2015 – IP Law Watch

The end for the Dallas Buyers Club Dispute and Speculative Invoicing? Or is it Just the Beginning.

Dec 18 2015

On 16 December 2015, another chapter (and perhaps the final chapter) closed in the long running dispute between the rights holder of the film Dallas Buyers Club (DBC) and six Australian ISPs. Justice Perram of the Federal Court of Australia dismissed DBC’s application for preliminary discovery of the identities of over 4,000 Australian BitTorrent users who allegedly shared copies of the film.

As we reported in April 2015 (see here), Justice Perram initially ruled in favour of DBC ordering six ISPs to disclose the details of 4,726 customers. However, the Court was concerned this information would be used to write to account holders making demands for payments very much excess of what might actually be recovered in any actual suit (a practice known as “speculative invoicing”). To address this concern, the Court adopted the novel approach of making the release of account holder information conditional on DBC submitting for the Court’s approval a draft of the letter of demand proposed to be sent to the relevant account holders.

EU Trade Mark Law Reform – Final Legislative Approval Completed

Dec 17 2015

By Arthur Artinian and Scott Steinberg

Further to alert of 11 June 2015 (here) and recent webinar covering the major developments affecting international brand owners (here), the proposals to amend the Community Trade Mark Regulation and Trade Mark Directive were adopted at second reading by the European Parliament on 15 December 2015. This was the final approval required at EU level and follows the Council adopting its position at first reading on 10 November 2015.

The Regulation will to enter into force 90 days after its publication in the Official Journal of the European Union, and this is expected in February or March 2016. The Directive will enter into force 20 days after publication and must be implemented by Member States into national law within 3 years. Some provisions relating to administrative invalidity and revocation procedures may be implemented within 7 years.

Pendulum Swings in Favour of Generic/Biosimilar Companies at Interlocutory Stage in AU

Dec 09 2015

By Naomi Pearce

FCA Confirms Commonwealth may Claim Relief Under “Usual Undertakings as to Damages”

The much anticipated Court of Appeal decision in Commonwealth of Australia v Sanofi ¹ was handed down on Monday. The decision is a win for the Commonwealth, and for generic/biosimilar companies in Australia, and (if upheld in any appeal) will result in Sponsors adopting a more circumspect approach to seeking interlocutory injunctions for patent infringement in Australia.

Except where a generic/biosimilar applicant has “cleared the way” (cleared any patent impediments to launch through the Courts in Australia) or all relevant patents have expired, interlocutory injunctions are routinely sought by the Sponsor, and are routinely granted.

Australian Patent Office Decides First Opposition Under Raising The Bar Act

Dec 08 2015

By Nigel Lokan

In the matter of CSR Building Products Limited v. United States Gypsum Company¹ the Australian Patent Office has heard and decided the first patent opposition in which the provisions of the IP Laws Amendment Act 2012 (Raising the Bar Act) apply.

The Raising the Bar Act introduced a number of changes to the Australian patent legislation with the intent of raising the standard required to support the grant of a patent and to bring Australia’s patent laws into line with those of its major trading partners. The Raising the Bar Act applies to all patent applications for which a request for examination was filed on or after 15 April 2013.

Productivity Commission’s broad IP review in Australia – Submissions due 30 November

Nov 20 2015

By Naomi Pearce

There are two weeks left to make submissions to the Productivity Commission (the Commission) on the Commission’s Intellectual Property Issues Paper published in October.

The IP Issues Paper can be found here and the process for making a submission (by 30 November) is outlined here.

Australian Patent Office Seeks Comment on Proposed Examination Practice Arising from the Myriad Genetics High Court Decision

Nov 06 2015

By Rachel Young and Nigel Lokan

The Australian Patent Office has commenced a public consultation on their proposed changes to examination practice, as a result of the recent High Court decision in D’Arcy v Myriad Genetics Inc¹.

As reported in our earlier blog² the High Court unanimously decided that claims directed to an isolated nucleic acid coding for mutant or polymorphic BRCA1 polypeptide were not patentable subject matter.

High Court of Australia Finds Claims for Isolated Genetic Material not Patentable Subject Matter

Oct 08 2015

On 7 October 2015, the High Court of Australia (High Court) issued its decision[1] in the long running dispute concerning Myriad Genetics, Inc.’s (Myriad) patent relating to an isolated nucleic acid coding for mutant or polymorphic BRCA1 polypeptide. Mutations in the BRCA1 gene can serve as indicators of a woman’s risk of developing breast cancer.

In a unanimous decision, the High Court found that claims directed to the isolated nucleic acid are invalid on the basis that they are not a ‘manner of manufacture’ and therefore not patentable subject matter. The High Court took the view that the claimed invention would extend the scope of the concept of “manner of manufacture” and that this was not something which was appropriate for courts to do. In light of the High Court’s decision, it will be interesting to see whether there is a legislative response to this issue.

Fashion Law – Spring/Summer 2015 Edition

Sep 30 2015

“Fashion is in the sky, in the street, fashion has to do with ideas, the way we live, what is happening.” Coco Chanel

We are excited to bring you the third edition of Fashion Law, highlighting important issues at the crossroads of fashion and the law.

Fashion Law gives you the latest updates on legal issues affecting your industry. This issue includes the various awards and grants available to new and emerging fashion designers, as well as what to do if your promotional images are reproduced without your permission.

Please click here to read the Spring/Summer 2015 edition of Fashion Law.

H&M Unsuccessful in Challenge to YSL’s Registered Designs for Handbags

Sep 29 2015

Fashion retailer, H&M has been unsuccessful in its application to the EU General Court to invalidate YSL’s Community designs for handbags. Community designs protect designs for up to 25 years in every EU Member State. In November 2006, YSL successfully registered two of its designs for handbags. H&M had applied for a declaration of invalidity for these two YSL designs arguing that the designs had no individual character.

Consider Fair Use Before Submitting Takedown Request

Sep 28 2015

The U.S. Digital Millennium Copyright Act (DMCA) has been a potent tool for combatting copyright infringement on the Internet. Section 512 shields Internet service providers from liability if they expeditiously remove content after copyright owners submit takedown requests notifying the ISP of infringing content. Last week, in Lenz v. Universal Music Corp., the Ninth Circuit held that copyright owners must consider fair use before sending takedown notices, or they could face liability for damages.

This decision cautions copyright owners to take a closer look at infringing content and document their fair use analysis before submitting takedown requests. An intensive investigation is not required and the fair use analysis may not be correct, but the copyright owner must have a good faith belief that fair use does not apply.

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