Google not responsible for misleading and deceptive Adword advertisements:

High Court of AustraliaGoogle v ACCC [2013] HCA 1

On 6 February 2013, in a much anticipated judgment, the High Court of Australia unanimously allowed Google's appeal from a decision of the Full Court and found that Google was not responsible for the content of third party "Adword" advertisements (formerly sponsored links) displayed on Google search result pages.

Reported by Elizabeth Godfrey, Aaron Yates and Des Ryan:Davies Collison Cave, 6 February, 2013


Michael Caine of Davies Collison Cave (IP Attorneys, Melbourne) commented recently on the IP Laws Amendment Act 2011 (Raising the Bar):

The Intellectual Property Laws Amendment (Raising the Bar) Act 2011 received Royal Assent on 15 April 2012, and as such most provisions will take effect from 15 April 2013.  This is the most significant amendment to Australia's intellectual property laws since the commencement of the Patents Act 1990.

Experimental use exemption

One of the few provisions to take effect immediately is the experimental use exemption which allows researchers in Australia to carry out experiments relating to the subject matter of patented inventions without infringing the patent.  Although some commentary in relation to this exemption has suggested that it only applies to non-commercial experimentation, there is nothing in the wording of the provision which excludes experiments conducted for commercial purposes.

New requirements for patentability

The Act raises the requirements for patentability, and the requirements for patent specifications, for all applications filed after 15 April 2013, and for patent applications filed prior to that date for which an examination request has not been filed prior to 15 April 2013.  A number of actions are available to patent applicants to ensure that the current, more lenient, patentability and specification requirements apply to their applications.  Some of these actions, and other actions to be taken before commencement, are set out below.

Twelve top tips to prepare for Raising the Bar commencement (in Australia)

Patent applicants and patent practitioners should consider taking the following actions prior to the commencement date of 15 April 2013.

  1. Request examination of all pending patent applications prior to commencement. If acceptance is to be deferred this should be requested at the time of filing the examination request, because after commencement the Commissioner will have the discretion to refuse a request for deferment of acceptance.

  2. Enter National phase in Australia and file an examination request prior to commencement for all International applications pending prior to that date.

  3. Consider filing a Convention application in Australia and filing an examination request prior to commencement if a PCT application has not been filed.

  4. Instead of filing an Australian provisional application as a means of setting a priority date, consider filing a complete application and filing an examination request prior to commencement.

  5. Where a unity objection has been raised, or where there is an intention to file a divisional application, file the divisional application with an examination request prior to commencement.

  6. Where an application is under opposition it will no longer be possible to file a divisional application after commencement.  Consider filing a divisional application with an examination request prior to commencement.

  7. Any pending applications which are intended to be made divisionals of earlier applications will need to be converted to divisional status prior to commencement if the deadline for filing a new divisional application has already passed.  After commencement it will not be possible to convert an application to become a divisional after the deadline for filing a new divisional has passed.

  8. If it is intended to withdraw an opposed application in favour of a divisional application which has been filed, or will be filed prior to commencement, it will be advantageous to withdraw that opposed application prior to commencement.  After commencement an opposed application can only be withdrawn with the consent of the Commissioner and it is possible that such consent will only be given if the divisional application is also withdrawn.

  9. Any request for modified examination will need to be filed prior to commencement because modified examination will not be available after commencement.

  10. Australian provisional applications intended for completion after commencement should include sufficient description to provide the necessary level of "support" for claims in the complete application. 

  11. Consider amending pending applications to include additional description, examples or the like prior to commencement because after commencement it will not be possible to add matter to a patent application.

  12. In order to ensure a new application to be examined under the new law meets the new utility requirement, consider amending the specifications of pending applications prior to commencement to clearly describe the utility of the invention.  As mentioned above, it is advisable to file an examination request prior to commencement.

There are a number of additional changes to the patent system which will be introduced with the new law, although these additional changes will be the subject of regulations which have not yet been drafted.  Of particular note is the stated intention of IP Australia to reduce the 21 month acceptance period to 12 months, and to reduce the period for requesting examination following the issuance of a Direction to Request examination from 6 months to 2 months.  Under the current law when acceptance is not secured within the 21 month acceptance period it is common to refile the application as a divisional application of itself to maintain pendency.  After commencement any divisional filed to maintain pendency will be subject to the new law.  Accordingly, it is anticipated that applicants will be more inclined to request hearings to secure acceptance of the parent application rather than resort to the filing of divisional applications to maintain pendency.

The Act also makes a number of changes Trade Marks including significant changes to opposition case management, custom seizure provisions, the addition of punitive damages for infringement, introduction of summary offences with lower fault requirements and penalties and a rewording of section 41 to deal with the presumption of registrability. 



US Patent System becomes more aligned with the rest of the world

Robert Finn of Davies Collison Cave , Patent Attorneys, has written that President Obama recently signed the   America Invents Act , setting in motion a long-awaited overhaul of the US patent system, aligning it more closely with patent systems throughout the rest of the industrialised world. He notes :

1. "First-to-File" system

The most significant change resulting from the implementation will be replacement of the "first-to-invent" system, which affords rights to patent an invention to the first person in time to create the invention, with a "first-to-file" system, which affords such rights to a person who is first to file a patent application and is common to all of the other industrialised countries.

2. Applicant need not be an inventor

Another significant change will be that an entity, such as a corporation, to which an inventor has assigned or has an obligation to assign rights in the invention will be allowed to apply for a US patent; to date, the US system has required that the inventor make the application and the entity be recorded as an "assignee".

3. Opposition

The overhaul will see the introduction of an expanded system for challenging US patents at the United States Patent and Trademark Office (USPTO), including a post-grant opposition procedure that can be initiated within a nine-month period following grant, which is expected to reduce litigation and litigation related expenses.

4. Uncooperative inventors

The overhaul will, in particular circumstances, eliminate the requirement that an oath or declaration in support of a US patent application be signed by the/each inventor, and thus remove difficulties which arise when an inventor refuses to sign.

5. Increases in USPTO fees

Most patent-related fees, including application filing fees and fees associated with issuance and maintenance of patents, will be 15% higher as of 26 September 2011.  

6. Timing

Some of the changes have immediate effect while others will take effect at various stages over the course of the next 18 months.


'Intellectual Property Explorer' Launched

Intellectual Property Explorer [IPE] was launched mid-July as a free online business tool to help you identify and protect your intellectual property [IP] assets. IPE is a business tool developed by the Governments of Australia , Hong Kong and Singapore.

IPE contains a series of interactive diagnostic questions designed to review each piece of IP in your business. It aims to help you understand questions such as : what are the processes or knowledge critical to your business success? Are they unique to your business? If so, have you protected them? Do you own the IP you are using? Can you prove it?

To use IPE you will need to create an account for your business. The IPE site states that none of the information you enter will be retained or collected by any office or agency. Any data provided will be transferred over a secure certificate to ensure your privacy and security is maintained. Maintaining secrecy is important because premature disclosure of IP could harm the ability to protect IP rights and thus diminish its value.

Conducting an audit of IP can be a difficult and it might be worthwhile seeking the advice and assistance of an experienced professional in this field. TechCapital Management can help you in such matters.

To find more information, copy and past the link below into your browser


Commercialisation of IP : WIPO Promotes Economic Growth

The World Intellectual Property Organisation (WIPO), based in Geneva, ran a seminar in Bangkok, in cooperation with the Department of Intellectual Property, Ministry of Commerce, Government of Thailand. Dr John Turner of TechCapital Management was an invited speaker. Experts from WIPO, Malaysia, China and Thailand also addressed the meeting.

The meeting was entitled a 'National Seminar on Development and Management of Intellectual Property (IP) Assets for Economic Growth' and was well attended by high level people from government, research institutions and industry.

The objectives of the Seminar were to provide information and exchange views on : (a) optimal policies for generating and managing IP assets; (b) measures to enhance linkages between universities/research institutes and industry for the generation of IP assets; and (c) strategies that may be pursued by businesses to effectively manage IP assets and, thereby, enhance their competitiveness.

John gave three presentations : (1) Establishing and Managing Technology Management Offices; (2) Partnerships or New Ventures?; (3) Valuation of IP Assets: An Introduction to Approaches and Methodologies. The provisional program can be viewed on the following link :





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