Welcome
Australia’s IP legislation includes many provisions, which while important,
do not regularly receive consideration by our Courts, leaving their potential
scope uncertain. Recent decisions regarding ‘who can be an inventor’,
and what constitutes ‘fair dealing’ with a copyright work, provide valuable
insight into the application of some underexplored areas of our law.

Inspire September 2021
In this edition of Inspire, Helen
McFadzean examines the ongoing
controversy over whether an
Artificial Intelligence machine can
be nominated as the inventor for
a patent application. As Helen
notes, the recent decision in Thaler
v Commissioner of Patents would
seem to put the scope of who may
be an inventor for a patent at odds
with the position of who may be an
author for copyright, or a designer for
a design registration. Interestingly,
the case also hints at how the
recently introduced objects clause
may play an increasing role in the
interpretation of the Patents Act
Rather than a general ‘fair use’
defence, Australian copyright law
provides a number of specific
defences which apply where a work
is used for a particular purpose and
in a manner which constitutes
‘fair dealing’. As Ye Rin Yoo explains,
although the application of the
defence is very fact specific, the
decision in AGL Energy v Greenpeace
provides some important guidance
on the factors which a Court may
considered in deciding whether
a particular dealing is fair.

While Australian patent law includes
specific grace periods to allow
for public working of an invention
for the purpose of reasonable trial
prior to filing a patent application,
as Greg Bartlett discusses, there
are important limitations to these
provisions. The decision in Fuchs
Lubricants v Quaker Chemical
illustrates that disclosures which
are ancillary to a public trial may
not be covered by the grace
period, and should be avoided
or made only subject to suitable
confidentiality arrangements.

Also in the edition, Mark Williams
looks at the application of the
manner of manufacture test to
blockchain related technology,
Leigh Guerin explores the
patentability of diagnostic methods,
Annabella Newton looks at changes
to patent term extension laws and
we say congratulations to Jacqueline
Leong on her recent promotion.

Adrian Crooks | Principal
BEng(Civil)(Hons) LLB LLM FIPTA
adrian.crooks@pof.com.au Congratulations to
our new Senior Associate
Jacqueline Leong
We are pleased to
announce the promotion
of Jacqueline Leong
to the position of
Senior Associate.

2 This promotion is a
significant milestone
that recognises
Jacqueline’s exceptional
work, client service,
and leadership.

Prior to working at POF, Jacqueline
worked as a trade mark solicitor in
the intellectual property department
of one of Malaysia’s top-ranked
law firms where she managed
and prosecuted large trade mark
portfolios for many well-known
global companies, assisted in
court actions and participated in
anti-counterfeiting activities with
local law enforcement agencies
and private investigators.

Jacqueline has assisted both local
and international clients with
their trade marks, specialising
in the protection, enforcement
and defence of trade marks
in Australia and overseas.

“Jacqueline has been
with us for over two
years, and is a highly-
valued member of our
Adelaide office and our trade
marks team. She also makes
a significant contribution to
our Trade Marks Committee,
Health & Wellbeing Committee,
and Diversity & Inclusion
Subcommittee. This promotion
is a reflection of Jacqueline’s
hard work and dedication to
our clients and the firm.”
Ross McFarlane, Managing Principal