2014 – Page 6 – IP Law Watch

A Second Helping of Kebab

Aug 11 2014

Additional Damages for Past Trade Mark Infringements

In June 2014 the Federal Court made its first award of additional damages for trade mark infringement under the ‘Raising the Bar’ amendments to the Trade Marks Act 1995 (TM Act). We reported on the original judgment in our 23 June 2014 alert, which you can find here.

Today, the Federal Court of Australia handed down another judgment in that case. This second judgement suggests that additional damages may also be available for trade mark infringements that occurred before 15 April 2013.

FDA Accepts First Biosimilar Application Filed Under Section 351(K) of the Public Health Services Act

Aug 06 2014

On 24 July 2014, over four years after the enactment of the Biologics Price Competition and Innovation Act, the FDA accepted its first biosimilar application from Sandoz Inc. (Sandoz). Sandoz’s application is for a biosimilar version of Amgen Inc.’s (Amgen) Neupogen® (filgrastim). Neupogen® is a pharmaceutical analog of human granulocyte colony stimulating factor that is used to treat neutropenia, a condition where the body does not make enough neutrophils, a type of white blood cell. Amgen’s Neuprogen® is indicated for use by patients receiving strong chemotherapy to reduce their risk of infection. Read More

Another Piece in the Software Patent Puzzle – The Federal Circuit’s First Take on Alice

Jul 28 2014

The Federal Circuit recently released its first interpretation of the Supreme Court’s late June decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, et al. (Alice) In Digitech Image Tech., LLC v. Electronics for Imaging, Inc., et al. (Digitech) the Federal Circuit added a few more wrinkles to the emerging law of software patent eligibility.

In Digitech, the Federal Circuit held that all of the asserted claims of U.S. Patent No. 6,128,415 were ineligible for patenting. The patent was directed to device profiles, which are data structures used to correct for hardware-specific distortions in digital image processing systems. Read More

Permitted Trade Mark Usage as Google AdText

Jul 21 2014

Google AdWords Policy Change for Australia

As reported in April 2013, Google amended its AdWords policy in Australia allowing a company to purchase a competitor’s trade mark as a keyword in order to trigger sponsored ads during Google searches.

Google has now gone one step further and allowed resellers and informational sites from 27 July 2014 to use trade marks in ad text in Australia and New Zealand under certain circumstances. Read More

Biosimilars – The New Forefront for Pharmaceutical Litigation

Jul 16 2014

A recent United States statute establishes an expedited pathway for FDA approval of biosimilars (also known as follow-on biologics) – the Biologics Price Competition and Innovation Act (BPCIA), part of the Affordable Care Act. A biologic is a drug derived from a living organism or living cells and is best exemplified by Humira®, the branded antibody for treatment of rheumatoid arthritis. Simply put, a biosimilar is a molecule that copies a branded biologic and is for all practical purposes highly identical to the branded biologic in structure and function. Read More

IP Haiku: Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (No 2) [2014] FCA 418

Jul 15 2014

Your IP Law Report in 17 Syllables

“Judgments are just getting longer and more complicated, I can’t keep up with all of them!”

A familiar refrain uttered by many a lawyer and law student alike, especially in the modern, digital age (although we expect the Courts might refer to the increasing volume of electronic evidence filed by parties in proceedings as a contributing factor!)

So, in that context, could the essence of a judgment be distilled into haiku (short form Japanese poetry consisting of three phrases of five, seven and five syllables)? Well, we are sure going to try! Read More

The USPTO and Laws of Nature, Natural Products and Natural Phenomena

Jul 11 2014

New Approach to Patentable Subject Matter

The United States Patent Office periodically issues guidance for examiners often in response to a recent court decision or new statute. These guidelines (the Guidance) do not have the force of law but nevertheless establish the specific procedures that the Examiners apply during examination of patent applications.

Examination guidelines were issued on 4 March 2014 to address two recent court decisions related to the subject matter eligibility of certain claims under 35 U.S.C. § 101. Examiners will use tests described in the Guidance to determine the patent eligibility of any claim related to laws of nature, natural phenomena and natural products. Read More

Abstract Ideas and the USPTO

Jul 11 2014

The Patent Office’s First Take on CLS Bank v. Alice

On 25 June 2014, new examination guidelines (the Guidance) from the United States Patent Office were issued in response to the Supreme Court’s decision in Alice Corp. v. CLS Bank International. This case addressed the subject matter eligibility under 35 U.S.C. § 101 of claims related to an abstract idea. The Guidance provides preliminary instructions for analysing claims involving an abstract idea and its applicability to technology areas, including the software and business method fields, which are worthy of attention from applicants.

Ensure That Stock Photos are Licensed

Jul 10 2014

Although acknowledging the ease of copying photographs on the internet, an Australian Court has warned through the publication of its decision that this copying should not continue. In the case of Tylor v Sevin, a Hawaii, U.S., based photographer sued a Melbourne, Australia, based travel agent regarding a photograph he took titled ‘Waikaki Pink Boat’. The travel agent used the photograph on its website promoting holidays to Hawaii.

After being put on notice of the case, the travel agent refused to take down the photograph or offer to pay a licence fee. Read More

Act Promptly and Diligently When Preparing Evidence in Patent Oppositions or Else…

Jul 09 2014

A recent decision of the Australian Patent Office has underscored the importance of acting promptly and diligently at all times when preparing evidence in patent oppositions.

In this case the patent applicant was unable to complete and serve its evidence-in-support and sought an extension of time in which to do so. The Commissioner’s delegate considered the conduct of the patent applicant throughout the period provided for service of the evidence and decided that the patent applicant had not acted promptly and diligently at all times. Read More

Archive:2014