Sydney, 10 April 2012: The settlement of a
long-running patent infringement dispute between Australian
software company Uniloc and global software giant Microsoft
Corporation highlights the value of getting the right advice
upfront on the best way to protect potentially valuable
intellectual property – or risk having limited legal
recourse against future infringers, according to Clayton Utz
Jim, who is the national head of Clayton Utz's Corporate
Technology and IP team, appeared on ABC TV's
Australian Story program last night as part of a profile
on Australian inventor Ric Richardson, the founder of computer
security and copy protection software protection company, Uniloc
Uniloc recently reached a landmark settlement with Microsoft to
end a long-running dispute concerning Uniloc's ownership of a
patent for an innovative 'try and buy' software
registration system to deter illegal copying, which Ric Richardson
In 1992, Jim advised Ric to apply for a patent in Uniloc's
name to protect the company's intellectual property rights in
the technology. The Uniloc patent was one of the first to be
granted in Australia for an invention that was purely software
(patents for the technology were subsequently granted in the US).
Jim also represented Ric in his negotiations to licence the rights
granted under the patent.
In 2003, Uniloc commenced proceedings against Microsoft claiming
infringement of Uniloc's patent. In 2009, a US court ordered
Microsoft to pay US $388 million in compensation (then US$530
million) to Uniloc – one of the highest awards in US
patent history. Although the verdict was very surprisingly
overturned five months later by the trial judge, an appeals court
last year upheld the original jury's decision on liability but
required a re-hearing on the question of damages. With a trial
about to get underway before a federal jury in Providence, Rhode
Island, to determine how much Microsoft should pay for infringing
the Uniloc patent, the parties announced on 7 March that they had
settled the matter.
Jim said the outcome for Uniloc, while hard-won, demonstrated
the value of having the backing of a patent in circumstances where
the creator of a novel or innovative system, technology or product
was required to prove they owned the rights to stop others
exploiting their intellectual property. "In my experience,
companies tend to regard the patent system as expensive. However,
the money Uniloc has spent on obtaining and maintaining its US
patents had been minimal compared to the commercial resolution it
has achieved," said Jim.
"Interestingly, the media have recently reported on a
number of patent infringement suits that have been commenced, such
as that brought by Yahoo against Facebook (in California, alleging
infringement of a number of Yahoo patents) and Florida-based
PanoMap against Apple and Google (alleging infringement of a patent
around the Street View feature within Google Maps).
"The Uniloc case serves as a reminder that a patent system
can indeed be a very powerful ally in any IP protection structure,
and that the protection delivered by the patent system can well
justify the cost."
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
Persons listed may not be admitted in all states and
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).