent applications.

Examination guidelines were issued on 4 March 2014  to address two  recent court decisions related to the subject matter eligibility of certain claims under 35 U.S.C. § 101. Examiners will use tests described in the Guidance to determine the patent eligibility of any claim related to laws of nature, natural phenomena and natural products. Read More

Abstract Ideas and the USPTO

The Patent Office’s First Take on CLS Bank v. Alice

On 25 June 2014, new examination guidelines (the Guidance) from the United States Patent Office were issued in response to the Supreme Court’s decision in Alice Corp. v. CLS Bank International. This case addressed the subject matter eligibility under 35 U.S.C. § 101 of claims related to an abstract idea.  The Guidance provides preliminary instructions for analysing claims involving an abstract idea and its applicability to technology areas, including the software and business method fields, which are worthy of attention from applicants.

Read More

Ensure That Stock Photos are Licensed

Although acknowledging the ease of copying photographs on the internet, an Australian Court has warned through the publication of its decision that this copying should not continue. In the case of Tylor v Sevin, a Hawaii, U.S., based photographer sued a Melbourne, Australia, based travel agent regarding a photograph he took titled ‘Waikaki Pink Boat’. The travel agent used the photograph on its website promoting holidays to Hawaii.

After being put on notice of the case, the travel agent refused to take down the photograph or offer to pay a licence fee. Read More

Act Promptly and Diligently When Preparing Evidence in Patent Oppositions or Else…

A recent decision of the Australian Patent Office has underscored the importance of acting promptly and diligently at all times when preparing evidence in patent oppositions.

In this case the patent applicant was unable to complete and serve its evidence-in-support and sought an extension of time in which to do so. The Commissioner’s delegate considered the conduct of the patent applicant throughout the period provided for service of the evidence and decided that the patent applicant had not acted promptly and diligently at all times. Read More

Sports Data’s Injuction Refused

Sports Data used to be the official supplier of statistics to the National Rugby League (NRL), the peak competition for the sport in Australia.  In 2013 its contract was terminated and a new supplier Prozone was appointed. 

In order to provide useful statistics relating to sporting events it is necessary for the statistics provider to have a template or set of criteria which identifies the events that will be captured or entered into the statistics database. Read More

It’s Not Easy Being Green

BP’s Application for Registration of the Colour Green as a Trade Mark Rejected by IP Australia

IP Australia has again made it clear that the assessment of a colour trade mark under section 41 of the Trade Marks Act 1995 (Cth) should be no different from the assessment of any other trade mark. 

However in rejecting BP’s application for registration of the colour green, the Office noted that while most objects have to be some colour, the act of applying a colour to a product will not act as an identifier for that product. Read More

That’s “a Lot of Kebab”!

Additional Damages Awarded for Trade Mark Infringement

Trade mark owners can take encouragement from the Federal Court of Australia’s readiness to award additional damages as a deterrent from further infringement. The Court made its first award of additional damages for trade mark infringement in a case about kebabs, where a claim for actual loss from an infringement could not be made. Additional damages are a useful weapon in a brand owner’s arsenal. Read More

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