Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Thursday, December 22, 2016

The TPP is dead! Or is it…?

By Isobel Carmody, Vacation Clerk, and Adrian Chang, Associate

Based on his presidential campaign strategy, we are not surprised that before taking office, US president-elect Donald Trump continues to shake the world with his pronouncements. One of his first? The Trans-Pacific Partnership (TPP) is fired! So is this the end of this grand, highly controversial trade deal? Or can it survive despite the Donald's dramatic declaration?

Wednesday, December 21, 2016

Productivity Commission's Final Report on Intellectual Property Arrangements Now Available

By Lev Gutkin, Lawyer

The Productivity Commission IP marathon was completed yesterday with the publication of the Final Report on IP Arrangements.

Unsurprisingly, given the wide scope and limited time, the Final Report is a mixture of good and bad. Some of the more concerning themes evident in the Draft Report published in April (discussed in our prior post) have not been changed by intense lobbying or, indeed, by evidence. Despite covering a huge volume of material (the report is over 700 pages), many of the individual sections are superficial, showing that in-depth understanding of the nuances of the more complex areas of law considered may not have been fully achieved.

Instead of providing high level recommendations, the Final Report often descends to individual and quite specific detail, including legal drafting recommendations. For example, the effect of recommendation 7.2 is to specify the detail of legislative wording, down as far as the detail of the matters to be mentioned in the Explanatory Memorandum.

Tuesday, December 20, 2016

Legislation to implement the Sansom review recommendations clarifies the Government response. We now have an interesting framework for implementation but the details are still to come.

By Ric Morgan, Special Counsel

A little over two months ago we wrote that the Government response to the Sansom review provided no clear indication 'the Government will be taking the medicine Sansom has prescribed'. The ongoing release of information and active consultation by the TGA is much more encouraging than our original prognosis.

Thursday, December 8, 2016

Pregabalin Patent Powers Through

By Lev Gutkin, Lawyer

Pfizer's drug Lyrica (pregabalin) is usually used to treat neuropathic pain, but is no doubt the cause of plenty of headaches for Apotex and Generic Partners, after Nicholas J dismissed their invalidity attack against patent no. 714980 and held that their conduct amounted to threatened infringement.

The patent is in respect of the use of pregabalin, the (S)-enantiomer of 3-aminomethyl-5-methylhexanoic acid (the 3-amino compound), a known anti-seizure drug, for the treatment of pain. Apotex claimed the patent was invalid on the grounds of insufficiency, inutility, false suggestion and because the patentee, Warner-Lambert, was not entitled to the patent.* Other than in relation to the entitlement issue, the pre-Raising-The-Bar provisions of the Patents Act 1990 (Cth) applied.

Friday, November 25, 2016

ACCC means business when it comes to cartels (but your trade mark might not)

By Natasha Dixon, Lawyer

The Federal Court has held that the registration of a trade mark in Australia, and the enforcement of rights pursuant to that registration, is not necessarily sufficient to establish that the owner of that trade mark is carrying on business in Australia for the purposes of applying Australia's competition laws.

Allegations were brought by the ACCC against Italian-based company Prysmian and French-based company Nexans SA, claiming that the companies were engaged in price fixing and market sharing agreements. As part of its argument, the ACCC was required to establish that the two international entities were carrying on business in Australia.

Wednesday, November 23, 2016

Leave the Interference to the Ribonucleic Acid: iRNA Patent Finally Gets There

By Lev Gutkin, Lawyer

Talk about perseverance! Four adverse examination reports didn’t stop Arrowhead Research Corporation from pursuing its patent application, and its efforts have finally paid off, after seeing off the final objection, that its patented invention was not a 'manner of manufacture'. Arrowhead is now the proud owner of an interference RNA patent.

The patent application relates to the process of RNA interference and its use for attenuation of unwanted or pathological protein expression, specifically that of spleen tyrosine kinase (Syk). The registrar's most recent ground for rejecting the application was that the patent was not for a 'method of manufacture' because it claimed double stranded RNA molecules. The 'method of manufacture' objection stemmed from the decision of the High Court in D'Arcy v Myriad Genetics Inc, discussed in a previous post. The majority decision in D'Arcy established that naturally occurring DNA sequences, even if isolated from the rest of the cellular contents, failed to satisfy the 'manner of manufacture' requirement as they are in truth better characterised as 'information'.

Monday, November 21, 2016

It's not easy being green

By Natasha Dixon, Lawyer

A recent Trade Marks Office decision, following an opposition hearing, has left the company that manufactures and markets V energy drink (V), red-faced as its application to register a colour mark was refused by the Registrar of Trade Marks.

In 2012, V applied to register 'Pantone 376c Green' (V Green) as a trade mark in respect of energy drinks. The application was opposed by The Coca Cola Company (Coca Cola), on the basis that the V Green was not inherently adapted to distinguish V's energy drinks.