While those in the ICT space wait with baited breath on the outcome of Encompass Corporation Pty Ltd v InfoTrack Pty Ltd, NSD734/2018 (the Encompass appeal, reported here) for guidance on the subject matter eligibility of computer-implemented inventions, a recent decision has perhaps softened the position of the Australian Patent Office. In Apple, Inc. [2019] …
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Treasurer, Josh Frydenberg, recently indicated before a business audience in the UK that the Australian government was considering implementing a patent box tax scheme much like tax schemes adopted by other jurisdictions, most notably, the UK, France, Ireland, Switzerland, the BeNeLux countries and China. While implementation of a patent box tax scheme in Australia is …
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Following a successful three-year trial, the European Patent Office (EPO) and the Australian Patent Office (IP Australia) have agreed to extend the bilateral Patent Prosecution Highway (PPH) pilot program between them for a further three years. This bilateral PPH pilot program enables applicants with either an accepted (or granted) patent application in Europe or Australia, …
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At the core of the right to ownership of a registered design is the fundamental principle of entitlement derived from creation of the design. Ultimately, entitlement flows from the person who created the design, but may reside for example with their employer. An issue that often arises is who the actual designer is, particularly where …
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As a patent attorney, I am often asked the question – ‘shall I draft my own patent specification?’ Of course, my answer is ‘no’. There are lots of reasons for this. One of which is that the particular way in which a patent specification is drafted, including the specific words used in the claims to …
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A recent decision of the Australian Patent Office[1] exemplified a set of circumstances which failed to satisfy the extension of time provisions under section 223 of the Australian Patents Act. This Decision highlights the importance of formulating evidence so as to demonstrate the occurrence of the error or omission at the relevant time, lest the circumstances …
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In late December 2018, ICT patent applicants and their attorneys received a “Christmas bonus” in the form of the Federal Court judgment in Rokt Pty Ltd v Commissioner of Patents [2018] FCA 1988 (Rokt). The Court held that a digital advertising system and method (previously rejected by the Commissioner of Patents) was indeed patentable subject …
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Almost three years ago, the Full Federal Court of Australia handed down judgment in a very notable case¹. At the time, it was hoped that this judgment might provide patent applicants with certainty around the application of the law of Manner of Manufacture (i.e. patentable subject matter) as it relates to computer implemented inventions in …
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The two key remedies sought by intellectual property owners in infringement cases are an injunction to stop the infringing conduct and compensation in the form of damages or an account of profits. Typically, the Court will determine the question of infringement separately and prior to considering what, if any, compensation should be awarded. In many instances …
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It’s risky business bringing proceedings for IP infringement without proper legal advice. A self-represented Debra Crocker learnt this the hard way over a series of court proceedings, which saw her sentenced to time in prison for contempt of Court and prohibited from instituting proceedings in the Federal Court with limited exception. Following these recent proceedings,[1] …
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