Welcome
The validity of IP rights is often challenged on external grounds
such as lack of novelty in the case of patents or distinctiveness for
trade marks. However valid ownership or entitlement is becoming
increasingly scrutinised and ensuring correct chain of title to
IP is vital to securing valuable and enforceable rights.

Inspire March 2022
In this edition of Inspire, Melissa
Wingard reviews the decision
in Whitsunday Aerial Solutions
Professionals v Emprja in which
the applicant sought to rely upon
purported oral and subsequent
written “confirmatory” assignments
of copyright. The decision highlights
both the importance of the
circumstances in which the rights
come into being in determining the
original owner of those rights as well
as the effectiveness and limitations
of purported assignments.

Inventorship, described as “one of
the muddiest concepts in the muddy
metaphysics of the patent law”
continues to exercise the minds
of the Federal Court, this time in
the decision in Vehicle Monitoring
Systems v SARB. As Helen
McFadzean explains, determining
the “ inventive concept” by reference
to the whole of the specification
2 and not just the claims is a crucial
element of test to be applied.

While the Full Court confirmed
that invention may reside in the
conception of an idea without the
need for reduction to practice,
the idea must nevertheless be a
sufficiently material contribution to
the inventive concept as a whole.

Matthew Overett discusses the
use of disclaimers in Australian
patent practice. As the decision
in Boehringer Ingelheim v Elanco
illustrates, the pre-raising the bar
amendment test is rather generous
to patentees seeking to avoid
prior art, allowing a disclaimer
directed to subject matter which
was not specifically disclosed in
the original specification. However,
the current provisions may not
be so benevolent, meaning
patentees must remain cautious
when making such amendments.

Vale Graham Cowin
It is with great sadness that we advise that
our former Managing Partner, Graham Cowin,
passed away suddenly in March this year.

Graham’s career commenced
as an Examiner of Patents with
the Australian Patents Office.

He became a registered Patent
Attorney in 1978 after joining Phillips
Ormonde Fitzpatrick in 1975. Ten
years later he became a partner
with the firm, and was Managing
Partner from 2005 until 2015. His
contribution to our firm for well
over 40 years was extraordinary.

He was incredibly well-respected
by his peers and within the world
of IP. Graham was a Councilor of
the Institute of Patent and Trade
Mark Attorneys of Australia (IPTA)
for many years from 1996 with
various responsibilities including
Convener of the Education
Committee, Chair of the IPTA
Academy of Education, and a
member of the Ethics and Disputes
Committee. He was elected
President of IPTA in 2011.

Our thoughts are with his
wife Helen, his children
Andrew and Prue,
friends and colleagues
at this sad time.

Also in this edition, Leigh Guerin
looks at claim construction of
relative terms, Ye Rin Yoo provides
an update on the ground of bad
faith in trade mark oppositions,
Jessica Chadbourne analyses
how a challenge to a patent
term extension can play a role
in defeating an interlocutory
injunction application, and we say
welcome to some new recruits
across our technology teams.

Adrian Crooks, Principal
BEng(Civil)(Hons) LLB LLM FIPTA
adrian.crooks@pof.com.au