The University of Western Australia (’UWA’) v Gray [2009] FCAFC 116 case illustrates the practical significance of having an employee’s contract clearly define the scope of an employee’s duties in order to address the issue of intellectual property ownership (see here). The same case also sheds some light on the issue of inventive concept which is worthy of consideration.

Supporters of low-carbon technology are leading the argument that any invention which will assist in reducing the Earth’s carbon foot-print should be made widely and freely available, so we can all gain the benefits from the new technology in the fastest possible way.

Over the past month, two Australian patents have stood up to the tough US system and registered wins for their owners.

Welcome back to the Intellectual Property Blog. Its written by the team here at Actuate IP, an Australian intellectual property practice. As patent attorneys, trade mark attorneys and intellectual property lawyers, we are specialists in the field but more importantly passionate about what we do. We draw inspiration from working with smart people and companies across a broad range of technologies.

Innovation drives growth and benefits society, so its a great motivator for us to be involved in this area of law.

As you can see, we have had a break over the past few months from contributions. But we can now safely say that there will now be regular weekly contributions (at least 2 to 3 contributions). We had positive feedback previously, so we will continue our fresh take and commentary on Australian IP developments and topics.

What can you expect? Commentary on intellectual property news that’s in the media, latest cases and areas of the law that have practical implications for business.

So we look forward to you following our blog. Also feel free to subscribe to this blog and/or our newsletter.

Colin Cheung

IP Australian has recently released figures relating to filings, acceptance and fields that applicants are filing in. It provides some insight as to where Australian’s are heading regarding Intellectual Property. Full results of their internal review can be found here.

Coming up with an invention is a pretty impressive moment of anyone’s life. The temptation to tell all and sundry, ranging from family and friends to professional colleagues is huge. While getting that article about your life changing device in New Scientist might be very gratifying, it can close a lot of doors relating to your possible intellectual property. The novelty of your invention prior to filing a patent application is a frail thing, and can be ruined very quickly if you are not careful. Novelty of your invention is one of the three important elements that make your invention patentable, without it you will not be able to obtain patent protection

The Australian Council on Intellectual Property (ACIP) has announced a review is to be made of what is considered patentable subject matter in Australia.  Specifically, they are going to look into the suitability and sufficiency of the manner of manufacture test as the threshold condition for determining what is patentable subject matter.  Also there is to be a review on the historical requirement that an invention not be generally inconvenient.  

Ranbaxy Australia Pty Ltd (ACN 110 781 826) v Warner-Lambert Company LLC [2008] FCAFC 82 (28 May 2008); Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC (No 2) [2006] FCA 1787 (20 December 2006)
A recent decision of the Full Court of the Federal Court of Australia has concluded that atorvastatin calcium, the active ingredient in the cholesterol-reduction drug, Lipitor, remains under patent protection, notwithstanding that a patent for a more specific form of that drug was found to be invalid.
Back in 1987, Warner-Lambert Company, LLC (better known as Pfizer Inc.) filed for and obtained patent rights in Australia covering all forms of atorvastatin calcium (the Broader Patent). Three years later, Warner-Lambert Company filed a more restricted patent claiming only the R enantiomer forms of atorvastatin calcium (the Enantiomer Patent). Some time later generics drugs manufacturer Ranbaxy began to make its own form of atorvastatin calcium, only using the R enantiomer form of the drug. In order to distribute the drug legally in Australia though, Ranbaxy needed to remove the obstacles that were the Warner-Lambert Company patents.

Dr. Francis Gurry, currently a Deputy Director General of the World Intellectual Property Organisation (WIPO) has been nominated to become the next Director General of the organisation. Dr Gurry has over 20 years experience working for WIPO, working in all major area of the organisation. More information relating to the nomination of Dr. Gurry can be found in this government media release.
Dr. Gurry’s nomination will be submitted to the General Assembely of WIPO for confirmation in September/October of this year.

WIPO is the United Nations organisation that presides over international matters pertaining to Patents, Trademarks, Designs and other areas of Intellectual Property. WIPO manages filings made under the Patent Co-Operation Treaty and The Madrid Protocol for Trademarks.

In the recent Federal Court decision of University of Western Australia v Gray 2008 FCA 498 it was held by Justice French that an invention developed by an employee academic researcher was not the property of the University. The employment contract of Dr Gray described his job duty description to be that of undertaking research and organising such research with University staff and students. The Court also acknowledged that Dr Gray’s position with the University also encompassed a teaching role.