IP Australia has issued a second consultation paper – with draft drafting instructions:
As with the first round of the second round, comments are required by 12 Feb 2010.
The new paper and drafting instructions can be found here (pdf).
Links to all the papers, pdf and word, via here.
The Australian Life Scientist has an article on the top 10 mistakes made in setting up and running the clinical trials for TGA and FDA legal and regulatory approvals:
Special feature: Top 10 clinical trial mistakes
by James Cameron of McCullough Robertson.
Lid dip: Kim O’Connell at Mallesons.
IP Australia has published a second round of consultation paper (pdf) on its proposals for reform of intellectual property laws and procedures in Australia.
Topics covered include:
Submissions are due by 12 February 2010.
In a move definitely to be encouraged, the proposed drafting instructions have also been published (pdf) for comment.
(Links to the “Word” version as well as the pdf version and the previous round of consultation papers via here.)
Some further papers will be published soon on:
Prof. Ann Monotti and other experts will be talking about what University of Western Australia v Gray means for Universities in
Details and registration here.
Judge Hiroki Morishita will be providing an Introduction to the High Court of Intellectual Property in Japan on 9 November in Melbourne. Details and registration here.
And, if you’ve recovered from Oaks Day, you could find out what difference a patent makes in Melbourne on 6 November.
The Full Federal Court (Finn, Sundberg and Edmonds JJ) has clarified how FCR O62 r 36A operates in IP infringement cases.
FCR O62 r36A provides that the costs of a successful applicant which obtains an order for damages less than $100,000 will be reduced by one third, unless the Court otherwise orders.
Nokia had sued Liu for trade mark infringement arising from a customs seizure. The proceedings settled by consent, with injunctions and delivery up. Nokia pursued damages, but obtained only nominal damages as it was unable to obtain discovery of importation in significant quantities. The trial judge refused to allow Nokia any costs of the damages inquiry.
The Full Federal Court has allowed an appeal, awarding Nokia its (taxed) costs up to the consent judgment and completion of discovery about damages; thereafter costs were at the reduced rate.
The Full Court considered that costs of the trial up to and including the consent orders should be at the usual taxed rate, without the 1/3 reduction because it was common in IP cases for trials to be split – a trial on liability and (if successful) an injunction and a subsequent trial about damages (or an account) and applicants were required to particularise only a single instance of infringement. The Full Court considered the remedy of injunction “indispensable”. It was also appropriate for the proceedings to be brought in one of the “prescribed courts”, customarily the Federal Court and it was not apparent that it would have been sensible for the matter to be referred down to the Federal Magistrates Court (unlike in copyright proceedings where the Federal Magistrates Court has direct jurisdiction).
Nokia was also entitled to costs of the damages inquiry at least until completion of discovery as it was legitimate and, until it had discovery, it could not have known of the futility. Once discovery was completed, it knew the risks it was running and, given the amount recovered, it was inappropriate to exercise the discretion not to limit the costs of that part of the proceeding by 1/3.
Nokia Corporation v Liu [2009] FCAFC 138
This week’s Victorian Reports publish a 2007 decision in which the Court of Appeal (Dodds-Streeton JA, Ashley and Cavanough JJA agreeing) exhaustively reviewed the relatively limited circumstances in which equitable damages will be awarded in place of an injunction.
Now, the Court of Appeal was dealing with a question of trespass to land but, having regard to the House of Lords’ remarks in Fisher v Brooker, may be worth bearing in mind in intellectual property cases as, generally, an IP owner seeks an injunction when their rights are being infringed.
[135] …. [The relevant authorities] uniformly uphold the established view that an injunction is the prima facie remedy for trespass and that the alternative remedy of damages will be ordered exceptionally, as indicated by the working rule in Shelfer or by such other relevant considerations as may apply in a particular case. The authorities do not dictate or authorise the balancing of potential detriment to the parties on the basis of equivalent entitlement, or indicate that trespass may be negatived by undertakings to minimise its potential effect on future use. The tests embodied in the working rule of Shelfer are cumulative, and assume a significant inequality of entitlement between the parties (as the injury to the plaintiff from the trespass must ordinarily be small and the harm occasioned by an injunction to the defendant must be so disproportionate as to constitute oppression). Oppression in that context imports consideration of, inter alia, specific detriment, including disproportionate harm to the defendant relative to injury to the plaintiff, the deliberate or unintended quality of the trespass and all other relevant circumstances.
[136] The authorities’ consistent recognition that damages in this context may properly be assessed by reference to the advantage or gain to the defendant where the injury to the plaintiff is small facilitates an award of damages where that is otherwise appropriate, but does not disturb the traditional primacy of injunctive relief. (my emphasis)
Her Honour had earlier quoted the good working rule in Shelfer which (in part) was:
In my opinion, it may be stated as a good working rule that —
(1) If the injury to the plaintiff’s legal rights is small,
(2) And is one which is capable of being estimated in money,
(3) And is one which can be adequately compensated by a small money payment,
(4) And the case is one in which it would be oppressive to the defendant to grant an injunction:
then damages in substitution for an injunction may be given.
Doods-Streeton JA did immediately point out how limited this all was:
[46] While the factors potentially relevant to the exercise of the discretion cannot be exhaustively stated, Shelfer, in my opinion, correctly accorded primary importance to identifying a small injury to the plaintiff, and disproportionate hardship constituting oppression, to the defendant.
[47] In determining whether a substitution of damages for in specie relief is just, the interests of the parties are not of broadly equivalent weight. It will not suffice that the hardship entailed to the defendant by an injunction marginally outweighs the relief that the plaintiff will obtain thereby. Rather, the courts have typically required a significantly disproportionate damage to the defendant, reflected in the criterion of oppression in the Shelfer working rule.
This might be another area where US law is different, following eBay v MercExchange.
Break Fast Investments Pty Ltd v PCH Melbourne Pty Ltd [2007] VSCA 311
Following in the footsteps of Marty Schwimmer and Dennis Kennedy, I shall try a weekly post aggregating selected IP “tweets”. If you’re keen on greater currency, my tweets also show up as they’re made in a side bar on the website.
Let me know if you think this is a worthwhile exercise or not.
If you’re a twitterer, you can find me at @wrothnie
Howard extracts from, and links to, Pope Benedict VI’s Encyclical on Social Issues which includes some pronouncements on intellectual property: via here.
Francis Gurry, the newly appointed Director General of WIPO will be speaking in Melbourne on 3 August 2009:
Intellectual Property, Innovation and Creativity – Future Global Directions
Registration is free, but bookings essential.
More details here (pdf).
