WIN In-House Counsel Day Melbourne

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1 WIN In-House Counsel Day Melbourne Wednesday 16 March 2016 Trends and Developments in Intellectual Property Robynne Sanders, Partner, Intellectual Property and Technology

2 Overview IP is one of the fastest moving areas of law, striving to keep pace with technology and marketing It is also one of the most international areas of law, with treaties, agreements and the judiciary harmonizing Australian law with that of, particularly, Europe and the US. It is critical to be aware of developments in these key jurisdictions as a likely indication of future trends in Australia WIN In-House Counsel Day, Canberra 10 March

3 Summary In this hour we will look at recent trends and developments in: copyright designs trade marks patents Across Australia and New Zealand US Europe WIN In-House Counsel Day, Canberra 10 March

4 Trade Marks Trends in Australia Obtaining registration Trade Mark assisted filing following examination pilot project with NZ it is becoming increasingly difficult to obtain registration for marks that are to some degree descriptive Opposition procedures Following Raising the Bar amendments opposition are becoming increasingly legalistic Extensions for filing of evidence are all but impossible to obtain There are still questions over due process at hearing Insert filename here Date of presentation 4

5 Trade Marks Cases to watch Insight Clinical Imaging Pty Ltd v Insight Radiology More reasons not oppose registration Insert filename here Date of presentation 5

Trade Marks Cases to watch Playgro Pty Ltd v Playgo Art & Craft Manufactory Taking action against foreign manufacturers of counterfeit products Manufactured in

6 Trade Marks Cases to watch Playgro Pty Ltd v Playgo Art & Craft Manufactory Taking action against foreign manufacturers of counterfeit products Manufactured in China by HK company Sold to HK subsidiary of Australian retailer Shipped from China to Australia (FOB) Sold in Australia Insert filename here Date of presentation 6

7 Trade Marks European Trade Mark Directive New Trade Mark Directive and EU Trade Mark regulations were published in December Member States have up to 3 years to implement. Changes include: over one third reduction in renewal fees seizing counterfeit goods in transit office based opposition and cancellation actions harmonisation of practices of member states for AU companies this will significantly reduce the cost and complexity of European trade marks Insert filename here Date of presentation 7

8 Designs There continue to be very few designs cases in Australia Design filings are being foregone in favour of innovation patents The latest IP review is again looking at discontinuing design protection Insert filename here Date of presentation 8

9 Patents Genetic Material Myriad v D'Arcy [2015] HCA 35 Patent claims directed to "an isolated nucleic acid coding for a mutant or polymorphic BRCA1 polypeptide" unanimously held to be invalid by the High Court. Brings Australia closer into line with the position in the USA and Europe. In December 2015 IP Australia issued Examination Practice Guidelines for determining whether biological inventions are patentable. Suggests the High Court's decision will have limited effect on IP Australia's examination practice. Contrasts with the USPTO's broad interpretation of the US Supreme Court's 2013 Myriad decision. Insert filename here Date of presentation 9

Patents Computer Implimented Methods Commissioner of Patents v RPL Central Claims to a computer implemented method for assessing a users competency or qualifications with respect to recognised

10 Patents Computer Implimented Methods Commissioner of Patents v RPL Central Claims to a computer implemented method for assessing a users competency or qualifications with respect to recognised standards (i.e. for RPL) Computer retrieves assessment criteria from a remote location Computer processes criteria and generates relevant questions for user Questions are presented to user User's responses (and supporting documents) are received from user Previously: Patent Office not valid Federal Court (Middleton J) valid Full Federal Court unanimously found the invention not patentable Insert filename here Date of presentation 10

11 Patents Computer Implimented Methods Relevant considerations: is the invention in substance a scheme or plan can it broadly be described as an improvement in computer technology? Is the computer merely the intermediary, configured to carry out the method, but adding nothing to the substance of the idea? A computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer. This necessitates some ingenuity in the way in which the computer is utilised. Distintion between the "mere implementation of an abstract idea in a computer" and "the implementation of an abstract idea in a computer to create an improvement in the computer" (Alice Corporation) US position post Alice Insert filename here Date of presentation 11

Increased litigation between competitors, and also with government purchasers and customers Continuing issue

12 Patent Litigation Mechanical Products Continuing to be the growth area for patent litigation are mechanical products:- mining and automotive products hardware heavy machinery manufacturing equipment and processes Increased litigation between competitors, and also with government purchasers and customers Continuing issue that patents are not routinely considered in these areas so litigation a 'surprise' Insert filename here Date of presentation 12

13 Innovation Patents Innovation patents continue to come under criticism for being a litigation tool Previous consultation concluded that innovation patents were a valuable part of the IP matrix, but variation to the test recommended. ACIP recommendation (May 2015) for abolition of Innovation Patent system Presently been referred to Productivity Commission as part of inquiry into Intellectual Property draft report due end April 2016 Insert filename here Date of presentation 13

14 Europe Unitary Patent and the Unified Patents Court European patent similar to CTM for trade marks Single infringement action for whole of EU Will not come in to force prior to 1 January 2017, but likely by mid 2017 Opt out process for existing patents. Significant strategic considerations (not just cost) Likely that UPC will be the next location for NPE Insert filename here Date of presentation 14

15 Copyright Trends in Australia There have been no significant legislative changes in this area However, improvements in technology have spawned new cases audio/video file trawling software literary work trawling software Copyright in 'less artistic' works plans, manuals, instructions Copyright as the last available action Insert filename here Date of presentation 15

16 Questions Insert filename here Date of presentation 16

Why patents DO matter to YOUR business

Why patents DO matter to YOUR business Robynne Sanders & Eliza Mallon DLA Piper 18 March 2015 Overview This session will cover: how to identify when patent protection should be obtained to protect your