Australia: No extraterritorial operation of Australian patents
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Australia: No extraterritorial operation of Australian patents

Australian courts have recently adopted a restrictive reading of the extra territorial operation of Australian patents.

In Load and Move Pty Ltd v Container Rotation Systems Pty Ltd [2016] FCA 843, the plaintiff owned a patent directed to a container rotation system. It sued the defendants, alleging infringement of the patent. The infringement allegation was peculiar. It alleged the defendants had contracted for the foreign manufacture in China of a container rotation system which was to be supplied to Eritrea. Thus the system was never going to enter the Australian territory, even though the supply was being orchestrated from Australia.

The judge refused to grant preliminary discovery and to entertain an infringement finding. As the contract for manufacture and sale was to be performed totally outside the jurisdiction, there was no exploitation of the patent for the purposes of infringement.

The case points to a restrictive reading by the Australian judiciary of the territorial operation of Australian patents. Given the rapid development of internet-type sales channels, this is perhaps unfortunate, as it may allow the effective exploitation of patent rights by Australian entities, provided that exploitation occurs wholly outside the country.

Peter Treloar


Shelston IP

Level 21, 60 Margaret Street

Sydney NSW 2000, Australia

Tel: +61 2 9777 1111

Fax: +61 2 9241 4666

email@shelstonip.com

www.shelstonip.com

more from across site and ros bottom lb

More from across our site

EMEA research now open
Practitioners analyse a survey on how law firms prove value to their clients and reflect on why the concept can be hard to pin down
The winner of Managing IP’s Life Achievement Award discusses 50 years in IP law and how even he can’t avoid imposter syndrome
Saya Choudhary of Singh & Singh explains how her team navigated nine years of litigation to secure record damages of $29 million and the lessons learned along the way
The full list of finalists has been revealed and the winners will be presented on June 20 at the Metropolitan Club in New York
A team of IP and media law specialists has joined from SKW Schwarz alongside a former counsel at Sky
The Irish government has delayed a planned referendum on whether Ireland should join the Unified Patent Court, prompting concern about when a vote may take place
With more than 250 winners recognised during the ceremony, there are many reasons to be positive about the health of the IP industry in EMEA
Practitioners say the USPTO’s latest guidance has some helpful clarifications and is a good reminder of the importance of checking AI outputs
Susanne Schmidt discusses why trademarks are more than 'just a name' and why she would choose green farming as an alternative career
Gift this article