Book Review: Intellectual Property in Australia

Katfriend Jin Ooi (Senior Associate, Allen & Overy LLP) has kindly reviews the latest edition of Intellectual Property Australia:

"Intellectual Property in Australia" is now in its 6th edition (updated to August 2017), the title having been in circulation for

more than 25 years since its 1st edition. This edition is co-authored by Andrew Stewart, William van Caenegem, Judith Bannister, Adam Liberman and Charles Lawson.

This is a comprehensive and comprehensible book on the Australian IP regime, written in an engaging and accessible manner, whilst also providing an authoritative and compelling voice. The book aims to be “an invaluable resource for both undergraduate and postgraduate students, and those who teach them”, and “a practical reference for practitioners”. These aims are more than adequately met, and the book should be a vital resource for those studying and working in the field.

The book covers the usual IP rights one would expect to see - confidentiality, copyright, designs, patents, trade marks, and more. It is set out methodically in a way which follows the steps that may be taken to protect and/or exploit an idea, beginning with the protection of ideas which have not yet been put in the public domain (Chapters 3 and 4 covering the notion of confidentiality and breach of confidence), followed by the writing down and recording of the idea (Chapters 5 to 10 covering copyright, moral rights, circuit layouts, and designs), and inventive ideas (Chapters 11 to 14 dealing with the patents system, validity and infringement, and Chapter 15 with plant breeder’s rights). The book goes on to deal with the common law and statutory mechanisms for protecting a distinctive commercial reputation that may result from the successful exploitation of an idea – Chapters 16 to 18 are mainly devoted to the tort of passing off, whilst also covering the notions of misrepresentation, “unfair competition”, and misleading or deceptive conduct, and Chapters 19 and 20 cover the registration and protection/exploitation of trade marks.

Satisfyingly, the book also goes beyond these topics, devoting whole chapters to enforcement of IP rights (Chapter 2), the international dimensions of IP protection (Chapter 21), and the commercial strategies and transactions employed to exploit the various IP rights (Chapter 22). The full IP spectrum is as such covered from conception and subsistence right up to commercialisation and litigation. In the context of interlocutory injunctions in Chapter 2, the requirement of an undertaking as to damages is touched upon, but perhaps mention could also have been made of the Commonwealth Government’s unprecedented claims in the Federal Court for payment of compensation under such undertakings provided by innovator pharmaceutical companies in patent proceedings (albeit the decision in Commonwealth v Sanofi has yet to be rendered).

Updates to the previous edition include a brief discussion of new section 115A to the Copyright Act 1968 (Cth), which enables an injunction to be granted against a carriage service provider requiring it to take reasonable steps to disable access to an online location outside Australia which infringes or facilitates copyright infringement. The Roadshow Films v Telstra (2016) case is cited, but perhaps mention could also have been made of the Universal Music v TPG Internet (2017) case, in addition to the interesting, albeit cursory, discussion in both cases on which party should bear the costs of complying with the orders (a similar costs issue is due to be considered in the coming weeks by the UK Supreme Court in the Cartier v British Telecommunications case). Some of the other updates include the much-discussed High Court decision in D’Arcy v Myriad Genetics (2015) on gene patenting, and a review of the Productivity Commission’s report on Australia’s IP arrangements and the Commonwealth Government’s response.

Intellectual Property in Australia (6th ed, 2018) is published by LexisNexis – ISBN: 9780409345780.  The book can be purchased in paperback online for $150.  The title is also available in eBook format – eISBN: 9780409345797.