Helen Macpherson (AU)

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CIIs – The Australian Full Court Encompass Decision

By Helen Macpherson (AU) and Harrison Ottaway (AU) on October 29, 2019 Posted in General, Patents

Overview The patentability of computer implemented inventions (CII) has long been a contentious topic in Australian patent law. A few months ago, we wrote about Justice Robertson’s decision in Rokt Pte Ltd v Commissioner of Patents, which overturned the Australian Patent Office’s rejection of a patent application for a CII relating to a digital advertising … Continue reading

Fakes welcome? IP protection lags behind for Indigenous artworks in Australia

By Helen Macpherson (AU) and Isobel Taylor (AU) on August 12, 2019 Posted in Copyright, General

In a symbolic win for Indigenous artists, the Federal Court of Australia has recently ordered a seller of fake Indigenous-style souvenirs to pay AU$2.3 million in pecuniary penalties for contraventions of the misleading and deceptive conduct provisions of the Australian Consumer Law (ACL). While the Court’s ruling appears to be a positive move in the … Continue reading

Calidad v Seiko – defining the scope of the implied licence

By Helen Macpherson (AU) and Harrison Ottaway (AU) on July 30, 2019 Posted in General

One of the more controversial questions in patent law is the extent to which a patentee may continue to exercise control over patent-protected goods after their sale. This question invokes competing tensions between the rights of the patentee and the rights of the purchaser to free enjoyment of goods they have purchased. In a number … Continue reading

Don’t Rokt the boat: developments in the patentability of computer implemented inventions in Australia

By Helen Macpherson (AU) and Isobel Taylor (AU) on May 7, 2019 Posted in General

With the continued rise of digital technologies and mining of big data, computer implemented inventions (CIIs) are being increasingly utilised in a wide range of industries. CIIs enable companies to deliver more personalised products and solutions to consumers, whether in the form of more personalised medical treatments and diagnostic tools in the pharmaceutical and healthcare … Continue reading

V Energy loses a mother of a battle over color trademark: Australia court’s decision in Frucor v Coca-Cola

By Helen Macpherson (AU) and Alyson Poole (AU) on August 13, 2018 Posted in Trademark

We, as consumers, regularly associate colours with our favourite brands as we stroll down supermarket aisles and peer at billboards and banners in shopping centres. But for brand holders, gaining protection for proprietary colours is not a walk in the (green) park. The recent decision of Frucor Beverages Limited v The Coca-Cola Company [2018] FCA … Continue reading

Australia – No extensions for Swiss style Pharma Patents

By Helen Macpherson (AU) and Rohan Sridhar (AU) on August 31, 2017 Posted in Advertising, General

A Full Court of the Federal Court has confirmed that patents containing “Swiss-style” claims are outside the scope of the Australian patent term extension regime in its recent judgment of Commissioner of Patents v AbbVie Biotechnology Ltd [2017] FCAFC 129. What it means: Patents which claim methods or processes involving pharmaceutical substances cannot be extended … Continue reading

Court decision highlights difficulty in challenging innovation patents

By Helen Macpherson (AU) on August 21, 2017 Posted in Advertising

Late last month, Justice Burley handed down his decision in Doric Products Pty Ltd v Asia Pacific Trading (Aust) Pty Ltd [2017] FCA 849. The decision provides a useful illustration of how Australian Courts will approach construction, infringement and validity issues in innovation patent proceedings, and emphasises the difficulties respondents face when challenging the validity … Continue reading

Digging through the mud to see the damage sustained

By Helen Macpherson (AU) and Melanie Armsby (AU) on July 12, 2017 Posted in Advertising

The Full Federal Court in Australia has made it clear that, in an action for unjustified threats, a party is entitled only to damage sustained as a result of the unjustified threats under section 128 of the Patents Act 1990 (the Act), and not damage sustained as a result of infringement proceedings subsequently commenced (Australian … Continue reading

Accept no substitutes – Assignment will not cure defective trade mark filing

By Helen Macpherson (AU) on June 14, 2017 Posted in Trademark

The Full Court of the Federal Court has issued a significant decision in relation to trade mark ownership, which reconfirms the position in relation to the assignment of trade mark applications which have been filed in incorrect applicant names. The decision in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 … Continue reading

Marketing class actions – A new frontier

By Toby Biddle (AU) and Helen Macpherson (AU) on June 1, 2017 Posted in Advertising

Australia has a long history of class action litigation. Outside of the United States, Australia has one of the most active class action markets globally. It is 25 years since the introduction of the class action regime in the Federal Court of Australia. Since its introduction, the class action regime has been used as a … Continue reading