Freehills Patent Attorneys

101 Collins Street
Melbourne, Victoria 3000, Australia

Contact: Tom Gumley, Business Services Coordinator

  • 61-3-9288-1479

Have the Courts lowered the bar on inventive step?

Implications - A number of key points arising from the recent AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 decision have broad implications for the assessment of invention step under the Patents Act (1990). -…more

Australia, Inventions, Patents, Pharmaceutical Patents, Prior Art

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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 Prior claiming was superseded by the broader concept of…more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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Have the Courts lowered the bar on inventive step?

Implications - A number of key points arising from the recent AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 decision have broad implications for the assessment of invention step under the Patents Act (1990). -…more

Australia, Inventions, Patents, Pharmaceutical Patents, Prior Art

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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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Designing applications: Tips for filing design applications in Australia

In This Issue: - Top Tips - Has there been prior disclosure? - Will you receive a Formalities Notice? - What is your ability to amend? - What is the product? - Is there more than…more

Australia, Design Patent, Patent Applications, Patents

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Full Federal Court confirms isolated nucleic acids are patentable in Australia

• The Full Federal Court has unanimously confirmed that isolated nucleic acids, either DNA or RNA, are patentable in Australia. • The decision is in contrast to the recent decision of the US Supreme Court, which held a…more

Australia, Biotechnology, DNA, Myriad-Mayo, Patent-Eligible Subject Matter

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Government dollars for getting IP to market

As already reported in an October article, the third and final leg of the Government’s Entrepreneurs’ Infrastructure Programme (EIP) – Accelerating Commercialisation – is gearing up to make available funding to bridge the…more

Australia, Entrepreneurs, Federal Funding, R&D, Startups

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The High Court takes remedial action in the escitalopram battle

In the long-running escitalopram patent battle, which has been fought all over the world, Australia’s highest court has affirmed the general remedial power of Australia’s extension of time provisions as they apply to extensions…more

Australia, Patent Infringement, Patent Litigation, Patents, Pharmaceutical Patents

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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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Full Federal Court confirms isolated nucleic acids are patentable in Australia

• The Full Federal Court has unanimously confirmed that isolated nucleic acids, either DNA or RNA, are patentable in Australia. • The decision is in contrast to the recent decision of the US Supreme Court, which held a…more

Australia, Biotechnology, DNA, Myriad-Mayo, Patent-Eligible Subject Matter

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Computer Implemented Business Scheme not Patentable in Australia

A Full Court of Australia’s Federal Court has handed down its appeal decision in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150. This decision deals with the patentability of computer implemented…more

Appeals, Australia, 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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Computer Implemented Business Scheme not Patentable in Australia

A Full Court of Australia’s Federal Court has handed down its appeal decision in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150. This decision deals with the patentability of computer implemented…more

Appeals, Australia, 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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The High Court takes remedial action in the escitalopram battle

In the long-running escitalopram patent battle, which has been fought all over the world, Australia’s highest court has affirmed the general remedial power of Australia’s extension of time provisions as they apply to extensions…more

Australia, Patent Infringement, Patent Litigation, Patents, 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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Government dollars for getting IP to market

As already reported in an October article, the third and final leg of the Government’s Entrepreneurs’ Infrastructure Programme (EIP) – Accelerating Commercialisation – is gearing up to make available funding to bridge the…more

Australia, Entrepreneurs, Federal Funding, R&D, Startups

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

25-50 Attorneys

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