Entries by f1itadmin

Strategies to keep in mind as the death knell sounds for Australia’s second-tier Patent system

Dr Jim Onishi MRACI Key Points: 1) Australia is abolishing its second-tier Innovation Patent system. 2) The last date to file an Innovation Patent is 25 August 2021. 3) It is still possible for patentees to obtain “new” Innovation Patents after 26 August 2021. Brief Background Two tiers of Patent protection are currently available to […]

The Multifaceted Question of the Patentability of Polymorphs

Dr Carolyn Rolls MRACI and Dr Jim Onishi MRACI In the high stakes world of pharmaceutical development, companies pursue every opportunity to edge out competitors. Patenting polymorphs may provide that edge. Noticing a surprising, unexpected or unique physico-chemical characteristic of a crystalline form of a pharmaceutical may be the key. A new pharmaceutical typically takes […]

Patenting Opportunities in the Fragrance Industry

Dr Jim Onishi and Dr Elizabeth Houlihan This article first appeared in the May/June 2020 edition of Chemistry in Australia, published by the Royal Australian Chemical Institute Inc. It is well known that the fragrance industry is big business. Annual sales from each of the four main global fragrance producers are in the billions of […]

Method and Swiss-type Claims in Australia – A Patent Protection Strategy for Pharmaceutical Companies

Dr Jim Y Onishi Novel compounds and any relevant medical uses of those compounds are protectable in Australia in the form of Compound Claims and Method of Treatment Claims, respectively. Subsequently identified new medical uses of a known compound may only be protectable in the form of second medical Use Claims, which are also known […]

The Era of Relying on Trade Secrets to Protect Confidential Information has Passed

Dr. Victoria Longshaw Businesses need to protect their Intellectual Property and Know-How to survive. Such Intellectual Property ranges from confidential customer details to high-level technical expertise, methods and product information. There are two ways in which to prevent competitors from accessing Intellectual Property: (1) by maintaining Trade Secrets; or (2) by securing a monopoly through […]

The Lost Art of Patent Claim Drafting – Why Good Claim Drafting is Essential Under Australia’s Revised Patents Act

Dr. Jim Y. Onishi and Dr. Elizabeth E. Houlihan We report the recent Patent Office Decision in Cytec Industries Inc. v Nalco Company [2018] APO 4, which dealt with interpreting the “Raising the Bar”-revised requirements of subsection 40(2)(a) of Australia’s Patents Act 1990 in relation to post acceptance claim amendments under subsection 102(2)(b). Relevant Law […]

The Doom and Gloom lifts: patentability of Gene Marker-Trait Correlation Methods in Australia

Dr. Victoria Longshaw, Dr. Nigel Parker and Dr. Elizabeth Houlihan The Australian Federal Court has provided welcome reassurance to patent owners in the biotechnology fields of gene association analyses and quantitative genetics. In the aftermath of D’Arcy v Myriad Genetics Inc [2015] HCA 35 (“the Myriad case”), in which isolated nucleic acids encoding naturally-occurring information […]