Entries categorised as Uncategorized:

IP Essay Competitions with Valuable Prizes

Posted On April 14, 2022
In Uncategorized / Comments Off

IPSANZ and AIPPI Australia have IP essay competitions, closing in May 2022, with valuable prizes.  For more details, click on the heading of the competition.

John McLaren Emmerson QC Essay Prize 2022

  • for an essay on a topic of the author’s choice regarding intellectual property
  • entries between 5,000-10,000 words
  • closing date 13 May 2022
  • prize of AU$5,000 plus complimentary registration at the IPSANZ 35th Annual Conference scheduled to be held over the weekend of 16 – 18 September 2022, including 2 nights’ accommodation at the Park Hyatt, Melbourne, Australia and a return economy airfare from within Australia or New Zealand to the Conference

AIPPI Australia Essay Prize 2022

  • for an essay on one of four specified topics, one of which is “moral rights”
  • entries of no more than 10,000 words
  • closing date 1 May 2022
  • prize of complimentary registration at AIPPI’s 2022 World Congress, which is to be held in San Francisco in September 2022, together with return flights and accommodation


National Sports Tribunal appointment

Posted On December 15, 2021
In Uncategorized / Comments Off

I’m looking forward to undertaking dispute resolution appointments as a recently-appointed Member of the National Sports Tribunal (NST).

The NST provides independent, cost-effective dispute resolution services to sporting bodies, athletes and support personnel. It offers the following binding and non-binding services:

  • case appraisal – a Tribunal member gives their opinion on a dispute (non-binding)
  • mediation – a Tribunal member helps parties work out their own solutions, focusing on mutual interests (non-binding)
  • conciliation – a Tribunal member helps parties resolve their dispute, taking a more active role than in mediation (non-binding)
  • arbitration – a Tribunal member hears the evidence and decides how to resolve the conflict (binding)

The NST has established a panel of legal practitioners who are willing to provide free or substantially discounted legal assistance to parties to a dispute.

The Law Pod on my fortunate career in IP law

Posted On July 20, 2021
In Uncategorized / Comments Off

I had the privilege of being interviewed by Nicole Pereira and Josiah Bautista about my career in IP law for Episode 4 of the Law Pod podcast.

Waiving Patent Rights Isn’t The Answer

Posted On May 12, 2021
In Uncategorized / Comments Off

Read my opinion piece in The Age and The Sydney Morning Herald on why waiving patent rights is not the solution to the problem of lack of access to COVID-19 vaccines.

Evidence of ‘Evergreening’ in Secondary Patenting of Blockbuster Drugs

Posted On April 30, 2021
In Uncategorized / Comments Off

Secondary patents associated with blockbuster drugs are granted for follow-on innovations relating to the active pharmaceutical ingredient (‘API’) of the drug.

Our analysis of all secondary patents for 13 top-selling drugs in Australia shows that, while the majority of follow-on innovations are made by entities other than the originator of the drug, the innovations with the highest private value are undertaken by the drug’s originator and concern a delivery mechanism or an alternative formulation for the API.

Since that is the type of follow-on innovation most commonly undertaken by drug originators, and considered most likely to result in a de facto extension of marketplace monopoly over the drug, we see in these findings evidence that the originators of blockbuster drugs engage in secondary patenting that has an ‘evergreening’ effect.

Read the published study.

Attempt to trademark ‘Always Was Always Will Be’ highlights IP issues facing Aboriginal communities

Posted On April 30, 2021
In Uncategorized / Comments Off

Here’s an example of why Australian trade mark law needs up-dating to recognise the particular interests of First Nations people.

Webinar on arbitration of intellectual property disputes

Posted On October 11, 2020
In Uncategorized / Comments Off

Resolution Institute is hosting a webinar on the scope and potential for arbitration to resolve disputes about intellectual property infringements.

The webinar will explore:

  • the mechanisms used by online platforms to resolve IP disputes and their potential for wider application,
  • the mandatory regimes for settlement of trademark and domain name disputes, and
  • the enforcement of arbitral awards relating to IP validity and infringement.

Further details and registration are here.

Why patents should be granted on COVID-19 vaccines

Posted On September 10, 2020
In Uncategorized / Comments Off

History will judge “terribly” any country which finds a COVID-19 vaccine but does not share it, says Scott Morrison.  How do we ensure this doesn’t happen?

One answer: grant a patent for it.

KeepCup takes coffee giant Gloria Jean’s to court for allegedly copying its reusable cup design

Posted On July 11, 2017
In Uncategorized / Comments Off

Australia’s largest coffee chain Gloria Jean’s is being sued by reusable coffee cup company KeepCup for allegedly copying one of its designs, reports ABC News.

Australian court finds non-infringing the use of competitor’s trade mark for AdWords

Posted On May 2, 2016
In Trade Marks in Cyberspace, Uncategorized / Comments Off

The Federal Court of Australia has held that it is not an infringement of a competitor’s registered trade mark: (i) to use the trade mark as a keyword for triggering a Google AdWords sponsored link, or (ii) to use the trade mark in the text of the sponsored link in its descriptive sense.

In Veda Avantage v Malouf Group, the court decided that it was not trade mark infringement to use the trade mark as a keyword because that was not a “trade mark use” – i.e. it was not a use of the trade mark to distinguish the advertiser’s services from those of others. Rather, it was a use to identify Internet users who may have an interest in using its services.

The finding that there was no trade mark use was supported by the fact that the advertiser’s use of the trade mark as a keyword was “invisible” to consumers. It was not possible to conclude that the advertiser’s use was a trade mark use when consumers “have not seen or otherwise perceived the keywords”.

The judge distinguished the decision of the Court of Justice of the EU in Google France on the basis that that case had not considered whether the purpose for which the keyword was used was to distinguish goods or services of one person from those of another.

The court also found that, with one exception, use of the trade mark in the resulting sponsored links was not trade mark use. Rather, the use of the trade mark was descriptive.