N

Our legal experts will keep you up to date on all relevant and current developments.

Federal Court confirms that a patent applicant, owner and inventor must be a natural person: Thaler v Commissioner of Patents [2021] FCA 879

Readers may recall Holman Webb’s September 2021 article ‘The Future of Artificial Intelligence - Can AI invent software?, which reported on a landmark judgement by Justice Beach of the Federal Court in the matter of Thaler v Commissioner of Patents [2021] FCA 879, which determined that under Australian law, artificial intelligence could be listed as the inventor in relation to an application for a patent

Readers may also recall that the Commissioner of Patents appealed that decision.

That decision has now been overturned by the Full Court of the Federal Court, in a unanimous judgement which brings Australia into line with most other jurisdictions around the world.


What are the Limits of Implied Software Licences?  QAD Inc v Shepparton Partners Collective Operations Pty Ltd [2021] FCA 615

If you purchased a business and the sale included all of the business’s computers, would it be reasonable to expect to be able to use the software installed on those computers?

In the recent matter of QAD Inc v Shepparton Partners Collective Operations Pty Ltd [2021] FCA 615, the Federal Court ordered Shepparton Partners Collective Operations Pty Ltd (‘SPC’) to pay $1M+ in damages to software company QAD Inc (‘QAD’), after finding that SPC had infringed copyright after purchasing the business from Coca-Cola Amatil (‘CCA’) without having secured a transfer of the relevant software licence agreement.

  • After the sale QAD required payment of a fee as a condition for its consent to transfer the licence, which SPC refused to pay.
  • SPC denied that it had infringed copyright, claiming that it had an implied licence from QAD to use the software.
  • SPC cross-claimed against Sale Co 1 Limited (‘SaleCo’) and CCA on the basis they had failed to use their ‘best endeavours’ to secure a transfer of the licence agreement.

The Future of Artificial Intelligence - Can AI invent software?
Friday 17 September 2021 / by Tal Williams & Edita Grinbergs posted in Intellectual Property Protection Technology Law Artificial Intelligence Patents Intellectual Property Patents Act 1990

The Commissioner of Patents will appeal the Australian Federal Court’s recent decision in Thaler v Commissioner of Patents [2021] FCA 879, to allow machines to be recognised as inventors on a patent application, on the basis that the decision is ‘incompatible’ with Australian patent law


Holman Webb Listed as Finalist - Lawyers Weekly Australian Law Awards 2021

Holman Webb Lawyers is proud to relay that the firm has been listed as a finalist in two categories in the Lawyers Weekly Australian Law Awards 2021:

  • Law Firm of the Year
  • Insurance Team of the Year

Click through for more information on this year's finalists, and upcoming winner announcements.


The Crucial Nature of Trade Marks in Franchising

Trade marks are the essence of franchising. 

All franchise systems strive for widespread recognition of their 'brand'. A common thread between successful franchise systems is that their customers receive a consistent level of quality in goods and services provided under instantly recognisable trade marks. 

However, there are often complexities in the registration and use of trade marks within a franchise system. For franchisors, getting the licensing right is not always clear cut, nor is being able to secure registrations for new products. On the other hand, franchisees will often enhance the reputation of a trade mark, but have no ownership interest and can carry the risk of infringing a competitor's trade mark. 

This article explores the importance of trade marks to a franchise system, and the key parties involved in it.


Intellectual Property and Virtual Meeting Platforms

Virtual meeting platforms have seen user numbers increase substantially since the end of 2019. Services such as Microsoft Teams, Skype and Zoom have become an increasingly utilised tool as a large number of businesses have directed employees to work from home during the various COVID-19 lockdowns.

When utilising services such as Skype or Zoom, businesses need to be aware of their terms and conditions, particularly what they say about intellectual property relating to content being presented through the platforms.


In case of emergency…exploit rights? A summary of the Crown’s power to exercise intellectual property rights in an emergency
Monday 22 June 2020 / by Daniel Jepson posted in Intellectual Property Protection

Key takeaways:

  • Recent changes to the Patents Act 1990 (Cth) and the Designs Act 2003 (Cth) give Commonwealth, state and territory governments the power to exploit patent and design rights in an emergency.
  • These Acts also permit the Commonwealth, state and territory governments to exploit rights outside an emergency, though the process is more onerous.
  • The Copyright Act 1968 (Cth) permits Commonwealth and state governments to use private works with immunity, in an emergency or otherwise.
  • While "the Crown" is referenced within each Act, the power is generally available to the Commonwealth, state and territory governments and anyone they authorise.
  • All three Acts provide for some form of compensation, though in some circumstances it may be impossible to reach a firm conclusion on what is fair and reasonable.

Top Five Factors to Consider Before Applying for a Trade Mark
Wednesday 6 November 2019 / by Daniel Jepson posted in Intellectual Property Protection Trade Marks

As most people would likely be aware (and as Holman Webb has previously stated), trade marks are vital business assets - with dozens of trade mark applications being filed every day in Australia. With this in mind, if your application is not up to scratch, significant issues can arise down the track which may prove to be unresolvable.


Corporate Groups and the ‘Authorised Use’ of Trade Marks

It has become increasingly common for corporate groups to hold their trade marks and other intellectual property within a dedicated, non-trading entity.


Trade Mark Licensing: Common Questions and Mistakes

Trade marks are core assets of many businesses, although unfortunately in Holman Webb's experience - they are often overlooked.

A few recent cases have highlighted just how important it is to ensure your trade mark arrangements are in place and, just as importantly, effective.

it is crucial to keep in mind that registering a trade mark is not the end of the process; there have been many cases of businesses ‘setting and forgetting’ their marks, only to have their registrations challenged.


Recent Posts






1

2 3