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Vol30 No4 December 2016-February 2017

Thoughts on some construction and infringement issues; and enabling disclosure and the law of novelty
by the Hon Justice Jayne Jagot

Is the idea of the substantial idea of an invention now more trouble than it’s worth? The answer may be ‘yes’ — everything the concept continues to do, seems to boil down to the same thing as identifying, by the usual processes of construction of patents through the eyes of the skilled addressee at the relevant time, the essential integers of a claim and the scope, nature or character of those essential integers.

 The concept of disclosure carries a heavy burden in patent law. It operates for a number of different purposes. Leaving aside the ‘Raising the Bar’ amendments to the 1990 Act (Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)), the contexts in which disclosure appears as a relevant principle are many, and include the questions of:
• Has there been a real and reasonably clear disclosure for the purpose of working out if a claim is fairly based on a specification?
• Is a claim ‘fairly based on matter disclosed’ in a priority document for the purpose of working out if a claim takes priority from the date of the earlier document?
• Has there been sufficient disclosure for the purpose of describing the invention fully for the purpose of working out if a patent is invalid?
• Has there been disclosure of the invention claimed in prior art information so as to destroy novelty?

  

Principles relating to advocate’s immunity following Attwells v Jackson Lawyers and Kendirjian v Lepore
by the Hon Justice Arthur Emmett 

On 4 May 2016, in Attwells v Jackson Lalic Lawyers Pty Ltd (Attwells Case) the High Court unanimously held that advocate’s immunity, as set down in Giannarelli v Wraith (Giannarelli) and D’Orta-Ekenaike v Victoria Legal Aid (D’Orta), still exists in New South Wales. However, a majority of the High Court held that the test for the application of the immunity was not satisfied where negligent advice led to the settlement of a claim in civil proceedings, overturning a decision of the NSW Court of Appeal.6 On 29 March 2017, in Kendirjian v Lepore (Kendirjian’s Case), the High Court unanimously declined to reopen D’Orta and held that the test was also not satisfied where negligent advice led to the rejection of an offer of settlement, allowing an appeal from another decision of the NSW Court of Appeal.

 

Trade mark infringement: parallel importing and exporting of genuine products
by Cynthia Cochrane and David Larish

1. Demand in China for Australian infant formula and other health products has skyrocketed since 2008 when melamine contamination saw six babies die and 300,000 fall ill.

2. According to reports, a large proportion of Australian infant formula products are bought by the Chinese market, either through:
(a) direct shipping (for example, reportedly, by discount pharmacy Chemist Warehouse); or
(b) enterprising re-sellers who buy in Australia and sell in China, turning huge profits. Formula resold on sites such as taobao.com and eBay is fetching three to four times the retail price.

3. A team of economists from Deakin University found that the large-scale exporting of baby formula to China outside of official export channels was affecting the welfare of Australian consumers by creating temporary shortages.

4. After a public outcry, Australian supermarkets began to enforce quantity limits on sales of infant formula.

5. This paper considers what role trade mark law may play in relation to the export from Australia of products intended for the Australian market.

6. In this paper, we assume that the goods being exported have an Australian registered trade mark applied to the goods themselves or their packaging.

  

Patent validity: are computer implemented business methods patentable?
by Cynthia Cochrane and Ben Mee

 One ground for refusing a patent application or revoking a patent is that the alleged invention is not a manner of manufacture within the meaning of s6 of the Statute of Monopolies. It is a threshold means of invalidating a patent or patent application, on the basis that the alleged invention is not a proper subject for a patent. It is a less costly and time-consuming ground than novelty or inventive step because the ground must be made out on the face of the specification, with the result that it should not involve literature searching or expert evidence, except as to the meaning of technical terms in the patent or patent application.

 

  • Thoughts on some construction and infringement issues; and enabling disclosure and the law of novelty
    By The Hon Justice Jayne Jagot
    page 3
  • Principles relating to advocate’s immunity following Attwells v Jackson Lawyers and Kendirjian v Lepore
    By The Hon Justice Arthur Emmett
    page 10
  • Trade mark infringement: parallel importing and exporting of genuine products
    By Cynthia Cochrane and David Larish
    page 20
  • Patent validity: are computer implemented business methods patentable?
    By Cynthia Cochrane and Ben Mee
    page 25
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