Freehills Patent Attorneys

101 Collins Street
Melbourne, Victoria 3000, Australia

Contact: Tom Gumley, Business Services Coordinator

  • 61-3-9288-1479

Woodside Energy Limited v Exxon-Mobil Upstream Research Company [2014] APO 53

This decision highlights the importance of drafting any claims to a “method of design” with the tests for manner of manufacture firmly in mind. There is no reason that a claim to a method of design should not be patentable…more

Energy, Exxon Mobil, Oil & Gas, Patent Infringement, Patent Litigation

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Oxycodone Alleviates Pain - And Weakens The Spirit

Spirit Pharmaceuticals Pty Ltd v Mundipharma Pty Ltd [2013] FCA 658 - This recent decision by the Federal Court confirms that patents claiming new pharmaceutical formulations of known active agents may be eligible for an…more

Australia, Australian Patent Office, OxyContin, Patents, Pharmaceutical

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More Than Just A Passing Interest: Ensuring Your Rights Are Secured Under The PPSA

If you are a holder of a security interest in personal property (including patents) you will need to record the interest on the Personal Properties Security Register (PPSR) before 31 January 2014, otherwise you may lose the…more

Australia, PPSA

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Prior claiming in Australia…has news of its demise been greatly exaggerated? Is prior claiming still applicable to the remaining 1952 Act pharmaceutical patents?

Prior claiming was a ground of invalidity under the Patents Act 1952 (1952 Act). It prevented grant of a patent claiming subject matter already claimed by another patent. Prior claiming was superseded by the broader concept of…more

Australia, Australian Patent Office, Patents, Pharmaceutical, Pharmaceutical Patents

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Warning: Unsolicited Requests For Payment Of Fees

Owners of patent or design applications or registrations should be aware that there are bogus operators in existence who take the published details of such applications to send out invoices for unnecessary publications or…more

Design Patent, Fees, Fraud, Patent Applications, Patents

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Update - Protecting Plant Varieties In Australia And New Zealand

Recently we provided a summary of key elements of protecting plant varieties in Australia and New Zealand. In this summary we highlighted that plant breeders could seek dual protection under both Patents and Plant Breeder’s…more

Australia, New Zealand, Patent-Eligible Subject Matter, Patents

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Woodside Energy Limited v Exxon-Mobil Upstream Research Company [2014] APO 53

This decision highlights the importance of drafting any claims to a “method of design” with the tests for manner of manufacture firmly in mind. There is no reason that a claim to a method of design should not be patentable…more

Energy, Exxon Mobil, Oil & Gas, Patent Infringement, Patent Litigation

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Bowman v Monsanto in an Australian context

Most will be aware by now of the recent US Supreme Court decision, Bowman v Monsanto Co.,569 US (2013). One question that remains is what would have been the outcome if like facts had arisen in Australia and were considered…more

Bowman v Monsanto, Genetically Engineered Seed, Monsanto, Patent Exhaustion, Patent Infringement

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You Can Wave Your Patent Around, Just Don’t Hold A Stick In Your Other Hand

Mizzi Family Holdings Pty Ltd v Morellini [2013] FCA 1435 - This federal court judgement provides a timely reminder to patent owners to be cautious of their actions, which may be deemed as a threat of infringement…more

Patent Infringement, Patent Litigation, Patent Notice, Patents

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Isolated Nucleic Acids are Patentable in Australia, Again

On Friday the Full Federal Court affirmed that isolated nucleic acids are patentable subject matter in Australia. While an appeal to the High Court of Australia may be possible, absent an appeal, isolated nucleic acids will…more

Australia, Genetic Materials, Patent-Eligible Subject Matter, Patents

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How and Why Your Team Is Everything (And Other Essentials for Startup Success...)

The multi-faceted answer to our question: over the years working with entrepreneurs and inventors, what have you seen as an essential attribute to startup success?…more

Legal Perspectives, Startups

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More Than Just A Passing Interest: Ensuring Your Rights Are Secured Under The PPSA

If you are a holder of a security interest in personal property (including patents) you will need to record the interest on the Personal Properties Security Register (PPSR) before 31 January 2014, otherwise you may lose the…more

Australia, PPSA

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Are TIME Magazine’s “25 Best Inventions Of The Year 2013” Patented And Does It Really Matter

Conventional wisdom tells us that great inventions and patent protection go hand in hand because that is one way that companies and inventors can recover and benefit from their investment in R&D, either by monetising their…more

Inventors, Manufacturers, Patent Applications, Patent-Eligible Subject Matter, Patents

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Isolated Nucleic Acids are Patentable in Australia, Again

On Friday the Full Federal Court affirmed that isolated nucleic acids are patentable subject matter in Australia. While an appeal to the High Court of Australia may be possible, absent an appeal, isolated nucleic acids will…more

Australia, Genetic Materials, Patent-Eligible Subject Matter, Patents

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Australia awaits Federal Court guidance on the patentability of computer-implemented inventions

Anyone with an interest in the patentability of computer-implemented inventions in Australia has been awaiting judgment in the appeal to the Research Affiliates LLC v Commissioner of Patents decision. Anticipation is that…more

Australia, CLS Bank v Alice Corp, Computer-Related Inventions, Patent-Eligible Subject Matter, Patents

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New Zealand Patent Oppositions – What Counts As Evidence In Reply?

I continue my series of articles on the topic of New Zealand Patent Oppositions. This article discusses the limited scope of evidence in reply and the pitfalls of exceeding that scope…more

New Zealand, Patent Oppositions, Patents

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Kit Or Caboodle? Recent Australian Opposition Decision Highlights The Inconsistency In Construction Of Kit Claims Between Australia And New Zealand

The recent Australian opposition decision of Merial Limited v Zoetis LLC [2013] APO 59 highlights the differences between the Australian and New Zealand patent offices in the construction of “kit” claims in relation to the same…more

Australia, Claim Construction, Farm Animals, New Zealand, Patent-Eligible Subject Matter

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Did You Miss Them? - Four Important Patent Cases In 2013

This article outlines the main findings in Apotex v Sanofi-Aventis, Cancer Voices Australia v Myriad Genetics, Research Affiliates and RPL Central each of which have important implications for patent law in Australia. …more

Australia, Myriad, Patent Litigation, Patents

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Australia awaits Federal Court guidance on the patentability of computer-implemented inventions

Anyone with an interest in the patentability of computer-implemented inventions in Australia has been awaiting judgment in the appeal to the Research Affiliates LLC v Commissioner of Patents decision. Anticipation is that…more

Australia, CLS Bank v Alice Corp, Computer-Related Inventions, Patent-Eligible Subject Matter, Patents

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Shaken, but still unstirred - Report recommends amendments to the Australian innovation patent system

The final report on the review of the innovation patent system by the Advisory Council on Intellectual Property (ACIP) has been published . ACIP was unable to recommend retention or abolition of the innovation patent system…more

ACIP, Australia, Patents

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Is Data Exclusivity “At Risk” In Australia As Compared To The US And Europe?

Data exclusivity is a term that refers to the period in which data supplied by the first applicant to register a pharmaceutical product cannot be used by a subsequent applicant to register an equivalent product. As this data…more

Australia, Patent Applications, Patents

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What Not To Say To The Australian Patent Office

If an applicant for a patent has misled the Commissioner in a material respect in the course of procedures which led to the grant of the patent, he should not have the benefit of his misleading conduct. It is clear that a…more

Australia, Patents

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Distilling An Agreement

Sometimes, despite the best intentions, a business venture will fail. In such circumstances, agreements relating to the ownership of business property will be duly scrutinised, and perhaps, challenged in court…more

Partnerships, Patent Ownership

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Patent Grace Periods In South East Asia

As South East Asia becomes an increasingly popular patent filing destination, we explore the region’s grace period provisions and their limitations…more

Grace Period, Patents

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IP Australia to introduce e-Filing of patent and design applications

Electronic filing applies to:- •standard, divisional, innovation and provisional patent applications and applications for design registration filed after 1 December 2012, •patent applications claiming priority…more

Electronic Filing, Patents

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Patentee Blindsided By Partially Uncorroborated Evidence

Evidence of what occurred over 15 years ago was ultimately accepted despite being only partially corroborated. As a result, many of the claims from Damorgold’s patent have been held invalid for lack of novelty based on that…more

Evidence, Patent Litigation, Patents

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Shaken, but still unstirred - Report recommends amendments to the Australian innovation patent system

The final report on the review of the innovation patent system by the Advisory Council on Intellectual Property (ACIP) has been published . ACIP was unable to recommend retention or abolition of the innovation patent system…more

ACIP, Australia, Patents

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Australian Patent Office Steps Up To The Challenge On Inventive Step

Traditionally, it has been relatively easy in Australia, compared with the US or Europe, to meet the threshold level of inventiveness needed for an inventive step. However, a recent Federal Court decision has shown that the…more

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Prior claiming in Australia…has news of its demise been greatly exaggerated? Is prior claiming still applicable to the remaining 1952 Act pharmaceutical patents?

Prior claiming was a ground of invalidity under the Patents Act 1952 (1952 Act). It prevented grant of a patent claiming subject matter already claimed by another patent. Prior claiming was superseded by the broader concept of…more

Australia, Australian Patent Office, Patents, Pharmaceutical, Pharmaceutical Patents

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South East Asia - Renewal Requirements

The patent terms in the jurisdictions listed below are subject to payment of annual renewal fees, otherwise referred to as maintenance fees or annuities. The patent term in the jurisdictions listed below is 20 years from…more

Patent Applications, Patent Terms, Patents, Renewal Fees

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Did You Miss Them? - Four Important Patent Cases In 2013

This article outlines the main findings in Apotex v Sanofi-Aventis, Cancer Voices Australia v Myriad Genetics, Research Affiliates and RPL Central each of which have important implications for patent law in Australia. …more

Australia, Myriad, Patent Litigation, Patents

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Can An Error In Naming An Applicant For A Design Registration Be Fatal? Foster’s Australia Limited V Cash’s (Australia) Pty Ltd

In what circumstances should an error in naming an applicant for a design registration be fatal? In this case note, we look at Foster’s Australia Limited v Cash’s (Australia) Pty Ltd, where the court declined to grant orders…more

Australia, Australian Patent Office, Constructive Trusts, Design Patent, Patent Applications

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Breaking The Shackles – Changes To Divisional Application Practice In Europe

From 1 April 2014, the 24 month deadline to file a divisional patent application in Europe will be abolished. From this date, divisional applications can be filed at any time provided the parent application has not proceeded to…more

Divisional Applications, EPO, EU, Patents

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Areas of Practice
  • Intellectual Property
Locations
Other Countries
  • Australia
Number of Attorneys

25-50 Attorneys

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