Final Report of a Senate Committee Inquiry into Gene Patents
(30 November 2010)

Further to our recent News Alert on the “Gene Patent Debate” the final report of a Senate Committee Inquiry into the impact of patenting of human genes and genetic materials was presented to Parliament late last Friday.......more

The Gene Patent Debate - Bill seeks to exclude biological materials from patentability
(25 November 2010)

Yesterday, NSW Liberal Senator Bill Heffernan, introduced the Patent Amendment (Human Genes and Biological Materials) Bill 2010 into Federal Parliament. The Bill has the potential for significant ramifications for the biotechnology industry in Australia. The Bill seeks to fundamentally amend the Patents Act 1990 by expressly excluding from patentability “biological materials including their components and derivatives, whether isolated or purified or not and however made, which are identical or substantially identical to such materials as they exist in nature.”¹ In the proposed amendment, biological materials are defined to “include[s] DNA, RNA, proteins, cells and fluids.”.......more

Edsonic Pty Ltd v Cassidy [2010] FCA 1008
(22 October 2010)

A recent Federal Court decision illustrates the importance of not only clearly identifying the nature and scope of an employment relationship, but also carefully considering the status of any pre-existing works which may potentially be further developed or completed during the period of the relationship, and expressly referring to any intellectual property rights which may attach to those works in the contract of employment........more

Federal Court considers “Commissioner’s licence” provisions of the Patents Act
(20 October 2010)

When a patent ceases but is later restored as a result of the patentee obtaining an extension of time in which to do some act in relation to the patent, the Commissioner of Patents has the power to grant a licence to a person who, while the patent had ceased, exploited the patent or took definite steps to exploit it. Such a licence can only be granted if the Commissioner is reasonably satisfied that it should be granted, and only on the request of the person concerned................more

Innovation Pathways Business Method Refused
(27 August 2010)

In a recent decision (Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010)), the Australian Patent Office held that a business method directed to a method for commercialising inventions did not meet the requirements for patentable subject matter.  In arriving at this decision, the Patent Office cited the much-anticipated recent US Supreme Court decision in Bilski v Kappos..........more

Official Fee Changes at IP Australia
(21 July 2010)

The Australian Government has recently approved increases to certain patent fees by IP Australia. The fee increases relate only to patents. Fees relating to trademarks, designs, and plant breeder’s rights remain unchanged.............more

Door Kept Open to Patenting of Business Methods in United States
(29 June 2010)

Yesterday, the US Supreme Court handed down its long-awaited decision in the Bilski case, leaving open the door to the patenting of business methods in the U.S., but finding the particular business method at issue unpatentable because the specific method claimed merely involved an abstract idea.  The Supreme Court held that the US patent legislation does not exclude the patenting of business methods per se.  Any claimed “process” must meet the ordinary criteria for patentability of an invention.............more

Federal Court determines that “double patenting” is not a basis for revocation
(5 May 2010)

The term “double patenting” is sometimes used to describe a situation where two patents exist simultaneously on the Register of Patents, whose specifications include one or more claims that define the same invention, and for which the inventors and the priority dates are the same. This kind of situation is uncommon, where standard patents are concerned, because the effect of s64 of the Patents Act 1990 is to prohibit the Commissioner of Patents from sealing a standard patent when there already exists on the Register of Patents a patent that (a) claims the same invention, and (b) the invention is made by the same inventor(s) and (c) the relevant claims have the same priority date(s)..........more

Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302
(1 April 2010)

Justice Emmett has recently handed down judgment in the above Federal Court proceeding concerning the validity and alleged infringement of a patent relating to the automatic recognition of widely disseminated audio signals such as television and radio broadcasts.  Importantly, the judgment considers whether “double patenting” (or “double claiming”, as it is also known) is a ground for revocation of a patent under the Patents Act 1990 (“the Act”)...........more

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