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									✿ Issue 2 2008

WorkINg WITh clEvEr PEoPlE

INSIDE »                                     Trade marks/copyright » Parallel imports
✦   Trade marks/copyright Parallel imports

✦   Insight IP management
✦   Patents Inventorship
✦   Patents Gene technology
✦   Insight Mike Lloyd profile
✦   The latest On the move
    The latest Griffith Hack news


                                                             here are several key         WhaT arE ParallEl
                                                             issues involving copyright   ImPorTS?
                                                             and trade mark law in        The practice of parallel importing
        Goods that are                               regard to the practice of            involves the importation into
         not genuine or                              parallel imports.                    Australia for sale of genuine
                                                        Two recent Federal Court of       goods that have had the trade
     that are packaged                               Australia decisions – Polo/Lauren    mark applied overseas by
          in counterfeit                             Company L.P. v Ziliani Holdings      someone other than the local
                                                     Pty Ltd (2008) FCA 49 and            registered owner without the
     packaging will not                              Brother Industries Ltd v Dynamic     trade mark owner’s consent.
      be accorded any                                Supplies Pty Ltd (2007) 73 IPR       Generally these goods are
                                                     507 – have highlighted certain       sourced from countries that
          such defence                               limits in using trade mark and       trade in them at a cheaper price.
                                                     copyright law to prevent parallel
                                                     imports in Australia.                Why arE ParallEl
                                                                                          ImPorTS alloWED?
                                                                                          The Australian Government
                                                                                          has adopted the view that
                                                                                          parallel importation should
                                                                                          be encouraged as a means of
                                                                                          increasing competition. This pro-
                                                                                          competition policy is reflected
                                                                                          in provisions in Australian trade
                                                                                          mark and copyright laws that
                                                                                          allow parallel imports.
                                                                                             Section 123 of the Trade Marks
                                                                                          Act provides a defence to trade
                                                                                          mark infringement. A person
                                                                                          who uses a registered trade mark
                                                                                          will not infringe the trade mark
                                                                                          owner’s rights if the trade mark
                                                                                          has been applied to, or in relation
                                                                                          to, the goods by, or with the         »
        Trade marks/copyright » Parallel imports

»   consent of, the owner of the mark.   ISSuE of coNSENT
      There is also a defence under      In the Brother case, the Federal
    s44C of the Copyright Act.           Court found that the purchase,
    Where copyright exists in an         importation and sale by the
    accessory to a product such as a     respondent of genuine unbranded
    label, packaging or instructions     printer drum units (manufactured
    attached to a product, that          by Brother) in counterfeit
    copyright will not be infringed      packaging bearing the Brother
    by importation of the product        mark amounted to infringing ‘use’
    where the importation is made        of the mark in contravention of
    without the permission of the        the Trade Marks Act.
    copyright owner.                        While the Brother case was not,
                                         therefore, directly concerned with
    aPPlIcaTIoN of                       parallel imports, one issue that
    ThE DEfENcES                         was before the Court is relevant
    Accordingly, where the goods         to parallel importation.
    are genuine, importation will be        The respondent argued that as
    defensible on the grounds that       the unbranded printer drum units     Where the goods are
    they are parallel imports.           were ultimately sourced from
      These laws do not, however,        another member of the Brother
                                                                              genuine, importation
    assist counterfeiters – goods        corporate group, the consent         will be defensible on the
    that are not genuine or that         of Brother – the trade mark
    are packaged in counterfeit          owner – could be implied for the
                                                                              grounds that they are
    packaging (as in the Brother         purposes of s123.                    parallel imports
    case discussed below) will not          The Court found that even if
    be accorded any such defence.        the other member of the Brother
                                         corporate group was part of the
    rEcENT caSE laW                      supply chain, in order to rely on
    In the Polo/Lauren case, the         section 123, it is the consent of
    designer brand company, Ralph        the registered owner which must
    Lauren, failed in its attempt        be acquired.
    to rely on copyright laws to            The Court found that no
    prevent a Sydney retailer from       consent, either expressed or
    importing genuine Ralph Lauren       implied, was given by Brother to
    shirts featuring its well-known      apply its registered trade mark
    ‘polo-player’ logo cheaply from      to the packaging of the printer
    America and selling them             drum units.
    in Australia without Ralph              The Court commented that
    Lauren’s permission.                 consent for the purposes of
       The retailer in Polo/Lauren       section 123 is not to be implied
    successfully argued that the         from the fact that another
    importation did not infringe         member of the Brother corporate
    Ralph Lauren’s copyright             group may have given its consent.
    in the label, because it was            Based on this decision, in the
    embroidered onto the article         case of parallel imports, the
    and as such was a non-infringing     defence under s123 may not be
    accessory under s44C.                available where the trade mark
       While this case confirms          has been applied to the goods
    that logos and trade marks           without the trade mark owner’s
    embroidered onto garments            consent. This may be so even if
    are exempt from copyright            another member of its corporate
    protection, trade mark owners        group has given its consent to
    seeking to enforce their rights      apply the mark.
    should be encouraged by the fact
    that this decision may only apply    For further information, contact:
    to embroidered logos or those        Fiona Miles, Lawyer, Associate
    that are embossed, woven or
    stitched and (potentially) not to    Devita Pathi, Lawyer
    logos that are printed.    

                                                                                                                         Insight » IP management

g                                                                               Many clients will
        riffith hack offers full        DuE DIlIgENcE rEquIrEmENTS
        service intellectual            The recent CLERP 9 accounting
        property management             reforms have placed additional due      appreciate the
to help businesses implement            diligence requirements on business      quality of service,
best practice IP procedures.            acquisitions. Intangible assets
   Intellectual property (IP)           such as IP have to be identified,       cost efficiencies and
may comprise a large portion            their ownership confirmed and           reassurance offered
of the value of many Australian         valued during the acquisition.
companies. This IP may be in            Poor records and ownership issues       by our service
the form of valuable brands,            may reduce the sale price of the
technologies and trade secrets,         business earnt by the vendor.
or copyright protecting the
creative output of the business.        ThE rISk of INfrINgEmENT              their trade marks being abused by    •	 IP asset administration
Not all companies recognise this        IP rights owned by third parties      others who wish to capture some      •	 Internal functional
value or have systems in place          can be used against your              of this brand value for themselves   •	 IP commercialisation processes.
to properly manage this legally         company’s interests. Parties that     by selling products with identical      While many of our clients
complex area.                           infringe IP rights may have to pay    (counterfeiting) or similar brands   employ professional IP
   There are significant corporate      damages and costs to the owner        (passing-off). Customers become      managers, other clients have
governance and risk issues in           of the IP. Blatant infringement of    confused and the perceived value     outsourced this function to
under managing IP.                      copyright in movies, music and        of a brand drops. Further damage     Griffith Hack. Griffith Hack
                                        software has led to infringers        occurs if the copied product is      has many years of continuous
oWNErShIP aND valIDITy                  being fined and jailed.               of poor quality or harms the         experience managing some
Companies may not necessarily              Your own IP portfolio can          consumer, or if your signature       of the largest portfolios of IP
own the IP of products and              be a useful defence against           technology is easily obtained from   in Australia, and has retained
services that they have                 infringement claims. Registered       other vendors.                       experienced IP manager, Mike
developed. Ownership may belong         IP can help define your freedom                                            Lloyd, to help develop an
with other parties if the creator       to operate in an IP rich field.       ExcESSIvE lEgal coSTS                outsourced IP management
is a contractor, business partner,      Alternatively, monitoring and         IP can be complex and difficult      service offering for new and
director or consultant to the           licensing IP rights from third        to acquire, manage and enforce.      existing Griffith Hack clients.
company or if the creation of IP        parties can be a cost-effective       The intricacy stems from the            While outsourced IP
is outside the normal role of an        option for product development.       interaction of technology, brand     management will not suit
employee. And if you don’t own IP,                                            and legal issues. This complexity    all clients, many clients will
you can’t assert, sell or licence it.   TaxaTIoN comPlIaNcE                   can lead to disputes and high        appreciate the quality of
                                        Assigning or licensing IP rights      legal expenses. Proactive IP         service, cost efficiencies
coNTINuouS DIScloSurE                   within a country or across            management can help to reduce        and reassurance offered by
rEquIrEmENTS                            national boundaries may create        these costs by identifying and       our service.
Directors of public companies may       taxation implications. This is a      managing IP risks before these          The services on offer range
be under an obligation to inform        particular issue for multinational    turn into expensive issues.          from a full service option
the markets of material changes         corporations that develop and                                              where Griffith Hack takes full
in their IP.                            use IP in different jurisdictions.    ouTSourcINg IP maNagEmENT            responsibility for administering
   In 2006, an Australian               Care is needed to develop IP          Best practice IP management          the portfolio and ensuring that
biopharmaceutical company was           ownership policies that minimise      is the careful management            it meets the needs of the client,
fined $350,000 for breaching            taxation obligations without          of processes and systems to          to the provision of fixed price
its requirements for continuous         affecting the enforceability of the   maximise the value of your IP        IP workshops to help smaller
disclosure. The company had             IP rights.                            while reducing associated risks.     clients review and improve their
announced to the Australian Stock                                             This involves an integration of      IP management practices.
Exchange that it been granted           ThE rISk of braND DamagE              the following skill sets:
a US patent, but had failed to          or valuE loSS                         •	 IP law and practice               For further information, contact:
disclose that it might have trouble     Poor IP management can damage         •	 The business and its              Mike Lloyd, Consultant
enforcing this patent.                  your brand. Companies can find        central technologies       

                                                                                                                      Working with Clever People        3
    Patents » Inventorship

                                  n a joint research patent         possible without this input.           have to be equal; it is qualitative
                                  application, it is imperative         It was therefore held that         rather than quantitative.
                                  to identify each contributing     Polwood and Foxworth were              •	 Did a person’s contribution
                             individual inventor, as a recent       jointly entitled to the grant          have a material effect on the
                             case highlights.                       of a patent for the invention.         final invention?
                                It can be difficult to identify     It is important to note that           A co-inventor must perform at
                             the actual inventors for a patent      although Polwood may have sole         least a part of the task which
                             application arising from joint         entitlement to some claims, as the     produces the invention. The
                             research and development               application also includes claims to    conception of a solution may
                             activities or where new                which Foxworth is jointly entitled,    not be sufficient to claim sole
                             developments are based on an           Foxworth is therefore entitled to      inventorship. Where a person has
                             earlier invention.                     an equal and undivided share of        a general idea of how to solve
                                As entitlement to a patent is       a patent granted in respect of         a problem, but is unable to give
                             derived from the inventors, it is of   the application.                       effect to the idea while another
                             critical importance that inventors                                            person is able to do so, the other
                                                                    crEDIT WhErE crEDIT’S DuE
                             are correctly identified in a patent                                          person may be a co-inventor.
                                                                    The following guidelines for
                             application. Failure to correctly                                                 Where an invention by a
                                                                    assessing inventorship are
  Failure to correctly       identify all inventors can give rise
                                                                    derived from the discussion in
                                                                                                           second person constitutes
                             to invalidity of a granted patent.                                            further development of a first
identify all inventors          The Australian Patents Act
                                                                    Polwood v Foxworth and focus
                                                                                                           person’s work or previous
                                                                    on identifying the alleged
      can give rise to       defines invention but not inventor.
                                                                    invention and considering
                                                                                                           invention, the first person may
                             Invention means any manner of                                                 be a co-inventor.
        invalidity of a      new manufacture the subject
                                                                    individual contributions.
                                                                                                           •	 It is not necessarily the
                                                                    •	 Identify the alleged invention.
      granted patent         of letters patent and grant of
                                                                    What constitutes the invention
                                                                                                           inventiveness of the contribution
                             privilege within section 6 of                                                 that is the determining factor.
                                                                    can be determined from the
                             the Statute of Monopolies and                                                 The purveyor of a non-inventive
                                                                    patent specification as a whole
                             includes an alleged invention. It                                             contribution to a working
                                                                    which includes the claims. Both
                             is generally understood that an                                               combination may be a co-inventor
                                                                    the claims and the inventive steps
                             inventor is a person who invents                                              depending on the facts. It is not
                                                                    giving rise to the invention may
                             the invention, but identifying                                                enough that someone contributed
                                                                    assist in determining inventorship.
                             actual inventors is not necessarily                                           to the claims, because they may
                                                                    •	 Consider who conceived
                             as easy as it sounds.                                                         include non-patentable integers
                                                                    the invention.
                                                                                                           derived from the prior art. Where
                             caSE IN PoINT                          Conception of an invention
                                                                                                           the final concept of the invention
                             Assessing inventorship was             is complete when one of
                                                                                                           would not have come about
                             addressed in a recent appeal to        ordinary skill in the art could
                                                                                                           without a particular person’s
                             the Federal Court of Australia         work the invention without
                                                                                                           involvement, then that person
                             published as Polwood Pty Ltd v         unduly extensive research or
                                                                                                           has entitlement.
                             Foxworth Pty Ltd [2008] FCAFC          experimentation. Contribution
                                                                                                               We recommend using these
                             9 (Polwood v Foxworth).                after the invention was
                                                                                                           guidelines when considering
                                Two aspects of the invention of     fully conceived, where that
                                                                                                           questions of joint inventorship.
                             the patent application in dispute      contribution was under the
                                                                                                           Where there are several aspects
                             in Polwood v Foxworth were             direction of the inventor, does
                                                                                                           of an invention which may be
                             considered – the concept of the        not give rise to entitlement to
                                                                                                           attributed to different inventors,
                             invention and the apparatus which      the invention.
                                                                                                           filing strategies using separate
                             made it workable. The concept of       •	 Consider combinations.
                                                                                                           applications or divisional
                             the invention, the subject matter      A single invention may be the
                                                                                                           applications may be employed
                             of the method claims, was devised      subject of more than one inventive
                                                                                                           to clarify inventorship and
                             by the Polwood inventor.               concept or inventive contribution.
                                                                                                           entitlement claims. Griffith
                                However, it was concluded           The invention may consist of
                                                                                                           Hack can advise you in assessing
                             that there was an inventive            a combination of elements. It
                                                                                                           these claims.
                             contribution made by Foxworth          may be that different persons
                             inventors in developing a              contributed to that combination.       For further information, contact:
                             prototype machine for working          •	 Consider the quality of the         Robyn Heard, Associate
                             the inventive concept and the          contribution and the impact on
                             apparatus claims of the patent         the results.                           Janelle Borham, Principal
                             application would not have been        The role of joint inventors does not

                                                                                                       Patents » Gene technology

 tHe scoPe
 T                                        The changes
         he gene Technology
         amendment act 2007
         aims to improve the              introduced by these
 regulation of genetically                Acts are regulatory
 modified organisms (gmos),
 without affecting intellectual           in nature and do not
 property rights.                         affect the patentability
    The Australian national gene
 technology regulatory framework          of subject matter
 comprises Commonwealth, State            related to GMOs
 and Territory legislation. State and
 Territory legislation is harmonised
 with Commonwealth legislation.
    In 2005-06, an independent
 review of the Gene Technology
 Act 2000 (Cth) and the
 intergovernmental Gene
 Technology Agreement 2001 was
 conducted. The review found
 that the Act and the national
 regulatory scheme had worked
 well in the five years following
 introduction and that no major
 changes were required. However,
 it suggested a number of minor
 changes, aimed at improving the        ProcEDural ProgrESS                  person to comply with the Act
 operation of the Act at the margin.    The recent amendments also           •	 Make technical amendments to
    As a consequence of the review,     enable the Gene Technology           improve the operation of the Act.
 recent Commonwealth legislative        Regulator to grant licences to          Most recently, Queensland
 amendments, brought about by           persons having inadvertent           fulfilled its obligations under the
 the Gene Technology Amendment          dealings with an unauthorised        Gene Technology Agreement
 Act 2007 (Cth), enable the             GMO for the sole purpose of          2001 to maintain national
 responsible Minister to invoke         disposal of the GMO. Additional      consistency by passing the Gene
 emergency powers to approve use        amendments aim to:                   Technology Amendment Act
 of genetically modified organisms      •	 Improve the mechanism             2008 (Qld), which was drafted
 (GMOs) to address imminent             for providing advice to the          to reflect the Gene Technology
 threats of disease, animals, plants    Gene Technology Regulator            Amendment Act 2007 (Cth).
 or environmental damage.               and the Gene Technology                 The changes introduced by
    For example, the recent equine      Ministerial Council on ethics and    these Acts are regulatory in
 influenza outbreak was treated         community consultations, by          nature and do not affect the
 using a GMO – a vaccine. Without       combining the Gene Technology        patentability of subject matter
 the amendments introduced by           Ethics Committee with the            related to GMOs. Therefore, these
 the Gene Technology Amendment          Gene Technology Community            legislative amendments will
 Act 2007 (Cth), approval to use        Consultative Committee               affect persons having dealings
 the vaccine would have taken 255       •	 Streamline the process for the    with GMOs, but are unlikely to
 days to obtain.                        initial consideration of licences    affect intellectual property
    Further threats envisaged           •	 Reduce the regulatory burden      rights in GMOs or in GMO-
 to fall within the scope of the        for low risk dealings                associated processes.
 emergency powers provision             •	 Provide clarification on the
 include an influenza pandemic          circumstances in which licence       For further information, contact:
 in humans for which rapid              variations can be made               Dr Malcolm Lyons, Trainee
 access to treatment could avert        •	 Clarify the circumstances under   Patent Attorney
 a catastrophe.                         which the Regulator can direct a

                                                                                                      Working with Clever People   5
    Insight » Mike Lloyd profile

                                                                                                                  “[IP is] very important,
                                                                                                                  it’s a material asset for
                                                                                                                  our clients and it needs
                                                                                                                  to be managed in a
                                                                                                                  professional manner”

                                                                                                                “Some of our clients have really
                                                                                                                good in-house IP managers, but
                                                                                                                if the people managing this don’t
                                                                                                                have the complete skill set, they
                                                                                                                can make mistakes and therefore
                                                                                                                opportunities to maximise the
                                                                                                                value of the company’s assets may
                                                                                                                be lost,” he says.

                                                                                                                PlayINg ThE fIElD
                                                                                                                According to Lloyd, one of the

                                                                                                                key challenges in IP management
                                                                                                                is to focus the product on what
                                                                                                                the market is looking for and to
                                                                                                                develop the product and define its

                                                                                                                value in such a way that it’s clear
                                                                         research scientist, and then as a      to everyone. “Griffith Hack has
                                                                         program manager. “I had a major        been managing IP for selected
                                                                         client to look after and then from     clients for a while now; this is
                                                                         that I was given the opportunity       about the first time that we’ve
                                                                         to move into IP management             actually taken it to market, as
                                                                         [which] I have always been             opposed to clients coming to us

                                           onsultant mike lloyd is       fascinated by.”                        saying, ‘Can you look after IP for
                                           at the forefront of ground       Lloyd highlights the importance     us?’ So the challenge is to develop
                                           breaking innovation           of managing IP according to            the product that specifically
                                   providing IP management for           best practice. “In terms of what       meets the client’s needs and to
                                   griffith hack clients.                makes up the value of the client,      that end, I aim to speak to as
                                      For a chemical engineer with       IP may be one of the biggest           many clients as possible to find
                                   a research background, Griffith       factors. It’s very important, it’s a   out what they’re looking for.”
                                   Hack Consultant Mike Lloyd            material asset for the company            Outside of his day-to-day
                                   transitioned to the IP management     and it needs to be managed in a        work, Lloyd has just completed a
                                   field with aplomb. However, Lloyd     professional manner.”                  Masters of Intellectual Property
                                   takes crossing cultures in his           Lloyd says that while some          Law. “It was fascinating coming
                                   stride, having relocated from New     clients have existing internal         from an engineering viewpoint,
                                   Zealand to Melbourne in 1999,         professional managers, other           but to have to think like a lawyer
                                   after a Scandinavian study sojourn    clients may not have the               is in some ways similar because
                                   to earn a post graduate degree.       capability or the resources.           there is a lot of logic involved,”
                                      As Griffith Hack’s Consultant      “So it’s smart to outsource it         he says.
                                   in IP management, Lloyd says it       to Griffith Hack – where we’ve            As a motorbike enthusiast and
                                   was during his time as a research     got the existing capability and        a keen gardener with two young
                                   engineer that his interest in the     we can be accountable for              children, Lloyd says: “We enjoy
                                   area grew – providing the impetus     its management and we can              gardening, we’ve planted from
                                                                                                                                                      Photography Travis de Clifford

                                   that set his career path. “I became   ensure that clients are managed        scratch a native garden in the last
                                   fascinated by innovation, how         according to best practice.            few years and that’s something we
                                   ideas move from being an idea in      This also makes sense for              do as a family.”
                                   someone’s head to a commercial        organisations that can’t justify a        Lloys has certainly met his
                                   reality and IP management is a key    full-time IP manager.”                 match working at Griffith Hack.
                                   part of that.”                           There are inherent risks involved      “I’m enjoying it, there are
                                      Prior to Griffith Hack, Lloyd      in managing IP internally and          some incredibly smart people
                                   worked for Amcor in a research        Lloyd concedes it depends on the       here and the range of knowledge
                                   and development role as a             quality of the IP management.          is fascinating.”

                                                          The latest » On the move

Ida Pereira has joined Griffith Hack as
an Associate, Trade Mark Attorney and
Lawyer. Ida has more than 13 years’
experience working in trade mark law.
Ida’s practice ranges from advice on
registrability of trade marks, lodgement of      Jürgen bebber has been promoted to
applications and trade mark prosecution,         Senior Associate, Trade Mark Attorney and
to opposition and enforcement of rights.         Lawyer. Jürgen joined the Griffith Hack
                                                 team in 2002 and assists both Australian
                                                 businesses and international corporations
                                                 in obtaining, maintaining and enforcing
chih-lynne Teo has joined Griffith Hack as       their IP rights, in addition to speaking at
a Patent Searcher. Chih-Lynne’s professional     industry functions.
experience includes working in knowledge
management and technology transfer
between a major research institution and a
publicly listed biotech company. Chih-Lynne
performs various types of patent searches        Dr andrew Johns has been promoted
across a range of technologies.                  to Senior Associate, Patent Attorney.
                                                 Andrew joined Griffith Hack in 2001 and
                                                 with extensive experience in anti-cancer
                                                 research, is well-placed to understand the
Dr malcolm Peh has joined Griffith Hack as       technology of clients’ inventions. Andrew is
a Trainee Patent Attorney. Prior to joining      involved in all aspects of the patent process
Griffith Hack, Malcolm worked as a Patent        for both Australian and overseas clients.
Examiner in the Australian Patent Office.
Malcolm has completed the requirements to
qualify as a registered Trade Marks Attorney
and is currently finishing his last subject to
qualify as a Patent Attorney.                    robyn heard has been promoted to
                                                 Associate, Patent Attorney. Robyn joined
                                                 Griffith Hack in 2003 and assists both
                                                 individual inventors and large businesses
charles yip has joined Griffith Hack as a        at the forefront of technical development.
Trainee Patent Attorney and is currently         Robyn easily understands the technology of
undertaking a Master of Industrial Property      telecommunication networks and protocols
to complete requirements to register as a        and electrical and electronic products.
patent and trade mark attorney. Prior to
joining Griffith Hack, Charles worked in a
biomedical manufacturing company as a
student engineer.
                                                 Simone Tyndall (nee Calleja) has been
                                                 promoted to Associate, Patent Attorney.
                                                 Simone joined Griffith Hack in 2001 and
Samantha keirs has joined Griffith Hack          specialises in all areas of chemical and
as a Trainee Patent Attorney. Samantha           pharmaceutical patent matters. Her clients
has a BSc (Hons) in Nanotechnology and           include small businesses, universities,
prior to joining Griffith Hack, worked in        research institutes and government research
the petrochemical industry. Samantha is          organisations in Australia and overseas.
currently completing a Masters in Industrial
Property to complete her registration as an
Australian patent and trade mark attorney.

                                                 amy mann has joined Griffith Hack as
Dr Justin blows has joined Griffith Hack         an Article Clerk. Amy’s background is in
as an Associate, Patent Attorney. Justin         biomedical science and her legal studies
has authored more than 90 publications           focus on medical and biotechnology law.
in the fields of science, engineering and        Amy is gaining general litigation experience
patent law and has experience drafting           with Griffith Hack and aims to qualify as a
and prosecuting patents in Australia and         lawyer in 2009.
overseas. Justin has a BSc with first class
honours in physics, a PhD in applied physics
and a Masters of Industrial Property.

                                                 belinda muir has joined Griffith Hack as
                                                 a Lawyer. Belinda has an Honours degree
lakshmi rajagopalan has joined Griffith
                                                 in biological science, the results of which
Hack as a Lawyer. Lakshmi has previously
                                                 she presented at the Australian Health and
worked in the intellectual property and
                                                 Medical Research Conference in Sydney.
commercial litigation practice group of a
                                                 Belinda is involved in a range of matters
Sydney law firm. Lakshmi has experience in
                                                 involving copyright, trade marks, patents
IP disputes involving trade marks, domain
                                                 and trade practices law.
names , confidential information and patents,
and general areas of commercial litigation.

                                                 Jade ghezzi has joined Griffith Hack as
mike lloyd has joined Griffith Hack
                                                 a Trade Mark Attorney and Trade Mark
as a Consultant. With a background in
                                                 Searcher. Jade is a qualified Trade Marks
research management and innovation,
                                                 Attorney and is also studying a Master
Mike assists clients with the management
                                                 of Laws/Juris Doctor. Jade previously
of their IP portfolio. Mike has presented
                                                 worked as an intellectual property portfolio
at international conferences in both
                                                 manager with another Melbourne IP firm.
engineering and IP management.

                                                       Working with Clever People              7
tHe latest                                                         » Griffith Hack news

      facTS aND fIgurES
      The Patent Report 2007 from the World Intellectual Property
      Organisation (WIPO) has shown a record 156,100 applications
      were filed under the Patent Cooperation Treaty, representing
      a 4.7% rate of growth over the previous year.
      International trade mark applications also reached a record
      high, with 39,945 international trade mark applications
      received in 2007 under the Madrid system for international
      registration of trade marks. This represents a 9.5% increase
      on figures from 2006.
                                                                                   all SySTEmS go
      German applicants topped the list of Madrid system users for
      the 15th consecutive year, followed by IP owners from France,                IP Australia has developed a new Australian patent search system
      the US and the EU. China remained the most designated                        called AusPat, to replace the existing two patent systems. The new
      country in international trade mark applications, which WIPO                 AusPat system will incorporate all Australian patent information
      attributed to increasing levels of trading activity by foreign               through one interface, providing greater efficiency and the addition
      companies in China.                                                          of a new search functionality.
                                                                                   IP Australia developed this system in consultation with key users,
                                                                                   including Griffith Hack’s Information Services Manager,
                                                                                   George Mokdsi.

    loNDoN callINg                                                                 Mokdsi’s input to the project was officially recognised with a
                                                                                   ‘Certificate of Recognition’ from Ian Heath, Director General at IP
    France ratified the London Agreement on 29 January 2008,                       Australia on 29 November 2007. The award was given to only a
    which means the Agreement will come into force on 1 May 2008.                  handful of users.
    As a result, the costs associated with the validation of granted
    European patents in EC countries will decrease significantly.                  Griffith Hack’s information services team continues to provide
                                                                                   feedback to assist with improving the system.
    The London Agreement has been made in connection with the
    requirements for translations of granted European patents                      According to Mokdsi: “The new AusPat system is a significant
    whereby certain countries will waive the requirement for the                   milestone towards the development and implementation of a world
    filing of translations, and others will require translation of the             class patent searching system within Australia.”
    claims only.

                                                                                     TraDE mark rENEWalS
    INDuSTry accolaDES                                                               As of 28 March 2008, in accordance with amendments
    Griffith Hack Principal Wayne Condon has been ranked among the                   incorporated in the Trade Marks Amendment Act 2006, the
    best IP lawyers in Australia, according to the inaugural Australian              period in which a trade mark can be renewed after it is due
    Financial Review Best Lawyers Australia peer review survey.                      will reduce from 12 months to six months.

    It is an outstanding recognition of Condon’s 27 years’ experience                Currently a trade mark registration may be renewed up to
    in IP litigation, where he has acted for and advised a number                    12 months before or 12 months after the renewal date. Trade
    of Australian and international corporations in relation to the                  marks due for renewal on or before 27 March 2008 will still be
    commercialisation of emerging technologies and the enforcement                   renewable for up to 12 months afterwards. There is no change
    of IP rights.                                                                    to the 12 month period prior to the renewal due date.

    In addition to this, Griffith Hack has been ranked a Tier 1 intellectual
    property law firm for patent and trade mark prosecution in
    Australia in the 2008 Managing Intellectual Property survey. The
    qualitative rankings of leading firms were compiled by Managing
    Intellectual Property’s international team of researchers, who
    spoke to hundreds of practitioners and in-house counsel to gather
    information about the IP market in 65 jurisdictions.

                                                                                    The Griffith Hack Group includes Griffith Hack Patent and
    melbourne                                 brisbane                              Trade Mark Attorneys and Griffith Hack Lawyers, who
    Level 3, 509 St Kilda Road                Level 10, 167 Eagle Street            specialise in intellectual property and information
                                                                                    technology law.
    Melbourne VIC 3004                        Brisbane QLD 4001
                                                                                    The Griffith Hack Group is associated with Computer
    Phone: +61 3 9243 8300                    Phone: +61 7 3221 7200                Patent Annuities renewal service and Trade Marks
    Fax: +61 3 9243 8333                      Fax: +61 7 3221 1245                  Directory Service.
    Email:         Email:     No reader should act on the basis of any matter contained in
                                                                                    this publication without first obtaining specific professional
    Sydney                                    Perth                                 advice. Where applicable, liability is limited by the NSW
    Level 29, Northpoint, 100 Miller Street   Level 19, 109 St Georges Terrace      Solicitors Scheme under the Professional Standards Act
                                                                                    1994 (NSW), and other relevant state legislation.
    North Sydney NSW 2060                     Perth WA 6000
                                                                                    This publication is intended to provide a summary of the
    Phone: +61 2 9925 5900                    Phone: +61 8 9213 8300                subject matter covered. It does not purport to be
    Fax: +61 2 9925 5911                      Fax: +61 8 9213 8333                  comprehensive or to render legal advice.
    Email:          Email:    Information correct as at 1 May 2008.                  


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