May 2009

Copyright infringement and Twitter

Copyright infringement and Twitter Read More »

Working a patent for regulatory approvals

Patently-O considers a new Federal Circuit case in the USA dealing with the scope of s 271(e)(1) – a defence to infringement by working the patent to prepare regulatory data.

It would appear that the defence should now apply in proceedings against imports before the ITC.

Patents Act 1990 (Cth) s 119A (introduced with effect from 25 October 2006 following ACIP’s report) permits such activity where the working:

  • is for purposes of having a therapeutic pharmaceutical product included in the Australian Register of Therapeutic Goods;
  • or a similar foreign regulatory approval.

Although working for a foreign regulatory approval may take place only in the supplementary protection period (see e.g. ACIP on experimental use p. 44 (pdf)).

See now Alphapharm Pty Ltd v H Lundbeck A/S [2008] FCA 559 at [643]ff.

IP Australia is considering extending this: see paragraphs 9 and 17 of IP Australia’s Consultation Paper on experimental use (pdf) [NOTE: submissions should be in by 8 May 2009. Submissions on the Getting the Balance Right paper (pdf) are also due by then.]

WIPO’s Standing Committee on Patents has a study paper on exceptions and limitations as an area of increased focus.

Working a patent for regulatory approvals Read More »

Patents, pharmaceuticals and exports

I’m not quite sure why, but the blogosphere is increasingly chattering again about relaxing the rules against infringing a patent by making the protected product (esp. a pharmaceutical) for export:

IP’s What’s Up reviews the TRIPS status including the DOHA declaration and its rather tentative take up.

Patents, pharmaceuticals and exports Read More »

New Federal courts structure

The (Cth) Attorney-General has announced (pdf) that the Federal Magistrates Court will be merged into the Family Law and Federal Courts.

So far as IP generally goes, according to the media release:

The Federal Court will be the single court dealing with all general federal law matters:

The restructured Federal Court will have two tiers;

Appeals and other complex work will generally be heard in the first tier, with shorter, less complex matters redirected to the second tier;

Existing judges of the Federal Court will operate in the first tier;

Federal Magistrates will operate in the second tier;

Upper and lower level Fair Work Divisions, which will hear matters under the Government’s new workplace relations system, will be maintained and provide a one stop shop for employers and employees;

Federal Magistrates appointed to the Federal Court will have expertise in general federal law matters and will continue to be named ‘magistrates’.

Apparently, it is envisaged that the new arrangements will save the Government $7.8million over 4 years. Some of that will be reinvested to improve individuals’ access to the courts.

Access the Report on Future Governance of Federal Family Courts in Australia Report – November 2008 underlying the announcement here (pdf). Consultation paper on the Report here (pdf). Links to the submissions etc. here.

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IPRIA and gene patents

IPRIA and gene patents Read More »

Dough Vo = no go

Arnott’s complained (e.g. here and here) that Krispy Kreme’s new dooughnut, the Dough Vo, infringed its trade mark for the Iced Vo Vo

You probably had those marshmallow and jam concoctions inflicted on you as a kid. But the trade mark, No 864, which is just for VO VO has been registered since 1906 for biscuits.

Krispy Kreme was reported in the press as saying it wasn’t going to back down – on legal advice, no less –

Arnott’s gave the Australian arm of the doughnut chain until 5pm (AEST) on Friday (April 24) to stop using the name and to undertake not to use similar names in the future.

However, Krispy Kreme Australia CEO John McGuigan said after taking legal advice, the company had decided to continue selling the Iced Dough-Vo.

Next thing we know, however, the headlines read “Dough-Vo bows to Vo-Vo” and “Krispy Kreme backs down on Vo-Vo boo-boo“.

One interesting question for trade mark students: to what extent can you look at what the Dough-Vo looks like when considering the trade mark infringement question? In this case, you probably get rather more latitude because the infringement would arise under s 120(2).

Another thing to worry about. How often do you see (or write in your letters):

we have taken legal advice and our advice is that it is not the case (that trademark was breached)

Has Mr Krispy Kreme just waived privilege in his legal advice?  Have a look e.g. at Bennett v Chief Executive Officer of the Australian Customs Service [2004] FCAFC 237 esp. at [4], [10] and [32].

Lid dip: James McDougall for word of Krispy Kreme’s retreat.

Dough Vo = no go Read More »

Dancing on the ceiling

Dancing on the ceiling Read More »