Author: Tom Cordiner QC

Patents – infringement – claim construction – validity – novelty – obviousness – misleading or deceptive conduct – unjustified threats – costs

Trade marks – misleading or deceptive conduct – passing off – whether separate reputation in mark – differences in get up – unjustified threats – delay in bringing infringement action – whether claimant acted with due diligence

Patents – complete specification – best method – “performing the invention” – whether feature omitted from specific part of the best method known to the applicant for performing the invention

Copyright – extension of ex parte freezing order – whether duty of candour requires applicant to identify potential bases to find an implied licence – whether freezing order should cover potential additional damages

Patents – amendment – application to amend – fair basis – whether “discrete, unitary disclosure” of combinations of features necessary United States Gypsum Company v CSR Building Products Ltd  [2017] FCA 595 The applicant...

Patents – amendment – application to amend to avoid inutility claims – applications limited to deletions of positive statements in the specification concerning the utility of the invention – exercise of discretion

Patents – extension of time to extend term – licences to exploit during period of extension of time application and beyond

H. Lundbeck A/S v Commissioner of Patents[2017] FCA 56

Patents – unjustified threats – damages – ultimate findings unsupported, and contradicted by, evidence at trial

Australian Mud Company Pty Ltd v Coretell Pty Ltd [2017] FCAFC 44

Patents – innovation patents – divisional application – infringement – date from which a patentee is entitled to relief – whether from date of parent patent or date of grant of divisional patent

Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54

Trade marks – interlocutory injunction – whether serious question to be tried – whether actual non-monetary harm needs to be shown.

Trade marks – opposition – substantially identical – reputation – use of similar marks in different States – infringement – defences – good faith use of own name – revocation – inherent adaptability to distinguish.

Computer software – exclusive licence – construction – ambiguity in payment provisions – extrinsic evidence – commercial sensibility.

Trade marks – exclusive trade mark licence “in perpetuity” – implied terms – whether implied term that licence extends to replacement versions of licensed marks – whether implied term that marks be re-assigned if licence is breached – admissibility of extrinsic material.

Patents – damages for unjustified threats – person aggrieved – calculation of damages.