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We invite you to search our updates and news below and to contact us if you don't find what you are looking for.  Additionally, we ask the media to consider us as a key and willing industry source and authority if you need to supplement articles with information, such as expert views, broad-based industry perspectives, specific invention or technology background, general quotes, statistics, etc.
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Latest
05 Mar 2020
To celebrate women’s achievements leading up to International Women’s Day, FB Rice invited six female leaders across a variety of industries to discuss this year’s IWD theme, #EachforEqual. Continuing on in our series is Emma Ball from CSL who shared her thoughts with Patrick McManamny.
04 Mar 2020
To celebrate women’s achievements leading up to International Women’s Day, FB Rice invited six female leaders across a variety of industries to discuss this year’s IWD theme, #EachforEqual. Continuing on from yesterday’s article is Becky White from Xero who shared her views with Madeleine Kelly.
03 Mar 2020
To celebrate women’s achievements leading up to International Women’s Day, FB Rice invited six female leaders across a variety of industries to discuss this year’s IWD theme, #EachforEqual. Continuing on from yesterday’s article is Jodie Imam from SBE Australia who shared her views with Jenny Petering.
02 Mar 2020
To celebrate women’s achievements leading up to International Women’s Day, FB Rice invited six female leaders from different fields of industry to share their views on this year’s IWD theme, #EachforEqual. First up in our daily series is Dharmica Mistry from Cicada Innovations who spoke with Rachel Hooke.
19 Feb 2020
FB Rice trade marks team recognised by WTR 1000
06 Feb 2020
Join R&D Tax specialist and director, Kate Mahady, in a round table lunch discussion for companies wishing to workshop the R&D tax compliance landscape in the lead up to the 30 April R&D tax deadline.
21 Jan 2020
Regulatory Exclusivity is a form of Intellectual Property (IP) protection available for pharmaceutical compounds, which is provided by numerous jurisdictions across the globe. Recently, we published an article considering the types of Regulatory Exclusivity available for newly developed pharmaceutical compounds (see IP Rights in the Pharmaceutical sector: Not exclusively the domain of patents). The focus of this article will be on an additional form of Exclusivity which exists, that applicable for Orphan Diseases.
02 Dec 2019
In rectification proceedings, the Federal Court of Australia recently allowed cancellation of a registration for “COMMUNITY BANK” under s88 of the Trade Marks Act 1995 on the basis that it was entirely descriptive of banking services.
27 Nov 2019
We focus on the utility model requirements for the high growth jurisdictions of South East Asia.
20 Nov 2019
In a recent hearing FB Rice succeeded in getting an Examiner’s objections to acceptance of a patent application overturned on behalf of its client, Aqseptence Group Pty Ltd.
20 Nov 2019
FB Rice was excited to host a small networking event with our Adelaide contacts and clients, at Prohibition Liquor Co. Guests enjoyed a unique gin experience, both interactive and educational. A tasting flight and masterclass demonstrated ways to build a variety of G&T’s – all with their very own gins produced, bottled and distributed on site!
06 Nov 2019
Australia is set to amend the Patents Act 1990 to end innovation patents, broaden the Crown use provisions and enable easier access to patents that are inadequately worked. Both of the latter amendments relate to compulsory licences. There has been considerable discussion about the possible unduly wide scope of these licences. To us, the scope is not surprising given that they arise directly from the Productivity Commission, which is pro-competition.
24 Oct 2019
If you are a successful designer, you are paid to generate ideas. Intellectual property (IP) rights exist to protect the expression of ideas. IP is therefore closely linked to the value of design, allowing control of the ideas which drive design business.
23 Oct 2019
Singapore is one of the fastest-growing economies in the world with a per capita GDP of US$60,000. Despite it being a small country with few natural resources, Singapore is an economic powerhouse. By embracing globalisation, free-market capitalism, education, and pragmatic policies, the country has met its geographic disadvantages and become a leader in global commerce.
10 Oct 2019
On Monday 23 October 2019, the Association of Intellectual Property Firms (AIPF) elected its new Board of Directors for the coming year, including the re-appointment of Brett Lunn as President.
04 Oct 2019
On 19 September 2019, Lara Gun attended the annual Beer Matters UK conference and trade expo held in Edinburgh, Scotland. This was a one day event and, like BrewCon, comprised a trade show with exhibitors from equipment manufacturers, materials suppliers and service providers to the brewing industry.
03 Oct 2019
Lara Gun (Senior Associate, Trade Marks) and Will Morgan (Senior Associate, Patents …and award winning home brewer) attended the 7th annual BrewCon event, which was held in Melbourne this year.
02 Oct 2019
Switzerland is famous for its cheeses, particularly Emmental, a cheese characterised by its holes as much as its taste. Although not quite equally famous, Switzerland was also responsible for the creation of the so-called Swiss form of patent claim. This claim was formulated to overcome the problem of validly claiming methods of treatment of humans and animals.
01 Oct 2019
The Intellectual Property Office of New Zealand (IPONZ) will increase many patent-related official fees payable on or after 13 February 2020. While some of the fee changes are significant, the increase appears consistent with many of the fees charged in other jurisdictions. We summarise IPONZ’s increase in patent-related fees
26 Sep 2019
Although it is disappointing that the full bench of the Federal Court did not set straight “the metes and bounds of patentable computer-implemented inventions”, the Encompass decision has provided some useful guidance for patenting computer implemented inventions in Australia.
18 Sep 2019
Since 1998, Australia has had an extension of patent term (EoT) regime that allows for an extension of term of up to 5 years for pharmaceutical patents. This means that a patent may have a maximum 25 year term.
16 Sep 2019
A Full Bench of the Federal Court of Australia has dismissed the Encompass Corporation Pty Ltd (Encompass) appeal of the decision Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 (29 March 2018), where the claims of two of Encompass’ innovation patents were determined to be not directed to a ‘manner of manufacture’.
04 Sep 2019
In July 2019 during a visit to the UK, Australia’s Treasurer Josh Frydenberg was asked at a business event whether he would consider introducing a patent box into Australia. In response, the Treasurer said: “We need to have a tax regime around intellectual property to attract companies and maintain their investments in Australia”. The question for Australian companies is: is this a politician’s thought bubble or is the Australian government genuinely interested in fostering innovation by providing an incentive for businesses to obtain Australian patents for products that are generating a commercial return?
30 Aug 2019
Filing a trade mark in black and white in Australia is considered generally to provide broad protection, being ‘deemed’ to cover all colours. It is also possible to file for a “series of marks” which differ only in colour, and this may be useful when a mark is used in colour and also in black and white, or when the broader protection of a black and white registration is wanted. However, in some circumstances, filing in colour may be the better option.
27 Aug 2019
The 30th Southern Highlands Conference on Heterocyclic Chemistry concludes today with Professor Mary Garson AM as President. Michael Moore is attending this annual conference which sees the Australian chemistry community and international visitors converge on Moss Vale for two and a half days of posters and oral presentations on the exotic structures, function and bioactivity possessed by heterocyclic compounds.
21 Aug 2019
The Patent Prosecution Highway (PPH) is a highly effective process to obtain early examination of an application in a participating jurisdiction. Whilst the details of the process vary from jurisdiction to jurisdiction, the intention is to provide applicants with a means of efficiently advancing prosecution of corresponding applications in participating parties.
09 Aug 2019
The process of bringing a pharmaceutical product comprising a new active ingredient to market is an expensive and lengthy venture. It often takes numerous years, as well as a considerable amount of capital, to navigate through the R&D stages, clinical environment and regulatory agencies to finally release the new pharmaceutical onto the market. The pharmaceutical sector relies on Intellectual Property (IP) rights, such as patents, as an incentive for this investment.
08 Aug 2019
For those involved in developing export markets, the Export Market Development Grant (EMDG) can provide a reimbursement of up to 50% on eligible expenditure. Importantly for FB Rice clients, this includes Overseas IP related costs including patent and trademark registration, up to a maximum of $50,000.
07 Aug 2019
New Zealand’s government recently proposed sweeping changes to its divisional patent practice. If implemented the changes will see New Zealand divisional patent practice become one of the most restrictive, and certainly in marked contrast, to Australian divisional patent practice.
01 Aug 2019
We are thrilled to announce the promotion of Andrew Gregory to Senior Associate.
23 Jul 2019
FB Rice is delighted that no fewer than six of our Attorneys have been designated IP Stars for Australia in the 2019/20 edition of IP STARS. This special recognition is awarded to the top practitioners in private practice who have performed exceptionally for their clients and firms in the past year.
01 Jul 2019
FB Rice have had another busy financial year, providing a full suite of IP service strategy offerings to our clients at home and abroad. With a dedicated team that specialise across a broad range of industries and technologies, we can re¬spond to our clients IP needs with the right technical expert every time. We recruit the best people at the top of their game, and have committed to developing their careers with FB Rice.
25 Jun 2019
The words ‘beauty’ and ‘patents’ are rarely used together, unless you are talking to some passionate patent attorneys. Similarly, advertising the use of ‘chemistry’ or ‘chemicals’ in the manufacture of beauty products or cosmetics is rather unlikely. However, the three – chemistry, cosmetics and patents – constitute a successful formula that has been working for well over a century.
03 Jun 2019
FB Rice is always pleased to support the significant initiatives that IMNIS (Industry Mentoring Network in STEM) provides in connecting industry with academia.
29 May 2019
For the fourth year in a row, Trade Marks partner Joanne Martin has been recognised by Managing Intellectual Property (MIP) in the IP STARS Top 250 Women in IP 2019.
28 May 2019
FB Rice is pleased to announce that the firm has retained its Tier 1 Australian ranking in the 2019 Managing Intellectual Property (MIP) IP STARS survey for both Patent Prosecution and Trade Mark Prosecution.
23 May 2019
The ASEAN region is receiving an ever-increasing number of new patent filings. This article discusses how filing ASEAN patent applications through the ASPEC and/or GPPH programmes can streamline the prosecution of related patent applications in several, if not all, of the ASEAN countries.
22 May 2019
Design owners having registered designs covering spare parts of products such as motor vehicles may face difficulties in enforcing their rights here in Australia. This is because of the repair defence provisions included in the Australian Designs Act 2003. However, suppliers of aftermarket parts can benefit from these provisions.
20 May 2019
As the largest economy in South-East Asia, Indonesia is an attractive and valuable jurisdiction for patent protection. While Indonesia has largely been a major importer of manufactured goods and technical skills, the economy of Indonesia has recently shifted towards manufacturing and trade. Accordingly, the Indonesian government is keen to promote technology transfer and encourage local job opportunities and has introduced a working requirement for Indonesian patents and has recently further clarified the process.
10 May 2019
The Medical Device Partnering Program (MDPP) fosters collaborations between researchers, industry, end-users and government to develop medical technologies with global market potential. FB Rice is proud to support the efforts of the MDPP and look forward to supporting their progress into the future.
06 May 2019
IP Australia has recently released its seventh edition of the Australian Intellectual Property Report. The Report reveals that all IP rights applications grew in 2018, with IP Australia considering this a reflection “the IP system has had to Australia’s economic growth over the past 26 consecutive years”.
01 May 2019
A reminder for trademark owners to ensure that, even if a mark is in use, if such use is by a third party with consent, the mark may be vulnerable to cancellation for non-use if the statutory definition of “authorized use” is not met.
29 Apr 2019
In a bid to protect Australian wine exports from ‘copycat labels’, the Federal Government has committed AU$427,000 in funding to the development of a Wine Label Intellectual Property Directory. The proposed directory is part of the Government’s AU$50M Export and Regional Wine Support Package.
01 Apr 2019
The recent acceptance of the trade mark CHUNKY in the USA for Campbell‘s CHUNKY soup provides an indication of the efforts needed to obtain registration of a word which has low inherent adaptation to distinguish.
29 Mar 2019
Wednesday 27th March 2019 marked a memorable evening for FB Rice; a group of staff were thrilled to attend the Australian Financial Review (AFR) Client Choice Awards in Melbourne. These awards recognise the services provided by professional service firms, like lawyers, accountants, consulting engineers and patent attorneys. Research is independently conducted by Beaton, and is the only client-voted professional services awards in the world.
06 Mar 2019
FB Rice celebrated International Women’s Day (IWD) 2019 and #BalanceforBetter with a morning tea in each of our offices. This gave us an opportunity to discuss the issues which women face in today’s workplaces. There was a general consensus and support in favour of the following themes presented by organisers of international Women’s Day.
27 Feb 2019
On 11 February 2019 the Senate Committee issued a report requesting the government to defer consideration of the Treasury Laws Amendment (Making Sure Multinationals Pay Their Share of Tax in Australia and Other Measures) Bill “until the impact of these changes is better understood”.
25 Feb 2019
On 24 February 2019 the remainder of a number of IP legislation improvements under the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 will come into force. The amendments are designed to streamline the administration of Australia’s IP system. For trade mark owners, as of 24 February 2019, an amendment to section 93 of the Trade Marks Act 1995 (the Act) reduces the grace period for which a trade mark will become vulnerable to removal or partial removal (limitation) for non-use.
20 Feb 2019
We are thrilled to announce the promotion of Toby Thompson to Senior Associate.
15 Feb 2019
In Vokes Ltd v Laminar Air Flow Pty Ltd [2018] FCAFC 109, the Full Court of the Federal Court of Australia affirmed the primary judge’s decision in Laminar Air Flow Pty Ltd v Registrar of Trade Marks [2017] FCA 1447 that the Registrar’s power to correct errors under section 81 of the Trade Marks Act 1995 (Act) is narrow and limited to errors made by the Registrar, and not those made by other persons.
12 Feb 2019
The long-awaited World Trade Organization Dispute Settlement Panel’s decision regarding Australia’s legislation requiring tobacco products be sold in plain packaging, was handed down on 28 June 2018. In its almost 900-page decision, the WTO placed the Australian Government’s objective of the Tobacco Plain Packaging Act 2011 (Cth), to improve public health by reducing the use of and exposure to tobacco products,1 above the rights of trade mark owners in rejecting all of the complainants’ claims that the TPP violated Australia’s international trade obligations, including the trade mark provisions under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
04 Feb 2019
We’re excited to announce FB Rice was named the Australian “Patent Attorney Firm of the Year” at the inaugural Global IP Awards, held at the Plaisterers’ Hall in London on 29 January, 2019.
31 Jan 2019
In mid January the UK parliament rejected the draft Withdrawal Agreement provisionally agreed between the UK government and the EU last November. This week proposed amendments were also rejected by both sides of parliament. It is fair to assume that the Withdrawal Agreement is off the table. The EU says it will not re-open negotiations. With the UK expected to leave the EU on 29 March 2019, it appears it will be a “no-deal Brexit”.
18 Jan 2019
For those planning to trade with China, whether to manufacture or sell branded products or provide services, it is essential to file for trade mark registration early.
01 Jan 2019
It is with great delight that we announce the promotion of Will Morgan to Senior Associate.
19 Dec 2018
The Australian Federal Court sets the record straight on what constitutes a patent to be eligible for a computerised business method type invention in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988.
19 Dec 2018
Michael Moore enjoyed attending the 6th international conference on metal-organic frameworks and open framework compounds (MOF2018) held in Auckland last week. MOF2018 did not disappoint covering the full range of research into framework compounds over a number of concurrent streams: gas adsorption, capture and storage; catalysis; conductivity; design and applications.
17 Dec 2018
We are delighted to congratulate senior associates Cameron Smith, Jess Gledhill, and Lee Miles on being named MIP Rising Stars. On 12 December 2018, ManagingIP (MIP) announced the MIP Rising IP Stars for 2018.
04 Dec 2018
Samuel Elnajar from FB Rice is a co author to a recently published article in the European Journal of Prosthodontics and Restorative Dentistry, titled “A Novel Methodology to Validate the Accuracy of Extraoral Dental Scanners and Digital Articulation Systems
30 Nov 2018
FB Rice congratulates Alan Lee and Elmich on two significant points of international recognition for the Singapore-based SME. Elmich which operates with offices in Malaysia, Australia, Switzerland, Germany, Austria and the United States, recently gained international recognition in laying the foundation for a more sustainable ecosystem; a leading provider of state-of-the-art and ecologically-minded urban landscaping, drainage, and storm water management solutions.
29 Nov 2018
New Zealand looks set to introduce a new one-year grace period into the Patents Act 2013 after ratifying the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) on 25 October 2018.
20 Nov 2018
Michael Seifried was proud to accept the award for ‘Australian Trademark Firm of the Year’ on behalf of FB Rice, at the recent Asia IP Awards in New Dehli.
19 Nov 2018
The position regarding the valid registration of designs for graphical user interfaces (GUIs) in Australia is currently unclear. We discuss below the registration of GUI designs in Australia, and steps that may be taken to maximise opportunities for successfully obtaining valid Australian design rights.
08 Oct 2018
FB Rice will be hosting two events on 'How to use Intellectual Property to grow your business' during Small Business Month which has been funded by the NSW Government.
04 Oct 2018
On 28 June 2018, the World Trade Organization (WTO) dispute settlement panel handed down its decision finding that Australia’s legislation requiring tobacco products be sold in plain packaging does not violate its trade obligations. The WTO panel found the legislation contributed to Australia’s objective of improving public health by reducing the use of, and exposure to, tobacco products and to be an integral part of Australia’s comprehensive tobacco control policies.
04 Oct 2018
FB Rice is proud to be sponsoring this year’s IPBC Australasia 2018 Congress held on 25 October at the Sofitel in Melbourne.
03 Oct 2018
Michael Moore was pleased to attend the The Royal Australian Chemical Institute Natural Products Chemistry Symposium at UNSW last Friday featuring speakers Prof Nigel Perry, Prof Leslie Weston and Prof Brett Neilan.
27 Sep 2018
In Bohemia Crystal Pty Ltd v. Host Corporation Pty Ltd, [2018] FCA 235 (Mar. 6, 2018), the Federal Court of Australia found the marks BOHEMIA and BOHEMIA CRYSTAL are not to any extent capable of distinguishing glassware, nor are they considered factually distinctive by virtue of their use, and should be removed from the Register.
10 Sep 2018
It is a long-standing principle of Australian patent law that determining whether or not a patent application is directed towards patentable subject matter should be done separately to determining issues of novelty and inventive step. However, amendments to the Australian Patent Examiners Manual late last year introduced a new practice, encouraging consideration of prior art when assessing subject matter eligibility, which in Australia includes the requirement that the invention be a manner of manufacture.
06 Sep 2018
IP practitioners are concerned that the WTO ruling on plain packaging encroaches on IP rights and could spell trouble for other industries
03 Sep 2018
The prospect of a second-tier patent system in New Zealand has failed to advance past first base, with the New Zealand Government halting the progress of the “Advancement Patent” following its first reading.
15 Aug 2018
Lara Gun recently contributed to an article in the International Trademark Association (INTA) Bulletin with respect to The Federal Court of Australia’s decision in Laminar Air Flow Pty Ltd v. Registrar of Trade Marks.
07 Aug 2018
A new consultation regarding legislation that will change the way inventive step is considered for Australian patents has been announced, with the intention being to raise the threshold by aligning with European standards. In future, the EPO “problem-solution” test will usually be adopted when assessing inventive step in Australia, which is a different assessment from the lower level problem-solution assessment currently used here.
25 Jul 2018
At the last minute, an international supermarket chain retracts a replica side table from sale however continues to plan sales of a range of replica products which potentially could be prevented by the local design community engaging with registered IP.
03 Jul 2018
The ACTI Bootcamp will provide CEOs and senior Australian executives of health and medtech companies the knowledge to assist them develop a high-level China market entry plan and business strategy.
02 Jul 2018
The last financial year has been busy at FB Rice. We have enjoyed working with our terrific clients in delivering high quality IP advice. Recruitment is important at FB Rice and we pride ourselves on having the best attorneys – those not only with high quality expertise to fill our diverse industry sectors teams, but excellent communicators who can think laterally to provide the most commercially sound and savvy advice to our clients. We are so pleased to announce some recent promotions within the firm.
25 Jun 2018
With 30 June fast approaching, now is the time for companies to review their tax positions and ensure they have their R&D activities documented and R&D expenditure properly incurred prior to year end.
07 Jun 2018
The Australian innovation patent has been granted a second chance, with the recently introduced Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 (“the Bill”) being absent of the previously proposed amendments that would see the innovation patent abolished.
31 May 2018
In certain circumstances, R&D activities conducted overseas may qualify to claim the R&D tax offset at the same rate as a company’s Australian based R&D however overseas activities are subject to additional criteria and the issue of the ‘Overseas Finding’.
29 May 2018
Functionally defined genus claims are vulnerable to invalidity based on lack of written description support, particularly where it is difficult to establish a correlation between structure and function of the whole genus or to predict other species falling within the genus.
22 May 2018
We are delighted with the news that so many of our Partners have been singled out as IP Stars by leading intellectual property magazine Managing Intellectual Property (MIP).
18 May 2018
There have been a small number of decisions in Australia dealing with registrability of Colour Word marks. There has been a change in approach by IP Australia which is more restrictive, particularly regarding granting rights for primary and secondary Colour Word marks, such as the words red, blue, yellow, green, orange and purple.
11 May 2018
On 26 April 2018 the UK government ratified the agreement aimed at establishing the long-awaited Unified Patent Court (UPC) in Europe. The fate of the UPC now rests with Germany as the only remaining country still required to ratify the agreement before it can come into effect. There remains some uncertainty around exactly when that will happen. Nevertheless, the UK’s ratification represents a significant step towards implementation of a radically different framework for patent enforcement in Europe. We recommend that Australian and New Zealand companies take note in preparation for the changes ahead.
09 May 2018
Last night’s Federal Budget saw the Treasurer Scott Morrison announcing a reduction in the Research and Development Tax Incentive program expenditure by $2.4 billion over four years.
07 May 2018
Based on a recent decision by New Zealand’s Intellectual Property Office (IPONZ), patent applicants wishing to amend the specification during examination in New Zealand no longer need to provide a specific statement of support in the original specification for each and every proposed amendment.
01 May 2018
FB Rice is delighted to announce that for the third year in a row, Trade Marks partner Joanne Martin has been recognised by Managing Intellectual Property (MIP) in the IP STARS Top 250 Women in IP (2018).
26 Apr 2018
As part of World Intellectual Property Day, FB Rice would like to take this opportunity to celebrate the achievements made by women in IP and in particular, highlight the achievements of one of our clients, Meagan Redelman, co-founder of Redsbaby.
16 Apr 2018
A registered mark provides a number of benefits; the right to exclusive use of the mark for the goods and services covered, the right to sue for infringement, as a deterrent to competitors from using the same or similar mark, and as a hurdle to registration of similar marks by competitors. The question is which version of the mark should be registered to maximise these benefits? It is a strategic decision and one that is useful to discuss with your trade mark attorney to ensure the best outcomes.
06 Apr 2018
A Private Member’s Bill proposed to be introduced for debate in New Zealand’s Parliament may provide New Zealand innovators access to a second-tier patent system, affording them the opportunity for patent protection for inventions that may not qualify for a standard patent.
29 Mar 2018
The thought of the cocoa bean extinction on the horizon due to climate change gives me the shivers. Without cocoa beans, there is no chocolate! Don’t panic; science and innovation is working towards future-proofing the chocolate industry.
22 Mar 2018
FB Rice is delighted to announce that the firm has been voted the "Australian Patent Prosecution Firm of the Year" by the internationally renowned journal, Managing Intellectual Property (MIP).
16 Mar 2018
FB Rice are excited to be partnering with LESANZ for the Welcome Reception as part of the LESANZ Annual Conference being held in Adelaide, 21-23 March.
15 Mar 2018
FB Rice is delighted to announce that it has been awarded Best IP Specialist Firm at the Client Choice Awards held in Melbourne.
09 Mar 2018
From 5 April 2018, various amendments to the Patents Regulations 2014 come into effect in New Zealand to address a few unintended problems arising from the new Patents Act 2013 and its Regulations. Issues being fixed include addressing filing requirements around divisional claims and microorganism deposits.
26 Feb 2018
ASEAN is a region of rapidly developing economies. For companies who wish to enter the Asian and ASEAN markets, whether for product manufacture or sales of products and services, the most effective strategy is to file key marks very early.
13 Feb 2018
FB Rice wishes you wealth and prosperity for the year of the Dog.
12 Feb 2018
We are thrilled that the 2018 edition of WTR 1000 - The World's Leading Trademark Professionals has acknowledged Partner Joanne Martin and Senior Associate Michael Seifried for their expertise in Trade Marks.
08 Feb 2018
For the fourth year in a row, our Trade Marks team has been ranked Tier 1 for Trade Marks prosecution by Managing Intellectual Property. The IP STARS survey is recognised by the IP industry globally as a key benchmark for the industry.
07 Feb 2018
Following the somewhat unexpected resurrection of the TPP (now officially the CPTPP – Comprehensive and Progressive Agreement for Trans-Pacific Partnership), with all 11 members expected to sign off on the revised agreement in March this year, Australian farmers are being flagged as one of the big winners of the deal.
22 Dec 2017
"Microeconomics for Software Patents” in Asia IP Vol 9, Issue 9, October 2017
11 Dec 2017
FB Rice is delighted to announce the opening of its Brisbane Office.
01 Dec 2017
Draft legislation is underway to commence the phasing out of the Australian innovation patent. The draft legislation follows the government response in August to the recommendations of the Productivity Commission inquiry into Australia’s Intellectual Property Arrangements.
25 Sep 2017
Obtaining registration rights early can prevent brew branding headaches and significant outlays down the track as your business expands.
16 Sep 2017
At FB Rice, we recognise that diversity is a strength and that we are a better firm for having people with different ethnicity, sex, gender identity, sexual orientation and backgrounds.
19 Jul 2017
On 6 July 2017, the Intellectual Property Office of New Zealand (IPONZ) became the latest member to join the Global Patent Prosecution Highway (GPPH).
07 Jun 2017
Asia IP has released their rankings for 2017, and we are delighted to have received a Tier 1 ranking for Patent Prosecution. This ranking is testament to our commitment to clients in Australia and abroad, and we look forward to continuing to provide this service.
07 Jun 2017
Software patents have been the subject of controversy for some time. According to the most recent Australian court decision Commissioner of Patents v RPL Central Pty Ltd1 (RPL Central), the relevant question is whether the invention is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology.
06 Jun 2017
Today, we write about two new cases from the AAT. The first, Rix’s Creek Pty Ltd; Bloomfield Collieries Pty Ltd and Innovation and Science Australia (2017) AATA 645, gives good insight into how the AAT has recently treated the eligibility requirement around R&D activities and the need for appropriate supporting documentation and records. The second, DZXP, KRQD and QJJS v Innovation and Science Australia (2017) AATA 573 highlights the importance of ensuring you are claiming under the correct entity. We discuss these cases and conclude with three key lessons.
22 May 2017
Any applicant for patent protection in Australia must disclose the best method for performing the invention known to it at the time of filing a complete application. Failing to disclose the best method will impact not just one or two claims, but can invalidate an entire patent.
21 Apr 2017
In February 2017, the long awaited agreement between the Australian and New Zealand governments to standardize the regulation of the patent attorney profession came in to effect. Part of this process was the establishment of a Trans-Tasman IP Attorneys Board and a review of the Attorneys’ Code of Conduct. The Board is now undertaking the review of the Code and must make any appropriate amendments by February 2018, based on industry consultation and comment. In addition, the Board will undertake a review of the Code’s conflict of interest provisions.
06 Apr 2017
The Australian Government has released the National Science Statement setting out its long term vision and objectives for Australian science as part of the overarching National Innovation and Science Agenda.
28 Mar 2017
The ATO together with AusIndustry have issued several Tax Alerts in the past weeks regarding the R&D Tax Incentive. The Alerts have raised a degree of alarm amongst claimants that this is the beginning of a strategy to rein in the cost of the R&D Tax Incentive.
16 Mar 2017
In Australia, sufficiency is a requirement for patentability and goes to whether a patent specification provides adequate information to the skilled person to perform the claimed invention. Legislative change in 2013 ushered in new patentability standards including a raised test for sufficiency.
08 Mar 2017
Awards season is in full swing for 2017, and building on last year's success, we are very excited to announce our Patent and Trade Marks teams have both been ranked Tier 1 for Trade Mark prosecution by Managing Intellectual Property IP Stars.
07 Mar 2017
There are still few cases that have been decided through the AAT in relation to the R&D Tax Incentive program since its inception in 2011. The two main entities that have brought actions are Innovation Australia and the Australian Taxation Office. These cases each involved the legislative requirement that companies maintain contemporaneous documentation of their experimental activities and associated costs in order to claim the R&D Tax Incentive offset. In view of these decisions, we set out the key points to remember in claiming the R & D Tax Incentive.
07 Mar 2017
The inaugural round of the Victorian Medical Research Acceleration Fund aims to support the translation of early stage health and medical research into better health outcomes for patients, whilst also boosting the economy with job creation and further investment into Victoria’s medical research sector.
02 Mar 2017
The Acquisition International IP Excellence Awards for 2017 have been announced, and we are honoured to be awarded Best IP Strategy Firm - APAC as well as AI Excellence Award for Trademark Prosecution - Antipodes.
27 Feb 2017
A recent proposal by the Intellectual Property Owners Association (IPO) to amend 35 U.S.C. § 101 could bring positive change to applicants attempting to acquire patent rights for computer implemented inventions in the US.
17 Feb 2017
The Enlarged Board of Appeal of the EPO has taken the opportunity afforded by the referral of T05557/13 (as discussed in our previous post) to eliminate the chance of self-collision of patents/patent applications once and for all. The full decision G1/15 can be found here.
15 Feb 2017
‘… we need to significantly lift our game if we want to be a top tier innovation nation’ - Bill Ferris AC, Chair of Innovation Science Australia’s Board.
08 Feb 2017
The FB Rice tax team has put together 5 tips to ensure your claims are maximised and ‘Audit Ready’. 1. Work out your hypothesis and start with a plan 2. Assign an R&D Champion/Single Point of Contact
31 Jan 2017
The Federal Court of Australia decided in favour of our client, Merial, Inc., that Merial’s lack of entitlement ground of opposition was clearly established and that Intervet is not entitled to the grant of Australian patent application No. 2009203180 (Merial, Inc. v Intervet International B.V (No 3) [2017] FCA 21). This decision arises from an appeal of a patent office decision.
31 Jan 2017
Companies should be aware that they have up to ten months after the end of the financial year to lodge their R&D Tax Incentive Application for that financial year.
16 Jan 2017
Inventorship has been described as “one of muddiest concepts in the muddy metaphysics of the patent law.” Mueller Brass Co. v. Reading Industries, Inc., 352 F.Supp. 1357, 1372 (E.D.Pa. 1972). Determining inventorship is a complex issue that is undertaken on a much stricter basis than authorship of a scientific publication. It can also be a particularly contentious issue when people are not named as inventors. Not only can this lead to alienation, but it can also lead to legal issues. For example, a patent may be invalid if incorrect inventors are intentionally named. During litigation, a defendant may also be able to identify an unnamed inventor and obtain an assignment from them, thereby qualifying as a co-owner of the patent and no longer subject to the litigation.
20 Dec 2016
Outcomes impacting inventive step threshold, the innovation patent, and trade mark non-use provisions included in the Australian Productivity Commission report on Intellectual Property Arrangements.
19 Dec 2016
On 15 November 2016, the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill (“Bill”) passed its final reading in New Zealand’s Parliament, and is due to come into force no later than 24 February 2017.
04 Nov 2016
The New Zealand Government has essentially advised that it proposes to retrospectively implement changes to the transitional provisions of the new Act so that divisional applications filed from old Act applications are examined and granted as new Act divisionals.
18 Oct 2016
The Australian Patent Office (APO) has determined that claims directed to a composition comprising double-stranded RNA (so-called “interfering RNA” or “iRNA”) is a manner of manufacture (patent eligible subject matter) in accordance with Section 18(1)(a) of the Patents Act.
11 Oct 2016
The Government released the R&D Tax Incentive Review report for public consultation last week and called for business, industry and the research community to have their say. Interested parties can submit a response to the Review by October 28.
05 Oct 2016
Australian businesses have developed a sophisticated understanding of trade mark protection in China, however protection and enforcement can still bring surprises. As Australia’s trade with China continues to grow, the need for clever strategies for brand protection also grows.
20 Sep 2016
Interested in learning more about the IP agreement membership status of various member states? We've got you covered.
12 Sep 2016
In August 2015, we reported on a decision of the Australian Patent Office dealing with three applications by Abbvie Biotechnology for extensions of term to its Australia Patents 2012261708, 2013203420 and 2013257402 on the basis of ‘Swiss-Style’ claims.
07 Sep 2016
With Europe’s tobacco-products legislation moving forward, Lisa Neilson reviews the lessons learned from Australia’s earlier action.
06 Sep 2016
Monoclonal antibodies are important human therapeutic agents and represent some of the largest selling drugs in the world. Patents relating to antibodies are treated differently to some other compounds in some jurisdictions. This article touches on some of the important requirements for antibody patenting in some major Asian jurisdictions, namely Japan, China and South Korea.
29 Jul 2016
The Intellectual Property Office of Singapore (IPOS) recently set a higher bar for allowance of post-grant amendments. The change in practice follows decisions in Ship's Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pty Ltd & Ors [2015] SGHC 159 and more recently Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2016] SGHC 106 where the Singapore High Court affirmed the guidelines for allowance of post-grant amendments set down in the UK.
19 Jul 2016
On 13 July 2016, the New Zealand Parliament’s Commerce Committee released an updated Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill (“Bill”) recommending the provisions regarding the new single patent application process (SAP) and a single examination process (SEP) be removed.
18 Jul 2016
3D printing has been heralded as a disruptive technology, driving creativity and innovation. 3D printing has also potentially made counterfeiting of products much easier. The full impact on industry is perhaps only beginning to be felt as the cost of 3D printers has dropped and they have become more prevalent.
15 Jul 2016
The Trans-Pacific Partnership is back in the news, today, with US Senator Orrin Hatch accusing Australia of wanting to steal American patents.
06 Jul 2016
In line with President Obama’s recent call for a “Cancer Moonshot” (a US$1 billion initiative to achieve 10 years’ worth of cancer research in the next 5 years) the USPTO announced its “Cancer Immunotherapy Pilot Program” to accelerate examination of patent applications relating to cancer immunotherapy. The USPTO aims to complete patent examination for cancer immunotherapy applications under this program in 12 months or less.
30 Jun 2016
On 1 July 2016, the Patent Prosecution Highway (PPH) pilot program between the Australian Patent Office and the European Patent Office (EPO) begins.
27 Jun 2016
On 23 June the UK voted to leave the European Union, creating widespread uncertainty over the economic futures of both the UK and the EU. Here we answer the immediate questions about what impact the “Brexit” has on your IP rights.
21 Jun 2016
Cultural change is at the core of the new National Innovation and Science Agenda, say its proponents. Australia has a science and innovation problem. By now, most of us are aware of the bleak statistics – Australia is ranked ninth in the Global Innovation Index in respect of the calibre of its science institutions, yet 72nd for innovation efficiency. So why do we continue to have such trouble traversing the gap between scientific research and innovation?
16 Jun 2016
There are three main reasons to consider including defensive registrations in trade mark portfolio protection strategies.
14 Jun 2016
New Zealand is currently in transition between its former 1953 Patents Act (“old Act”) and its new Patents Act 2013 (“new Act”) and significant differences exist in practice including for divisionals. What does this mean for you?
09 Jun 2016
The Australian Patent Office (APO) recently issued its first patentable subject matter decision post-RPL, being FOXTEL Management Pty Ltd v British Broadcasting Corporation [2016] APO 19 (“the FOXTEL decision”), finding that a system for providing access to broadcast content on a scheduled basis was a manner of manufacture for the purposes of s18(1)(a) of the Patent Act (1990). In particular, it was found that the substance of the invention related to a technological innovation, rather than a scheme or business method, and accordingly, that the claims were directed toward patentable subject matter.
16 May 2016
FB Rice is very excited to be sponsoring the Murdoch Childrens Research Institute's latest program - Bytes4Health: Powering Up Digital Health Start Ups - which has just launched!
11 May 2016
Now that the RPL Central decision has been endorsed by the High Court, we expect IP Australia to refer to this decision more often during examination of computer implemented inventions. In particular, we expect IP Australia to raise patentable subject matter objections to claimed inventions where the substance of the invention is in the idea or business method, rather than in a new and useful effect in a computer.
11 May 2016
New guidelines issued from the USPTO provide some positive insight as to how claims to diagnostic methods will be examined for patent eligibility.
06 May 2016
This week’s Federal Budget had some good news for Australian companies with the introduction of the reduction in company tax rate from 30% to 27.5% for companies with a turnover of less than $10M. This follows on from last year’s budget in which companies with a turnover of less than $2M saw a reduction to 28.5% now decreased to 27.5%.
05 May 2016
Joanne Martin name one of the world's top women in IP by Managing Intellectual Property
20 Apr 2016
The proposed 1.5% cut to the R&D tax incentive will not go ahead as the Bill before the Senate has lapsed, and will not proceed.
12 Apr 2016
As discussed in our related post, the Full Court of the Federal Court has held that computer-implemented business methods are patentable in Australia, but only if the invention resides within the actual implementation of the business method by the computer.
20 Mar 2016
FB Rice is pleased to announce the addition of a new R&D Tax Consulting group to its business. FB Rice R&D Tax Consulting will assist organisations with maximising the tax benefits associated with their eligible Research and Development activities.
18 Mar 2016
In the complex arena of trade mark protection in China, a multi- faceted approach provides the best opportunity for enforcement of rights. Registration of copyright in stylized word marks, logos and designs/labels is one right in the ‘bundle of rights’ which can be obtained.
16 Mar 2016
For US patent applications filed post introduction of the America Invents Act (AIA) (which changed from first-to-invent to first-to-file), sale and offer for sale made in confidence of a product that is subsequently patented will not count as prior disclosure in the United States. Put simply, secret use is not prior art for post-AIA applications.
08 Mar 2016
Australia is now a member of the Trans-Pacific Partnership, despite the large amount of negative publicity it initially received. Joanne Martin, FB Rice, explores the effects of the TPP from the perspective of Intellectual Property Law, and for the country more generally.
03 Mar 2016
FB Rice is delighted to announce that for the first time ever, the firm is ranked Tier 1 in the annual Managing Intellectual Property for both Patent Prosecution and Trade Mark Prosecution.
18 Feb 2016
The decision in another AAT case dealing with the R&D Tax Incentive was released on the 22nd of January 2016 highlighting the increased audit and compliance activity by Innovation Australia (through AusIndustry) and the Australian Taxation Office (‘ATO’) in this area.
04 Feb 2016
FB Rice is very excited to be a finalist in Australian Prosecution category of the annual Managing IP Global Awards for the third year running. These awards recognise outstanding firms throughout the world for their work over the past twelve months.
25 Jan 2016
The first Administrative Appeals Tribunal (‘AAT’) decision relating to the R&D Tax Incentive has been handed down in the case of Docklands Science Park Pty Ltd and Innovation Australia [2015] AATA 973 (16 December 2015) and it has echoed cases decided in the past.
01 Jan 2016
It is with great delight that we announce the promotion of Andrew Gregory to Associate at FB Rice. Andrew is a Sydney-based member of our Pharmaceuticals and Nanotechnology teams.
16 Dec 2015
The Full Court of the Federal Court of Australia recently decided that a claim for gathering evidence relevant to an assessment of an individual’s competency did not constitute patentable subject matter (Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177).
09 Dec 2015
National Science & Innovation Agenda, Australia, BioMelbourne
07 Dec 2015
Australian Prime Minister, Malcolm Turnbull, has announced the federal government’s latest push to grow innovation in Australian industry through The National Innovation and Science Agenda. The Federal Government will invest over $1bn over the next four years in order to promote R&D in Australia. It is predicted that this comprehensive agenda will drive prosperity and competitiveness throughout the country, resulting in the growth of jobs and investment. It also paves the way for Australia to more aggressively compete in the international market.
19 Oct 2015
The Australian Patent Office proposes to exclude nucleic acids coding for polypeptides from patentability and retain patent eligibility for most other naturally occurring products, such as antibodies, polypeptides and stems cells. The proposal from IP Australia has issued in light of the High Court of Australia’s ruling that an isolated nucleic acid, coding for a mutant BRCA1 protein, is not a "patentable invention".
15 Oct 2015
In line with plans to strengthen Singapore’s patent system, the Intellectual Property Office of Singapore (IPOS) has recently announced plans to introduce further changes to its patent examination process which are expected to become effective as of 1 January 2017.
09 Oct 2015
The IP Toolkit for Collaboration was jointly developed by the Department of Industry and Science (as it was at the time) and IP Australia. It is intended to be a guide and not a replacement for legal advice.
07 Oct 2015
Today the High Court unanimously allowed an appeal from a decision of the Full Court of the Federal Court of Australia and held that an isolated nucleic acid, coding for a mutant BRCA1 protein, was not a "patentable invention". The question now is how this decision will be applied by the Australian Patent Office and by courts in the future when assessing patent applications or previously granted patents covering isolated nucleic acids. There is also a concern that the decision will be applied to patent applications and patents which cover other naturally occurring products, such as antibodies, polypeptides or stems cells.
03 Sep 2015
The EPO Board of Appeal decision T0557/13 has been published and with it, the questions being referred to the Enlarged Board of Appeal for guidance on the issue of partial priority of a claim. In G2/98, the Enlarged Board of Appeal held that a claim reciting a generic term or formula may be entitled to multiple priority dates if it gives rise to the claiming of “a limited number of clearly defined alternative subject matters”. This opinion has generally served as a legal test for assessing whether a claim is entitled to more than one priority date.
03 Sep 2015
The High Court on 2 September 2015 handed down its decision in the appeal by AstraZeneca against a finding of the Full Federal Court that the claims of its Australian Patent were invalid for being obvious. A copy of the decision can be found here. The High Court decision is consistent with that of the Full Federal Court. Generic companies that have already been marketing generic version of rosuvastatin will no doubt be breathing a collective sigh of relief in the wake of this decision.
01 Sep 2015
Australia’s Innovation Patent System is currently under review and is threatened with abolition. An IP Australia Economic Research paper, which issued in 2015, somewhat surprisingly suggested that the Innovation Patent System in Australia was not effectively stimulating innovation among Australian SMEs.
18 Aug 2015
Australian Treasurer, Joe Hockey, and Minister for Small Business, Bruce Billson, have announced that the Productivity Commission will begin an inquiry into Australia’s Intellectual Property system. The inquiry will review Australia’s balance between the protection of IP rights and the promotion of competition, and will assess whether the current system encourages innovation. International trade obligations will also be considered.
17 Aug 2015
FB Rice is very excited to have been named Lawyer Monthly's 2015 Intellectual Property Law Firm of the Year! We were selected as the outright winner in the category in Australia.
13 Aug 2015
This week has seen the passing of the Medical Research Future Fund (MRFF) in the Senate. The fund, established by the Australian Government, will be the largest of its kind in the world, ensuring that Australia remains at the forefront of medical research.
07 Aug 2015
Selection and registration of a company name or business name is often the first step in the start-up phase for businesses. Whilst this step is necessary, it is critical to recognize that a company or business name registration does not protect that name or provide rights in the name. It is a common misconception that business and company names are “the same thing” as trade marks. They are quite different. Registration of a company or business name satisfies the legal obligations of carrying on business under that name. On the other hand, a trade mark is a “brand”, and registration of a trade mark provides strong, enforceable rights.
06 Aug 2015
A very recent decision of the Australian Patent Office has upheld the current application of the law in relation to extensions of term in Australia, i.e., the following type of claims may be extended: • Claims defining the pharmaceutical substance per se; and • Claims encompassing products of recombinant DNA techniques (including process claims resulting in such products), even if the recombinant DNA technique is not recited in the claims.
30 Jul 2015
Names of buildings and precincts are registrable as trade marks if they are sufficiently distinctive. The name of a building and associated precinct should be registered as a trade mark for all services provided by the developer/owner and all the associated goods and services likely to be provided in association with the building. The trade mark rights should be appropriately licensed to authorised users.
28 Jul 2015
Often, a pharmaceutical does not earn revenue for a company until well into the patent term; sometimes this may be 15 years or more into the term. This delay, coupled with the cost of drug development recently estimated to be on average US$2.6 billion, it is not surprising that pharmaceutical companies seek to extend patent protection for as long as possible to maintain their market exclusivity. While follow-on patenting is sometimes portrayed as an abuse of the patent system by pharmaceutical companies, recent reports found that follow-on patents are not solely held by originator companies and that generic companies also typically file these types of patents.
01 Jul 2015
We are very excited to announce the appointment of Dr John Landells as a Partner of the firm. John is a member of the Chemistry team, based in our Melbourne office. He has many years of experience in the patent attorney profession and has a practice specialised across a broad range of chemical based technologies including pharmaceuticals, veterinary therapeutics, electroactive materials, adhesives, polymers, and food and dairy technologies.
25 Jun 2015
Mars Australia opposed registration of Delfi Chocolate’s trade mark MALITOS on 4 July 2013 – Anja Bartels reviews the Australian Trade Marks Office decision.
23 Jun 2015
Wondering how you can prevent counterfeits of your product from entering Australia? A Notice of Objection may be your saving grace. Partner Joanne Martin outlines the process and benefits of applying for Notices of Objection.
18 Jun 2015
Following over a decade of negotiations, the China Australia Free Trade Agreement was signed 17 June, 2015, paving the way for Australia to compete more aggressively in the Chinese market.
27 May 2015
FB Rice Partner, Jenny Petering, and Trainee Attorney, Prue Cowin, have collaborated with other authors on a new book titled ‘Intellectual Property in Molecular Medicine’, a Cold Spring Harbor Laboratory Press publication.
22 May 2015
Anja Bartels, Associate at FB Rice, shares her experience and insight on how you can minimise the risks of losing your IP rights.
14 May 2015
Searching and registration is needed in China, not only for your English language marks, but also for the Mandarin characters versions. In addition to creation of Chinese character version of your marks, it is useful to develop Chinese character version of your company name and address, as these are often needed for use on official documents.
07 May 2015
A number of areas have been identified in which ACIP believes the legislation could be improved and has put forth their recommendations on the matter. ACIP were asked to explore how effective the Designs Act 2003 had been in stimulating innovation in Australia and the impact on economic growth.
07 May 2015
This week, AusBiotech launched their ‘Guide for Australian medical technology companies seeking to engage in China’ (The China Guide). The Guide is intended for small to mid-sized Australian medical technology companies, including medical devices and diagnostics, looking to engage with and in China.
14 Apr 2015
The price of doing business in China can be high, writes the journalist John Garnaut about Australian citizens Charlotte Chou and Matthew Ng being jailed in China for fraud. Against this report of foreign businesses in China subjected the Kafkaesque nightmare of Chinese rule of law undermined by corruption and bribery at senior levels, the Australian China Business Council issued the 2014 China Trade Report.
07 Apr 2015
The Enlarged Board of Appeal (EBA) of the European Patent Office finally issued its decision regarding the patentability of plants and plant material in two long-awaited cases.
01 Apr 2015
China’s new trade mark law has only been in operation since 1 May 2014. It introduces new laws and practices to improve trade mark prosecution, to streamline opposition, and to combat piracy. It is still early days, such that significant differences in processes and outcomes are yet to be seen.
27 Mar 2015
We are pleased to have hosted a great Q&A for the Australia China Business Council (ACBC) last night, focusing on intellectual property.
09 Mar 2015
Last week the Managing Intellectual Property (MIP) survey results for Trade Marks were released, and FB Rice is now a Tier 1 firm for Trade Marks prosecution. The MIP survey is considered to be one of the benchmark IP surveys globally.
17 Feb 2015
The Australian High Court has allowed an application for special leave from the Appeal Court (Full Federal Court) decision in D’Arcy v Myriad Genetics Inc [2014] FCAFC 115. The High Court is the ultimate authority in Australia for deciding validity of patent claims.
16 Feb 2015
To get a better understanding of exactly what the risks, opportunities and best practices for technology and IP protection are, Austmine caught up with Charles Berman, patent attorney and a partner of intellectual property firm FB Rice. Charles has been in practice for over 25 years and has experience in a diverse range of technology fields including mining equipment and machinery, mechanical and electro-mechanical devices, construction systems and equipment, and business methods.
12 Feb 2015
In the recent Cantarella Bros Pty Ltd v. Espresso Enterprises Pty Ltd, s62A of the Trade Marks Act 1995, dealing with the notion of “bad faith” as a ground of opposition, challenged the boundaries of how far a company can push imitation of an existing trade mark. If imitation is the sincerest form of flattery and a great tool for parody, is there grounds to register it as a trade mark?
10 Feb 2015
Dr. Ken Seidenman discusses Patent-Eligible Subject Matter in the U.S. and how to best navigate the road ahead based on recent case law and the USPTO’s new interim guidelines on patent eligibility of “nature-based product" claims.
23 Jan 2015
In a 7-2 decision, the Supreme Court has held that an “appellate court [Court of Appeals for the Federal Circuit] must apply a 'clear error,' not de novo, standard of review” to the factual aspects of evidentiary underpinnings of a District Court's claim construction determination. The Court grounded its decision in Federal Rule of Civil Procedure 52(a)(6), which provides that in matters tried to District Court, the court's “[f]indings of fact . . . must not be set aside unless clearly erroneous.”
13 Jan 2015
The Australian Federal Government has recently introduced the Accelerating Commercialisation grants and services as part of the Entrepreneurs’ Infrastructure Programme. Accelerating Commercialisation helps Australian entrepreneurs, researchers, start-ups, inventors, commercialisation offices, and small to medium business overcome the challenges associated with commercialising novel products, processes and services.
08 Jan 2015
Just when it seemed the US Patent Office had relaxed its assessment of patent eligibility for certain types of subject matter relating to nature-based products, the latest chapter of the Myriad saga highlights the challenge of obtaining diagnostic method claims that meet the patent subject matter eligibility threshold in the U.S.
30 Dec 2014
FB Rice is pleased to advise that Paul Whenman has collaborated with other noted patent experts in producing a book titled ‘Patent Term Extensions’.
17 Dec 2014
After some delay, the US Patent Office (USPTO) has now released its 2014 Interim Guidance on Patent Subject Matter Eligibility, a copy of which can be found here.
17 Dec 2014
The European patent system is known for its procedural complexity and strict assessment of requirements to obtain patent protection, but recent changes suggest a desire to improve ease of use for applicants. The most recent rule change, in relation to search procedure for PCT applications entering the EP regional phase, was introduced in November 2014 and is a positive step towards increasing flexibility.
15 Dec 2014
As part of an ambitious international collaboration, Dr Lee Miles and colleagues decoded and analysed the genomes of three crocodilian species to gain insights into their evolution.
19 Nov 2014
The Federal Government will sign a free trade agreement (FTA) with China today that will see tariff reductions for dairy, beef, wine and horticultural producers. There are some key benefits also for Australia’s services sector.
14 Nov 2014
The Full Court of Australia recently decided that a claim for generating a weighted index of assets did not constitute patentable subject matter (Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150).
06 Nov 2014
In a world-first, the Australian Government has announced it will makes 100 years of intellectual property (IP) rights data available online, to make finding collaboration partners easier and allow the mapping of innovation.
24 Sep 2014
Take home message While many Australian traders register their marks in both the USA and Canada, certain hurdles under Canadian registration practice have been a deterrent for some traders. Within the next six to twelve months significant changes to Canadian trade mark law will remove these hurdles. Key changes are set out in the when, what, why answers below.
19 Sep 2014
UPDATE on Australian Federal Court decision regarding patentability of isolated nucleic acid molecules - application for special leave to appeal to the High Court made on 16 September 2014.
16 Sep 2014
You are likely to receive unsolicited requests offering trade mark publication, renewal or watching services –a list of the most common companies is set out below. These companies are in no way connected with our firm, our renewals service provider CPA Global or IP Australia and the services offered may be bogus, or for unnecessary services or at inflated charges. Whilst some of these companies are legitimate organisations which will attend to the actions offered, others are unlikely to, despite payment of fees.
19 Aug 2014
A new Patents Act 2013 will take effect on 13 September 2014 and provide a major update and modernisation of the previous Patents Act 1953. The new Patents Act 2013 significantly raises the threshold for patentability in New Zealand.
13 Aug 2014
Before the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was enacted, the Australian Patent Office expressed its intent to crack down on extensions of time to file evidence in patent oppositions. Now, over a year since the associated regulations came into force, it is clear that obtaining such an extension will be difficult.
08 Jul 2014
A bill to revise the Korean Patent Act was passed in the Korean Congress on 29 April 2014. This is a summary of the revisions, which will come in to effect on 1 January 2015.
08 Jul 2014
The Advisory Council on Intellectual Property (ACIP) has published its final report on its review of the Innovation Patent System. The following article discusses the key points highlighted by ACIP in their review.
26 Jun 2014
The US Supreme Court has handed down a unanimous ruling in the Alice Corp v. CLS Bank case . The Court has found the method claims of Alice’s patents to be directed toward an abstract idea of reducing settlement risk by effecting trade through a third-party intermediary and held that the generic use of a computer to implement the abstract idea does not add “significantly more” to render the abstract idea patent eligible within the meaning of 35 U.S.C §101.
10 Jun 2014
The USPTO has announced the launch of a new Glossary Pilot program designed to enhance claim clarity in patent specifications of software-related inventions. The pilot program commenced on 2 June 2014 and will run for an initial period of six months or until the USPTO has accepted 200 grantable petitions under the program whichever occurs first.
05 Jun 2014
The Supreme Court of the USA has recently handed down two important decisions in the field of Patent Law, one relating to inducement to infringe and the other one relating to indefiniteness of the claims of a patent.
28 Apr 2014
On 14 February 2014, legislative changes to the Singapore Patents Act and Patent Rules came into force and will now apply to any applications filed in Singapore on or after 14 February 2014. Lee Miles discusses the key changes.
27 Mar 2014
Prior to the introduction of the “Raising the Bar” changes to Australian Patent law in April 2013, the earlier deadline was six months from the date of the Direction to Request Examination. Under the new post-“Raising the Bar” regulations this deadline is now set at only two months from the date of the Direction to Request Examination.
25 Mar 2014
Some major changes are underway in New Zealand Patent Law. From 13 September 2014 a higher threshold for patentability will take effect.
10 Mar 2014
The Melbourne office of FB Rice will be closed on Monday 10 March 2014 for the Labour Day public holiday. The Sydney office will be open during this time.
10 Feb 2014
Dae-Woong Oh, a qualified Korean Patent Attorney, has been published on etnews.com, a Korean electronic/ICT industry specialised online news outlet.
17 Jan 2014
Connie Merlino, Partner at FB Rice and head of the ICT group, has recently co-authored an article in Managing Intellectual Property magazine, “Five approaches to software inventions”.
16 Jan 2014
The China Food and Drug Administration has published a draft regulation, GOOD SUPPLY PRACTICES FOR MEDICAL DEVICES, for comment in late 2013 and is expected to come into force shortly.
03 Jan 2014
As part of a team of researchers from the Faculty of Veterinary Science at the University of Sydney, Dr Lee Miles, who is a patent attorney within the Biotechnology team at FB Rice, has co-authored a scientific paper entitled, “Evolution of MHC class I in the Order Crocodylia”,which has been published in the first issue of Immunogenetics for 2014.
01 Jan 2014
FB Rice is pleased to announce the promotion of Eddie Walker to Senior Associate.
10 Dec 2013
A new species of Free Trade Zone (SFTZ) in Shanghai show encouraging references to IP intensive industries which are to be supported through new policies encouraging investment and innovation.
22 Oct 2013
A new Patents Act 2013 was introduced into New Zealand by Royal Assent on 13 September 2013. The Patents Act 2013 provides a major update and modernisation of the previous Patents Act 1953 and significantly raises the threshold for patentability in New Zealand.
15 Oct 2013
China’s Mindray Medical (revenues US $1B) has announced it has acquired Australian distributor Ulco Medical for an undisclosed sum. Ulco will be rebranded Mindray Medical Australia and serve as its branch office in Australia.
23 Sep 2013
Patrick McManamny discusses the difficulties that can arise when you try to patent treatment of a sub-population if you have previously disclosed treating the condition generally.
27 Aug 2013
A recent decision of the Australian Federal Court in Spirit Pharmaceuticals v Mundipharma proceedings was whether a patent claiming a controlled release formulation of a known drug is validly entitled to a patent term extension.
23 Aug 2013
Recent cases involving parallel importation before the Australian courts, focus has been on the issue of “consent”. It is therefore interesting that the International Trade Mark Association (INTA) has filed an amicus brief with the Indian Supreme Court.
21 Aug 2013
As we have reported previously, pharmaceutical companies have suffered numerous setbacks in India in relation to obtaining and enforcing patent rights. We take a quick look at further decisions and one company's novel approach.
14 Aug 2013
Do you know when Proof of Use is required in the US? Joanne Martin discusses.
08 Aug 2013
Of the various changes to trade mark law introduced by the Raising the Bar legislation this year, the least talked about is the increase in penalties for offences under the Trade Marks Act 1995. Joanne Martin discusses.
08 Aug 2013
Patrick McManamny discusses how pharmaceutical companies are struggling to obtain and enforce patent rights under India’s patent system. In recent weeks two further companies have suffered set-backs.
05 Aug 2013
An article by Dr Jenny Petering, Biotechnology Partner, was featured in the July 2013 issue of Australasian BioTechnology, the AusBiotech quarterly journal
13 Jun 2013
While the approaches of the USPTO and EPO to antibody patents may differ in some respects, there are some similar approaches that may assist with prosecuting in both jurisdictions. Patrick McManamny discusses.
05 Jun 2013
Patrick McManamny discusses several recent decisions in Indian Patent law that has set alarm bells ringing in the pharmaceutical/biotechnology industry.
30 May 2013
Biotechnology Partner, Jenny Petering, has been listed as one of the world's leading patent professionals by Intellectual Property Management.
29 May 2013
Patrick McManamny discusses the implications of the recent decision of the US Federal Circuit in Biogen Idec, Inc. v. GlaxoSmithKline LLC.
23 May 2013
IBISWorld has released a report which looks at intellectual property as one of the keys to success in this increasingly competitive new Infotronics Age and new century.
15 May 2013
Charles Berman, Partner of FB Rice and a member of our Mining and Technology Team, has published an article in Mining & Technology Australia 2013: "Innovation patents and their importace as a business tool".
18 Mar 2013
What is often misunderstood is that business and company names are not the same thing as trade marks, and so trade mark protection is overlooked.
04 Mar 2013
The Intellectual Property Laws Amendment Act 2012, (the Raising the Bar Act), will introduce some important changes to trade mark opposition proceedings in Australia from 15 April 2013. The aim is to tighten up the procedures and timeframes and reduce delays in resolving oppositions.
26 Feb 2013
Significant amendments to Australia's patent law come into effect from 15 April 2013.  The changes reflect a desire of the Australian government that Australian patents be subject to the same or equivalent patentability standards faced by patents in key trading nations.
18 Feb 2013
Myriad Genetics Inc. (“Myriad”) owns Australian Patent Number 686004 which includes claims to an isolated nucleic acid (e.g., DNA or RNA) encoding mutant or polymorphic BRCA1 polypeptides, as well as claims to methods for diagnosing a predisposition for breast or ovarian cancer by detecting the mutant nucleic acid.
04 Feb 2013
Chris Owens, Partner at FB Rice, features in the February issue of the Law Society Journal with his article ‘Raising the bar in intellectual property – amendments to patent laws’.
30 Jan 2013
The World Trademark Review 1000 publication for 2013, profiling the world's leading trademark professionals, has given FB Rice high praise for their skills and expertise.
02 Jan 2013
Semiconductor company Marvell Technology Group Ltd. has been ordered by a federal jury in Pittsburg to pay $1.17 billion to Carnegie Mellon University. The two patents at issue relate to technology for increasing the accuracy with which hard drive circuits read data from high-speed magnetic disks.
16 Dec 2012
From 15 April 2013, higher standards will apply to the assessment of patentability in Australia as a result of the “Raising the Bar” Act 2012.  The higher standards will apply to major aspects of patentability including inventive step, utility and written description and will take effect for all applications for which examination is requested on or after 15 April 2013.
03 Dec 2012
From today it is possible to file patent applications electronically at IP Australia. Since the official fee for filing an application electronically is AU$100 lower than for paper filing, electronic filing is now FB Rice’s preferred approach.
02 Dec 2012
Why should we consider risk in intellectual property (IP) rights? An underlying concept in answering this question is that IP rights — particularly, but not only registered IP rights — confer a degree of exclusivity. This exclusivity in turn can be a source of competitive advantage, and clearly the greater their value to your company, and consequently the greater the level of risk you may be exposed to if IP rights are not managed effectively.
19 Nov 2012
The vast majority of intellectual property disputes dealing exclusively with social media have settled out of court, and to date there have been no relevant trade mark cases in Australia. It is perhaps unsurprising that these issues are nipped in the bud; network providers such as Facebook and Twitter deal with potential infringers using almost identical, if simplified, legal principles adopted by the courts and present in international agreements.
29 Oct 2012
This is the first of several articles reporting details of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 as it relates to Australian Patent Law.  In this article we will take a look at Patent Prosecution under the amended law.
26 Oct 2012
Have you found yourself in a situation where a competitor has a patent or design that is causing you concern? Perhaps you have received a cease and desist letter from a competitor raising allegations of infringement. If so then there are a number of options that you should consider and which we can assist you with.
22 Oct 2012
In the United States, two possible types of indirect infringement are known, (i) induced infringement and (ii) contributory infringement. According to the doctrine of induced infringement, an act of actively inducing another party to infringe a patent shall itself be treated as an act of infringement.
19 Oct 2012
The article Taming the Dragon: Trade Mark Protection in China summarised the reasons for seeking registration in China earlier rather than later, and steps for obtaining effective trade mark protection to meet the challenges of Chinese law and practice.
01 Oct 2012
In the following, we explain changes to the Australian trade marks system which will come into effect on 15 April 2013.  The changes to the system will result from a combination of amendments to the Trade Marks Act 1995 (the Act) which have already been passed by the Australian Parliament in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and changes to the Trade Marks Regulations 1995 (the Regulations) which have not yet been released.
26 Sep 2012
The United States Supreme Court’s decision in Mayo Collaborative Services v Prometheus Laboratories, Inc (Prometheus) handed down on 20 March 2012 casts doubt on the patentability of process claims, particularly medical diagnostic claims, often referred to as “personalised medicine” claims.
24 Sep 2012
Have you found yourself in a situation where a competitor has a patent or design that is causing you concern? Perhaps you have received a cease and desist letter from a competitor raising allegations of infringement. If so then there are a number of options that you should consider and which we can assist you with.
30 Aug 2012
The Sydney Morning Herald article of 16 June 2012 reporting on misappropriation of HILL OF GRACE brands and labels of the Henschke wine family illustrates that Australian traders continue to face risk of brand piracy.
26 Jul 2012
Eddie Walker discusses the advantages of filing design registrations in comparison to patent applications.
03 Jul 2012
After a messy dispute between Apple Inc and Proview Taiwan over rights to the trademark “IPAD” in China, the parties have settled out of court, with Apple agreeing to pay Proview US$60 million.
29 Jun 2012
Companies, both within Australia and overseas, continue to send sham invoices seeking payment to publish information in a "journal" for a fee. Please be wary of any invoices which you receive which are not on the letterhead of FB Rice, or CPA Global if your trade marks are listed with CPA for renewals policing.
28 Jun 2012
IP Australia, the government body responsible for Australian patent, design and trade marks, has announced increases to fees charged for many of its products and services.
07 Jun 2012
The offices of FB Rice will be closed on Monday 11 June 2012 for the Queen's Birthday public holiday. They will re-open on Tuesday 12 June 2012.
30 May 2012
The National Business Names Registration (NBNR) Service has been launched on 28 May 2012. The NBNR service will incorporate the business name records from all states and territories into one single national register.
24 May 2012
The decision of Twitter, Inc v HOL Holdings Pty Ltd (2011) ATMO 129 is an example of a highly motivated owner protecting its mark and is a lesson about the risks when trying to ride on the coat-tails of a famous mark.
03 May 2012
Google Inc. has just lost a case on appeal to the Full (Appeal) Court of the Australian Federal Court in relation to the use of misleading "AdWords®" in Google® search results.
25 Apr 2012
The offices of FB Rice will be closed on Wednesday 25 April 2012 for the ANZAC Day public holiday. They will re-open on Thursday 26 April 2012.
18 Apr 2012
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 received Royal Assent on Sunday 15 April 2012, and is a major reform of thePatents Act 1990.
18 Apr 2012
The Intellectual Property Laws Amendment (Raising the Bar) Act 2011 received Royal Assent on Sunday 15 April 2012, and is a major reform of the Patents Act 1990. Most of the provisions will take effect from 16 April 2013. However the exemptions to infringement for experimental purposes and for the regulatory approval of non-pharmaceutical products take immediate effect, and became law on 16 April 2012. The aim of these infringement exemptions is to encourage follow-on innovation.
17 Apr 2012
The Intellectual Property Laws Amendment (Raising the Bar) Act has passed into law and practitioners will benefit from some certainty around the implementation of the provisions of the Act
10 Apr 2012
Joanne Martin discusses the recent decision of Allergan, Inc v Di Giacomo and Allergan's longstanding opposition of trade marks similar to BOTOX.
04 Apr 2012
The recent case of Bell v Steele discusses the actions available for groundless threats of legal proceedings, where the complainant has no ground for making a threat and where no legal proceedings are commenced.
29 Mar 2012
In recent months, FB Rice has worked with Pangolin Associates to prepare for the future, commissioning a Carbon Strategy & Risk report
15 Mar 2012
After many months of delay, the Raising the Bar Bill is finally before the House of Representatives and we are conscious that it is likely to be passed any day now.
02 Mar 2012
Apple Inc vs Proview - an example of the need to register one's product trademark in China if manufacturing your products there.
27 Jan 2012
The patent wars over Google’s Android Smartphone operating system have taken a new twist. A US International Trade Commission judge held that Motorola Mobility infringed only one of seven patents that Microsoft alleged had been violated.
13 Dec 2011
Apple's fight to prevent Samsung selling their Galaxy Tab 10.1 with an interlocutory injunction has ended with Australia's highest court refusing to revisit the previous decision on this issue.
08 Dec 2011
Due to its remote geographic location and population of only 4.3 million, New Zealand doesn’t always spring to mind when setting patent and trade mark strategy. However we suggest it is certainly worth considering.
04 Dec 2011
FB Rice recognises that its business activities have an impact on the world and that harmful effects are reduced through active management. FB Rice has adopted the model of measure, reduce, offset.
22 Nov 2011
David Franklin, Special Counsel in the Trade Marks team discusses the new types of domain names and the impacts on your trade mark rights.
28 Oct 2011
Earlier this month, the highly publicised Apple vs Samsung IP dispute resulted in a temporary injunction being granted to Apple, preventing Samsung selling their Galaxy Tab 10.1 in Australia.
05 Oct 2011
With the signing of the Leahy-Smith America Invents Act (AIA) the proposed prioritised examination procedure at the USPTO has been reintroduced and became effective from 26 September 2011.
05 Oct 2011
The Victorian Government announced the launch of the Health Market Validation Program (Health MVP) which provides $15 million in competitive grants that encourages innovation in healthcare.
04 Oct 2011
The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 proposes a major reform of the Patents Act 1990. One of the interesting areas of reform is the introduction of infringement exemptions for experimental purposes and for the regulatory approval of non-pharmaceutical products.
28 Sep 2011
FB Rice partner Dr. Jenny Petering, and colleagues Dr. Patrick McManamny and Ms Jane Honeyman have published an article entitled: 'Antibody Therapeutics – The Evolving Patent Landscape' in the highly regarded journal, New Biotechnology.
22 Sep 2011
On Friday 16 September 2011, President Obama signed into law the Leahy-Smith America Invents Act (AIA) which makes significant changes to US Patent law.
09 Sep 2011
Rachel Hooke discusses the key messages discussed at the recent UTS: Engage session on Health Futures, can we afford to live?
08 Sep 2011
Rachel Hooke, Partner and Head of Medical Technology, will attend the UTS: Engage session on Health Futures, can we afford to live?
25 Aug 2011
When branding a product, a service or your company, the following three boxes need to be ticked for peace of mind.
22 Aug 2011
Due to its remote geographic location and population of only 4.3 million, New Zealand doesn’t always spring to mind when setting patent and trade mark strategy. However we suggest it is certainly worth considering.
15 Aug 2011
Joanne Martin, Partner in the Trade Marks team, has written a newsletter highlighting some of the decisions from IP Australia and the Courts on what constitutes use of a Trade Mark in Australia.
01 Aug 2011
The spate of offerings for trade mark publication, renewal, monitoring or registration is increasing. These documents may be invoices or letters and appear legitimate but are either a scam or, at best, unsolicited requests for payment by organisations with no connection to you or your IP advisers.
18 Jul 2011
The R&D Tax Concession is a broad based government incentive that provides a tax benefit to Australian registered companies that invest in research and development.
10 Jun 2011
Trade mark law regarding parallel importation and the extent to which it constitutes infringement of an Australian registered trade mark is still uncertain, except in cases where the overseas trade mark owner (the source of the parallel imported goods) and the Australian trade mark owner are different and unrelated legal entities.
30 May 2011
Joanne Martin, Partner in the Trade Marks team, has written an article on parallel importation which has been published by leading global IP magazine, Managing Intellectual Property.
24 May 2011
The Australian Patent Office search database, AusPat, now holds every patent issued under Commonwealth legislation, dating back to 1904.
18 May 2011
Methods of medical treatment of humans have long been considered patentable in Australia and the United States; however most other jurisdictions, including Europe, do not allow such claims. This article explores the law with regard to patentability of methods of medical treatment of humans in a few key jurisdictions.
27 Apr 2011
The final rule to introduce Track 1 (prioritised examination) that was to come into effect May 4, 2011 has been postponed indefinitely by the USPTO.
06 Apr 2011
As reported by Charles Berman in March 2011, the USPTO announced that it inteded to proceed with implementing Track 1 (prioritised examination) of its proposed three track patent processing system.
01 Apr 2011
Rachel Hooke, Medical Technology Partner, comments to Managing IP on the growing concerns of the Australian Patent Office's tough stance on divisional applications.
24 Mar 2011
Woolworths' recent promotional campaign featuring renowned chef Margaret Fulton and the phrase "Honest To Goodness" has sparked a claim of trade mark infringement by a Sydney-based organic food store, with a Federal Court hearing commencing this week.
10 Mar 2011
On 8 March 2011, the United States Senate voted to pass an historic patent reform legislation.

 
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