Author: Tom Cordiner QC

Practice and procedure – costs – costs of interlocutory applications to amend patent application

Patents – appeal on opposition to grant – pre-“Raising the Bar” – novelty – inventive step – utility

Patents Act– infringement and validity – variable speed limit signs – whether method or product claims – whether functional limitations were to capabilities or had to be present at all times – Crown use defence– innocent infringement– prior use defence– lapsed patent defence – lack of novelty (and section 24) and inventive step

Trade marks – extension of protection in Australia to IRDA for trade mark MONSTER STRIKE in classes 9 and 41 – appeal from decision of Registrar – reputation of appellant’s marks including M icon and MONSTER ENERGY – whether reliance on s 42(b) and ss 18 and 29 of the ACL for opposition adds anything to reliance on s 60

Patents – amendment of patent application by court – power to order amendment after reasons given as to why patent invalid – section 102, whether narrowing amendments to claims resulted in an invention different from that described in the specification

Patents – strike out application re particulars of lack of utility – discovery re lack of utility

Trade marks – registration – opposition – appeal under s 56 of the Trade Marks Act against decision of the Registrar of Trade Marks allowing registration of the mark FREEZEFRAME PROTOX – whether a ground of opposition to registration of the marks is established pursuant to ss 42(b), 44, 58, 59, 60 or 62A of the Act

Trade marks – cross-claim for removal from the Register of Trade Marks for non-use pursuant to s 92(4)(b) of the Act – cross-claim for rectification of the Register of Trade Marks to cancel registration of BOTOX trade mark pursuant to s 88(1) of the Act – defensive trade marks

Trade marks – infringement claim under s 120 of the Trade Marks Act 1995 (Cth) – consumer law – misleading or deceptive conduct – torts – passing off – whether director should be held personally liable – Therapeutic Goods Act 1989 (Cth) – whether respondents infringed applicants’ BOTOX marks by using PROTOX as a trade mark

Trade marks – infringement claim under s 120 of the Trade Marks Act – consumer law – misleading or deceptive conduct – torts – passing off – whether director should be held personally liable – cross-claim for removal from Register for non-use – opposition – appeal under s 56 of the Trade Marks Act – BOTOX and PROTOX

Patents – interest granted under patent licensing agreement – whether later-in-time licensee had an effective licence, which breached original licence

Trade Marks – infringement – whether using “Urban Ale” as a trade mark or good faith use – cancellation on various grounds – discretion – groundless threats of trade mark infringement

Patents – amendment – appeal from Commissioner’s decision – whether specification as amended would claim or disclose matter that extends beyond the specification as filed – section 102(1) post Raising The Bar