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

Wednesday, October 21, 2015

Cigar parallel importation claims go up in smoke

By Joel Barrett, Senior Associate

As any experienced smoker will tell you, one does not inhale when smoking a cigar. But Scandinavian Tobacco Group Eersel BV (STG for short), a Danish producer of hand- and machine-made cigars, is likely to be taking a few deep breaths after the Federal Court recently dismissed its claims against a parallel importer for trade mark infringement, passing off and contravention of the Australian Consumer Law.

The dispute took place against the somewhat unusual backdrop of Australia's tobacco plain packaging legislative landscape. STG manufactures and packages cigars under the brand names Café Crème, Henri Wintermans and La Paz in Belgium and Holland, and then supplies the goods to its Australian subsidiary for sale in Australia. Under a formal distribution agreement between them, STG appointed the Australian subsidiary as the sole distributor, wholesaler and promoter of the cigars in Australia. However, since 2012, a third party named Trojan Trading Company Pty Ltd has been independently purchasing genuine STG cigars packaged for overseas markets (from a source unknown), importing them into Australia, unpacking and repackaging them so that they comply with the Tobacco Plain Packaging Act 2011 (Cth) and Tobacco Plain Packaging Regulations 2011 (Cth), and selling the cigars to Australian wholesalers and retailers in that new packaging.

Monday, October 19, 2015

IP Australia issues patent examination proposal following Myriad decision

By Trevor Davies, Partner

In light of the recent High Court decision in D'Arcy v Myriad Genetics, in which the High Court unanimously ruled that isolated nucleic acid encoding the mutant BRCA1 polypeptide was not patentable, IP Australia has issued a proposal for patent examination for public comment.

We are pleased to note that IP Australia has taken a pragmatic approach to the Myriad decision and proposes excluding only a limited class of genetic material from patent protection.

Monday, October 12, 2015

Gummy bear fails to take out its rival, the Lindt chocolate bear

By Nadia Guadagno, Senior Associate

The Lindt gold chocolate bear has been saved from destruction thanks to a recent ruling of Germany's highest court.

Nadia Guadagno reports on the ruling, in video and in text:

Haribo, the confectionery maker most well-known for its gummy bears, claimed that Lindt's gold chocolate bear infringed Haribo's word trade marks GOLDBÄR and GOLDBÄREN (meaning 'gold bear' and 'gold bears', respectively) and its 2D image trade mark of a bear.


Haribo's trade marks
Lindt's gold chocolate bear

Haribo sought a wide range of remedies including damages and the withdrawal and cessation of sales and destruction of all gold chocolate bears. What an unbearable thought!

Friday, October 9, 2015

Productivity Commission releases IP system review issues paper

By Claire McMahon, Associate

Just when you thought that there could be no more IP-related news this week, the Productivity Commission has gone ahead and released an issues paper ahead of its review into Australia's IP system. This review will cover all areas of IP: patents and data protection, copyright, trade marks, designs, plant breeder's rights, circuit layout rights and geographical indications, as well as IP enforcement and international obligations.

The Commission has invited submissions on the issues and questions outlined in the issues paper. These submissions are due by 30 November 2015. The Commission will then be required to report to the government by mid-August 2016.

This review comes after the release of the Competition Policy Review, also known as the Harper Review. One of the Harper Review recommendations was that the Productivity Commission be tasked with evaluating the existing IP system. This review will be focusing on, among other things:
  • innovation, cost and competition issues arising from the scope and duration of IP protection in Australia, including problems arising from developments in markets and technology;
  • the principles underlining Australia's position on IP provisions in international treaties; and
  • changes to the IP system that would be beneficial to Australian society, keeping in mind its international trade obligations.
Surely many will see the irony in the fact that an issues paper requesting input on Australia's international treaty obligations and the appropriate negotiation principles for such treaties was released two days after the Trans-Pacific Partnership was finally agreed.

In any case, the Commission states its overarching objective as being 'to maximise wellbeing of Australians'. It aims to achieve this goal by ensuring the system is effective, efficient, adaptable and accountable.

Although the purpose of an issues paper is to provide an overview of key issues and set out the policy areas to be considered, this issues paper does give some insight into the thought process behind the review. For example, the issues paper is concerned about striking the right balance between the rights of creators and those of consumers – not surprising given its competition policy origins – which seems to translate to reducing costs for consumers and limiting IP protection where it is not justified. It highlights the balance of rights in the pharmaceutical area as 'particularly contentious', especially regarding patents in relation to new compounds and biologic drugs.

The issues paper also notes the difficulties facing the copyright system, particularly with the development of technology that has not only made infringement easier and cheaper but has highlighted the inflexibility of the existing system.

The Commission states that it will be examining international approaches to IP enforcement, such as the model adopted by the UK Intellectual Property Enterprise Court. It will also seek input on the impact of Australia's international IP obligations on domestic innovation, production, trade and consumption, and what principles should guide future decision making in this area.

Thursday, October 8, 2015

High Court unanimously finds isolated genetic material not patentable

By Trevor Davies, Partner, and Linda Govenlock, Managing Associate

As the culmination of a hard-fought patent dispute, the High Court of Australia has unanimously ruled that Myriad Genetics' patent claims to isolated nucleic acid coding for the mutant or polymorphic BRCA1 polypeptide are not valid. This emphatic decision in D'Arcy v Myriad Genetics Inc overturns the previous decisions at trial and on appeal before the Full Federal Court, and effectively nullifies the long-standing practice that 'isolation' of material from a natural source was sufficient to meet the patentable subject matter threshold in Australia.

The High Court indicated that it was not concerned in this appeal with 'gene patenting' generally, but with whether the invention as claimed fell within established applications of the concept of 'manner of manufacture' which frames the fundamental issue of patent-eligible subject matter under the Patents Act 1990 (Cth). The High Court criticised the approach of the primary judge and Full Court for applying a 'verbal formula' adapted from the High Court's landmark decision in National Research Development Corporation v Commissioner of Patents to the question of patentable subject matter, namely, that to be patentable it was 'sufficient for a product to result in an ''artificially created state of affairs'', leading to ''an economically useful result'." The High Court found that approach was too narrow.

Wednesday, October 7, 2015

D'Arcy v Myriad: The High Court rules on gene patenting

The High Court has today unanimously overturned the Full Federal Court's decision in D'Arcy v Myriad Genetics that isolated genetic material was patentable.

The case revolved around a patent by Myriad Genetics claiming isolated nucleic acid encoding a protein implicated in predisposition to breast or ovarian cancer. The High Court decided that the substance of the claimed invention is genetic information embodied in the nucleic acid. The information is not 'made' by human action, was naturally occurring and not a 'manner of manufacture'.

Today's decision has implications for parts of the Australian biotech industry.

Allens Partner Dr Trevor Davies discussed with Boardroom Media why the High Court overturned the decision and what it means for the biotech industry.

You can listen to the interview at the Allens website.

We will publish a detailed post on the decision tomorrow on Scintilla.

Tuesday, October 6, 2015

TPP – agreement finally reached!

by Claire McMahon, Associate

For those of you who have been holding your breath, it has been confirmed – trade ministers from the twelve parties to the Trans Pacific Partnership (TPP) reached agreement yesterday, after extensive negotiations which continued over the weekend. The Australian Government has provided a summary of the final TPP market access outcomes here.

Data protection periods for biologic drugs has been one of the major outstanding hurdles for negotiators over the past several months. The United States had been seeking an eight-year data-exclusivity period, having retreated from 12 years after intense opposition from the other parties. Other parties, most notably Australia, have stood firm on a five-year data protection period, as is our existing law.

Thursday, October 1, 2015

The Saga Continues, per se

by Nick Li, Lawyer

Last week, in yet another episode in the battle in the Alphapharm v Lundbeck case, the Full Court of the Federal Court of Australia unanimously upheld the decision to grant an extension to the term of Lundbeck's escitalopram patent. In ambitious arguments that sought to side step the many earlier decisions, Alphapharm (on behalf of a number of generic companies) mounted an offensive on whether the escitalopram enantiomer as claimed in the patent qualified as a pharmaceutical substance per se under section 70(2)(a) of the Patents Act 1990 (Cth). This was a brave approach, as it effectively challenged the findings of an earlier Full Court in relation to the same patent.

The crux of the case was whether escitalopram, as claimed, was a pharmaceutical substance per se – as required for Lundbeck to obtain an extension of term for its patent – or whether the claim was escitalopram with an additional requirement as to purity.

In short, and unsurprisingly, the court declined to disagree with itself but rather disagreed with Alphapharm (again).