Entries categorised as Uncategorized:

The Law Pod on my fortunate career in IP law

Posted On July 20, 2021
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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
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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
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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
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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
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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
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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
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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
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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.