Freehills Patent Attorneys

Using divisional applications in Australia to fix your licensing woes

The Australian Patents Act provides that only the patentee or exclusive licensee has standing to commence infringement proceedings. For a licence to be exclusive, it must transfer all rights from the patentee to the licensee. If…more

Bristol-Myers Squibb, Divisional Applications, Otsuka Pharmaceutical, Patent Applications, Patent Infringement

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Look before you leap: seeking to enforce your pharmaceutical patent may lead to unintended consequences

It may not be just generic manufacturers seeking compensation when their product launch is found to be delayed by an originator wielding what is ultimately found to be an invalid patent. An Australian court recently…more

Australia, Generic Drugs, Interlocutory Injunctions, Pharmaceutical Benefits Scheme, Pharmaceutical Industry

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Additional protection from Swiss-form claims: a direct infringement option when method claims are indirectly infringed

An unresolved question in Australia is whether Swiss form claims add to the scope of protection afforded by corresponding method of medical treatment claims. It is settled that both may co-exist in a granted patent, but is yet…more

Covered Business Method Patents, Patent Infringement, Patent Litigation, 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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Australian Patent Office guidelines finalised post-Myriad

The Australian Patent Office has now finalised what will be their approach to examining nucleic acids and other biological inventions following the decision handed down by the High Court in D'Arcy v Myriad Genetics Inc [2015]…more

Australia, Australian Patent Office, Biologics, Myriad, Patents

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How high has the bar been raised? The Australian Patent Office issues its first opposition decision on a post ‘Raising the Bar’ patent application

In brief: - In the first opposition decision of the Australian Patent Office to apply the post-‘Raising the Bar’ disclosure and support requirements, the hearing officer applied principles derived from UK and European case…more

Australia, Disclosure Requirements, Patent Applications, Patents, Raising The Bar Act

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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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Cleantech and solar photovoltaic innovation – an area of opportunity for the mining industry

The Australian Renewable Energy Agency’s (ARENA) funding priorities for new investment represent an area of opportunity for the mining industry. While investment in clean technology may, on the surface, seem at odds with the…more

BHP Billiton, Clean Tech, Energy Sector, Mining, Patents

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High Court of Australia determines isolated BRCA1 gene not patentable in Australia

The High Court of Australia has unanimously overturned previous decisions from lower courts and has held that certain claims to Myriad's patent for isolated BRCA1 nucleic acid molecules are not patentable in Australia..…more

Australia, Biotechnology, BRCA, Cancer, Mayo v. Prometheus

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Abolition of the Australian Innovation Patent?

The Australian patent system currently provides for two different patent rights: standard patents and innovation patents. In May this year Australia’s Advisory Council on Intellectual Property (ACIP) released a statement…more

ACIP, Innovation Patent, Inventions, Patents, SMEs

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Expanding the PPH in Australia

A Memorandum of Understanding (MoU) has paved the way for the European Patent Office (EPO) to partner with the Australian Patent Office in a Patent Prosecution Highway (PPH) pilot program. The PPH program has been in use…more

Australian Patent Office, EPO, European Patent Office, Memorandum of Understanding, Patent Applications

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7 Popular Patent Law Writers to Follow Right Now

A shortlist of JD Supra writers covering the many complex issues of Patent Law and featured here for a number of reasons, including that they recently authored popular work in this realm…more

Corporate Counsel, Legal Perspectives, Patents, Popular, Young Lawyers

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New Appeal decision on computer implemented inventions in Australia

On 11 December 2015 Australia’s Federal Court handed down its decision in the RPL Central appeal – a case dealing with the patentability of computer implemented inventions in Australia. The Court overturned the first…more

Australia, Computer-Related Inventions, Covered Business Method Patents, Innovation Patent, Patent-Eligible Subject Matter

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The low-down on the new Victorian Manufacturing Grant

Government grants to stimulate business and innovation are typically competitive and the new Victorian Government grant program, Future Industries Fund - The Manufacturing Program, is no exception. In preparing this article, we…more

Australia, Federal Grants, Innovation, Manufacturers

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When inventive steps become routine...greater hurdles for applicants with claims directed to antibodies

The development of monoclonal antibodies has revolutionised medical science, and the use of these molecules in the development of future therapies, diagnostics and research appears assured. However, the scope of patent…more

Patent Infringement, Patent Litigation, Patents

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New Appeal decision on computer implemented inventions in Australia

On 11 December 2015 Australia’s Federal Court handed down its decision in the RPL Central appeal – a case dealing with the patentability of computer implemented inventions in Australia. The Court overturned the first…more

Australia, Computer-Related Inventions, Covered Business Method Patents, Innovation Patent, Patent-Eligible Subject Matter

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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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Seeking a patent term extension may cut it short

A hidden catch to Australia’s generous regime for extension of term of pharmaceutical patents is that requesting an extension of term can act as a trigger for re-examination. The Australian Patent Office has discretionary…more

Australia, Australian Patent Office, Patent Term Extensions, Patents, Pharmaceutical Industry

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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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Australian & NZ single patent examination: Soon you may not have a choice

A single trans-Tasman patent regime allows counterpart Australian and NZ patent applications to be examined by a single examiner in either country. It now emerges that such combined examination can be made compulsory by the…more

Australia, New Zealand, Patent Applications, Patent Examinations

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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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Australian & NZ single patent examination: Soon you may not have a choice

A single trans-Tasman patent regime allows counterpart Australian and NZ patent applications to be examined by a single examiner in either country. It now emerges that such combined examination can be made compulsory by the…more

Australia, New Zealand, Patent Applications, Patent Examinations

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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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How high has the bar been raised? The Australian Patent Office issues its first opposition decision on a post ‘Raising the Bar’ patent application

In brief: - In the first opposition decision of the Australian Patent Office to apply the post-‘Raising the Bar’ disclosure and support requirements, the hearing officer applied principles derived from UK and European case…more

Australia, Disclosure Requirements, Patent Applications, Patents, Raising The Bar Act

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Look before you leap: seeking to enforce your pharmaceutical patent may lead to unintended consequences

It may not be just generic manufacturers seeking compensation when their product launch is found to be delayed by an originator wielding what is ultimately found to be an invalid patent. An Australian court recently…more

Australia, Generic Drugs, Interlocutory Injunctions, Pharmaceutical Benefits Scheme, Pharmaceutical Industry

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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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Re-examination now an option for challenging New Zealand patents and applications

New Zealand has new patent legislation (Patents Act 2013; the ‘new law’) which came into effect on 13 September 2014. The previous legislation (Patents Act 1953; the ‘old law’) did not allow for re-examination of accepted patent…more

Inter Partes Reexamination, New Zealand, Patent Litigation, Patents

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Contact

101 Collins Street
Melbourne, Victoria 3000, Australia

Contact: Tom Gumley, Business Services Coordinator

  • 61-3-9288-1479

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

25-50 Attorneys

This profile may constitute attorney advertising. Prior results do not guarantee a similar outcome. Any correspondence with this profile holder does not constitute a client/attorney relationship. Neither the content on this profile nor transmissions between you and the profile holder through this profile are intended to provide legal or other advice or to create an attorney-client relationship.

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