Posts Tagged ‘IP’

Securities over IP

Thursday, January 23rd, 2014

IP Australia has published a reminder:

The transitional period to register any securities (charges, mortgages etc.) you may have taken out over IP ( registered trade marks, patents, designs etc.) on the Personal Property Securities Register expires on 31 January 2014.

The Personal Properties Security Register is a national register of claims to security interests over personal property (which includes our imaginary subject matters) in essence to provide a one stop shop for notice about such claims.

If you (or your client) has taken out a security over someone else’ intellectual property or where the other person’s intellectual property is being used as collateral for repayment, the security should be registered on the Personal Property Securities Register. In very broad terms: if the security isn’t registered in the Personal Property Securities Register, its claim to priority over any later security or even enforceability could be lost.

IP Australia’s warning points out that it is not enough to have registered the security interest in a register of IP such as the Trade Marks Register, the Patents Register, the Register of Designs or the Register of PBR. These registrations will not be transferred automatically to the Personal Property Securities Register. Morever, registration of the security interest on one or more of those IP Registers will not take priority over a later registration on the Personal Property Securities Register.

So, if you or your client have taken out such a security and haven’t registered it in the Personal Property Securities Register yet, ‘hurry, hurry, hurry; quick, quick, quick’ (with apologies to Alexis Jordan).

Although IP Australia’s warning relates specifically to the registered IP it administers, the legislation also applies to unregistered IP such as copyright.

IP Australia’s media release.

IP Australia’s general overview of PPS

PPS R.

Re-thinking the role of IP: Francis Gurry lecture

Thursday, August 29th, 2013

Last week, the 5th Francis Gurry Lecture at the University of Melbourne was given by Dr Francis Gurry, the Director-General of WIPO (and so the highest ranking Australian official in UN organisations), himself. The topic “Re-thinking the Role of IP’.

Dr Gurry’s central theme was that the context in which intellectual property operates has changed so much that the way in which we think about IP and its role in society needs to be reconsidered.

One of the key changes Dr Gurry identified was the economic shift from wealth derived from tangibles to wealth generation deriving from intangibles. As one indicator of this, Dr Gurry pointed out that US industries in the IP field accounted for some 35% of its GDP. Another indicator showed that in 1978 95% of the value of the Standard & Poors 500 came from tangible assets, down to 20% in 2010.

The second key change Dr Gurry identified was the economic shift from the West to the East. China is now the second largest investor in R & D in absolute terms in the world. Japan the third.

The third key change identified was the empowerment of non-state actors. One illustration of this was the Day the Internet went Dark. More than 115,000 websites closed or limited access. More than 2.4 million anti-SOPA tweets were generated. One of my favourite images (lid dip Marty Schwimmer was the impact on the US Congress:

sopa-pipa-one-day

We are seeing a little bit of that here.

Of course, the Department of Homeland Security, or the FBI, also flexed its muscles.

Among the many consequences arising from these changes:

  • much greater focus on IP and much greater intensity – Smartphone wars anyone, industrial espionage
  • much greater attention to what IP rights are granted for and focus mediating what is acceptable to the general public

Although not an example used by Dr Gurry, we have seen that here too. Dr Gurry did point out, however, an apparent paradox:

No one minds, it seems, someone making billions out of new social networking or media technology, but there is widespread social unease at someone making billions out of a new life-saving drug. Which outcome do we want to achieve in the innovation system?

Dr Gurry went on to explain that this changes in turn raised many questions for entitlement, appropriability and policy-making. Dr Gurry’s presentation in written form can be found here (pdf). Definitely repays reading. Lid dip @MsSamMcHugh

 

Update: A video of the lecture and the paper itself can now be found here.

Australian blawgs

Friday, July 26th, 2013

Separovic Injury Lawyers in Perth have compiled an interesring list of Australian legal blogs.

Law Geek DownUnder provides useful summaries about the issues in upcoming High Court cases and, when they’re handed down, what they decided.

In the past Stephen Warne has explained why all lawyers should have top up professional indemnity insurance (although apparently it does not help solicitors quite as much as it should(?)).

I shall have to check out the others.

Head on over here to see if there are any that might interest you.

In the IP field, I know of at least one other blog covering mainly patents.

Arbitrating IP disputes in Australia

Thursday, November 17th, 2011

Last year, IPwars reported on Hammerschlag J’s ruling that arbitrators under the Commercial Arbitration Acts 1984 (here and here (repealed and replaced by a 2010 Act)e.g.) can settle disputes about (1) the ownership of improvements under a technology licence agreement and (2) the licence fees payable if the technology be exploited in various ways in the future.

The arbitrator has now made an award finding that the patents owned by Lloyd or its subsidiary Solfast, the Solfast and Asura patents, were improvements covered by the licence and so should be assigned to Larkden.

Larkden has secured from Hammerschlag J orders enforcing that award and so requiring Lloyd to transfer ownership to Larkden.

Section 35 of the Commercial Arbitration Act 2010 (NSW) provides that an arbitrator’s award must be recognised and is enforceable subject to the formal requirements of s 35 and substantive grounds in s 36. The substantive grounds are:

Grounds for refusing recognition or enforcement

(1)Recognition or enforcement of an arbitral award, irrespective of the State or Territory in which it was made, may be refused only:

(a)at the request of the party against whom it is invoked, if that party furnishes to the Court proof that:

(i)a party to the arbitration agreement was under some incapacity, or the arbitration agreement is not valid under the law to which the parties have subjected it or, failing any indication in it, under the law of the State or Territory where the award was made, or

(ii)the party against whom the award is invoked was not given proper notice of the appointment of an arbitrator or of the arbitral proceedings or was otherwise unable to present the party’s case, or

(iii)the award deals with a dispute not contemplated by or not falling within the terms of the submission to arbitration, or it contains decisions on matters beyond the scope of the submission to arbitration, provided that, if the decisions on matters submitted to arbitration can be separated from those not so submitted, that part of the award which contains decisions on matters submitted to arbitration may be recognised and enforced, or

(iv)the composition of the arbitral tribunal or the arbitral procedure was not in accordance with the agreement of the parties or, failing such agreement, was not in accordance with the law of the State or Territory where the arbitration took place, or

(v)the award has not yet become binding on the parties or has been set aside or suspended by a court of the State or Territory in which, or under the law of which, that award was made, or

(b)if the Court finds that:

(i)the subject-matter of the dispute is not capable of settlement by arbitration under the law of this State, or

(ii)the recognition or enforcement of the award would be contrary to the public policy of this State.

Lloyd argued that the award in relation to the Solfast patents fell foul of s 36(1)(a)(iii) because the shares in Solfast, originally owned by Lloyd, had been transferred to GENV. Hammerschlag J found this was untenable: the transfer of shares in Solfast was void and set aside under s 267(1) of the Corporations Act. In addition, although developed by Solfast, the Solfast patents were improvements within the meaning of the licence because Lloyd had developed the patents through the medium of Solfast.

Lloyd’s second argument was predicated on s 36(1)(b)(ii) contending that some of the orders in the award were too vague and uncertain to be enforceable. This allegation included the order that Lloyd take all necessary steps to ensure that [Lardken]‘s interests in the prosecution of the Assigned Patent Applications are protected and secured.

Hammerschlag J rejected this ground too. The orders were not vague and uncertain. Further, his Honour doubted they would offend public policy as not sufficiently concerning “the State’s basic notions of morality and justice”.

Larkden Pty Limited -v- Lloyd Energy Systems Pty Limited [2011] NSWSC 1331

The arbitrator.

The Fortnightly Review (of IP and Media Law)

Tuesday, June 1st, 2010

Professors Megan Richardson and Andrew Kenyon and Vicki Huang edit a new online publication “The Fortnightly Review of IP and Media Law”.

So far, it is up to issue #7 and features, amongst other things, a good debate in which Ass Prof. David Brennan responds to Dr Cannold and Prof Palumbi’s opinion piece in the Age on Gene Patenting. Dr Cannold and Prof Palumbi get to reply.

Check it out here (and sign up).

Recent microblog (twitter) posts

Saturday, August 15th, 2009

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.

  • RT @priorsmart: RT @ernestgrumbles Is the Fed. Circuit pro-patent? Maybe Not http://bit.ly/Kd9gR (empirical study of decisions)
  • RT @dhowell: RT @entlawupdate How the RealDVD ruling could reshape copyright law http://bit.ly/2sud8B
  • RT @dhowell: Kaleidescape loses; DVD copying falls again (@sandocnet; h/t @HScottLeviant) http://ff.im/-6wPw7
  • RT @DuetsBlog: Branding strategy To Google or Not to Google http://ow.ly/jGvG
  • Working up a theme here? RT @asilverstein: The risks of modernizing a trademark http://bit.ly/h3FkN
  • Patently-O analyses Bilski’s Patent Application http://ff.im/-6tlCF
  • Patry is back: Moral Panics and the Copyright Wars: Are There Any Lessons in the P2P Trials? http://ff.im/-6rp7B
  • AmeriKat looks at the briefs in the Catcher in the Rye appeal http://ff.im/-6roVs
  • RT @priorsmart: RT @ernestgrumbles Is the Fed. Circuit pro-patent? Maybe Not http://bit.ly/Kd9gR (empirical study of decisions)

Let me know if you think this is a worthwhile exercise or not.

If you’re a twitterer, you can find me at @wrothnie

Bushfires and IP Australia

Monday, March 30th, 2009

IP Australia has a policy if you have missed, or are about to miss, a deadline because of The Bushfires.

(Un)Official Notice – at the time of writing (it may be fixed by the time you’re reading) the link to the Official Notices doesn’t take you to anything specific.

Crown use

Sunday, March 29th, 2009

No, it’s not the long awaited response to the CLRC’s report; instead, IP Australia and the Attorney-General’s Department have published an information sheet about Crown Use of intellectual property (in Australia).

As you will already know all about this, it could be a useful starter for your clients.

Read the glossy (pdf) here.

Landmarks in Australian IP

Monday, March 16th, 2009

Dr Emmerson QC (who surely needs no introduction) is going to launch the new book edited by Andrew Kenyon, Megan Richardson and Sam Ricketson – all professors well known to you on 25 March 2009.

Chapters include:

  1. Potter v Broken Hill: misuse of precedent in cross-border IP litigation by Richard Garnett;
  2. The Union Label case: an early Australian IP story by Sam Ricketson; 
  3. RPM for RPM: National Phonograph Company of Australia v Menck by (Hon.) Peter Heerey and Nicole Malone; 
  4. Horses and the law: the enduring legacy of Victoria Park Racing by Jill McKeough; 
  5. We have never been modern: the High Court’s decision in National Research Development Corporation v Commissioner of Patents by Stephen Hubicki and Brad Sherman; 
  6. Of vice-chancellors and authors: UNSW v Moorhouse by Sam Ricketson and David Catterns; 
  7. Foster v Mountford: cultural confidentiality in a changing Australia Christoph Antons; 
  8. Cadbury Schweppes v Pub Squash: what is all the fizz about? by Mark Davison; 
  9. The Firmagroup case: trigger for designs law reform by Janice Luck; 
  10. Larger than life in the Australian cinema: Pacific Dunlop v Hogan by Megan Richardson; 
  11. O Fortuna! On the vagaries of litigation and the story of musical debasement in Australia by Elizabeth Adeney; 
  12. The protection of At the Waterhole by John Bulun Bulun: Aboriginal art and the recognition of private and communal rights by Colin Golvan; 
  13. The grapes of wrath: geographical indications, international trade and the Coonawarra case by Matthew Rimmer; 
  14. Waiting for the ‘Billy’® to boil: the Waltzing Matilda case by Leanne Wiseman and Matthew Hall; 
  15. The Panel case by Melissa de Zwart.

and what IP nerd could ask for more to read as the dark cold nights of winter peek over the horizon?

Details of the launch here.

IP mapping?

Thursday, March 12th, 2009

So I’m watching a clever YouTube which Josh Gans points out has been annoyingly marred by a running stream of “subscript” advertisements.

On of the ads is for IP Mapping which seems like a clever description of patent searching. No doubt, I’m being a bit perfunctory here. Anyone know what I’m missing?