2009

Working a patent for regulatory approvals

Leave a Comment / Patents, Trade / / / , , , ,

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

Leave a Comment / Patents, Trade / / / , , ,

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

Leave a Comment / Enforcement, IP generally / / / , ,

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.

New Federal courts structure Read More »

IPRIA and gene patents

2 Comments / Patents / / / , , ,

Kwanghiu Lim has posted a link to some video podcasts from IPRIA’s seminar on gene patenting here.

IPRIA and gene patents Read More »

Dough Vo = no go

Leave a Comment / Enforcement, Trade marks / / / , , ,

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

Leave a Comment / Because I felt like it, Copyright / / /

Forty years ago today, Minister Bowen’s Act came into play.

It’s not often you wake up to the 40th birthday of the Copyright Act 1968 which came into force on 1 May 1969. From Note 1: see “Gazette 1969, p. 2543”.

With apologies to some Sergeants.

More dancing on the ceiling here.

Dancing on the ceiling Read More »

Blacklisted!

2 Comments / Because I felt like it / /

I’m having a little bit of a problem accessing IPwars from Chambers at the moment.

It would appear in their wisdom the administrators of vicbar.com.au have blocked access to it! Pity about all the nightlife enhancement and/or Kenyan investment opportunities their spam filter sends to me.

Oh well. I’ve been cybersquatted so I guess I shouldn’t complain about yet another part of the full cyberspace experience.

My apologies.

It’s also affecting my email accounts, so you should ensure you use my vicbar email available from Vicbar’s website here (if you don’t already have it).

Blacklisted! Read More »

Assigning copyright and material breach reversions

Leave a Comment / Copyright / / / , ,

The author’s of “songs” assigned their respective copyrights to Rive Droite with the latter having an obligation to pay royalties. The assignments included a clause providing that, if Rive Droite remained in material breach for x days after notice, the copyright reverted to the assignor. There was also one of those nice clauses that defined the assignee to include its successors and assigns.

Rive Droite assigned the copyright to Crosstown.

Disputes arose, however, about non-payment of royalties by Rive Droite.

The author assignors gave notice of material breach and Mann J (in the Chancery Division) upheld the automatic reversion of the copyright to them.

Crosstown Music Company v Rive Droite Music Ltd and others [2009] EWHC 600 (Ch) – lid dip IPKat who notes the impact of the reversion clause on the separate and independent national copyrights.

Assigning copyright and material breach reversions Read More »

Google’s sale of keywords could be trade mark use

Leave a Comment / Domain names, Enforcement, Internet, Trade marks / / / , , ,

Well, strictly speaking, the 2nd Circuit in the USA has held that Google’s sale of keywords may be use in commerce.

Rescuecom had sued Google for trademark infringement by selling advertisements (sponsored links) triggered by Rescuecom’s trademark. The District Court had dismissed the claim on the grounds that Google’s conduct was not use in commerce. So now it goes back to the District Court.

Of course, Google’s conduct, if were done in Australia or transacted with a business located in Australia, would be in trade or commerce for the purposes of the Trade Practices Act. In context, however, the nearest analogue under our law is whether or not the conduct might be “use as a trade mark” (in the sense of using the sign in the course of trade) for the purposes of s 120 of the Trade Marks Act.

Professor Goldman considers the ramifications under US law (and the distinguishing of WhenU) here.

Google’s sale of keywords could be trade mark use Read More »

ACTA

Leave a Comment / Enforcement, Trade / / / , ,

The USTR has released a 6 page (pdf) outline of issues being dealt with under the proposed ACTA.

Link via Intellectual Property Watch.

The IP Dragon has links to a 48 page document with rather more information.

More tea leaf sifting here.

ACTA Read More »

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