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Abstract:
This article provides a introductory consideration of the extent to which the domain name dispute resolution system of the Internet Corporation for Assigned Names and Numbers ("ICANN") - which implements and enforces the ICANN Uniform Domain Name Dispute Resolution Policy ("UDRP") - provides a useful model for the resolution of other intellectual property disputes that arise through the use of the Internet. It starts with a brief description of the development and implementation of the UDRP, and of the experience since its adoption by ICANN. The article then proceeds to explain the reasons for the effectiveness of the ICANN domain name dispute resolution system, and the key actors and entities that comprise that system. The conceptual equivalent of those actors and entities in a generalized regulated technical infrastructure are then determined by extrapolation.

The reasons for the effectiveness of the ICANN system - the uniform application of the UDRP to all potential transgressors, and the automatic execution of an effective remedy against proven transgressors - are discussed as well as how this remedy can have the secondary effect of the removal of the transgressor's presence on the Internet under the domain name in issue. There is no reason why, as a matter of practical necessity, the availability of this remedy need be limited to the type of conduct currently prohibited in the UDRP - i.e. bad faith registration and use of a domain name that is the same or confusingly similar to another person's trademark or service mark. It is conceivable that other conduct which infringes on the rights of an intellectual property owner could be treated as giving rise to such a remedy. Accordingly, the ICANN domain name dispute resolution system does, in theory at least, have the potential to provide a model for the resolution of disputes concerning misuse on the Internet of other intellectual property.

Abstract:
The increase in the number of reach-through claims filed in the field of biotechnology has been a cause for concern. In 2001 the United States Patent and Trade Mark Office, the European Patent Office and the Japan Patent Office (jointly referred to as the 'Trilateral Offices') conducted a comparative study of their patentability standards and examination strategies towards biotechnology reach-through claims. The report of the study concluded that the three Offices had similar examination approaches. However, the report did not make clear which of the claims would be granted by each of the Offices. Also, the report did not explain the concept of the reach-through claim.

This article seeks to understand and further clarify the concept underlying a reach-through claim in biotechnology. First, we conceptualise and define a reach-through claim. We then use this definition to identify the reach-through claims within the hypothetical claims of the Trilateral Offices study. Further, we analyse the Trilateral Offices' assessment of the validity of all the hypothetical claims with respect to each of the patent law requirements of utility (industrial applicability), written description (clarity and support of claims) and enablement (sufficiency of disclosure). As a result of our analysis, we show that the application of the three mentioned patent law requirements by the Trilateral Offices does in fact filter out from grant those claims which may be properly considered to be reach-through claims.

reach-through, patent, japan, united states, europe, trilateral, biotechnology

Abstract:
The copyright legislation of most common law countries is, in all respects, complex. How might such legislation be simplified? Is simplification necessary or even desirable? This article considers and answers these questions, using the United Kingdom copyright legislation as an example.

The article begins by noting that the UK legislation is not only unnecessarily complex in its conceptual structure, but also is unjustifiably discriminatory and "technologically challenged" (ie found wanting in its response to digital technology). It then postulates that a simplification of the UK copyright legislation, along lines similar to that proposed for Australia's copyright law, is both a possible and a desirable way to remedy these shortcomings.

The article identifies a set of principles on which a simplified copyright law should be modelled. These principles are the use of broad and inclusively defined categories of protected subject matters, the adoption of innovation thresholds based on degree of creativity, and the removal of the distinction between tangible and intangible embodiments of copyright material. The article then illustrates how these principles could be implemented in practice; this being the proposed approach.

The article concludes that the proposed approach is not radical. Rather, it is argued that the proposed approach is fully consistent with the UK's obligations under the Berne Convention, and is the logical and desirable continuation of an international trend which began in 1996 with the adoption of the World Intellectual Property Organization copyright and neighbouring rights Treaties.

copyright, technology, simplification, reform

Abstract:
Rapid developments in biotechnology are challenging the boundary of patent law. The scientific community, national and international organisations are concerned about the patenting of partial DNA sequences (also called expressed sequence tags (ESTs)) and the need to ensure a fair allocation of intellectual property rights. This paper provides a detailed analysis of the examination practices of the European, Japanese and United States Patent Offices in relation to patenting ESTs. This analysis illustrates that the practice of the patent offices is such that the requirements for patentability of ESTs is stringent. The main concerns, that (i) offices would grant patents for ESTs with no useful function, and that (ii) patents would be granted for cDNA sequences that comprise the sequence of an EST and thus are so broad as to include the subsequently discovered corresponding gene, appear unfounded.

intellectual property, patent, DNA, partial DNA sequences, ESTS, United States, Europe, Japan, Patent Office

Abstract:
This article considers the necessity and desirability of reduction to material form (ie. fixation) as a requirement for subsistence of copyright in spoken words. It examines how this aspect of copyright law has evolved in the United Kingdom from before the Statue of Anne until the present day, and compares this with the law which applies in the United States. It argues that there is nothing inherent in the underlying objectives of copyright law which makes a material form requirement a necessary precondition for copyright subsistence. Indeed, the material form requirement, at least as it applies in relation to spoken words, may lead to outcomes inconsistent with copyright law's objectives. It is concluded that the law ought recognise the potential for copyright to subsist in any perceptible expression emanating from the intellect of a person and intended to appeal to the aesthetic sense or intellect of others, regardless of the expression's materiality.

copyright, law, spoken word

Abstract:
The issue of private copying and its implications for copyright owners is not new, and suggested resolutions of the conflicting interests at stake are varied. One such resolution is the implementation of statutory licence and levy schemes. This short paper examines a paradox about these schemes.

Statutory licence and levy schemes for private copying have been readily accepted in continental European countries for many decades. By contrast, such schemes have only recently begun to emerge in common law countries. This situation is paradoxical - the statutory licence and levy scheme is common in those jurisdictions which place significant emphasis on authors' moral rights, and yet is rare in those countries that give primacy to the utilitarian rationale for copyright. Why is this so?

This paper makes some observations on this topic, which may explain the paradox. It begins by analyzing the differing starting points for dealing with private copying in civilian and common law systems, using the German, United Kingdom and Australian experiences as paradigmatic. This analysis sheds light on the way in which the nature of the problem of private copying is perceived in those two systems. This paper then observes the legislative responses to this problem that have occurred in the two systems, and in particular in Germany, Canada and the United States. A view is then offered about what conclusions might tentatively be drawn from these analyses and observations in respect of the future resolution of the problem of private copying.

statutory licence, levy, copyright, private copying

Abstract:
This article contains a study of the literary work within Anglo-Australian copyright law. The first part considers the principles governing literary copyright, including the distinction between literary and non-literary works, and the requirements for substantiality, material form, originality and authorship. The second considers non-legal conceptions of the literary work, focusing on the perspectives of critical theory and linguistics. And the third concludes with some proposals for reform.

Copyright, literary work

Abstract:
The Canadian private copying scheme imposes a statutory levy on blank audio recording media, to compensate composers, performers and producers of sound recordings for the private copying of their subject matter that is permitted under the scheme. While both Canadian and foreign composers are entitled to receive payment under the levy, only Canadian performers and sound recording makers, and performers and makers from a country that provides reciprocal rights to Canadians, are entitled to receive remuneration from the levy. This article examines whether the operation of the private copying levy in relation to foreign performers and sound recording makers is consistent with the requirement of 'national treatment' pursuant to Canada's international copyright obligations, current and future. The article concludes that a very strong argument can be made that the private copying levy regime is not in compliance with Canada's national treatment obligations as they currently exist under the Rome Convention and the TRIPS Agreement, and as they will exist in the future once Canada ratifies the WIPO Performances and Phonograms Treaty.

Canada, private copying, levy, international treaty

Abstract:
The patent system has a 'one size' approach to duration of protection, in that all inventions are entitled to the same maximum period of grant: 20 years. This paper seeks to answer the question whether this 'one size' approach 'fits all' inventions. It does so by determining if the duration of protection is within the reasonable bounds of what might be considered optimal, when account is taken of the economic theory on duration, patentees' practices regarding renewal of their patents and the legal features of the current system. It finds that the system on duration of patent protection currently in operation matches closely to what would be considered optimal.

patent, protection, duration

Abstract:
Rapid developments in biotechnology are challenging the boundary of patent law. The scientific community, national and international organisations are concerned about the patenting of partial DNA sequences (also called expressed sequence tags (ESTs)) and the need to ensure a fair allocation of intellectual property rights. This paper provides a detailed analysis of the examination practices of the European, Japanese, United States and Australian Patent Offices in relation to patenting ESTs. This analysis illustrates that the practice of the patent offices is such that the requirements for patentability of ESTs is stringent. The main concerns, that (i) offices would grant patents for ESTs with no useful function and that, (ii) patents would be granted for cDNA sequences that "comprise" the sequence of an EST and thus are so broad as to include the subsequently discovered corresponding gene, appear unfounded.

Patent, DNA, expressed sequence tags, gene, USA, Australia, Europe, Japan, intellectual property

Abstract:
In Australia, the conflict between copyright owners and those who wish to use copyrighted works for private, non-commercial purposes remains unresolved. In the US, in contrast, Congress responded to these conflicting claims in relation to musical works by enacting the Audio Home Recording Act (AHRA) in 1992. To date, there is no equivalent in Australian law, despite recent proposals by two collecting societies to introduce a private copying remuneration scheme in Australia.

This article critically examines the AHRA in order to determine whether Australia should consider enacting a similar scheme. Included is a discussion of the process of negotiated compromise that led to the AHRA, and the identification of the hypothetical result such a process would produce if undertaken in Australia. In contrast to the AHRA, the hypothetical Australian solution neither generates a royalty stream for copyright owners nor confers upon consumers an audio home recording right, thus demonstrating that the process of negotiated compromise does not generate a uniform outcome across all jurisdictions. Rather, the outcome is determined by jurisdictionally-specific and historically-contingent factors.

copyright, United States, Audio Home Recording Act of 1992, Australia, music

Abstract:
There have been periodic calls for reform of the administration of IP law and policy-making in Australia, and in particular for the consolidation of responsibility for IP into a single federal government department. This article contributes to the debate by analysing quantitative data on Australian IP law and policy-making since federation. It measures the growth of IP legislation and reviews of IP legislation over the past century, and compares this with the corresponding growth in another body of commercial law and in the economy. The article finds that while IP law is growing exponentially, it is growing more slowly than corporations law. Further, the growth of both bodies of law is dwarfed by the growth of the economy. It seems, therefore, that there is no clear quantitative basis for the previously expressed objections to Australian IP law and policy-making. It follows that justification for reform of the administration of Australian IP law will need to be based on qualitative concerns.

IP, policy, Australia, federation, legislation

Abstract:
Communications between a patent attorney and her or his client facilitate the optimisation of patent grants and the efficient operation of the patent system overall. These communications are protected, in certain circumstances, by a privilege which prevents them being disclosed during the conduct of any litigation involving the client. Such a patent attorney privilege is recognised in Australia, but there are concerns arising out of its limited scope, in particular, its failure to apply to foreign patent attorneys. Similar concerns exist in other jurisdictions with respect to the nonrecognition, in one jurisdiction, of privilege recognised in another. This Report investigates those concerns and whether the privilege's scope should be extended to encompass communications with foreign patent practitioners and third parties generally. It concludes that the privilege in Australia should be extended but that, to most effectively address the concerns, action is also required at a transnational level.

This conclusion is based on an analysis of the principles that underpin the privilege. There are two main public policy justifications for the recognition of patent attorney privilege in its current form: the good of society and the good of the person. The benefits found to flow to society from the operation of the privilege are the administration of justice and the maintenance of the economy. From the perspective of the individual, the privilege facilitates the provision of effective and appropriate advice and removes personal hardship. The Report finds that these justifications are supported by the documented rationale for the privilege and also by the rationales for other relational legal privileges.

Concerns over the extent of the privilege in Australia stem, in part, from differences in the recognition of an equivalent privilege in other countries and differences in the recognition of a patent attorney profession in other jurisdictions. These differences potentially give rise to some anomalous and unsatisfactory outcomes in terms of the protection of patent attorney-client communications during litigation. It is noted, however, that the incidence of patent litigation is low and, therefore, the need to rely on the privilege in Australia is minimal, at least for the present time. With harmonisation of patent laws and globalisation of the economy increasing, this may not continue to be the case.

Accordingly, there is a need to address the concerns, insofar as is possible at the domestic level, by extending the scope of the privilege to foreign patent practitioners and third parties. This extension is supported by the rationale for patent attorney privilege - the inclusion of communications with both foreign practitioners and third parties facilitates the provision of effective and appropriate advice for the patent attorney's client. However, this extension will not resolve the concerns from a global perspective. Thus, if the concerns are to be ameliorated more effectively, there needs to be action taken at the transnational level. Theoretically, this may be best achieved through global treaty negotiations, but practically, the most appropriate course of action is likely to be the negotiation of plurilateral agreements.

patent attorney privilege, reform, Australia

Abstract:
While digital technology can enhance the way in which cultural institutions manage and provide access to their collections, its utilisation is constrained by copyright law. This article considers the way in which copyright law should be reformed so as to permit cultural institutions to take advantage of the opportunities provided by digital technology. It begins by explaining the digitisation practices undertaken by cultural institutions, and the relevance of copyright law to these practices. Then, the purpose of granting exclusive rights under copyright law, the types of exceptions from infringement that copyright law typically provides, and the rationales for those exceptions are considered. Next, cultural institutions are categorised by the way in which they will seek to take advantage of digitisation technologies. Finally, the likely reform options for each type of cultural institution are considered, and the appropriate means for implementation of those reforms are identified.

copyright, cultural institutions, digitation, reform

Abstract:
In an earlier study we analysed how the United States Patent and Trade Mark Office, the European Patent Office and the Japan Patent Office (jointly referred to as the 'Trilateral Offices' or TOs) assessed reach-through patent claims in biotechnology, under the requirements of 'utility', 'written description' and 'enablement' (as they are referred to in the US). We found that any claim that was a reach-through claim was assessed to be invalid by the TOs, and therefore filtered out from grant. This study analyses how the same claims from the TOs' study are assessed by the Australian Patent Office (APO), under the equivalent Australian requirements of 'manner of manufacture and description of use', 'clarity, succinctness and fair basis', and 'full description and best method'. We find that under Australian practice not all types of reach-through claims are filtered out from grant of a patent. This suggests that one or other of the patent offices is applying the wrong standard in examination of these claims. In our view, the examination standard applied by the APO is too lenient. The Australian legislation should be reformed by adopting patentability requirements that mirror the utility, written description and enablement requirements of the TOs.

patents, trade marks, reach-through patent claims, biotechnology, utility, written description, enablement, United States Patent and Trade Mark Office