DCC Insights (Issue 19) showcases the latest IP and legal articles, industry updates, and DCC news and events.
DCC and DCCL announce sixteen promotions for 2023
Davies Collison Cave (DCC) and Davies Collison Cave Law (DCCL) are delighted to announce the promotion of sixteen individuals across our Law firm and our Patent and Trade Mark Attorney firm, which took effect on 1 July 2023. We extend our congratulations to all sixteen individuals on this significant milestone in their career. Find a full list of the promotions here.
Patenting computer-implemented inventions in Australia after Aristocrat
The Federal Court of Australia recently issued two decisions demonstrating a pragmatic approach to obtaining patent protection for computer-implemented inventions in Australia following the High Court's split 3-3 Aristocrat decision. These decisions show that patenting computer-implemented inventions is possible where the inventions provide an improvement in computer technology, or result in a concrete, tangible, physical, or observable effect. Read more here.
ToolGen Incorporated v Fisher (No 2) – Lessons in entitlement to priority from the Australian Federal Court
The Federal Court has upheld an opposition decision by the Australian Patent Office that a patent application owned by ToolGen Incorporated is not entitled to its earliest priority date because the claimed invention was not sufficiently disclosed in the earliest filed application and therefore lacked novelty. The decision provides useful guidance on the disclosure requirements to establish entitlement to priority in Australia. Read more here.
Who knew? Australian Government's claim to recoup PBS losses unsuccessful on appeal
The Full Federal Court recently upheld a first instance decision that the Commonwealth is not entitled to compensation pursuant to the "usual undertaking" as to damages given by Sanofi in exchange for an interlocutory injunction restraining Apotex from launching generic clopidogrel products in 2007. This decision is the first time the Full Court has considered a claim by the Commonwealth for compensation pursuant to such an undertaking and provides useful guidance in relation to evidence of hypothetical or "counterfactual" inquiries. Read more here.
TCT v Polaris: It all Hinges on Sufficiency and Support
A recent Federal Court decision has provided an interesting exploration of the requirements for sufficiency and support in Australia, including the requirement for sufficiency in earlier filed patent applications in order to validly claim priority. Ultimately, the Court found that the patents, which related to soft closing hinges, were not entitled to the claimed priority date, lacked internal sufficiency and support, and lacked novelty in view of the patentee's earlier product sales. The patentee was also found to have made unjustified threats against an alleged infringer. Read more here.
2023 Budget – Laying the Green Brick Road to Net Zero
The recently issued 2023 Federal Budget includes significant financial incentives for science and industry in Australia, especially for the green and renewable energy sectors, with the Government committing a further $4 billion in support of Australia's plan to become a renewable energy superpower. For more details about the Government's other initiatives, including the Industry Growth Program and Hydrogen Headstart, read more here.
Invalidation case shows "Bad Faith" is alive and well in New Zealand
A recent IPONZ invalidation decision provides a useful summary of how "bad faith" is assessed in New Zealand trade mark proceedings. In finding that Canzac had acted in bad faith by applying for the MEGASLAB trade mark to try to leverage a relationship with S3 Concrete in new Zealand, the decision demonstrates some of the risks associated with applying to register a third party brand in New Zealand. Read more here.
Opposition against registration of MANUKA HONEY succeeds in New Zealand
IPONZ recently upheld an opposition to the registration of MANUKA HONEY as a certification trade mark in New Zealand, a move that is consistent with similar decisions in the United Kingdom, Europe and Australia. IPONZ held that MANUKA HONEY is not distinctive, giving respectful and considered weight to the Taonga (treasured) status of the word Mānuka, with due consideration given to the protection of te reo Māori kupu and Māori intellectual property rights. Read more here.
Funding for IP Dispute Mediation in Singapore
A new ASEAN Mediation Programme (AMP) will provide up to SG$8,000 in funding to ASEAN nationals and entities for IP dispute mediation, with the goal of arriving at mutually beneficial outcomes that will maintain amicable business relationships. The AMP, a joint initiative between the Singapore office of WIPO's Arbitration and Mediation Centre and the Intellectual Property Office of Singapore, will run from 3 July to 31 December 2023. Read more here.
Patent Prosecution Highway Program between MyIPO and USPTO
The Patent Prosecution Highway (PPH) pilot program between the USPTO and the Intellectual Property Corporation of Malaysia (MyIPO) commenced on 2 March 2023, and will run for a period of three years. The pilot program will allow Malaysian patent applicants that fulfil the requirements can now seek accelerated examination of their patent applications based on the allowed claims of a corresponding US application. Read more here.
DCC News & Events
DCC and Elizabeth Godfrey recognised at Managing IP Asia Pacific Awards
Managing IP (MIP) Asia Pacific Awards recognised DCC as Trade Mark (Patent and Trade Mark) Attorney Firm) of the Year for Australia. Additionally, Trade Marks Managing Principal, Elizabeth Godfrey, was honoured with the prestigious Trade Mark Practitioner of the Year (Patent & Trade Mark Attorney Firms) Award for Australia. Read more here.
DCC ranked gold again by IAM Patent 1000 2023
DCC and DCCL have again been recognised by IAM Patent 1000 in Australia, New Zealand, Singapore, Hong Kong and Malaysia. The firm was recognised as Gold tier for Patent Prosecution, Silver tier for Patent Litigation and Recommended for Transactions in Australia, and 17 members of our team were individually recognised. Read more here.
11 DCC IP Practitioners recognised as WIPR Leaders for 2023
Eleven of our IP practitioners have been recognised as WIPR Leaders for 2023. Read the full list of recognised individuals here.
DCC recognised by IP Stars across Australia, Singapore and Malaysia
Twelve member of our team were recognised as IP Stars in the 2023 edition of Managing Intellectual Property (MIP). DCC has also been ranked by MIP as Tier 1 for patent disputes, patent prosecution and trade marks (patent and trade mark attorney firms) in Australia, and has also been recognised in Singapore and Malaysia. Read more here.
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