Mallesons IP Whiteboard - Latest news in copyright, trade mark and patents law from Australia and around the world

The full Federal Court in Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84 has held that a divisional patent application can rely on the filing date of its parent application and therefore claim the benefit of the 12 month grace period. Read our full alert here.

In the recent decision Wake Forest University Health Sciences v Smith & Nephew Pty Ltd, an alleged patent infringer has been allowed to continue supplying its foam dressing kits for product evaluation purposes (such as tender processes), free of charge, notwithstanding the grant of an interlocutory injunction.  read more »

The Full Federal Court has given further content to the concept of 'innovative step' contained in the Patents Act 1990 innovation patent system.  On Tuesday, the Court handed down its decision in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81, rejecting Dura-Post's appeal from a decision of Gyles J that certain relevant claims of Delnorth's innovation patents (for roadside posts) were valid and infringed. The Full Court's decision only relates to questions of validity and, in particular, the grounds of manner of manufacture, novelty and innovative step. Gyles J's decision that the patent claims were valid was upheld by the Full Court, as was his Honour's exposition of the test for 'innovative step'. Update: read our full alert here.

The Intellectual Property Research Institute of Australia (IPRIA) has released data showing that around a quarter of patents are infringed over their lifetime, but that only 50% of patent holders who are aware of copying take action to prevent it.  read more »

The US Federal Circuit recently held that when seeking a declaratory judgment in relation to a patent held by a foreign entity, specific personal jurisdiction is only appropriate where that entity has sufficient contacts with the jurisdiction in which the judgment is pursued.  While not a shocking development as a matter of US law, Australian entities keen to enforce their US patents should be aware of how easy it is for potential licensees to resist licensing entreaties made in good faith by commencing declaratory judgment actions before US courts.   read more »

Can a patent be granted for a method of hedging against the risk of a spike in the price of coal? The US patent office says 'no', the Court of Appeals for the Federal Circuit says 'no' - what will the US Supreme Court say?

The United States Patent and Trademark Office has proposed to WIPO a comprehensive overhaul of the PCT system, dubbed PCT II, which would further internationalise the patent application system.  read more »

The Bill to replace the Patents Act 1953 (NZ) has finally received its first reading in Parliament, and has been opened for public submissions.  read more »

The United Kingdom has taken another step in the ongoing fight against climate change.  The UK Minister for IP has launched an initiative where ‘green’ or environmentally friendly technology can be fast-tracked through the patent application process.  How does it all work? And what’s likely to follow from this development?

Taking steps to protect your invention could seem like a hassle when you’re buzzing with excitement and want to tell the whole world about your great new idea.  But it’s worth taking a moment to stop and consider how to best protect your invention, as this cautionary tale demonstrates.