Region: Australia

Judging the distinctiveness of designs: the standard of the informed user

In determining whether one design is substantially similar to another in overall impression, the Designs Act 2003 requires an assessment made through the eyes of a person who is familiar with the product to which the design relates. Although this ‘informed user’ standard has yet to be applied by the courts, it has been applied in a number of recent decisions issued by the Australian Designs Office.

16 July 2008

Patenting information technologies, computer software and business methods

As a result of the increasing economic importance of technology, the number of computer software and business method patents filed and granted has increased significantly in recent years. While trends among Australian and foreign applicants are similar, research shows that foreign entities are major users of the Australian patent system in the IT sector.

02 July 2008

IP ownership in the academic sector: a new perspective

A recent decision of the Federal Court that the University of Western Australia had no claim to certain intellectual property created by Professor Bruce Gray has provoked heated debate over the ownership of patents in the university and research community. The case raises many important issues for commercialisation in the academic sector.

18 June 2008

Why patent professionals should take a second look at re-examination

The Australian patent profession appears reluctant to use re-examination as an alternative to seeking revocation before the courts. While there are some disadvantages, re-examination is cheaper and faster than revocation proceeding, and can be an effective strategic tool where a patent of dubious validity affects business activities in the Australian market.

23 April 2008

Patent Prosecution Highway gets on the road in Australia

IP Australia and the US Patent and Trademark Office have announced the launch of a new trial cooperation initiative in line with the existing Patent Prosecution Highway. It is hoped that this pilot programme will significantly reduce pendency times and help to raise the efficiency and quality of patent examination in both the United States and Australia.

16 April 2008

Government looks to the future with innovation review

The government has launched a consultation for its <i>Review of the National Innovation System</i>, which is designed to identify drivers for innovation and help to optimise the innovation process in Australia. Although directed at the broader public benefits of innovation, many aspects of the review will resonate with practitioners of intellectual asset management.

02 April 2008

Tax office targets multinationals over IP rights transfers

The Australian Taxation Office is considering new rules for brand names, trademarks, copyright and licences to deter multinational companies from transferring billions of dollars in IP rights overseas. The news follows analysis suggesting that several big multinationals have been transferring large amounts of IP rights to overseas parent companies.

30 January 2008

Challenging an Australian patent

There are a number of options available to challenge an Australian patent depending on what stage of the examination/grant process the patent has reached. Some commentators have suggested that, as opposition procedures are becoming considerably more rigorous, it may be preferable to seek revocation in the courts.

16 January 2008

IP Australia raises the bar for validity of Australian patents

The Australian Patents Regulations 1991 have been amended so that patent applicants are no longer required to disclose the results of documentary searches carried out by foreign patent offices for corresponding applications. Instead, IP Australia will use online searches to fulfil its mantra of “one search, one examination” as its vision of the future.

05 December 2007

Patent application changes could force companies to rethink strategy

Consultations are underway between the Australian patent office and interested parties on a number of proposals that would drastically curtail the existing divisional application regime. However, there are fears that reforming this practice could have dire financial consequences for small and medium-sized enterprises.

21 November 2007

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