Shortened timeframe to file European divisional applications
(25 February 2010)

Effective 1 April 2010, the European Patent Office (EPO) is changing its practice by shortening the time limit for filing a divisional application.  This will potentially restrict an Applicant’s options to file one or more divisional applications at the EPO..........more

USPTO too frugal with patent term adjustments
(5 February 2010)

A welcome recent decision of the U.S. Court of Appeals for the Federal Circuit has forced the U.S. Patent and Trademark Office (USPTO) to calculate patent term adjustments more favorably for owners of U.S. patents than was previously the case.........more

High Court refuses special leave in the first case to consider the validity of innovation patents
(14 December 2009)

An application for special leave to appeal to the High Court from the Full Federal Court’s decision in the Delnorth case was refused in the High Court last Friday, 11 December 2009. Accordingly the test for innovative step is that set out by former Justice Gyles in 2008 in his first instance decision which was confirmed by the Full Federal Court in June 2009.........more

IIn a welcome development for U.S. patent applicants around the world, President Barack Obama’s newly appointed Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), David Kappos, has rescinded highly controversial patent regulations that were proposed by the previous administration..........more

In a recent decision that has important implications for persons who apply to a court for directions to amend a patent, the Federal Court has used its discretion to refuse amendments that were otherwise held to be allowable according to the statutory criteria of allowability. The case, Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019, emphasises the importance of candour by patentees who apply to a court for amendment of a patent..........more

The eagerly awaited decision of the Full Federal Court in the appeal against the first instance decision in University of Western Australia v Gray was handed down late last week. This decision has the potential to impact directly on ownership of intellectual property generated in public sector research organisations.........more

Intellectual Property (IP) is a valuable strategic and financial asset for every organisation. Like any other resource, IP should be carefully managed and opportunities should be sought to exploit and add value from that IP. The IP owned or controlled by an organisation represents a significant portion of its value. Particularly for small to medium sized organisations, realizing the value of its IP is critical in a monetization of that value......more

The Productivity Commission released a research report in June 2009 recommending that
the present legislative restrictions on the parallel importation of books be repealed because
the restrictions place upward pressure on book prices in Australia........more

On 1 April 2002, Australian patent legislation introduced expanded “grace period” provisions for disregarding certain disclosures as potential prior art. Under the expanded grace period, any information made publicly available by publication or use of an invention authorised by the patentee must be disregarded when considering the novelty and either the inventive step or the innovative step of an invention, provided a complete (non-provisional) patent application for the invention in Australia is made and has a filing date within 12 months of the first such publication or use.......... more

As reported in an earlier news alert, in August 2008 a single judge of the Federal Court of Australia handed down his decision on the first case to consider the requirement for an “innovative step” for innovation patents.......... more

The Full Court of the Federal Court of Australia has recently handed down its decision in the Australian round of litigation relating to Lundbeck’s patent for the antidepressant Escitalopram (marketed as LEXAPRO and CIPRALEX).......... more

As you may be aware from recent media reports, from tomorrow Facebook will allow users to register a username as part of a second-level domain name, in the form www.facebook.com/username.......... more

In the recent Australian Federal Court decision of Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2009] FCA 595, Wyeth were successful in preventing Sigma’s launch of a generic version of EFEXOR-XR™ (venlafaxine hydrochloride), the leading antidepressant in Australia in terms of units sold and value of sales. ......... more

We are pleased to announce that Spruson & Ferguson has been voted the Best Patent Attorney and Trade Mark Firm in Australia in the 2009 BRW Client Choice Awards. This achievement is the result of “the largest study of the clients of professional services in the world” conducted by Beaton Consulting.
We would like to extend our thanks to all of our clients and associates who participated in the survey, for helping us to achieve this great result.
Providing our clients with the best quality service and expertise has been, and will remain, our absolute priority.

Spruson & Ferguson is proud to announce the release of the electronic publication Intellectual Property Manual for the Engineering Team. The manual, which is a joint effort of Engineers Australia and Spruson & Ferguson, is aimed to provide assistance in relation to IP issues at the various levels within an engineering organisation. Download Manual

For the third consecutive year Spruson & Ferguson has been placed in the top tier for  patent prosecution in Australia. Our associated firm Ella Cheong Spruson & Ferguson, has also been awarded top tier position for patent prosecution in Singapore. The recognition is a result of the World IP survey conducted by prestigious IP publication Managing Intellectual Property.

As a result of amendments to the Australian Patents Regulations that came into force on 1 January 2009, there is no longer a requirement to lodge certified copies of priority applications in respect of Australian patent applications, unless the Australian Patent Office specifically requests such a certified copy. We expect that the Australian Patent Office will only make such a request if intervening prior art is identified that requires assessment of the priority date of specific claims. If the Australian Patent Office requests a certified copy, it must be filed within three months of the request.......... more