Griffith Hack has been recognised by Doyle’s Guide 2022 across multiple categories, with principals Kellie Stonier and Gavin Adkins receiving individual accolades.

Individual recognition
Brisbane-based principal Kellie Stonier has been named one of Queensland’s leading intellectual property lawyers, receiving recognition in the prestigious “Leading” category. Kellie was also recently listed for her intellectual property law expertise in the latest edition of Best Lawyers’.

Melbourne-based principal Gavin Adkins has been named as a leading contentious intellectual property lawyer in Victoria, receiving a “Recommended” ranking. This was the first time that Gavin has been honoured by Doyle’s.

Firm recognition
Further to the individual accolades, Griffith Hack has been ranked by Doyle’s as a leading contentious and non-contentious intellectual property law firm in both NSW and Victoria, and a leading intellectual property law firm in Queensland.

Griffith Hack principals Amanda Stark and Janelle Borham have been named as Patent Stars in the IP STARS 2022 rankings by Managing IP.

This result highlights Amanda and Janelle’s standing as leaders in patent work both within Australia and internationally.

Earlier in 2022, Griffith Hack was also named as a Tier 1 firm for Trade Mark Prosecution and a Tier 3 firm for Trade Mark Contentious by IP STARS, with Anne Makrigiorgos recognised as a Trade Mark Star.

Published by Managing IP, IP STARS recognises firms and senior practitioners who have been identified as leaders in their fields and is considered one the most comprehensive and widely respected guides in the IP profession.

About Amanda & Janelle

Amanda Stark

Amanda is one of the leading patent practitioners in the Australian biotechnology space.  She is also a key member of Griffith Hack’s leadership team, heading up the ChemLife practice group and leading the International Business Development and Foreign Associate Relationship program.

Amanda has a reputation for grasping complex legal and technical issues and developing creative solutions to achieve targeted results. Known in the industry for her tenacity and lateral thinking, clients transfer their work to Amanda when issues arise that most attorneys cannot resolve.


Janelle Borham

Janelle Borham is a principal and patent and trade marks attorney based in Melbourne. She is also the current president of the Institute of Patent and Trade Mark Attorneys of Australia.

Janelle provides strategic IP advice to large corporations locally and overseas, and assists clients drafting patent specifications. She has particular expertise in the area of food sciences, working with multinationals in an area that has changed significantly over the last 20 years. 

World Intellectual Property Day is being celebrated across the globe today, with this year’s theme shining a spotlight on IP and youth and how we can innovate for a better future.

Here at Griffith Hack, we use World IP Day 2022 to recognise the young inventors, technologists, engineers and entrepreneurs who are developing the innovative products and services that will help steer a course towards a better future.

We also use today to celebrate our cohort of talented young patent attorneys, trade marks attorneys and lawyers who work side-by-side with these innovators to help bring their ideas to the world. We thought we’d speak with some of them to find out why they enjoy working in IP, and what excites them about its future.

Thanks to Jessie Shu, John Scicluna, Radhika Moore and Dr Bryan Leaw for participating.

Griffith Hack is thrilled to be attending the INTA 2022 Annual Meeting in Washington, D.C from 30 April – 4 May, with our team looking forward to reconnecting with colleagues in person.

Representing Griffith Hack at the event will be:

If you are attending INTA and would like to schedule a meeting in advance, please contact Nicola, Emma, Ray or Simon directly, or alternatively, contact Faye Oxley – Business Development Manager:

Anthony Selleck reviews today’s decision in Commissioner of Patents v Thaler [2022] FCAFC 62 which reverses an earlier ruling that artificial intelligence can be an “inventor” for the purposes of the Australian Patents Act 1990.

In July 2021, the Australian Federal Court delivered what can be described as a stunning decision, that an artificial intelligence can be an “inventor” for the purposes of the Australian Patents Act 1990. The decision seemingly opened the door to the Australian Patent Office granting patents to outputs wholly produced by artificial intelligence systems with no human intervention.

The Commissioner of Patents appealed the decision to the Full Court, and earlier today, the Court unanimously allowed the Commissioner’s appeal.

Prior to today’s decision, Australia was the only country in which a court decided in favour of the patent applicant, with courts in Germany, the United States and United Kingdom (along with Patent Offices in a number of jurisdictions) reaching the opposite conclusion.

Central to the Full Court’s decision was the observation that the law relating to the entitlement of a person to the grant of a patent is premised upon an invention that arises “from the mind of a natural person or persons”. In reaching this conclusion, the Full Court noted that it is those who contribute to, or supply, the inventive concept who are entitled to the grant of a patent, and that the patent grant is a reward for the inventor’s “human” ingenuity.

The Full Court also observed that it is the “inventor” (as opposed to the Applicant) who makes certain representations in the patent specification as to the nature of the invention. It is these representations that underlie the patent bargain between the inventor and the state, and are intertwined with concepts material to the validity of patent applications and patents. According to the Full Court, the Patents Act 1990 does not contemplate beings other than human being having the capacity to make representations, or indeed misrepresentations that may render a patent liable to be revoked.

In the absence of a successful appeal to the High Court of Australia, it can be assumed that Australian patent applications must name a human inventor, or are at risk of lapsing.

There are many policy issues that arise with respect to granting patent rights to the results and insights that artificial intelligence systems generate. We have no doubt that these will be hotly debated in the future, in the context of reforms to the patent system or the creation of new intellectual property systems specifically tailored to artificial intelligence.

Applications are now open for Artificial Intelligence (AI) and Digital Capability Centre Grants of up to A$11 million, as part of a Federal Government plan to drive the adoption of AI technologies by Australian businesses. Anthony Selleck explains why applicants should conduct IP due diligence before completing their submission.


The Australian Government released an Artificial Intelligence (AI) Action Plan in June 2021, which included a total of A$44 million funding to establish four “AI and Digital Capability Centres”.

Grants of up to A$11 million are now available for eligible entities to establish the new Centres, with applications needing to be submitted through the Business Australia website by 12 May 2022.

Overview of the grant

AI and Digital Capability Centres are intended to drive the adoption and use of AI technologies by Australian businesses. It is envisaged that the Centres will connect small and medium enterprises (SMEs) with AI equipment and tools, provide services and training, and link the enterprises to AI skills and expertise.

The Centres are also intended to support the development, commercialisation, and adoption of high-value AI products and services for the domestic and global marketplace.

According to the Action Plan, the objectives for establishing the Capability Centres are to:

  • establish a “front door” for SMEs to access capabilities, expertise and innovative technologies to adopt, adapt, test and deploy AI technologies;
  • foster collaboration and connect SMEs with opportunities to lift productivity and drive commercialisation;
  • coordinate and drive the growth of Australia’s AI ecosystem; and
  • lift SME capabilities to enable more confident adoption of AI solutions.

Important points for grant applicants

According to the applicable Grant opportunity guidelines, an application for a grant to establish a Capability Centre must be a joint application with a lead organisation that will be the main driver of the project.

Each joint application must include amongst its project partners and lead organisation, at least one Australian industry partner. It is intended that the Centres will build on an existing establishment, such as a technology or manufacturing precinct/hub, university or centre of excellence. In this regard, the guidelines list the following bodies as examples of Australian industry partners:

  • an Australian research partner (such as a university or co-operative research centre);
  • a multi-national technology firm;
  • a large sector-specific firm; and
  • a state/territory agency or body.

When applying for a grant, applicants must certify that they “have or will have relevant intellectual property guidelines in place” in order to establish and run the Capability Centre.

We strongly suggest that applicants conduct IP due diligence and establish relevant guidelines (if they are not already in place) prior to making any certification in a grant application. 

Summary 

Griffith Hack is committed to working with clients across the full spectrum of industries that adopt AI technologies. For more information or assistance, such as in conducting IP due diligence to support an intellectual property certification, please contact us

The phase out of Australia’s innovation patent system caused a flurry of filing activity in 2021, so what are your options if you identify an innovation patent that affects your freedom to operate?

There was a spike in filing activity as part of the phase out of Australia’s innovation patent system, with over 2,700 innovation patents filed in August 2021 alone. With so many recently filed innovation patent cases, it is a good time to consider the available options if you identify an innovation patent that might affect your freedom to operate.

First, is there really a problem?

If you are worried about an innovation patent, it can be useful to get some early advice on the potential scope of the patent rights and, if necessary, the prospects for challenging validity. You may find that the patent claims do not cover your proposed commercial activities. Alternatively, you might get some clarity around a potential problem so that you can start developing a strategy to address it.

Tailor your strategy

If you identify a problematic innovation patent, it might be worthwhile to challenge that validity of it and we touch on some of the available options below. However, in some cases, you may prefer to negotiate with the patentee in order to reach a mutually beneficial commercial solution (e.g. licensing or assignment of the patent rights). Sometimes a validity challenge can be used strategically to encourage the patentee to come to the negotiating table, or to shift the balance in your favour during negotiations.

There is no single strategy that is appropriate in all circumstances. The best course of action for you will depend on your commercial goals and individual circumstances. The Griffith Hack team can assist you with developing a tailored strategy: feel free to contact us if you would like to discuss your options.

A granted (innovation) patent doesn’t always mean much

It is important to remember that innovation patent applications proceed to grant after only a formalities check. However, they do not become enforceable until they have completed substantive examination and been certified. If you are concerned that infringement proceedings might be commenced against you once an innovation patent has been certified, it may be beneficial to consider pre-certification options.

How likely is invalidity?

Requesting substantive examination of an innovation patent is voluntary. As a result, applicants sometimes take an “optimistic” approach to the subject matter being pursued. This may be done by some foreign applicants to take advantage of financial incentives in their country of origin. Alternatively, the underlying strategy may be for the granted (but uncertified) innovation patent to act as a deterrent to competitors, who might not go the additional step of seeking advice on whether the innovation patent is likely to stand up to scrutiny.

China’s utility model is a similar second-tier of patent protection to the innovation patent. Recent figures indicate that patent invalidation proceedings in China have been successful in a significant proportion of cases. Of the concluded invalidation proceedings for utility model patents in 2020, 39.2% of cases were invalidated entirely, 18.2% were invalidated partially, and only 42.6% of the challenged utility models were maintained.

Much is made of innovation patents being harder to invalidate due to the innovative step being a lower threshold than the inventive step requirement of standard patents. While it is true that the innovative step threshold is lower, it is not a free pass to validity. For example, it is important to bear in mind that innovation patents must meet the same validity requirements as standard patent cases for the level of disclosure in the patent specification. Recent case law indicates Australian patent specifications must now meet a higher standard, more aligned with UK and European requirements. With these recent developments in mind, it is wise not to take an innovation patent (especially an uncertified one!) on its face.

Pre-certification options

Third-Party Examination Requests

Sometimes the simplest way of dealing with a problematic case is to ask the Patent Office to look at it. Substantive examination of innovation patents is voluntary, but third parties can request that an innovation patent be examined. This can be done anonymously or by ‘strawman’. Both the third party and the patentee must pay an examination fee in relation to the third party’s examination request. If the patentee fails to pay this fee, the patent will cease. For patentees who filed an innovation patent with no real intention of having it certified, being asked to pay the examination fee may be enough to cause them to abandon the case.

Notice of Matters Affecting Validity

If you would like to enhance the likelihood of objections in examination, you can give the Patent Office a bit of help. It is possible to file a Notice of Matters Affecting Validity (NMAV). The NMAV can provide submissions (and supporting material) asserting that the claimed invention lacks novelty and/or an innovative step. The Patent Office is required to consider the NMAV when the innovation patent is examined (irrespective of who made the examination request).

You can file an NMAV at any time from when the complete specification for the patent becomes open to public inspection to immediately before the Commissioner decides to certify the patent. Again, this can be done anonymously or by ‘strawman’.

Post-certification options

After certification, a patentee can commence enforcement proceedings to assert their patent rights. Accordingly, it is important to consider the risk of the patentee commencing infringement proceedings when contemplating a post-certification challenge to the validity of an innovation. There are a number of different options available, and we recommend consulting with an IP professional to develop a strategy suited to your circumstances.

Re-examination

If the innovation patent has been examined and certified, that does not have to be the end of the matter. If you still have validity concerns, you can ask the Patent Office to re-examine the innovation patent. Again, this can be done anonymously or by ‘strawman’. Re-examination requests can address more grounds than an NMAV including written description requirements.

Re-examination can be considered a “passive” approach in that you provide information to the Patent Office and hope that they will use it wisely. If the Patent Office raises objections in the light of the re-examination request, the patentee will be given the opportunity to respond to the objections, but the party requesting re-examination does not have a formal opportunity to contest the patentee’s response. Re-examination can be a cost-effective option in circumstances where there are clear invalidity grounds.

Opposition

Alternatively, if it is strategically beneficial to take a more active approach to contesting the validity of an innovation patent, you can commence opposition proceedings before the Patent Office. In opposition proceedings, both the opponent and the patentee are given the opportunity to file evidence and make submissions in support of their respective cases. The opposition can proceed to a formal hearing, where each party can be heard and a hearing officer from the Patent Office will prepare a formal decision on the opposition. The grounds of opposition include the same grounds as re-examination.

Revocation

There is also the option of commencing revocation proceedings before the Federal Court. We do not suggest litigation lightly, but in some circumstances revocation proceedings can be the best approach. The grounds of revocation generally include the same grounds as for oppositions.

If you are dealing with nuanced technical issues or a complicated case, it may be beneficial to actively contest the validity of the innovation patent in opposition or revocation proceedings. As noted above, the best strategy will depend on the specific circumstances of any matter.

How we can help

Griffith Hack is a full-service specialist IP firm. We combine a highly experienced and technically diverse patents team with a legal team with a strong track record. At Griffith Hack, our attorneys and lawyers work together to provide you with commercially astute advice and execute a strategy tailored to your needs.

To discuss the available options, please contact a member of our team.

Griffith Hack is proud to announce that Amanda Stark, Principal and Practice Group Leader of our ChemLife team, has received the Client Choice Award – IP Patent Agents and Attorneys, Australia at the 2021 Lexology Client Choice Awards.

Established in 2005, Client Choice recognises individuals around the world who stand apart for the excellent client care they provide and the quality of their service.

The criteria for this award focuses on the ability to add real value to clients’ business; above and beyond the other players in the market. Uniquely, nominees can be submitted only by corporate counsel, with this year’s winners chosen from a pool of more than 2,000 individual client assessments.

What clients said about Amanda

“Amanda is easy to get on with, picks up the issues & technology quickly and provides clear advice, good availability, good communication.”

“Amanda is an exceptional patent attorney with extensive expertise in managing biotech patent matters.”

“Amanda is always, responsive, patient, professional, extremely knowledgeable and works hard to achieve the best outcome for her clients.

“In all my interactions with Amanda, she has been an excellent communicator and consistently provided invaluable advice on patent strategy.“

“Amanda demonstrates a critical commercial perspective. Her outstanding advice has greatly increased our value.”

“Amanda has provided strategic guidance on options to minimise costs while maximising outcomes.”

About Amanda

Amanda is one of the leading practitioners in the Australian biotechnology space. She is a key member of Griffith Hack’s leadership team, heading up the ChemLife practice group and leading the International Business Development and Foreign Associate Relationship program.

Amanda has a reputation for grasping complex legal and technical issues and developing creative solutions to achieve targeted results. Known in the industry for her tenacity and lateral thinking, clients transfer their work to Amanda when issues arise that most attorneys cannot resolve. A key strength of Amanda’s is IP strategy formulation and she is often called upon to develop IP strategies for companies looking for investment.

The draft version of legislation to strengthen the existing unfair contract term protections in the Australian Consumer Law (ACL) was recently released for public consultation, giving us a peek into what is to come. The proposed changes are significant, including potential penalties of AU$10 million, and businesses trading in Australia will likely need to review their contract terms. 

The current unfair contract term protections under the ACL have sometimes been described as a “toothless tiger”. Currently, the protections are quite limited in application and where a term is found to be an “unfair contract term”, it is simply void. Only parties who prove to a court that they have suffered loss or damage as a result of the unfair term can be compensated. No penalties currently apply.

This is set to change and businesses trading in Australia will need to prepare.

In August 2021, the Exposure Draft Legislation and accompanying Explanatory Materials were released for public consultation. The changes proposed are intended to provide fairer allocation of risk in standard form contracts and improve consumer and small business confidence when entering into such contracts. We provide a summary of the changes proposed in the Draft Legislation below.

Increased scope of application to larger businesses and no limit on contract value

The scope of application of unfair contract term laws will likely be broadened. It will continue to apply to standard form contracts which are “consumer contracts” or “small business contracts”, but those definitions would be expanded.

Currently, one of the requirements for a contract to be a “small business contract” is that at least one party to the contract is a business employing fewer than 20 persons. The Draft Legislation increases this to either 100 employees or alternatively, for the company to have an annual turnover threshold of less than $10 million.

Also, the requirement that the upfront payable price of the contract must be below a certain threshold is to be removed. This brings many more companies within the ambit of the legislation. 

We can also expect some increased clarity around the definition of a “standard form contract”. The Draft Legislation specifies that courts must not take into account opportunities to negotiate minor or insubstantial changes to the terms of the contract, opportunities to select a term from a range of options, and the extent to which parties to another separate (but perhaps similar) contract were given opportunity to negotiate its terms. This further solidifies the need to provide the other party with an effective opportunity to negotiate the contract if the unfair contract term provisions are to be avoided.

Terms declared by court to be unfair cannot be used

The Draft Legislation provides that if a term has been declared by a court to be unfair, there will be a presumption in subsequent proceedings that terms which are the same or have a substantially similar effect will also be unfair. This will require businesses to stay abreast of changes to the law in this area by actively reviewing and amending the terms in their standard form contracts in accordance with the court’s decisions.

Growing “teeth” – significant civil penalties and potential remedies

There are currently no penalties for parties using unfair contract terms in their standard form contracts. The Draft Legislation would introduce penalties not only for proposing an unfair term but also for relying on the term. Further, it creates separate contraventions for each term which is unfair. This means that a business may breach the prohibition multiple times in a single contract (and therefore, attract multiple penalties), when they propose the term and again when they rely on it.

For a company, the maximum amount of the penalty will be the greater of: AU$10 million; three (3) times the value of the benefit the company obtained from the breach of the law (if that can be determined; or, if the court cannot determine the value of that benefit, 10% of the company’s annual turnover.

The Draft Legislation also introduces some new remedies specifically for unfair contract terms. A court can now make orders to void, vary or refuse to enforce part or all of a contract if the court thinks this is appropriate to prevent or reduce loss or damage that may be caused (or to remedy loss or damage that has occurred). Unlike other orders the court can make under the ACL, there is no need to show that loss or damage has occurred, only that it may

A court can also make some new special orders on the application of the regulator, including orders injuncting the offending party from using an unfair term (or terms similar to it) in any future contracts. These orders can be made up to six (6) years after the court declares a term is unfair. This gives the regulator significant power to crack down on unfair terms on an ongoing basis.

Other proposed changes

  • It would be expressly stated that remedies for the breach of unfair contract term provisions are also available to non-parties to the contract, and regardless of their status as a consumer or small business.
  • The Draft Legislation would also clarify that if a law of the Commonwealth, State or Territory requires or reads in certain terms into a standard form consumer or small business contract, even if the law does not require or expressly permit those terms per se, it still cannot be considered an unfair contract term under the ACL.

Key takeaways for businesses

With the upcoming changes, business should prepare to review their standard form agreements (under the new definition) for use in Australia and remove or amend any unfair terms. For example, terms of sale or terms of use agreements, licensing agreements, distribution agreements, and service agreements (such as SaaS agreements), are all examples of agreements which may be considered “standard form agreements” depending on the relevant circumstances and may contain “unfair terms”.

If you’d like our assistance with conducting a review of your standard form agreements, please contact us.

Australia and the United Kingdom recently agreed to the broad terms of a Free Trade Agreement, part of which seeks to enhance design rights. As a result, Australia has (finally!) agreed in principle to join the Hague Agreement on Industrial Designs.

What is the Hague Agreement?

The Hague Agreement establishes an international system (the Hague System) administered by the World Intellectual Property Organization (WIPO) which allows designers to seek design protection in many countries at once, with fees paid in one currency, through a single international application. For those familiar with trade marks, the Hague System for Industrial Designs provides a similar procedure to the Madrid Protocol. That is, a single international application applied through WIPO enables applicants to secure rights in multiple participating countries.

How can designers benefit from the Hague System?

Centralised Management of Design Portfolios

Under the current system, Australians can apply for registered designs in Australia and overseas. However, for overseas protection, applicants need to engage in each country of interest a local agent and file a registration application through the relevant national IP administration office . Unsurprisingly, this can be an expensive endeavour, incurring costs for official fees, red tape costs at filing, translations (for non-English speaking countries) and substantive examination, all required for each country.

The Hague System enables designers to file a single design application through WIPO that can protect their designs in (currently) 92 countries simultaneously. Advantageously, this mitigates some of the costs associated with separate national filings by replacing multiple applications (and procedures and formalities) with a single application that only requires a single translation be provided with an application. This can be particularly advantageous for applicants filing designs into multiple non-English speaking countries.

There may be less of a need to involve local attorneys, but a local attorney may be required when an adverse official report issues in connection with a design in a specific country. One drawback in filing a single design application through the Hague System is that the design application may not meet the specific design registration requirements in a specific country. For example, China and the US have very particular design drawing requirements that could normally be addressed prior to filing after consultation with a local attorney.

A Single Application with Simultaneous International Design Rights

The Hague System allows designers to access some of Australia’s key international trading partners. For example, Australian designers planning to launch their designs into the global export market can utilise the Hague System to secure rights in the United States of America, United Kingdom and Canada. Additionally, designers looking to manufacture their products overseas can access design rights in Viet Nam, Japan and Korea. A full list of the contracting parties is available here.

An Option to Defer Publication

The Hague System allows applicants to defer publication of their international design applications. Advantageously, Australian designers can utilise this provision of the Hague System to keep their designs secret for up to 30-months after filing. On the international stage, this may stand as a strategic advantage for some Australian applicants. For example, registered designs can be selectively published according to e.g. a product release schedule or ‘roadmap’. In this way, an applicant can be agile with their product portfolio, publishing their registered designs when most suitable, or in alignment with a broader marketing strategy.

Term of Protection

In joining the Hague System, Australia will need to extend the term of protection from 10 years to a minimum of 15 years. Currently, in Australia, designs proceed directly to registration with only a formalities check. There is no need to undergo a substantive examination process unless the design owner wants to enforce the design. It is likely that the Australian Designs Act will be revised to not only cater for the longer term of protection, but also provide an opposition system given the increase term of protection.

Partial Designs and Graphical User Interfaces

Australian designers will also see the introduction of protection for partial designs and virtual designs in the coming years as the UK-Australia Free Trade Agreement takes shape. For those unfamiliar with partial designs and virtual designs:

a partial design registration will allow an applicant to protect a part, i.e. a ‘signature feature’ of their whole design (or product); and

a virtual design registration will allow an applicant to protect screen displays, graphical user interfaces (GUIs) and screen icons.

The Hague System includes protection for partial designs and virtual designs. IP Australia deferred introducing protection for these types of design registrations in the recent round of Design Law reforms which will come into effect in March 2022. Although not part of the current program of reforms, movement towards the Hague System will force the Australian Government to afford protection to these types of designs in order to align with other jurisdictions such as the European Union, United Kingdom and United States of America.

What can Australian Designers expect from the UK-Australia Free Trade Agreement?

As a part of the UK-Australia Free Trade Agreement, Australia has committed to make all reasonable efforts to join the UK as a member of the multilateral Hague Agreement on Industrial Designs.

While an ‘Agreement in Principle’ was announced on 15 June 2021, the Free Trade Agreement is not expected to come into effect until at least 2022, allowing for final negotiations to be made and the required legislation passed by both Australian and UK Parliaments.

In the years to come, leading to the finalisation of the Free Trade Agreement, designers can expect to see further changes to design rights in Australia. Royal assent to the current reforms to the design rights system was given on 10 September 2021 and thus will come into force on 10 March 2022 for the substantive law changes. While it is unclear how the Hague System reforms will materialise in Australia at this stage, some of the current reforms are consistent with the provisions of the Hague System. For example, the reforms introduce a 12-month grace period for design registrations in Australia which will come into effect March 2022.

The legislative and system changes associated with these reforms will benefit designers looking to maximise protection in international markets and lead Australia to the international partnership of the Hague System.