Tag: Australia

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Western Australian Court orders ex-customers and architect to pay damages to house designer for unauthorised use of plans
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Change is Coming to Australian Parallel Importation law – What do you Need to Know?
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Pushing the limits of Australia’s grace period
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Australian Patent Office considers plausibility in a test for sufficiency
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Innovation patents as strategic tools for clients (Business Bytes video)
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Changes to divisional trade mark applications flagged by IP Australia
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Significant changes ahead for Australian patents
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Say My Name: Beyoncé files trademarks for her newborn twins’ names
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Protecting Plant Innovations in the U.S., Australia and New Zealand
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New Zealand joins the Global Patent Prosecution Highway

Western Australian Court orders ex-customers and architect to pay damages to house designer for unauthorised use of plans

On 22 January 2018, Justice Martino of the Supreme Court of Western Australia delivered his judgment in the case of Milankov Designs & Project Management Pty Ltd v Di Latte & Anor, a copyright infringement case in respect of house plans.

Mr and Mrs Di Latte engaged the plaintiff, Milankov Designs & Project Management Pty Ltd (Milankov), to design and prepare drawings for a home to be built at the Di Lattes’ property.  The agreement provided that Milankov would prepare plans for stages of the design and build process – first, the development stage and, second, the construction drawing stage. The Di Lattes agreed to pay Milankov a percentage of the build cost, to be billed to the Di Lattes at various stages throughout the process.

After Milankov had prepared the stage one plans (including plans submitted to council for building licence approval) and the Di Lattes had paid several invoices issued by Milankov, the relationship between the parties broke down.  The engagement contract was terminated by the Di Lattes, and Milankov promptly wrote to the Di Lattes putting them on notice that Milankov owned copyright in the plans it had created and that the Di Lattes were not entitled to reproduce the plans without its permission, including by building the house at their property.

Nonetheless, the Di Lattes proceeded to engage an architect to create plans including construction drawings by copying Milankov’s plans, and then to construct a house in accordance with the design.

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Change is Coming to Australian Parallel Importation law – What do you Need to Know?

Trade mark holders may need to reassess their commercial and international marketing strategies as the proposed amendments to the parallel importation provisions of the Trade Marks Act 1995 (Cth) (Act) take a step closer to enactment by the Australian Parliament.

The proposed amendments to the Act, contained in the draft Intellectual Property Laws Amendment (Productivity Commission response Part 1 and other measures) Bill (Draft Bill) will favour parallel importers in Australia.

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Pushing the limits of Australia’s grace period

Australia’s “grace period” provisions allow a patent applicant to disclose or use their invention within 12 months before filing a complete patent application in Australia.  In an interesting interpretation of those provisions, the Australian Patent Office has found that the grace period applies to whole of contents citations published after a patent application has been filed.

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Australian Patent Office considers plausibility in a test for sufficiency

The emergence of “plausibility” as a test for inventive step, sufficiency and industrial applicability represents a significant legal development in Europe in recent years.  Now the concept of plausibility has reached Australian shores, with the Australian Patent Office applying it in a test for sufficiency.

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Changes to divisional trade mark applications flagged by IP Australia

IP Australia has released a consultation paper (Paper) concerning proposed amendments to Australia’s system for filing divisional trade mark applications.  The Paper proposes amendments which will affect all divisional applications filed in Australia, including allowing divisional applications to be filed for International Registrations Designating Australia (IRDAs) for the first time.

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Significant changes ahead for Australian patents

The Australian Government has proposed significant changes to Australian patent law following an inquiry into the IP system recently completed by its advisory body, the Productivity Commission.  These include:

  • Amending the inventive step threshold to reflect that of the European Patent Office
  • Phasing out innovation patents
  • Requiring applicants to identify an invention’s technical features in their claims, and
  • Adding an objects clause to the Patents Act.

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Say My Name: Beyoncé files trademarks for her newborn twins’ names

Long gone are the days where the first registration of your child’s name was on their birth certificate.  On 26 June 2017, U.S. Trade Mark Application Numbers 87506186 and 87506188 were filed for the names of Beyoncé Knowles-Carter and Shawn ‘Jay-Z’ Carter’s newborn twins ‘Rumi Carter’ and ‘Sir Carter’ by Beyoncé’s holding company, BGK Trademark Holdings.

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Protecting Plant Innovations in the U.S., Australia and New Zealand

The development of new plant varieties can be a costly and time-consuming process. To incentivise breeding endeavours, governments around the world have developed legal mechanisms which effectively provide breeders with a period of market exclusivity in which to commercialise their new variety. The mechanisms vary from country to country, and this article briefly reviews those available in the United States, Australia and New Zealand.

To read the full alert, click here.

By: Michael Christie and Margaux Nair

New Zealand joins the Global Patent Prosecution Highway

On 6 July 2017, New Zealand joined the Global Patent Prosecution Highway (GPPH) pilot program, providing applicants for New Zealand patents with a means of expediting prosecution of their application.

The GPPH is an arrangement between the intellectual property offices of several jurisdictions including Australia, the United States, Japan, Canada and Korea.  Under the GPPH, an applicant who receives a ruling that at least one claim has been allowed by a participating patent office may request that another participating patent office expedite examination of their application.

To be eligible for examination under the GPPH, the following requirements must be met:

  • the patent application to be examined under the GPPH must have the same earliest priority or filing date as the associated application which has already been examined by the participating patent office
  • the associated application must include one claim which has been deemed allowable by the participating patent office, and
  • the claims to be examined under the GPPH must sufficiently correspond with the allowed claims.

With regard to the third requirement above, applicants have the option of amending their claims so that they sufficiently correspond with those that have been allowed by another participating patent office. However, before making such amendments, applicants should consider the possibility of obtaining broader claims in certain jurisdictions. Patent laws vary between jurisdictions and a claim that was allowed in, say, the U.S., might be narrower that what could be obtained in New Zealand.

Prior to New Zealand’s entry into the GPPH, the options available to applicants seeking expedited examination were limited and burdensome. The GPPH now provides patent applicants with a simple way of accelerating prosecution of their patent application in several jurisdictions, potentially reducing the costs and time required to obtain a granted patent.  However, allowance of a claim in one jurisdiction does not necessarily mean that a corresponding claim will be allowed in another jurisdiction.

By: Michael Christie

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