In Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 875, handed down on 5 June 2008, Gyles J granted leave to Dura-Post to re-open its case seeking to revoke various innovations patents in the name Delnorth.

Following the close of the hearing of the matter, a prior published US patent came to the attention of Dura-Post, who brought an application to be allowed to amend the particulars of invalidity to rely upon the prior publication under the grounds of novelty and lack of innovative step, and tender the patent in evidence.

The decision of the Full Court in Term-Seal (Aust) Pty Limited v Termite Tite (NZ) No 2 Limited [2008] FCAFC 95, provides a reminder that when taking a purposive approach to claim construction, it is the purpose for which the patentee has used a particular form of language to define an integer of the invention which is relevant, not the purpose of that integer in the patentee’s invention.

On 2 June 2008, the Advisory Council on Intellectual Property (ACIP) announced that it will be conducting a review of patentable subject matter. The review will investigate the ‘appropriateness and adequacy’ of the manner of manufacture test, and the historical requirement that an invention must not be ‘generally inconvenient’. An Issues Paper is expected to be circulated in July, with consultations in late 2008 and a request for written submissions by September. Members of the PO&F Group will be taking part in the review. For more information about the review, click here

Three decisions handed down on 12 June 2008 illustrate how various tactical decisions can have implications on the costs awards made in intellectual property litigation.

In ITW AFC Pty Ltd v Loi and Tran Pty Ltd (No 2) [2008] FCA 895, Finkelstein J held that costs should lie were they fell in a patent dispute where both the claim for infringement and the cross-claim for revocation were unsuccessful. In rejecting the respondents argument that the proceeding should be treated as a single case in which the patentee failed, his Honour made several comments on the undesirability of parties bringing revocation actions without merit for purely tactical reasons concluding that:

In Krueger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Ltd [2008] FCA 803, the applicant was successful in its claims for infringement of copyright and breach of confidence. The applicant had disclosed to the respondents as part of a quote to build trucking trailers, information regarding a load restraint system. The respondents argued that the information could not be confidential because it was not sufficiently original or novel having regard to information already in the public domain. Gordon J held that the information did have the necessary quality of confidence and in doing so noted that: “To put it more plainly, information need not be patentable, copyrightable, or otherwise protected by the intellectual property laws in order to be confidential.” The decision is here.

The case of Memcor Australia Pty Ltd v Zenon Environmental Inc. [2008] APO 14 follows on from decision of Delegate McCaffery in Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11 (11 April 2008).

This case relates to an application by Zenon Environmental Inc. for dismissal of an opposition under section 104 by Memcor Australia Pty Ltd. In this decision Delegate Barker confirms that the new practice of the Australian Patent Office in considering such applications will be that as reflected in section 31A of the Federal Court of Australia Act ie namely whether an opposition has any no reasonable prospect of success as opposed to the previous test which was whether an opposition is obviously or manifestly groundless or untenable.