Intellectual Property Assignment

Intellectual Property Assignment

The assignment tests your ability to find and interpret information about intellectual property matters. It draws on skills you have learned earlier in your degree and applies them to the IP context.

You are not to write essay-style answers, nor even – necessarily – full sentences. Just give the specific information that is asked for in the form that is asked for, without unnecessary elaboration. When writing sentences or parts of sentences, write in correct, grammatical English. Where word limits are given, keep to the limits (marks will be deducted if you don’t) and do your best within them. Answer all questions based on the current law (November 2015), unless told to do otherwise.

The questions are intended to give you experience

• in developing and using the skills that an IP solicitor or barrister needs in order to operate effectively. In particular, the tasks are intended to give you experience finding and interpreting the main sources of Australian IP law – Acts, Regulations, Parliamentary Debates and other documents, and cases. They are also designed to give you some insight into foreign or international aspects of IP;
• in using online resources. This is particularly important if you are a distance education student or are likely to practise in a remote area, but is also essential for the city practitioner.

You will learn a lot about IP law through doing these tasks. You may not be able to find the answers easily so you should give yourself plenty of time to research your answers. You should not regard university staff as resources in carrying them out.

ONE

Copyright

[In this and all the questions, please show the question and the marks allocated to it on your answer document.]

A partner of your law firm needs a law journal article from the University of Melbourne law library for the purpose of some litigation. He plans to contact the library himself, but wants you to give him the following information in advance. You will need to find answers for him in the Copyright Act 1968, looking especially in the area of the Act which deals with Libraries and Archives.

1. If the library were to copy the article and supply the reproduction to him could it be infringing copyright under normal copyright principles (leaving out of account any special defences)? Yes or no. 1 mark.

2. Apart from the partner’s name and contact details and the name of the article he wants reproduced, what information will the partner need to give to the library? 40 words max. Give the relevant section/s or subsection/s as authority. 3 marks

3. What if the partner does not tell the truth in the information which he supplies? How will his conduct be classified? 10 words max. Give legislative authority for your answer. 3 marks

4. What punishment would the partner face for lying? Your answer should be as short and precise as possible. Give legislative authority for your answer. 3 marks

5. The partner tells you that he had the same article copied for him by the Deakin University library last year. Will that make any difference to the legal status of this reproduction? Why? Your answer should be as short and precise as possible and should refer to a legislative provision. 3 marks

6. To whom within the library can a request for a reproduction be made? Where in the Act did you find the answer to this? 3 marks

7. The partner wants to know what the legal effect would be if the library charged him more than it cost to make the reproduction? In what provision/s did you find the answer to this? Answer concisely. 3 marks

8. What would the legal position be if the partner were to fail to pick up the article and the library gave it to someone else instead? In what provision did you find the answer to this? Answer concisely. 3 marks

9. The partner knows that one of the other articles in the journal, on a different subject, relates to an essay his son is writing for University. He therefore wants to ask for that to be copied as well. Is this a problem? Explain concisely. 3 marks

10. What the partner wants is a ‘supply’ of the reproduction to him. Does this mean that the article can be emailed to him? Yes or no. What provision or provisions gave you the answer to this? 3 marks

11. Assuming that an electronic reproduction of an article is made and it is then supplied to the partner, what is the wording of the notification that the partner can expect to receive either before or when the reproduction is supplied to him? Copy the form of the notification into your answer here. 3 marks

12. State where this form of notification is to be found – under what part of what legislative instrument? 2 marks

33 marks total

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TWO

Trade marks

A client of your law firm wants to use the trade mark CRAZYCOW. The partner who is dealing with this client asks you to do some searches for similar trade marks. Please do a search for the registered trade mark CRAZYCOW on the IP Australia website. You will also need to consult legislation in doing this question.

1. On what date did protection of this trade mark begin? 1 mark

2. In which parts of the world (apart from the Australian mainland) does this Act operate? Give authority. 3 marks

3. What type of trade mark is this? 1 mark

4. Describe in your own words the full visual features of this registered trade mark. No more than 40 words. 4 marks

5. How do you explain the difference between the Registration date and the date the Trade Mark is entered on the Register? Answer concisely, no more than 40 words. 3 marks.

6. From what date was it no longer possible to oppose registration of this trade mark without seeking an extension of time? 3 marks

7. Is class 41 a class of goods or services? 1 mark

8. Name 2 items in class 16 for which the trade mark is clearly not registered. 2 marks.

9. At what legislative source did you find information about the contents of class 16? 2 marks

10. What registration fee was paid for the trade mark? 2 marks

11. State the trade mark owner’s full name and address. 2 marks

Your boss also wants you to do some research into the infringement of old trade marks.

12. Go to the Trade Marks Act 1995 and read 232 – 261. What is the purpose of these provisions, ie why are they contained in the Act? 30 words max. 3 marks.

13. Read s 252 – action for infringement of a trade mark etc. Reference is made to section 62 of the repealed Act. Copy in the first subsection of that repealed section here. 3 marks

14. BRM Pty Ltd has been using a trade mark (ZOXAK) which infringes a trade mark first registered in the 1920s. It has been using ZOXAK since 1950 and at that time and right up until 1996 it had a valid defence to an infringement action. It is only under the new Act that the same use has all the hallmarks of an infringement. The owners of the 1920s trade mark now threaten BRM with legal action for use of the trade mark in 2014. On these facts, are their threats unjustified? How do you know? 30 words max. 4 marks

34 marks total

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THREE

Patents

1. Go to the website of the United States Patents Office and find patent number 5,508,900. Give the name of the invention for which patent protection has been granted. 1 mark

2. Go to the most recent of the existing US patent documents cross referenced by the present application. State the name of that invention. 2 marks

3. How many months plus days were there between the application for patent protection and the grant of the patent? 2 marks

4. Describe the invention as claimed in claim number 1 in your own words. Avoid the technical language of the patent as far as possible. Make sure that you mention as many of the essential features of the invention (the features which make the invention work) as possible. 70 words max. 5 marks

5. In your own words describe the essential difference between claim 2 and claim 3. Max 30 words. 3 marks.

6. What are the basic problems that the invention seeks to solve? 25 words max. 3 marks

16 marks total

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FOUR

International

There has been a lot of talk about the Trans Pacific Partnership, for which negotiations successfully concluded in 2015. There were disagreements between Australia and the US regarding the period during which certain patent-related information would be protected (ie would be unusable by competitors). The following commentary about this appeared online:

One of the biggest sticking points in the negotiations had to do with data protection for biologic drugs.

Biologics are treatments made from biological sources, including vaccines, anti-toxins, proteins, and monoclonal antibodies for everything from Ebola to cancer. As the Brookings Institution, biologics are much more structurally complex than regular “small-molecule drugs” and are therefore more difficult and expensive to make, costing on average 22 times more than nonbiologic drugs.

Because of the high prices of these drugs, companies are very interested in developing “biosimilars” — cheaper copies of the original drugs, similar to generic versions of pharmaceuticals. The reason these biosimilars are so cheap is that manufacturers can usually just rely on data from clinical trials submitted by the maker of the original biologic. But, of course, the maker of the original drug doesn’t want everyone using its data and making cheap knockoffs.

So in the United States, there are really protective rules around this: Any maker of a biologic gets 12 years of data exclusivity. The FDA (US Food and Drug Administration) can’t approve a similar drug that relies on the original data during this time. (Theoretically, other companies could conduct their own trials to create a biosimilar, but because this is so expensive, it defeats the point.) By contrast, in other countries, there are looser rules — or no rules — around such data exclusivity. Japan offers eight years, for instance. Brunei offers zero.

As part of the TPP, the United States (and the pharmaceutical lobby) had been pushing to get every country to agree on 12 years of data protection for biologics. The final agreement falls somewhere in between, with a period of data exclusivity from at least five to eight years, according to the New York Times.

This means the agreement will prevent more affordable biosimilars from entering the market for a longer period of time in places that previously had no bar to entry. And the burden of this provision will be felt by the world’s poorest countries, according to Judit Rius Sanjuan, the legal policy adviser for Doctors Without Borders.

“Peru, Vietnam, Malaysia, and Mexico — they had zero monopoly protection on data for biologics,” she said. Now they’ll have to wait at least five years before allowing cheaper biosimilars onto the market. “It’s a loss for people in developing countries. They’ll face higher prices for longer periods of time, and there are many products we need that are biologics.”

Reading this commentary, a corporate client of yours (which is planning to manufacture pharmaceuticals) wants to know Australia’s position on data protection in relation to biologic drugs and also wants to understand the above commentary better. You need to find out the following:

1. What kind of data is protected by this period of, inter alia, 12 years? 15 words max. 2 marks

2. Why is it protected? 20 words max. 3 marks

3. What is the current period of protection for the data in Australia? 1 mark

4. Under what section of what Act is the data protected for that period? 2 marks

5. Copy in the full text of the relevant section here. 2 marks

6. When the Report of the Pharmaceutical Patents Review was handed down in Australia in 2013, did the review panel considering pharmaceutical patents recommend that the period of data protection be increased in line with the longer protection period in the US? Yes or no. 1 mark

7. Why was that? Give the two reasons that were given in the Report. 2 marks

13 marks total

FIVE

Designs

A partner at your firm needs to get up to date with her Designs law and particularly with matters relating to design infringement. She needs you to find decisions for her and to summarise their contents.

Find the most recent case (as at 20 November 2015) in which a judge of the Federal Court, sitting alone, has decided an infringement action under the Designs Act 2003. [Note that the answer to this question is not known at the time this assignment is being set.]

1. State its name and citation details according to the AGLC rules. 3 marks

2. In no more than 30 words indicate what the decision concerning the design infringement allegation was (ie the outcome of the decision for the plaintiff) and the basis on which the decision was made. 5 marks.

The partner researching Designs law also gives you another task to do.

A client of hers filed a design application on 4 June 2013 in Australia, following all the correct procedures. Prior to this the client had filed the same design application in Venezuela, on 15 May 2013, again following all the correct procedures. This client thinks that the design protection has been infringed by an action that occurred in Australia on 28 May 2013.

3. Assuming that design protection begins at the ‘priority date’, will this alleged infringement have occurred during the protection period in Australia? (List each step of your reasoning and, for each step in the list, the legislative provisions or other facts that have given the answers to your questions.) 10 marks

18 marks total

Grand total = 94