ISSUE 117 – September 2019
EDITORIAL – BY FIONA ROTSTEIN AND FIONA PHILLIPS
Welcome to another issue of Intellectual Property Forum. This issue presents an array of intellectual property (“IP”) issues in the areas of Indigenous knowledge, patents, copyright, competition law and trade marks. We start with a profile of the University of Sydney’s Professor Kimberlee Weatherall. In an interview with Fiona Rotstein, Professor Weatherall discusses why, in her view, we need to “fix copyright”, what the emerging IP issues are in artificial intelligence and where lie the future challenges in IP law.
In Conversation with Professor Kimberlee Weatherall by Fiona Rotstein
Professor Kimberlee Weatherall is a Professor of Law at the University of Sydney. She teaches and researches across intellectual property (“IP”) law, technology law and the IP-trade nexus. In an interview with Fiona Rotstein, Professor Weatherall discusses her frustrations with the copyright system, the emerging IP issues in artificial intelligence (“AI”) and the future challenges of IP law.
Indigenous Knowledge Governance: Developments from the Garuwanga Project
The protection of Indigenous knowledge and cultural expressions has become a major topic in Australian law reform in recent years. This has occurred in two streams, one which is predicated on intellectual property rights and the other from the perspective of environment and heritage regulation. The latter is grounded in Australia’s obligations under the Convention on Biological Diversity (“CBD”). While the former has its impetus from Australia’s engagement with the World Intellectual Property Organization (“WIPO”) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (“IGC”), the IGC was established in 2000 in response to the WIPO and United Nations Environment Programme (responsible for the introduction of the CBD) jointly commissioned “study on the role of intellectual property rights in the sharing of benefits arising from the use of biological resources and associated traditional knowledge”. IP Australia has led the developments on the intellectual property front while the Australian states and territories have led developments on the environment and heritage front.
Professor Natalie Stoianoff
Professor & Director, Intellectual Property Program, Faculty of Law, University of Technology Sydney.
Retaining the Dam Wall: Does a Recent Case Suggest a Review of Australia’s Pre-Grant Patent Oppositions??
A recent decision by Justice Beach of the Federal Court of Australia (“Federal Court”) in SNF (Australia) Pty Ltd v BASF Australia Ltd (2019) 140 IPR 276 (“SNF v BASF proceeding”)3 highlights the potential for patent applicants to face significant costs and delay in obtaining grant when pre-grant oppositions spill over into appeals from the Australian Patent Office (“Patent Office”) to the Federal Court.
Vanessa Farago-Diener and John Lee
Lawyer and Partner (respectively), Gilbert + Tobin
Making Sense of the “Best Method” Mess
The patent system is predicated on a bargain that exists between the patentee and the public, whereby the patentee provides a full disclosure of its invention in exchange for exclusive rights to exploit the invention for a limited duration (usually 20 years). Traditionally, this quid pro quo arrangement has been said to encompass an obligation on the part of the patentee to disclose the best method of performing the invention including, inter alia, by the Federal Court in Pfizer Overseas Pharmaceutical v Eli Lilly & Co  FCAFC 224; 68 IPR 1 (“Pfizer”) at :
The requirement that an applicant disclose the best method known to the applicant of performing the invention safeguards against an applicant’s holding back with a view to getting the benefit of the patent monopoly without conferring on the public the full consideration for the grant of that monopoly.
Allens Patent & Trade Mark Attorneys, Sydney
The John McLaren Emmerson QC Essay Prize : first prize winner
Aboriginal and Torres Strait Islander Peoples’ Heritage: A Model for Protection Under the Copyright Act 1968 (Cth)
This article examines the shortfalls of the Copyright Act 1968 (Cth) (“Copyright Act”) in recognising the unique features of Australia’s Aboriginal and Torres Strait Islander (“ATSI”) heritage and also aspects of existing legislation and enforcement structures, which may immediately be utilised to protect some forms of heritage.
The author proposes a model, which requires amendment of the Copyright Act, by inserting a new Part into the Copyright Act, to deal with the features of ATSI heritage not addressed by the current legislation. The model seeks to use, as far as possible, existing enforcement procedures, incorporating in them, features such as the expertise of elders and custodians as expert witnesses, to assist the Federal Court of Australia (the “Federal Court”) in its determinations.
Dr Dimitrios Eliades
Intellectual Property and Competition Law – Nothing Special?
What follows are some general reflections upon the interaction between intellectual property law and competition law and policy. The question “Nothing special?” asks whether, in that context, there is anything about intellectual property that marks it off from other kinds of property rights.
The Honourable Robert French AC
Former Chief Justice of the High Court of Australia
Where There’s a Hit, There’s a Writ
In 1824, the English writer Charles Caleb Colton famously said that “Imitation is the sincerest form of flattery”. Oscar Wilde extended that quote to state “Imitation is the sincerest form of flattery that mediocrity can pay to greatness”. However, Colton and Wilde both failed to alert the would-be “flatterers” that there are legal impediments in engaging in acts of imitation.
Principal, Shaun Miller Lawyers
Senior Fellow at the University of Melbourne, Faculty of Fine Arts and Music.
Book Review: Capitalism Without Capital: The Rise of the Intangible Economy
Jonathan Haskel and Stian Westland
[Princeton University Press 2018 pp 288].
In my first professional job as a freshly minted graduate student, I worked for a consultancy that specialised in helping to optimise the operation of production lines in the manufacturing sector. My job was to spend long hours on the factory floor making precise observations of what was happening, and then use a structured problem solving method to correct the most serious deficiencies. Towards the end of each assignment I would typically present my findings to the plant manager, a man (yes, it was always a man) who typically had several decades worth of experience the relevant sector. It was invariably a revealing conversation, and a formative experience for me so early in my career. Why?
Dr Charlie Day
CEO, Innovation and Science Australia
Book Review: Research Handbook on Patent Law and Theory: Second Edition
edited by Toshiko Takenaka
[Edward Elgar 2019 pp 512].
The Research Handbook on Patent Law and Theory: Second Edition edited by Toshiko Takenaka comprises 18 chapters, divided into five parts: foundation; examination procedure; patent enforcement; current issues; and examination procedure addition. Contrary to the expectation that may be raised by the book’s title, the focus of the book is on patent law and procedure, with relatively little attention paid to patent theory. The chapters primarily consist of surveys of patent and related laws pertaining to specific issues or geographical regions. Much of the material is thought-provoking and useful, but some of the material would have benefitted from more in-depth analysis. A notable absence from the lengthy book is an introductory chapter providing an overview of the chapters and how they relate to one another. As it is, readers are left to work out these matters for themselves. The book’s chapters are primarily concerned with the patent laws of the Global North (including United States of America (“US”), United Kingdom (“UK”) and Europe). The book would have also benefitted from a more balanced consideration of the patent laws of both the Global North and the Global South.
PhD Candidate and Teaching Fellow at Melbourne Law School
Martin Friedgut and Roseanne Mannion
Spruson & Ferguson
IP Australia’s Corporate Plan 2019-2020
“AusPat” is being updated
Peter Heerey AM QC, Tom Cordiner QC & Alan Nash
Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd
 FCA 719
(24 May 2019)
Trade marks – infringement – defences – use of a mark for which the alleged infringer would have obtained registration – date at which assessment of registrability is to be made
Sequenom, Inc. v Ariosa Diagnostics, Inc.
 FCA 1011
(27 June 2019)
Patents –invalidity – discovery of naturally occurring phenomenon – claims for methods of applying that discovery – whether method of manufacture – whether inventive step
Mattia Pagani, Michelle Cooper, Chris Carter & Miriam Zanker
Davies Collison Cave, Sydney
Watson v Commissioner of Patents  FCA 1015
Trident Seafoods Corporation v Trident Foods Pty Ltd  FCAFC 100
Dr Dimitrios Eliades
Key Logic Pty Ltd v Blue Groper Investments Pty Ltd (No 3)  FCA 926 (20 June 2019)
Andrew Brown QC
Correspondent for New Zealand
Burden & Ors v ESR Group (NZ) Limited & Anor
High Court of New Zealand, Venning J
14 June, 3 July 2019
 NZHC 1546
Copyright – remedies – at earlier trial judgment given on secondary infringement – whether fair and convenient to amend statement of claim to allow claim of primary infringement at remedies hearing – issuing copies to the public – plaintiffs also bringing second proceeding for primary infringement – defendants’ strike out application – whether abuse of process – right to access justice for primary claim – s.27 New Zealand Bill of Rights Act 1990; ss.9, 16, 31 Copyright Act 1994 (New Zealand).
NZ Fintech Limited t/a Moola v Creditcorp Financial Solutions Pty Limited t/a Wallet Wizard
High Court of New Zealand, Gault J
15 March, 2 April 2019
 NZHC 654
Trade mark infringement – Google Adword – whether use ‘as a trade mark’ – no visibility of trade mark bid on for Google Adword – passing off – s.9 Fair Trading Act 1986 (New Zealand) – s.89 Trade Marks Act 2002 (New Zealand)
CHINA & HONG KONG
Dan Plane and Joshua Miller
Simone Intellectual Property Services (“SIPS”) Hong Kong
Correspondents for China & Hong Kong
New Amendments to China’s Trade Mark Law
John A Tessensohn
Board Member, SHUSAKU-YAMAMOTO, Osaka, Japan
Correspondents for Japan
Japan Design Law Changes for a Modern Digital Economy
Winnie Tham Geraldine Tan, Angus Koh and Megan Pang
Amica Law LLC
Correspondents for Singapore
Burberry Ltd v Megastar Shipping Pte Ltd and Another Appeal  SGCA 1
Sunseap Group Pte Ltd and Others v Sun Electric Pte Ltd  1 SLR 645  SGCA 4
Dr Marc Mimler, LL.M. (London)
Senior Lecturer in Law, Bournemouth University
Correspondent for the European Union
“Prove it or lose it” – two recent decisions on EU trade marks showcase the quality of evidence trade mark users need to provide to prove genuine use and acquired distinctiveness of their trade marks
Supermac’s (Holdings) Ltd v McDonald’s International Property Company, Ltd. EUIPO Cancellation Division Cancellation No. 14 788 and Adidas AG v European Union Intellectual Property Office (T-307/17)
Adidas AG v EUIPO (Case T-307/17)
Emmanuel Baud, Philippe Marchiset and Edouard Fortunet
Correspondents for France
The parody exception to copyright favorably applied by the French Supreme Court
CJEU’s Grand Chamber issues three decisions on the interplay between copyright and fundamental rights
Christopher Weber and Sören Dahm
Correspondents for Germany
Federal Court of Justice clarifies criteria in determining the protected subject matter of a registered design
Federal Court of Justice, decisions dated 20 December 2018, I ZB 25/18 and I ZB 26/18
Bristows LLP London
Correspondents for the United Kingdom
Alan Johnson, Partner and Chloe Dickson, Associate
“Being so many different sizes in a day is very confusing”. The doctrine of equivalents and numerical ranges, a brief journey down the rabbit hole
Regen Lab SA v Estar Medical Limited & Others  EWHC 63 (“Regen”)
Catherine Dennis Brooks
Partner, Miller Thomson LLP
Correspondent for Canada
Pampered Chef not a Cakewalk for a Major Canadian Retailer
UNITED STATES OF AMERICA
Scott Cummings and Kevin Greenleaf
Correspondents for United States of America
Appeals Court Finds No State Sovereign Immunity and Expands the Reach of Time-Bar for Inter Partes Review of Patents