Australian patent law has for some time now had a provision (regulation 3.17(2)) where examination of a patent application can be expedited at the applicant's request. The Commissioner of Patents must be satisfied that expedited examination is in the public interest, or there are special circumstances that make it desirable to do so. Practically speaking, expedited examination will be undertaken by the Patent Office where the applicant explains that there are concerns about possible infringement or there are current licensing negotiations involving the subject patent application. In fact, it is enough simply to inform the Commissioner that there are "commercial reasons" for requesting expedited examination. ...... more

May 2008 is shaping up to be a big month for the patenting of business methods in the United States and the United Kingdom. Contemporaneously, courts in both countries have considered the patentability of business methods, with potentially important consequences for patent owners in both countries. Unlike the position in the United Kingdom and under the European Patent Convention where methods of doing business as such are excluded from patentability, U.S. and Australian patent laws do not have any statutory prohibition against the patenting of business methods per se. In the U.S. and Australia, the same patentability criteria for other types of inventions are applied to business method inventions. ...... more

Our previous news alert reported on the recent decision of the Federal Court on ownership of employee-generated intellectual property in University of Western Australia (UWA) v Gray (No 20) [2008] FCA 498. The Federal Court dismissed UWA’s claim to ownership of intellectual property held in the name of its former employee, Dr Bruce Gray, in part on the basis that an employee can be employed to carry out research, without being employed to invent. The intellectual property in dispute was subsequently acquired by Sirtex Medical Limited (Sirtex).. ...... more

The Federal Court of Australia has recently issued a decision that has important implications for chemical patents in Australia, and especially for patents concerned with pharmaceutical substances. ...... more

A recent decision of the Federal Court has undermined the certainty of ownership of intellectual property by universities, and highlighted the importance of employment contracts having express provisions governing intellectual property generated by staff during the course of their employment. In University of Western Australia (UWA) v Gray (No 20) [2008] FCA 49, the Federal Court dismissed UWA’s claim to ownership of intellectual property held in the name of its former Professor of Surgery, Dr Bruce Gray. ...... more

A number of Patent Offices worldwide are taking steps to discourage large patent applications and consequently reduce the backlog of patent applications awaiting examination. The European Patent Office (EPO) has announced fee increases that take effect in 2008 and 2009, which are likely to discourage such patent applications. Some of the more substantial changes are discussed below..... more