The 2023 IP year in review, and predictions for 2024


In Australia, February signals a return from the beach, children back to school after a long summer break and of course the usual traffic woes!

At Spruson & Ferguson Lawyers, we are taking the opportunity to reflect on the year that has been and plan for the year to come.  Drawing on the expertise of our Principal group across all aspects of IP: patents, trade marks, copyright, be it IP litigation, commercial deals or IP strategy; from big tech to biopharmaceuticals, we provide our insights into the key moments of Australian IP in 2023 and where 2024 might take us.

For Khajaque Kortian, one of our Principals focussed on trade mark litigation, an undoubted key development was the March decision of Australia’s highest court, the High Court, in Self Care v Allergan.[1] Trade mark cases are rarely taken by the High Court and this case provided an opportunity to clarify a number of aspects of trade mark law.  Khajaque notes that “the unanimous High Court judgments finally settled the position, after a long period of conflicting authorities and uncertainty, that reputation in a registered trade mark is not a factor to be taken into account in determining infringement.” Indeed actual use of the registered trade mark is not to be considered at all. In this case, the registrations at issue were those protecting the famous BOTOX brand. The fact that the reputation of BOTOX might suggest a lesser likelihood of confusion was not a relevant matter to infringement. The High Court also considered the question of whether ‘instant Botox® alternative’ was use of BOTOX as a trade mark and concluded it was not. In 2024, we foresee questions of ‘use as trade mark’ as a key trade mark issue, after a number of recent decisions raising serious questions about what constitutes trade mark use, including in relation to shape and product design marks.

For those in the pharma/bio-pharma space, the late-December grant of special leave in Clopidogrel, and the High Court hearing likely to take place in 2024, will be of significant interest, reports Andrew Rankine, a Principal in our pharmaceutical patent litigation team.  In its final sitting for 2023, the High Court granted the Commonwealth special leave to appeal against the dismissal, by the Full Federal Court,[2] of its damages claim against Sanofi arising from the clopidogrel patent dispute.  The Commonwealth is seeking more than AUD 300 million in compensation for additional costs to Australia’s Pharmaceutical Benefits Scheme, incurred when Sanofi secured an interlocutory injunction (also known as a preliminary injunction) delaying launch of Apotex’s generic clopidogrel products in Australia. This is the first case in which Australia’s final appellate court will address the substance of such a claim. During the hearing of the special leave application, Justice Edelman observed that the legal rules governing such damages claims are not yet settled and are a matter of public importance. Andrew notes that “it is hoped that the High Court’s decision will provide guidance for parties to pharmaceutical patent disputes in Australia regarding the likelihood of successful damages claims in the future”.

Turning to tech topics, Sylvie Tso, a Principal in our commercial IP team, observes that artificial intelligence will continue to challenge existing understandings of intellectual property and test boundaries of protection offered by intellectual property under the current legal framework. As Australian businesses continue to explore, adopt and harness the transforming efficiency that AI may bring to their operations, as well as the creativity that generative AI may impart to their product offerings, complex questions about ownership of intellectual property and attribution for copyright work created by these intelligent systems will remain. The question of ownership is likely to be addressed in the terms of use between AI providers and their users, as agreed by them – and indeed, many AI platform providers stipulate in the their terms of use that outputs arising from use will belong to the user (as between the parties).  Nonetheless, it is uncertain whether such outputs will have the necessary qualities to be afforded intellectual property protection. In Australia, the current state of play is that, an AI machine may not be considered to be an “inventor” within the meaning of that term under our Patents Act (Thaler[3]); and our Copyright Act provides that a “qualified person” capable of holding copyright must be “an Australian citizen or a person … resident in Australia or a body corporate incorporated under a law of the Commonwealth or of a State.” As Sylvie concludes, “we think that the position is unlikely to change substantively in Australia in 2024, however beyond that legislative change in response to AI seems inevitable.” How businesses attempt to protect their innovation and competitive advantage generated by AI remains to be seen – new paradigms on the nature of intellectual property will continue to evolve, not just in 2024 but years beyond.

Continuing on the data theme, Mark Vincent and Michael Deacon, data protection experts, have highlighted the Australian Government response to the Privacy Act Review Report in September 2023 and implementation of its conclusions as a key development in the data protection space.  The Government has adopted 38 of the report’s 116 proposals, many of which are expected to find their way into legislative reform in 2024, including changes to notification requirements around the use of automated decision-making, strengthening of the Notifiable Data Breaches scheme and changes to the enforcement regime, as well as increased protections for children’s privacy. A further 68 recommendations were agreed ‘in principle’ and will now be subject to further consultation. Implementation of these initiatives would amount to a significant overhaul and modernisation of Australia’s privacy system, including changes to the entities subject to data protection requirements and a variety of new individual rights largely modelled around the EU GDPR ‘data subject rights’, including the ‘right to be forgotten’, broad opt out entitlements and direct rights of action for serious privacy breaches.

Duncan Longstaff, another of our expert patent litigators has noted that an increasing proportion of the patent disputes running in the Federal Court of Australia are appeals from pre-grant opposition decisions of the Patent Office, typically involving contested discovery, substantial expert affidavit evidence and joint expert report processes and full trials with experts cross-examined in “hot tubs”. It appears that many parties see value in fighting key competitor patents before they are granted in Australia, without an infringement cross-claim to deal with at the same time (even if that makes it more difficult to create “squeezes” on claim construction). Potential infringement liability does however accrue throughout the Patent Office opposition and Federal Court appeal, which collectively take several years, and opponents who are ultimately unsuccessful could face post-grant infringement proceedings. It remains unclear whether and to what extent a party defending post-grant infringement proceedings might be restricted or estopped from running invalidity arguments previously run in a pre-grant opposition or appeal regarding the application for the same patent. Some prominent examples of recent and ongoing complex and long-running Federal Court appeals from Patent Office opposition decisions include Meat & Livestock Australia[4] (genomic bovine trait selection), Cytec v Nalco[5] (scale-inhibiting additives for aluminium extraction plants), Boehringer Ingelheim v Zoetis[6] (swine vaccines), ToolGen v Fisher[7] (CRISPR/Cas9 system for genome editing in eukaryotes) and Sanofi v Amgen[8] (PCSK9 monoclonal antibodies for lowering cholesterol).

Finally, Katrina Crooks, also an experienced patent litigator foresees that issues of support and sufficiency will remain key patent questions for 2024. She observes that in 2023 we saw a number of patent decisions which turned on these issues, including the Full Court’s decision in November in Jusand[9] upholding Rofe J’s decision that the patent was invalid for lack of support across its full scope. That case concerned a rock anchor invention which could “be performed in a variety of fashions” (by using different materials to make the anchor). Since only one such method had been enabled, the broader claims were invalid. Since Justice Burley’s seminal decision in 2020 in MSD v Wyeth[10] on Raising The Bar support requirements, Jusand joins an increasing pool of cases in which patents have been found invalid on this basis, leaving many patentees encountering difficulty in gauging just how broad their claims can be. This Australian trend mirrors similar developments in the US and Europe, especially in the field of antibodies, following cases such as the US Supreme Court’s decision in Amgen v Sanofi and similar issues in the European Patent Office. Katrina notes that as patents governed by post-Raising the Bar law become more common subjects of Federal Court patent judgments, we expect that in 2024 we will continue to see judgments on these topics more frequently. Given the challenges associated with patent amendments in Court proceedings, potential patent litigants are well advised to consider carefully whether the scope of their claims is justified by the disclosure.”

With a wealth of developments in 2023 spanning the entire IP spectrum, we wait with interest to see what the new year will bring and look forward to keeping you updated.

[1] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA
[2] Commonwealth of Australia v Sanofi (formerly Sanofi-Aventis) [2023] FCAFC 97
[3] Commissioner of Patents v Thaler [2022] FCAFC 62
[4] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51
[5] Cytec Industries Inc. v Nalco Company [2021] FCA 970
[6] Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119
[7] ToolGen Incorporated v Fisher (No 2) [2023] FCA 794
[8] Sanofi v Amgen Inc. (NSD876 of 2022) (judgment reserved)
[9] Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178
[10] Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477

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