Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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

more from across site and ros bottom lb

More from across our site

Sources say the High Court of Australia’s ruling that reputation is immaterial in trademark infringement cases could stop famous brands from muscling out smaller players
Members from both sides of the US House of Representatives wrote to USPTO director Kathi Vidal on Friday, March 24, expressing their concern about “patent thicketing.”
Charles Hoskin of Singaporean e-commerce platform Shopee, who made the jump from a luxury brand, says honest conversations and collaborations are key to combatting counterfeiting
Adam Williams speaks to Managing IP about the legacy of Brexit and why IP has sometimes got ‘lost in the noise’ at Westminster
Lawyers wish the latest manual had more details on Federal Circuit cases and that training materials for design patent examiners were online
Counsel are eying domestic industry, concurrent PTAB proceedings and heightened scrutiny of cases before institution
Jack Daniel’s has a good chance of winning its dispute over dog toys, but SCOTUS will still want to protect free speech, predict sources
AI users and lawyers discuss why the rulebook for registering AI-generated content may create problems and needs further work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
A technical effect must still be evident in the original patent filing, the EBoA said in its G2/21 decision today, March 23