19 December, 2012
Spruson Christmas Trade Marks

A lot of traders “cash in” at Christmas time by labelling their products with Christmas-related words or Christmas-themed logos.  Most do this without giving any … MORE

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14 December, 2012
Spruson Unified European Patent

On 11 December 2012, the European Parliament voted to adopt proposed regulations on a Unitary Patent, the language regime and the formation of a new … MORE

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10 December, 2012
Spruson Is the Invention Useful?

On 15 April 2013 the remaining schedules of the Raising the Bar Act will come into force. These schedules include some of the most significant amendments to the Australian Patents Act since the 1952 Patents Act was replaced with our 1990 Act. MORE

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04 December, 2012
Spruson Trade Mark Registration in the Pacific Islands

There have been a number of changes to the legislation in various countries in the South Pacific over the last 12 months including new Trade Marks Acts in Vanuatu and Samoa. As an update and by way of reminder for other countries, we have summarised below the protection available throughout the South Pacific. MORE

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28 November, 2012
Spruson Business Sales and Purchases

The purchase or sale of a business involves many considerations. A key issue for both buyers and sellers is whether that business has adequate protection … MORE

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23 November, 2012
Spruson Raising the (Patent) Bar: the fine points of detail

Our News Alert of 17 April 2012 advised that the Raising the Bar Bill had received Royal Assent and the amendments to the Patents Act will come into force on 15 April 2013. Two exposure drafts of the supporting Patents Regulations have been released, and are likely to be implemented in that form. MORE

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21 November, 2012
Spruson How attorneys shop online!

With the holiday season approaching, consumers in Australia and around the world are turning to online retailers to fill their shopping baskets.  However, organisations such … MORE

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21 November, 2012
Spruson Review of AU Pharmaceutical Patents - Discussion paper released today

In our news alert of 15 October 2012, we advised that the Australian Government had announced a review into issues relating to Pharmaceutical patents, with a particular focus on patent term extensions (PTEs). Since then we have been awaiting the issuance of the Discussion Paper from the review panel. MORE

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20 November, 2012
Spruson JT International SA v Commonwealth [2012] HCA 43

On 5 October 2012, the High Court of Australia handed down written reasons, following orders made on 15 August 2012 in favour of the defendant in each of JT International SA v Commonwealth and British American Tobacco Australasia Limited v Commonwealth. MORE

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08 November, 2012
Spruson Another First for Spruson & Ferguson: Electronic Lodgement of IP Applications via "B2B"

Spruson & Ferguson has been working closely with IP Australia, the Australian Government agency incorporating the Australian Patents, Designs and Trade Mark Offices, for many years in development of a new Business-to-Business (B2B) system for conducting all transactions with IP Australia electronically. MORE

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25 October, 2012
Spruson Freeze on innovation funding lifted!

Pleasingly, a total of $652 million of long-awaited funding for medical research was last week allocated with the National Health and Medical Research Council (NHMRC) … MORE

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25 October, 2012
Spruson More Complete Provisionals!

Provisional patent applications (referred to as “provs”) are filed to establish a priority date for an invention.  They are, in effect, a draft of a … MORE

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17 October, 2012
Spruson New Zealand Trade Marks Law Update

It has been announced by the Intellectual Property Office of New Zealand (“IPONZ”) that the Madrid Protocol will come into force in New Zealand on 10 December 2012. New trade mark regulations are being drafted and will also come into force on 10 December 2012. MORE

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16 October, 2012
Spruson Review of AU Pharmaceutical Patent Term Extensions (PTEs)

The current provisions in the Australian Patents Act providing for extensions of term for pharmaceutical patents were introduced in 1998. They provide for an effective 15 year patent life for patents which protect pharmaceutical substances where the substance has been subject to the rigorous regulatory approval process prior to entry on the Australian market. MORE

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09 October, 2012
Spruson JT International SA v Commonwealth [2012] HCA 43

This was a case brought by JT International SA and the British American Tobacco group challenging the Tobacco Plain Packaging Act 2011 (Cth). Other tobacco companies, Philip Morris Limited, Van NelleTabak Nederland BV and Imperial Tobacco Australia Limited, participated by way of intervention. MORE

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09 October, 2012
Spruson Warranty Against Defects - Expiration of Transitional Grace Period

The Australian Competition and Consumer Commission (ACCC) has indicated that from October 2012, the “transitional arrangement” where the ACCC will take into account any practical difficulties for businesses in updating warranty documents to comply with Regulation 90 of the Australian Consumer Law (ACL), will no longer apply. MORE

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20 September, 2012
Spruson Time Warp Anyone??

Can there be patent infringement at a time when the relevant patent/application is not even in existence? Well apparently yes, according to Middleton J in … MORE

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18 September, 2012
Spruson Paul's Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130

On 11 September 2012, the Full Court of Australia handed down its decision in the case of Paul’s Retail Pty Ltd v Lonsdale Australia Limited, on appeal from the decision made by the primary judge (Gordon J) in the case of Lonsdale Australia Limited v Paul’s Retail Pty Ltd. MORE

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15 August, 2012
Spruson JT International SA v Commonwealth of Australia: British American Tobacco Australasia Limited & Ors v Commonwealth of Australia [2012] HCA 30

The High Court of Australia has this morning handed down its decision that the Tobacco Plain Packaging Act 2011 (Cth) is not contrary to s 51(xxxi) of the Constitution (concerning the acquisition of property on just terms) and has made orders to that effect. MORE

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26 July, 2012
Spruson Software patent infringement costs BlackBerry $147.2M

BlackBerry maker, Research in Motion (RIM), has been found guilty of patent infringement and ordered to pay $147.2M in damages. MORE

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19 July, 2012
Spruson Facton Ltd v Toast Sales Group Pty Ltd [2012] FCA 612 (19 June 2012) Middleton, J

The Applicants (“G-Star”) are a group of companies that collectively own and exploit the trade mark G-STAR globally. The trade mark G-STAR and the G-STAR Logo, in which copyright subsists, is widely registered in Australia for fashion related goods in Classes 3, 9, 14, 18, 25. MORE

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10 July, 2012
Spruson Substantially??

Many patent claims use word like “substantially” or “basically” or “fundamentally” as a proviso to a more absolute term, particularly in relation to shapes.  You … MORE

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04 July, 2012
Spruson Unitary Patent Protection in Europe

For more than 30 years European industry has been striving to establish a unitary patent right, effective throughout the European Union. A principal stumbling block has been the insistence by many countries that their domestic official language be used; in practise meaning that the entire patent specification needed to be translated into numerous languages at significant cost. MORE

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29 June, 2012
Spruson Kraft Food Australia Pty ltd v Mars Australia Pty Ltd [2012] ATMO 51 (22 May 2012)

Mars Australia Pty Ltd (“Mars”) applied to register the trade mark FREE BARS in Class 30 for confectionery and other goods. The Application was accepted without an adverse report and then opposed by Kraft Food Australia Pty Ltd (“the Opponent”). MORE

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18 June, 2012
Spruson Lonsdale Australia Limited v Paul’s Retail Pty Ltd & Anor [2012] FCA 584

The Federal Court recently handed down a decision of much importance to importers, providing room for trade mark owners to prevent sales of products bearing their marks in certain circumstances. The decision establishes that importers shall bear the onus of proof where it is asserted that the registrant of a trademark has consented to the use of the trademarks, and provides guidance on what may amount to such consent. MORE

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08 June, 2012
Spruson Trade Mark Official Fee Changes at IP Australia

IP Australia has recently announced changes to the official fees payable for various trade mark matters to encourage use of IP Australia’s “approved means” for filing of applications and payment of official fees. MORE

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08 June, 2012
Spruson Intellectual Property Laws Amendment (Raising the Bar) Act 2012

The Intellectual Property Laws Amendment (Raising the Bar) Bill received Royal Assent from the Governor General on 15 April 2012. The amendments relating to the Trade Marks Act 1995 will come into effect on 15 April 2013. MORE

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04 June, 2012
Spruson Full Federal Court overturns decision concerning Optus' TV Now service and finds in favour of the NRL and AFL

As reported earlier in the year, Rares J of the Federal Court found in favour of Optus in a landmark copyright decision on the basis that subscribers to the Optus TV Now service (and not Optus) were responsible for making recordings of certain television broadcasts. MORE

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28 May, 2012
Spruson A new national system for Australian Business Name Registrations

A national registration system, administered by the ASIC, commenced on 28 May 2012. This new system streamlines the business name registration process. MORE

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25 May, 2012
Spruson New National Business Names Registration System Begins 28 May 2012

As announced in our earlier newsletter, a new National Business Names Registration System will replace the current State and Territory Registers. The new national system, which will be administrated by the Australian Securities and Investments Commission (“ASIC”), will come into operation on Monday 28 May 2012. MORE

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11 May, 2012
Spruson Fourth Anniversary Patent Renewal Fee Introduced

There is, though, a significant new official patent fee: a fourth anniversary renewal fee. In other words, renewal fees for Australian standard patent applications become payable a year sooner. MORE

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03 May, 2012
Spruson The countdown begins to “Raising the Bar” changes in Australia

On the 15 April, 2012 amendments to the Australian Patents Act known as “Raising the Bar” received Royal Assent. MORE

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17 April, 2012
Spruson Raising the Bar Bill Becomes Law

Our News Alert of 29 February 2012 noted that the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012] had been passed unamended by the Senate and introduced to the House of Representatives. MORE

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13 April, 2012
Spruson ACCC succeeds in Full Federal Court decision against Google

In a recent decision handed down by the Full Federal Court of Australia, Google Inc. (“Google”) was found to have engaged in conduct that was misleading or deceptive, or likely to mislead or deceive, by publishing certain advertisements on its Google Australia website. MORE

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12 April, 2012
Spruson Statistical Support for IP in US

According to a study released today by the Economics and Statistics Administration and U.S. Patent and Trademark Office more than a quarter of all jobs … MORE

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11 April, 2012
Spruson Copyright infringement

Copyright is perhaps the most well-known but most misunderstood intellectual property right.  The most misunderstood part of copyright is probably when is copyright infringed. Copyright … MORE

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23 March, 2012
Spruson Patent reform in Australia

On 20 March 2012 the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 was passed by the House of Representatives. MORE

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07 March, 2012
Spruson IP Lawsuits on Contingency

In the last decade, a substantial market has begun to develop for contingent fee representation (“No Win – No fee cases) in US IP litigation. … MORE

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29 February, 2012
Spruson Bar Raised (Almost) For Patent Applicants

Our News Alert of 24 June 2011 noted that the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012] had been introduced to the Australian Parliament. MORE

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17 February, 2012
Spruson Failure to Deliver!!!

A recent Canadian decision has invalidated most of the claims of a patent for failure to meet the lack of utility. This decision may give … MORE

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08 February, 2012
Spruson No-Tox v BOTOX: Is reputation a help or hindrance?

Despite evidence of substantial consumer awareness of the reputation of a well-known mark, the Federal Court has been prepared to hold a later mark which may still be considered confusingly similar. MORE

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07 February, 2012
Spruson Optus succeeds in landmark copyright decision: Singtel Optus Pty Ltd v National Rugby League Investments Pty Ltd (No 2)

Last week, the Federal Court (Justice Rares) handed down its decision in a landmark case involving the broadcast of free to air television of football and rugby league matches on certain smartphones and PC’s. MORE

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06 February, 2012
Spruson Understanding IP Litigation

Going to Court over IP is a difficult and potentially expensive exercise.  What follows is a brief explanation of how it works and the timelines … MORE

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31 January, 2012
Spruson Book Review

“Why Has America Stopped Inventing” by Darin Gibby was published in December 2011. Mr Gibby is a patent attorney with the large US firm, Kilpatrick … MORE

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30 January, 2012
Spruson The PPSA Register Goes Live Today!

The PPSA register goes live on the 30 January 2012. What is it and how does it affect your business? MORE

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05 January, 2012
Spruson Branding: More than just a trademark

You may have heard by now that LEGO recently attempted to have a domain owned by brothers Gavin (age 15) and Grayson (age 11) transferred … MORE

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23 December, 2011
Spruson Adidas get nasty in trade mark dispute

Last year, an Adidas application for the trade mark adiZero (a sub-brand which includes a highly publicized series of shoes featuring Chicago Bulls star, Derrick … MORE

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09 December, 2011
Spruson Samsung v Apple: Galaxy Tablet Allowed to Sell in Australia

The High Court of Australia today denied Apple’s request for special leave to appeal against the Full Federal Court’s decision effectively allowing Samsung to market its Galaxy tab 10 .1 in Australia pending a final hearing on Apple’s patent infringement action. MORE

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08 December, 2011
Spruson Advice from Tom Cruise

One of the most memorable lines delivered by anyone in a movie was by Cuba Gooding Jr in Jerry Maguire. “Show me the money”. A … MORE

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02 December, 2011
Spruson The advantages of getting an initial search done

So you meet with your patent and/or trade mark attorney and they ask whether you would like to have a search done to determine whether … MORE

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02 December, 2011
Spruson A bitter pill for Samsung to swallow in its tablet war with Apple

When it allowed Samsung’s appeal against the grant of an interlocutory injunction preventing the importation and sale in Australia of Samsung’s Galaxy Tab 10.1 tablet computer, (see Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 (30 November 2011)), the Full Federal Court stayed its order lifting the injunction until 4:00 pm today. MORE

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30 November, 2011
Spruson Apple v Samsung – the patent war continues..

The patent war between Apple and Samsung continues unabated. In the last round, Apple successfully sought – and obtained – an interim (interlocutory) injunction against … MORE

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30 November, 2011
Spruson Samsung v Apple: Samsung's appeal allowed by the Full Federal Court

The Full Federal Court (Justices Dowsett, Foster and Yates) has today allowed Samsung’s appeal against Justice Bennett’s decision to grant an interlocutory injunction to prevent Samsung from importing, selling, etc. its Galaxy Tab 10.1 tablet computer. This will come as a relief to Samsung which was expecting healthy sales in the lead up to Christmas. MORE

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24 November, 2011
Spruson The Gene Patents Debate in Australia - An Update

The patentability of genetic materials has been the subject of considerable community debate in Australia and elsewhere in recent years. Several inquiries have been held in Australia, including the Senate Gene Patents Report (24 November 2010), the 2011 ACIP Report on Patentable Subject Matter, and the 2004 Australian Law Reform Commission’s Report on Genes and Ingenuity: Gene Patenting and Human Health (ALRC 99 Report). MORE

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18 November, 2011
Spruson ACIP Review of Innovation Patent System

In a recent roundtable discussion relating to the review of the innovation patent system, a view point was raised that self-filed innovation patent applications that … MORE

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15 November, 2011
Spruson Tablet Wars in Australia: Apple and Samsung, the story so far...

The patent litigation between Apple and Samsung in the Australian Federal Court has received much attention in the print and television media. As is widely known, Apple sought – and obtained – an interim (interlocutory) injunction against Samsung for anticipated infringement of two patents, thereby preventing Samsung from offering for sale in Australia its Galaxy Tab 10.1. MORE

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10 November, 2011
Spruson IP Costs Export Grant for 2010-11 Deadline: 30 November 2011

As previously reported in our news alert in August 2009, Export Market Development Grants are available for small to medium sized businesses. The deadline for the 2010-11 year applications is 30 November. Details and applied changes are illustrated below. MORE

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13 October, 2011
Spruson Apple v Samsung

There has been much talk in the media recently surrounding the intellectual property related dispute between technology giants Apple and Samsung.  In the dispute, both … MORE

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29 September, 2011
Spruson "Sunrise Period" Available For Trade Mark Owners To Protect Misuse Of Their Trade Marks In The New .xxx Domain

Earlier this year the Internet Corporation for Assigned Names and Numbers (ICANN) announced its new “.xxx” generic top level domain (gTLD) name catering for the adult entertainment community on the internet. MORE

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26 September, 2011
Spruson Registered IP is a Negative Right

New users of the IP registration systems (and even some more experienced users!!) must understand that IP protection is a negative right.  It is the … MORE

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23 September, 2011
Spruson U.S. Patent System Overhaul

As mentioned in our news alert of 13 July 2011, the U.S. has moved to substantively overhaul its patent system. Last Friday, President Obama signed the “America Invents Act” into law, making a number of significant reforms to U.S. patent law. MORE

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22 September, 2011
Spruson Senate Committee says NO to Gene Patents Bill

Our News Alert of 25 November 2010 reported on the introduction of the Patent Amendment (Human Genes and Biological Materials) Bill 2010 to the Australian Parliament. The Bill proposes significant amendments to the Patents Act (1990), specifically to exclude gene sequences and other biological materials from patentability in Australia. MORE

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20 September, 2011
Spruson Innovation Patent Strategies - Have you considered all the options?

The Australian innovation patent system has been around for almost ten years now, but is yet little used. Innovation patents are a patent tool and should always be considered when framing an intellectual property strategy. MORE

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14 September, 2011
Spruson New Zealand Trade Marks Amendment Bill 2008 Passed

The New Zealand Trade Marks Amendment Bill 2008 (“the Bill”), introduced into New Zealand’s Parliament 3 years ago as the Trade Marks (International Treaties and Enforcement) Amendment Bill 2008, was passed after its second reading on 8 September 2011. MORE

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11 August, 2011
Spruson Coffee Copycats: Bodum’s Chambord coffee plunger wins Federal Court appeal

In a surprising result, a majority of the Full Federal Court of Australia has upheld an appeal by the Bodum Group in a long running dispute about a “copy” CHAMBORD coffee plunger. MORE

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13 July, 2011
Spruson Significant Patent Developments in the EU and US

This news alert highlights a number of current legal and commercial events relating to patents in Europe and the United States. These come as a timely reminder of the value of a well-crafted patent portfolio. At the same time, a recent U.S. Supreme Court decision reiterates the importance of properly securing those patent assets in the first place. MORE

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24 June, 2011
Spruson New IP Laws Introduced to the Australian Parliament

Our News Alert of 4 March 2011 reported on the INTELLECTUAL PROPERTY LAWS AMENDMENT (RAISING THE BAR) BILL 2011 which proposes significant changes to Australian Intellectual Property laws. This News Alert is to advise that the Bill has now been formally introduced into the Australian parliament. MORE

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16 June, 2011
Spruson Senate Committee Inquiry into the Patent Amendment (Human Genes and Biological Materials) Bill 2010 - Reporting Date Extended

Our News Alert of 25 November 2010 reported on the introduction of the Patent Amendment (Human Genes and Biological Materials) Bill 2010 to the Australian Parliament. The Bill proposes significant amendments to the Patents Act (1990), specifically to exclude gene sequences and other biological materials from patentability in Australia. MORE

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03 June, 2011
Spruson US Federal Court Restricts Inequitable Conduct Challenges

An important decision on US patent law was handed down last week, greatly curtailing challenges against US patents on the basis of alleged inequitable conduct by patentees. MORE

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13 May, 2011
Spruson A single patent application and examination process for AU and NZ patent applications

Since August 2009, the Australian and New Zealand governments have been focussing on a Single Economic Market (SEM) framework, which aims to accelerate trans-Tasman regulatory integration including in the area of Intellectual Property Law. MORE

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12 April, 2011
Spruson Tobacco Plain Packaging Bill 2011 - Exposure Draft Released

On 7 April 2011, the Australian Commonwealth Government released an exposure draft of the Tobacco Plain Packaging Bill 2011 (“Bill”) which is described as a Bill for an Act to discourage the use of tobacco products, and for related purposes. MORE

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07 April, 2011
Spruson US "Fast-Track" Examination of Patent Applications

A new program allowing applicants to request prioritised (fast-track) examination of US patent applications was announced this week by the United States Patent and Trademark Office (USPTO). MORE

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26 March, 2011
Spruson Assistance for Japanese Applicants in Australia

On Wednesday this week, the governmental agency IP Australia expressed its support for the Japanese people in the wake of the recent earthquake and tsunami disasters, and reminded the public of existing extension of time provisions that are available for applicants affected by circumstances such as natural disasters. MORE

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15 March, 2011
Spruson Key changes relating to the Pharmaceutical/Life Sciences areas: Intellectual Property Laws Amendment (Raising the Bar) Bill 2011

The proposed transitional provisions are those which will govern the manner in which the new laws are applied. The transitional provisions of most concern are those set out in Schedule 1 item 39(1) and Schedule 6 item 132(7). MORE

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15 March, 2011
Spruson Transitional Provisions in the proposed IP Laws Amendment Bill

In a recent article we alerted you to the proposed Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 and accompanying explanatory memorandum. As summarized in our article the proposals include wide-ranging and significant reform of Australian patent laws. MORE

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04 March, 2011
Spruson Significant Australian Intellectual Property Law Changes Proposed

On March 2, 2011, the Australian Government published a draft INTELLECTUAL PROPERTY LAWS AMENDMENT (RAISING THE BAR) BILL 2011, and an accompanying Explanatory Memorandum (“EM”). MORE

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16 February, 2011
Spruson Combined Examination for Australian and New Zealand Patent Applications

A future single examination process for patent applications made in both Australia and New Zealand was jointly announced by Prime Ministers Julia Gillard and John Key on 16 February 2011. MORE

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01 February, 2011
Spruson Change in Patent Office practice for divisional applications

On 1 February 2011 the Australian Patent Office published an amendment to their “Manual of Practice and Procedure” for Examiners. The amendment relates to the Patent Office’s internal handling of divisional applications. MORE

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