Freehills Patent Attorneys

101 Collins Street
Melbourne, Victoria 3000, Australia

Contact: Tom Gumley

  • 61-3-9288-1479

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 Prior claiming was superseded by the broader concept of…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Gone but not forgotten…is the archaic ground of prior claiming relevant to “whole of contents” novelty?

This is one of two related articles on aspects of prior claiming. 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…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Stem cell patentability: European update following Opinion of Advocate-General in ISCC and the Australian position

The recent Opinion of the Advocate-General suggests that a clarification and moderation of the Court of Justice of the European Union’s (CJEU) approach to the patentability of stem cells may be on the horizon. If followed, the…more
| Intellectual Property, International Law & Trade, Science, Computers, & Technology

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
| Civil Procedure, Intellectual Property

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
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Improving the value of your US patent portfolio: lessons for Australian and NZ companies from the decision of Bard v Gore

Recent developments in US law have meant that investors conducting due diligence of biotech and technology companies now not only consider whether the company’s US patents are valid and cover the relevant technology but also the…more
| Civil Remedies, Intellectual Property, International Law & Trade, Science, Computers, & Technology

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
| Intellectual Property

Alice v CLS Bank: An Australian Perspective

Over the decades, the use of patents to protect “software” or “computer implemented” inventions has been the subject of much debate: both on the philosophical question of whether such inventions should be patentable, and on the…more
| Civil Procedure, Intellectual Property, International Law & Trade, Science, Computers, & Technology

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
| Agriculture, Civil Procedure, Commercial Law & Contracts, Intellectual Property, Science, Computers, & Technology

What Australian companies need to know about ‘patent oppositions’ in the US

Many Australian companies will be familiar with the pre-grant patent oppositions that are available under Australian law. Similarly, many Australian companies will be familiar with post-grant patent oppositions before the…more
| Civil Procedure, Intellectual Property, International Law & Trade

Timely evidence needed for Australian Patent Oppositions

The Australian Patent Office is applying strict new requirements to obtain an extension of time to file evidence in an opposition proceeding. The effect of this change has been mitigated for some parties, as they have had the…more
| Civil Procedure, Intellectual Property

Markush claims under Australian patent practice

Markush claims are a common form of claim in the field of chemistry. Markush claims essentially claim a core molecular structure and cover a wide range of substituent groups that can be substituted on to that molecular…more
| Intellectual Property, Science, Computers, & Technology

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
| Civil Procedure, Intellectual Property

Amendments To Australia’s Intellectual Property Laws

On 19 March 2014, the Intellectual Property Laws Amendment Bill 2014 (Cth) (the Bill) was introduced into parliament. Most substantively, the Bill seeks to introduce a compulsory licensing scheme for pharmaceuticals and…more
| Civil Procedure, Intellectual Property, International Law & Trade, Science, Computers, & Technology

New Zealand Patent Oppositions – New And Improved (Old Act Cases)

In my earlier article, I looked at the various options for prospective opponents under the New Zealand Patents Act 2013 (the ‘New Act’). These options include third party assertions of prior art during examination, pre-grant…more
| Civil Procedure, Intellectual Property
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  • Intellectual Property
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  • Australia
Number of Attorneys

25-50 Attorneys

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