Creativity lies at the heart of the IP world but
what it is, where it comes from and who is
responsible for it can be hard to pin down.

In this edition of Inspire we explore some of the legal
difficulties arising from advances in artificial intelligence
technology which provide new avenues for generating
inventions. As Helen McFadzean discusses, the process
of invention has typically been understood as the creative
mental activity of a human and patent law in Australia and
elsewhere reflects this understanding. As recent patent
office decisions indicate, in circumstances where an
alleged invention has been generated by an AI machine,
the absence of a legal person having entitlement to the
grant of a patent or being capable of assigning such
a right, meant that no patent could validly be filed.

Correctly identifying the creator of a design is also
crucial to ensuring the validity of a design registration
as Duncan Joiner explains. In Manuel Canestrini v Ilan
El one of the two designs in issue was found to be
invalid and was revoked in light of evidence showing
that the visual appearance of the design was conceived
by someone other than the registered owner.

Anita Brown examines the fine line between taking
creative license in seeking inspiration from an
established brand and appropriation leading to trade
mark infringement and misleading and deceptive
conduct. The decision in In-N-Out Burgers, Inc v
Hashtag Burgers also highlights that directors who
have close personal involvement in the wrongdoing
of a company may also be found liable.

Also in this edition, Annabella Newton looks at
infringement of method of treatment claims by
the supply of a product, Melissa Wingard explores
the enforceability of online contracts and website
terms of service and we say welcome to our new
and returning members of staff and congratulations
to a number of recent award winners.

We are delighted that POF has
emerged the winner across
three categories of this year’s
Client Choice Awards, the most
awards of any Australian IP
firm. We were successful in
the following categories:
> Best Specialist IP & Related Services Firm;
> Best CX (Client Experience) Firm:
Specialist IP & Related Services; and
> Most Innovative Specialist IP &
Related Services Firm.

Beaton Research + Consulting manages the
independent research behind the Awards.

Clients and referrers of work complete
Beaton’s surveys; rating and commenting
on firms’ performance in delivering services
on a range of criteria. This includes quality,
value for money, price, and innovation.

We would like to extend our gratitude to all our
clients who nominated us for these awards. We are
particularly proud of winning the award for ‘Best
CX (Client Experience) Firm’ as we put our client’s
interests at the heart of everything that we do.

These awards reflect the strength of our relationships
with our clients, our genuine commitment to
client service, and the calibre of our people.

2
Inspire March 2021
Welcome POF named best
Australian IP firm
across three categories
of the 2021 Client
Choice Awards
Adrian Crooks, Principal
Ross McFarlane | Managing Principal
BEng(Civil)(Hons) LLB LLM FIPTA
BEng(Elec)(Hons) FIPTA
adrian.crooks@pof.com.au ross.mcfarlane@pof.com.au



Hello and
welcome back
POF welcomes new Patent Attorney, Paul Goodall,
to our Sydney office and welcomes back Senior
Associate, Helen McFadzean, to our Melbourne office.

POF welcomes new Patent Attorney,
Paul Goodall
Phillips Ormonde Fitzpatrick extends a warm welcome
to our newest Patent Attorney, Paul Goodall, who
joined the Electronics, Physics and IT Team in our
Sydney office late last year. He brings with him seven
years of experience working in the engineering field.

During his career, Paul predominantly focused
on electronics and telecommunications
engineering, working on a variety of different
engineering projects ranging from satellite
systems to developing the electrical systems on
the Deepsea Challenger submarine which was
successfully sent to the Mariana Trench in 2012.

Paul started his career in intellectual property in
2016 with a large patent attorney firm in Sydney. His
hands-on experience, developed from his career in
engineering, has allowed him to grasp complex ideas
related to electrical and mechanical engineering
inventions. We are excited to have Paul onboard.

Welcome back, Helen McFadzean
Returning to POF this year, after her period of parental
leave, is Senior Associate Helen McFadzean. We are
excited to have Helen back onboard working with
our Electronics, Physics and IT Team in Melbourne.

Helen joined POF in 2017 and has been part of the
IP profession since 2009. Helen has assisted clients
in obtaining patents, designs and trade marks both
in Australia and overseas, across a large number of
technology areas including automation, smart devices,
medical apparatus, automotive technology, audio signal
processing, image processing, and subsea mining
technology just to name a few. Helen has a history
of maintaining excellent client relationships through
proactive learning of her clients’ business to better
understand their needs and commercial objectives.

Additionally, Helen is one of our resident experts in
the field of artificial intelligence and co-presented
a popular two-part seminar alongside Dr Jeroen
Vendrig titled ‘IP and the AI Boom’ in late 2019. We
are delighted to have Helen back onboard at POF.

Inspire March 2021
3