Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Tuesday, September 30, 2014

IP issues in the Harper Review

Last week saw the release of the draft report of the Harper Review, a significant review of Australia's competition laws and policy.

The draft report contains many recommendations that could have significant ramifications on competition law enforcement in Australia.

One area in which the Review is looking at is intellectual property rights.

In a video interview, Allens Partner Carolyn Oddie analyses the recommendations about IP rights and how to balance the tension between the desirability of IP rights and the need to encourage innovation in a fast-changing digital environment.

To view the video, go to our website.

Please get in touch with an Allens lawyer or attorney if you would like our assistance with preparing a submission to the Review. Submissions are due on 17 November 2014. A final report is due to be released March 2015 for consideration by the Federal Government.

Wednesday, September 24, 2014

Green on both sides of the fence: design protection then and now

By Julia Kovarsky, Lawyer

Although the Designs Act 2003 (Cth) (the New Act) has just passed its 10th birthday, there remain approximately 7000 registered designs still in force under the old regime, governed by the predecessor Designs Act 1906 (Cth) (the Old Act). The New Act broadened the scope of design protection to restore designers' faith in the system but BlueScope Steel v Gram Engineering shows that even under the Old Act, design protection can still be commercially valuable.

Born on the bad side

The case revolves around the solution to the 'vexing problem' faced for years by backyard owners around Australia - the fact that their fences had a 'bad' side. One solution was developed in 1993 by Mr Mann, Managing Director of Gram, who designed a fencing sheet with a sawtooth profile which looked the same from both sides and thereby had two 'good' sides. Gram registered its design under the Old Act and began very successfully producing GramLine fencing. In 2002, BlueScope began producing its own two-good-sided fencing under the name Smartascreen. Gram commenced proceedings against BlueScope in 2011 claiming under the Old Act that the Smartascreen was either an ‘obvious’ or ‘fraudulent imitation’ of its design. BlueScope cross-claimed, challenging the validity of the design.

Thursday, September 18, 2014

High Court may consider patentability of isolated genetic material

By Dr Tony Shaw, Patent Attorney and Associate

We reported here and in our recent Focus article that the Full Federal Court in D'Arcy v Myriad Genetics Inc (D'Arcy) handed down a unanimous decision confirming the decision in the first instance decision, Cancer Voices Australia v Myriad Genetics Inc (Cancer Voices) that genetic materials in their isolated form are patentable in Australia.

The Myriad patent at issue (AU 686004) claims isolated nucleic acids having particular mutations in the BRCA1 gene associated with a predisposition to breast and ovarian cancers. The patent also claims to tests for predisposition to breast and ovarian cancers which are based on detecting those mutations. As correctly stated in D'Arcy, the patent does not claim the genetic code nor claim genes or nucleic acids present in a cell or human body:
'What is claimed is an isolated nucleic acid, a chemical molecule characterised in a certain way, which is chemically, structurally and functionally different to what occurs in nature.'
The judgments in D'Arcy and Cancer Voices have been consistent in the application of Australian patent law in deciding that 'isolated nucleic acids' are patentable subject matter.

As foreshadowed, Ms D'Arcy's lawyers have now filed an application for leave to appeal the D'Arcy decision to the High Court. Ms D'Arcy is seeking leave to appeal on a number of grounds including that the Full Court erred in:

  • holding that 'an isolated nucleic acid' is patent eligible;
  • holding that the isolation of the nucleic acid was sufficient to render the claims as being claims to an 'artificially created state of affairs for economic benefit' and hence to a manner of manufacture;
  • holding that the 'information that the gene encodes' is not relevant in determining patent eligibility; and
  • preferring the reasoning of the US Federal Circuit in Association for Molecular Pathology v US Patent and Trademark Office rather than the US Supreme Court's reasoning in Association for Molecular Pathology v Myriad Genetics.

Keep an eye on Scintilla and the Allens website for details on whether leave to appeal will be granted and the High Court will consider this issue.

Wednesday, September 17, 2014

Have your candy (crush) and eat it too – legal issues in app development

By Tracy Lu, Associate

In 2008, with Apple's launch of the App Store, a brand new market for mobile apps was born. This article discusses some of the legal issues which may be involved in app development.

Confidential information

Being the first to come up with a knockout idea is sometimes critical to the success of an app. However, copyright laws do not afford protection to concepts and ideas, but only their expression. Therefore, when sharing ideas with others, such as during a pitch for funding, it is prudent for the parties involved to come prepared with a well-drafted confidentiality agreement.

Friday, September 5, 2014

Isolated genetic material confirmed as patentable

By Dr Tony Shaw, Associate and Patent Attorney

In a unanimous decision handed down today in D'Arcy v Myriad Genetics, the Full Federal Court, comprising a full bench of five judges, has dismissed the appeal from the decision of Justice Nicholas in Cancer Voices v Myriad Genetics and confirmed that genetic materials in their isolated form remain patentable in Australia.

As we have previously reported here, in Cancer Voices v Myriad Genetics Justice Nicholas found isolated nucleic acids to be a 'manner of manufacture' as required by the Patents Act 1990 and therefore patentable subject matter. Applying the High Court's decision in the landmark NRDC case, his Honour held that isolated nucleic acids consist of 'an artificial state of affairs, that has some discernible effect, and that is of utility in a field of economic endeavor' and are patentable. Relevantly, Justice Nicholas noted that NRDC does not require the court to ask whether a composition of matter is a 'product of nature' for the purpose of deciding whether or not it constitutes patentable subject matter.

Latest edition of Food Law Bulletin

Today Allens has released the September 2014 Food Law Bulletin.

It has the latest on Certification Trade Marks; the ACCC's current enforcement activities on credence claims in food labelling; the development of a national information standard for the contentious area of 'free-range' eggs in light of the industry's failure to self-regulate; and an ACCC cartel proceeding that highlights the potential dangers of the relationship between producers and the industry bodies that represent them.

The Food Law Bulletin is available from the Allens website.

Thursday, September 4, 2014

Patently false: the rise of fake renewal notices

By Kimberley Evans, Associate, Trade Marks Attorney

We frequently receive emails and telephone calls from our clients asking whether a patent or trade mark renewal notice from 'generic company name including reference to a patent or trade mark registry' such as Patent and Trademark Organisation is legitimate and should be paid. Our standard response is that, as our firm is the address for service for that patent or trade mark, clients can ignore any renewal correspondence that requests payment and is not issued on our letterhead. There is an increasing number of organisations that send out these 'renewal notices' and IP Australia warns against unsolicited renewal services on its website.

Wednesday, September 3, 2014

Location, location, location: the dangers of geographical names

By James Gonczi, Lawyer

The Full Federal Court recently handed down its decision in Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited.

Kosciuszko Thredbo Pty Limited (KT, the appellant) has operated the very popular Thredbo Village and Thredbo Resort since the 1980s. In that time the appellant has spent in excess of $150 million on projects around the village and resort. 

Unless you're a snow aficionado or serious Thredbo regular, you may well be unaware that KT holds a lease over essentially everything in Thredbo (that's the geographical area of Thredbo, including most of the accommodation, bars, restaurants and chair lifts). ThredboNet Marketing Pty Limited (TN, the respondent) is a sub-lessee, which manages rental properties in Thredbo using the domain name The appellant took legal action in an effort to prevent the respondent from using the name 'Thredbo' in its domain name.

Tuesday, September 2, 2014

Update on AstraZeneca v Apotex

As promised in our post on the five-judge decision in AstraZeneca v Apotex, we have now published a Focus article providing an in-depth analysis of this decision.