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Mark Summerfield
Works at Watermark - Intellectual Asset Management
Attended University of Melbourne
Lives in Melbourne, Australia
128 followers|3,259,000 views
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When it comes to patent claims, the same language can mean different things in different places. This can have a profound impact on the scope of a patent, and even whether it is valid or not. One example of language to watch out for is the 'means-plus-function' limitation.
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Vringo has won the right to have the Chinese parent company of ZTE (Australia) joined to its patent infringement proceedings. The decision also reveals further interesting details of the case.
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A request by patentee Les Laboratoires Servier to amend a patent specification in order to disclose the 'best method' of making perindopril arginine (a blood pressure drug marketed as COVERSYL) has been denied.

The amendment was otherwise allowable, however a similar amendment had been suggested by the patentee's attorneys during examination, but the suggestion had not been followed.

A judge of the Federal Court of Australia concluded that the public interest in disclosure of the best method at an early stage outweighed the private interests of the patentee
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I'll let you in on a little secret: professional services firms sometimes hire other professional services firms with different areas of expertise, and then ignore the advice they get! Lawyers and patent attorneys are not immune from this blind spot. Often I think it is because the advice forces the client to choose between what they know (i.e. the way things have always been done) and some new, unknown, and potentially risky alternative. But sometimes the biggest risk to the long-term success of a business is not to change.
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Whether or not to apply for patents is an important decision for any start-up. In the second of two articles, I look at the various ways in which patents can add value to a start-up venture, and contribute to success.
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Australia's top court has agreed to hear an appeal in a challenge to the patent-eligibility of claims directed to isolated human genes (BRCA1) in a patent co-owned by Myriad Genetics, Inc.
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The Australian patent law allows a person who is unjustifiably threatened with patent infringement proceedings to sue the party making the threat, and receive compensation for damage caused, which could be a useful weapon against so-called 'patent trolls'. The problem is that the law applies to everyone, not just those who would abuse patents for quick gain.
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Mark Summerfield

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A majority decision of an Australian appeals court has found that the workings of a product that was imported and placed on sale were not made available to the public for the purpose of anticipating a subsequent patent claim in circumstances where there was no evidence that any member of the public had actually inspected the product sufficiently closely.
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A 'springboard injunction' may be granted to restrain an otherwise lawful activity, where there has been some unwarranted advantage gained from a prior act of patent infringement.

The Federal Court of Australia was recently asked to issue such an injunction. After weighing up the factors for and against doing so, the court decided that it would not be warranted in this particular case. This is not to say, however, that there might not be cases in the future in which a springboard injunction would be an appropriate remedy.
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Pfizer has survived allegations by the Australian competition watchdog that its strategy for retaining market share when blockbuster drug LIPITOR went off-patent was anti-competitive.
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I'm not sure that it would be legal in many jurisdictions. My understanding is that the current Australian competition laws are relatively permissive, and even so the ACCC obviously felt it had a case worth running. However, getting into the generics business is not a new strategy for the traditional originating pharma companies. I suspect that the looming "patent cliff" may be encouraging the development of more creative (and, perhaps, legally "grey") strategies.
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Whether or not to apply for patents is an important decision for any start-up. In this first of two articles, I look at some reasons why patents may not be the right option.
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The Australian version of 'reality' investment series Shark Tank has debuted. I watched and Tweeted along, and generally had a good time with it. But does it have what it takes to capture a wider audience in this country?
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A full bench of the Federal Court of Australia has confirmed that a prior art reference did not implicitly anticipate a patent claiming the antipsychotic drug aripiprazole, aka ABILIFY. So what is the law on inherent or implicit disclosures in Australia, and how does it compare with the US?
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Have him in circles
128 people
Scott McLaughlin's profile photo
Turk IP Law's profile photo
Massimo Barbieri's profile photo
Robert Ambrogi's profile photo
vaibhav gupta's profile photo
Stephen Newman's profile photo
Social Media Facts's profile photo
timetopatent patent's profile photo
Adam Bender's profile photo
Work
Occupation
Patent and Trade Marks Attorney
Skills
Intellectual Property (IP) and Intellectual Asset Management (IAM) Specialist
Employment
  • Watermark - Intellectual Asset Management
    Special Counsel, 2002 - present
Places
Map of the places this user has livedMap of the places this user has livedMap of the places this user has lived
Currently
Melbourne, Australia
Previously
Berkhamsted, UK
Story
Tagline
Patent Attorney. Innovation. Science & Technology. Books. Music. Food. Wine.
Introduction
I am the editor and primary author of the Patentology blog, and a registered Australian Patent Attorney, working in the profession since 2002.  Prior to this I worked with two different start-up ventures in the telecommunications space, one of which was developing innovative optical networking technologies, the other design automation software.

In an earlier life, I worked in various commercial and academic research environments.  My PhD was awarded in the field of optical fibre communications technology.

I have also myself been an inventor on a number of patent applications.
Bragging rights
Twice Named one of the world's top 300 IP Strategists in IAM Magazine's IP Strategy 300 (2013 & 2014).
Education
  • University of Melbourne
    Electrical Engineering, 1986 - 1989
    Bachelor of Engineering (Elec) (Hons)
  • University of Melbourne
    PhD - Optical Fibre Technology, 1992 - 1996
    Thesis title: Telecommunications Applications of Four-Wave Mixing in Semiconductor Optical Amplifiers
  • University of Melbourne
    Masters in IP Law, 2001 - 2004
    Intellectual Property, Patents, Trade Marks and Designs law and practice
Basic Information
Gender
Male
Looking for
Networking