intellectual property

Australian Court: AI can’t be an “inventor” an Australian patent

The Full Court of the Federal Court of Australia (the Federal Courts appellate court) has overruled an earlier decision relating to artificial intelligence (AI) and ‘inventor’s’ of patentable works.  In accordance with the decision in Commissioner of Patents v Thaler [2022] FCAFC 62 (Thaler), an AI can no longer be considered as an ‘inventor’ for the purposes of the Patents Act 1990 (Cth) (Act).    For a summary of the earlier decision which was the subject of this appeal, including a brief outline of the facts of the case, see our article here. [Read more…]

Hermès sues artist over NFTs of Birkin bags

Luxury French brand icon Hermès has commenced legal proceedings in the United States District Court of New York against an American artist over virtual artworks depicting their world-renowned “Birkin bags”.  Luxury brands are some of the most vigilant protectors of their brand so this action by Hermès is not unexpected.  In this case Mason Rothschild created digital artwork, which is sold as non-fungible tokens, known as NFTs.  The recent explosion of NFTs has left many wondering, what are they, and what is the point of owning one?  This article explains what an NFT is and how they work, as well as some intellectual property considerations. [Read more…]

Ex-employees and IP protection

The importance of protecting your intellectual property cannot be overstated.  Various threats are posed to the confidentiality and exclusive use a company enjoys with their intellectual property.  One (1) such threat is when an employee, informed of the company’s intellectual property, ceases to be an employee of the company.  How can you protect your company’s intellectual property from this ex-employee? [Read more…]

IP licences and state-based transfer duty

Transfers of intellectual property (IP) are not usually considered to be dutiable transactions pursuant to state-based Duties Acts.  That said the question is always whether the IP includes goodwill, which is dutiable and as a result whether the payment of transfer duty is required.

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Use of competitors trademarks for comparative advertising

Comparative advertising is a popular way to win market share by promoting superiority of a product or a service over a competitor.  Businesses often use comparative advertisement as a direct challenge to a competitor’s product or service by comparing it with the size/volume, quality, price, or range of their own product or service.  Comparative advertising can be useful for consumers in making choices between similar products or services, but how is the use of a competitor’s trade mark in comparative advertising handled under Australian law? [Read more…]

Interlocutory injunctions and undertakings as to damages

An interlocutory injunction is an order made by the Court prior to trial either preventing or requiring some undertaking to be taken by one or more parties.  The Courts acknowledge that the imposition of such an interlocutory injunction on a party is not necessarily final and is subject to change.  As such, an undertaking as to damages is usually required by the party seeking an interlocutory injunction (Applicant).  This article discusses the established principles the Court will use to discern whether an Applicant has an adequate case for granting an interlocutory injunction. [Read more…]

Software royalties and income tax

The Australian Taxation Office (ATO) recently released a draft Taxation Ruling (TR) 2021/D4 (Draft Ruling) which considers whether certain software related royalties may be taxable.  In short, the Draft Ruling provides a much needed, and quite broad, scope for when consideration of computer software will be a royalty for income tax purposes.  This article discusses this broadened scope. [Read more…]

What is the springboard doctrine?

The ‘springboard’ doctrine refers to the benefit that is derived because of misuse of confidential information by a defendant that enables them to ‘springboard’ a new product or service to market more rapidly than if they had used their own mind.  A breach can be a contractual or equitable in nature and can also involve other causes of action such as breaches of director’s duties. [Read more…]

What is a registered design?

The registration of designs in Australia are a form of intellectual property protection associated with the visual appearance of an items with commercial or industrial significance.  Rights in designs are obtained by registration under the Designs Act 2003 (Cth) (Act).  Once registered the owner has exclusive rights to use the design, licence its use to others or sell it. [Read more…]

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