Noel Kim

Noel Kim


Noel has over a decade of intellectual property experience in Australia and internationally, having assisted a broad range of clients ranging from start-up businesses to large multinational corporations. Noel’s experience includes searching and advising on the registrability of trademarks, patents and designs, prosecuting them through to registration including handling of opposition and cancellation proceedings, providing infringement advice and related issues in Australia and New Zealand. Noel’s extensive experience both in-house and in law firms, as well as his broad network of contacts in Korea and China, is of great value to clients seeking international IP protection. Noel is fluent in English and Korean.



  • Lawyer, Supreme Court of NSW

  • Lawyer, High Court of Australia

  • Australian Registered Trade Marks Attorney

Professional membership / Board positions

  • Intellectual Property Society of Australia and New Zealand (IPSANZ)

  • Law Society of New South Wales

  • City of Sydney Law Society

  • Asian Australian Lawyers Association (AALA)

  • Korean Australian Lawyers Association (KALA)

  • The National Advisory Center for Overseas Intellectual Property Dispute Settlement



Intellectual Property

Is it possible for an AI (Artificial Intelligence) to be an inventor?

Is it possible for an AI (Artificial Intelligence) to be an inventor? - Thaler v Commissioner of Patents [2021] FCA 879 Summary: Dr Stephen Thaler (Thaler) filed an Australian patent application for an invention that was created autonomously by an AI system called ‘DABUS’. IP Australia rejected the patent application, determining that only a human can be named as an inventor for an Australian patent. Thaler successfully appealed to the Federal Court, which ruled that an AI could be appointed as an inventor for the purpose of the Patents Act 1990 (Cth) (Act). In recent years, the topic of whether AI can be an inventor has been at the forefront of patent laws in numerous countries. Defining the term ‘AI-generated invention’ has triggered a heated discussion over the future of patent law and policy. While it is widely agreed that such discoveries contradict the concept of human inventorship, it is unclear to what extent topics regarding ‘non-human’ creativity are justified. This raises the question of how AI may autonomously create innovations and how AI-generated ideas differ from AI-assisted ideas. The Australian Federal Court recently handed down the world’s first judgment in Thaler v Commissioner of Patents [2021] FCA 879, acknowledging AI as an inventor under Australian patent law with the broad interpretation of s15(1) of the Act. This advances our understanding of who can be the owner of the ‘solutions’ made accessible by these new technologies and how to utilise artificial intelligence to promote economic wellbeing through technological innovation. Background Thaler filed Australian Patent Application No. 2019363177 for ‘Food Container and Devices and Methods for Attracting Enhanced Attention’ on 17 September 2019 by the national entry of the corresponding PCT application. Thaler created The Device for Autonomous Bootstrapping of Unified Sentience (DABUS) to devise, on its own accord, novel ideas such as enhanced storage beverage containers and ‘neural flame’ for search-and-rescue operations. Equivalent patent applications have also been filed in 16 countries including Canada, China, Germany, India, Israel, South Africa, the UK, South Korea and the US. However, the European Patent Office refused to examine Thaler’s patent application on 21 December 2019, citing a failure to comply with their requirement that “an inventor designated in the application must be a human being, not a machine.” Based on the ideology that only natural individuals can be inventors, most countries, including the US, the UK and South Korea, have rejected Thaler’s patent application. So far, the South African Patents Office has only accepted the application but bear in mind that there was no substantive examination prior to this grant in South Africa, Australia is the first jurisdiction to permit a patent invented by a robot creator. IP Australia’s decision The Deputy Commissioner of Patents determined that Thaler’s application did not satisfy the requirements under s15 of the Act since the ordinary meaning of the word “inventor,” as defined by numerous dictionaries, is essentially human (natural or legal). The Deputy Commissioner asserted that the Patent Regulations 1991 (Cth) (Regulations) imply that the term ‘inventor’ refers to a person and that s15(1) of the Act, which specifies who is eligible for a patent, also stipulates that the inventor must be a human. Further, an AI system cannot have a beneficial interest or title in the property, so an AI’s invention cannot be assigned. Consequently, the Deputy Commissioner rejected Thaler’s patent application since it failed to designate a human inventor. Thaler applied for a judicial review to the Federal Court of Australia. Federal Court of Australia’s decision The appeal was heard by Justice Beach, who overturned the Deputy Commissioner’s decisions on 30 July 2021. Justice Beach noted that neither the Act nor the Regulations explicitly define the term ‘inventor’. The term ‘inventor’ is a noun that acts as an ‘agent,’ which can be a person or a thing. Therefore, claiming that a non-human/non-person cannot be an inventor is a fallacy. Henceforth, DABUS can be referred to as an ‘inventor’ as it satisfies the agent noun component. Justice Beach queried, ‘If the output of an artificial intelligence system is said to be the invention, who is the inventor? And if a human is required, who? The programmer? The owner? The operator? The trainer? The person who provided input data? All of the above? None of the above?’ In this regard, the Court acknowledged that Thaler owned DABUS’ source code (as the copyright owner of the source code) and the computer on which it was administered. Based on the concept of ‘deriving a title’ extending to assignments and title transfers, Thaler was found to have absolute ownership and control of the computer on which the program runs (i.e. DABUS). His Honour reached his conclusion based on a combination of legislative interpretation and policy considerations. Justice Beach believes that the term ‘inventor’ should not be interpreted narrowly since doing so would hinder innovation not just in the field of computer science but in all other scientific areas that may benefit from the output of an artificial intelligence’s system. Similarly, His Honour emphasised the fundamental significance of giving effect to the Act’s objective unless its terms or context requires the statutory definition. Justice Beach added that computer inventorship facilitates and incentivises computer scientists to develop novel inventions, resulting in new scientific advantages. So unlike the copyright law which mandates a human author, the Act does not exclude non-human inventors. Implications Justice Beach posited in this case that “We are both created and create. Why cannot our own creations also create?” This significant judgment implies that applications claiming AI as their inventor will no longer be denied on the grounds of failing to name a human inventor. Subsequently, some critics have voiced concerns that granting patent protection to AI-generated inventions may increase the threshold of originality of ‘person skilled in the art,’ making it more challenging for human inventors to obtain patent rights. Furthermore, allowing AI to be an inventor may encourage humans to create AI systems that undertake innovative activities on behalf of humans. It is worth considering whether this serves the Act’s objective of ‘providing a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology’ (s2A of the Act). On the other hand, those who favour patent rights for AI-generated ideas believe that the decision will encourage more creation and publication of AI-based breakthroughs. Especially because many pharmaceutical and computer science enterprises and other scientific areas may greatly benefit from an AI system’s output. IP Australia announced on 30 August 2021 that the Commissioner of Patents has decided to appeal the Federal Court’s decision. So stay tuned for more exciting news. Written by Noel Kim (Partner) & Lisa Kwak (Paralegal) Written on 10/09/2021 Disclaimer: The contents of this publication are general in nature and do not constitute legal advice. The information may have been obtained from external sources and we do not guarantee the accuracy or currency of the information at the date of publication or in the future. Please obtain legal advice specific to your circumstances before taking any action on matters discussed in this publication.

17 Sep 2021

Intellectual Property

Australia Trade marks Law

Australia’s intellectual property office, IP Australia (www.ipaustralia.gov.au), and New Zealand’s intellectual property office, IPONZ (www.iponz.govt.nsw), are their respective countries’ intellectual property rights administrative agencies. IP Australia and IPONZ administer applications for trade marks and handle oppositions to intellectual property rights. They also process other administrative work such as renewal, transfer and cancellation of trade marks. Australia/ New Zealand laws allow trade marks for characters, numbers, figures and combinations of these, and trade marks can also include smell, sound and colour. A registered trade mark is valid for 10 years, and upon payment of renewal fees, may be renewed on a 10-year basis. However, even a registered trade mark, if not used for a certain period, may be cancelled by opposition from a third party. Trade marks can be registered in one of two ways: the first is to register the trade mark internationally through the Madrid Protocol; the second is to register through IP Australia/IPONZ. A product or service to be trade marked must be classified in accordance with the International NICE classification which lists 1 to 45 classes. The procedure to register trade marks in Australia and New Zealand are as follows: Investigation of previous trademarks. - A review of possible infringement and registration of the same or similar trade marks. 2. Trade mark application - The applicant’s English name, address, trade mark and designated products/services. - Details of priority right if claiming under a treaty. - English translation of the trade mark if not written in English. - For applications in New Zealand - whether the trade mark will be used in New Zealand. 3. Assessment of the trade mark application - Takes up to 4-5 months from the date of application (can apply for expedited examination in cases of emergency). - For applications in New Zealand, takes 3-4 weeks from the date of application. - Review whether there have been conflicts with prior trade marks, distinguishing features of the trademark, etc. - If any reason for rejection has been identified, an initial report of the examination will be issued and the applicant will have 15 months from the date of the report to respond to that. - For application in New Zealand, the applicant must respond to the rejection within 12 months from the date of the initial report. - When applying for a trademark in Australia/New Zealand through the Madrid Protocol, if an examination report has been issued, an agent must be appointed in Australia/New Zealand for the purpose of responding to the rejection. 4. Application notice and objection - Upon the satisfaction of all requirements, notification will be advertised on the public notice board for two months. - For applications in New Zealand, the public notice will continue for 3 months. - If an objection is filed within the deadline, a separate objection procedure will be carried out. 5. Registration of trade mark - If there is no objection, the registration of the trade mark will be completed and a certificate of registration will be issued electronically (in a PDF format). - The validity of the trade mark is for 10 years (can be renewed every 10 years). An owner of a registered trade mark is entitled to the exclusive use of the trade mark in Australia/New Zealand. Furthermore, it is necessary to conduct an investigation for existing trade marks to avoid infringing on others’ trademark rights when entering the Australian/New Zealand market. If the trade mark you wish to use is registrable, it is best to register it as soon as possible in order for it to be protected. Registering a trade mark will prevent future infringement on the trade mark rights by other competitors. In addition, upon the registration, customs in Australia and New Zealand can seize products being imported if a registered trade mark is infringed. Registered trade marks can use the ® symbol which gives consumers an exclusively protected brand image. Subsequently, a registered trade mark is a property asset which can be renamed, transferred and licensed. Finally, when attracting investment funds from international banks, investors or governments, there are often cases in which it would be advantageous to register your trade mark in the respective country you are considering entering the market in.

29 Oct 2020

Intellectual Property

IP Australia Fee Changes from 1 October 2020

IP Australia’s 2019-2020 fee review has resulted in changes to various official fees within the Australian Government Charging Framework. The aim of the changes is to ensure the recovery of fees from the administration of intellectual property rights systems. The changes are effective 1 October 2020. The key changes are summarised as follows. Trade Marks Standard trade mark applications are subject to fee increases depending on the type of application. Applicants filing a new non-pick list application using the preferred filing method will be charged $400 for a standard trade mark application and $550 for series trade mark application, both are increases of $70 from the old fees. Non-pick list applications are those with classifications that are not from a collection of pre-approved goods and services created by IP Australia. A new single fee of $400 for all hearing requests will be introduced. The single fee applies notwithstanding the type of hearing. Each day of the hearing will also attract fees ranging from $400 to $800 per day, depending on how the hearing is conducted (e.g. by written submissions or in-person). This fee will be offset by the hearing request fee. Patents The changes to the Patent fee structure will be three-tiered. Firstly, new excess claim fees have been introduced for the following categories: Standard Patents: 21 to 30 claims $125 Standard Patents: 31+ claims $250 Secondly, renewal/maintenance fees for patents exceeding 5 years will increase significantly, particularly for extended pharmaceutical patents. Standard Patent Renewal/Maintenance Fee Old fee New fee 5th Anniversary $300 $315 6th Anniversary $300 $335 7th Anniversary $300 $360 8th Anniversary $300 $390 9th Anniversary $300 $425 10th Anniversary $550 $490 11th Anniversary $550 $585 12th Anniversary $550 $710 13th Anniversary $550 $865 14th Anniversary Renewal $550 $1050 15th Anniversary Renewal $1250 $1280 16th Anniversary Renewal $1250 $1555 17th Anniversary Renewal $1250 $1875 18th Anniversary Renewal $1250 $2240 19th Anniversary Renewal $1250 $2650 Pharmaceutical Patent Renewal/Maintenance Fee Old fee New fee 20th Anniversary $2550 $4000 21st Anniversary $2550 $5000 22nd Anniversary $2550 $6000 23rd Anniversary $2550 $7000 24th Anniversary $2550 $8000 Finally, and on a brighter note, preliminary search & opinion fees will be reduced significantly from $2,200 to $950. Designs Both application and renewal fees will increase for registered design applications. A new design application which is not submitted via preferred means will cost applicants $450 (previous fee $350). Subsequent designs within the same application will also attract a new fee. Preferred Methods If applicants use filing methods other than IP Australia’s preferred method, higher fees will be attracted. The obvious aim is to incentivise online filing methods for efficiency purposes. It is also to encourage users to make use of trademark pick lists. Finally, applicants should expect further changes in relation to awards of cost in opposition and non-use removal proceedings. The changes will be released once relevant stakeholder submissions and additional consultations have been assessed. A fulllist of the fee changescan be viewed on IP Australia’s website. For any enquiries, please contact us at ip@hhlaw.com.au.

23 Oct 2020

Intellectual Property

Food delivery and Trademark

Australia, unlike South Korea, does not have an active food delivery culture. However, most recently, as food delivery businesses start to thrive, it is common to see people on bicycles or cars carrying delivery food. The most well-known food delivery companies are Deliveroo, Foodora and Uber Eats. These companies enter into contracts with various restaurants and once consumers place an order through the company’s subsequent channels such as their website or mobile app, the delivery person picks up the food from the restaurant and delivers it to the relevant location. During this process, the delivery companies receive a commission from each restaurant and the delivery person takes that extra charge paid for the food. As the global delivery market grows and competition increases, delivery companies are now trying to secure as many restaurants as possible. However, companies begin to overdo themselves. In the Chicago Tribune in America, Chicago-based restaurant Burger Antics, has filed a lawsuit against the delivery company DoorDash. The issue was that DoorDash uploaded Burger Antics’ menu and name on their website without obtaining prior consent and advertised as though their food could be delivered to customers. According to Burger Antics, they never provided food delivery services and were informed one day by a customer that they had been delivered food that was cold. DoorDash, a company based in the United States, partners with more than 600 restaurants and delivers foods using delivery personnel called dashers. The issue is not just a simple mistake identified in the above mentioned case of Burger Antics but the fact that they have a fixed business mindset of “whatever”. Once they posted menus of several restaurants on their website, because of issues that arose in the above context, they have slowly started to take them down. In November 2014, In-N-Out, a well-known burger chain based in California, filed a lawsuit against DoorDash to immediately stop the unauthorised use of their logo and menu. The case was settled by agreement between both parties. However, we suspect that DoorDash paid a considerable amount of compensation. What would happen if such a situation occurred in Australia? First of all, there would be an infringement of trade mark rights, copyright laws and a violation of consumer law. Readers of this article who own and run a restaurant-style business should check to see if their restaurant name and menu have been used without their permission.

19 Jun 2019

Firm News

Bringing the worlds of business together – H & H Lawyers

Thursday, 13 June 2019 – Rise of the boutique law firm Doing business with international partners – whether it be an entity operating on Australian soil or a local brand venturing offshore – can be fraught with difficulty. Between establishing a fresh customer base, navigating new laws, regulations and corporate governance, creating effective relationships and becoming nuanced with cultural mores (perhaps the trickiest of all), the business of doing business has the potential to bring an enterprise undone. For instance, exchanging a business card using one hand rather than two can be seen as a sign of disrespect in some cultures. Who would necessarily know? With Australians increasingly undertaking business across the world and with Asian powerhouses such as Japan, Korea and China, navigating the behind-the-scenes landscape, as well as providing direct services and advice, has become all important. Business owners and operators need to focus on what they do best, so employing people who specialise in troubleshooting make-or-break sensitive legal, technical and cultural matters is a vital and strategic move. Sydney’s H & H Lawyers offers this official and unofficial role in its capacity as a firm on the path to being Australia’s biggest ‘‘Asian’’ law firm. H & H Lawyers’ services include commercial and corporate advisory, acquisitions, dispute resolution, employment law, corporate migration and intellectual property. “Our bilingual lawyers have been inundated with work representing multinational corporations and government agencies from Japan, Korea and China that want to expand their businesses into Australia,” says Principal Ken Hong. “We have also been very busy acting for local clients with Japanese, Korean or Chinese backgrounds, or that have transactions with their counterparts in those three countries. “Demand for our services has escalated, so we are rapidly expanding to meet the demand.’’ Fellow Principal Yukio Hayashi says a vital aspect of the firm’s work includes “bridging fundamental cultural differences”. “This cross-cultural dexterity is not necessarily part of our brief, but it’s what we offer as well, as it is so essential,’’ he says. “Our team not only speaks the languages, but also intimately understands the cultural nuances of Asia. This saves our clients so much time in getting straight to the actual issues and resolutions. Without the right knowledge of culture, a lot of key messages can be lost in translation, particularly legal concepts, leading to a frustrating experience for all. “We had one situation recently in which there was an investment in an Australian business by a Japanese company. There were excellent managers and staff in situ, but the incoming management from Japan had their way of doing things that did not rest well with the Australian team, and vice versa.” “This friction was no one’s fault, but we made it our job to navigate the cultural minefield. We were able to get each side to see things from the other’s perspective and that made all the difference.” Hong and Hayashi say that by going this extra mile, the law firm can resolve difficulties and help international-facing businesses to thrive. “The importance of Australia’s trade relationships with Korea, China and Japan need no further explanation,’’ says Hong. “They are our top three trading partners. We look forward to continuing with our work and contributing to Australia’s successful trade relationships with those three countries.” Says Hayashi: “Our firm is well placed and equipped to help clients have a more fruitful, efficient and enjoyable experience in doing business.’’

13 Jun 2019

Intellectual Property

Preliminary Discovery

Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd [2017] FCAFC 193. Summary: Prior to filing a patent infringement lawsuit, Pfizer, the patentee, applied for a ‘preliminary discovery’ order against Samsung Bioepis, a suspected infringer of the patent, to submit a specific document. 2016, first trial (Federal Court of Australia): Pfizer’s did not meet the requirements of the preliminary discovery application: Pfizer lost, Bioepis wins. 2017, second trial (Full Federal Court of Australia): Preliminary discovery requirements were not about the objective facts of evidence submitted (expert’s findings) but rather whether Pfizer’s assertion was rational. Pfizer met the requirements; Pfizer wins, Bioepis loses – An order was made for Bioepis to provide documents requested by Pfizer. March 2018, third trial (High Court): Bioepis’ requested Special leave was denied: Final – Pfizer wins, Bioepis loses. From the Patentee’s perspective, proactive use of the preliminary discovery order (you can receive information from the other side in advance and decide whether or not to proceed with a lawsuit if you are unsure on whether the other side is violating through the use of the patent). “Between war and war”. This famous phrase from the book “The Art of War” means that if you know the situation you are in well, you can fight a hundred times and not be at risk. It is a word that can be applied in a situation where there is an opponent should that be at war, a negotiation, sports game or gambling. The same applies for court proceedings where if you know more about the information or evidence the other side has, you can file a lawsuit more confidently and if you believe the situation will not be in your favour, you can find out whether there is another viable solution. A discovery regime is to offer evidences each party has upon requests by the other party in pre-trials, and it is very useful to determine whether to continue litigations after looking at each other’s evidence and also to prevent in advance from encountering unpredictable evidences (“surprise”) later on in trials by ascertaining the other party’s strengths and weaknesses prior to hearings and trials. Of course, on special occasions such as in privileged documents due to lawyer-client relationships, a party can reject a request from the other party to offer an evidence; However, the court can generally intervene in if a party does not submit to the other party’s reasonable requests. Thanks to a discovery regime, many litigation cases are often terminated early upon settlements between parties in the middle of litigations. Interchanging and examining each other’s evidence helps a party to understand the other party’s strengths and weaknesses, and it may be more beneficial to each other in a long run to compromise each other rather than going all the way in litigations while paying a great sum of money. In Australia, a common law country, this discovery regime takes huge part in civil proceedings. According to the rule 7.23 of the Federal Court Rules 2011, there is a regime called a preliminary discovery, which enables each party to obtain evidences from the other party upon request to the court even prior to submitting complaints. As this preliminary discovery clause is conservatively and sparingly used, it has been difficult for parties to get such order. Even prior to litigations, it is unlikely for a party to unreluctantly offer any information or document which is sensitive to the other party (confidential sales/operative information). Since such request is oftentimes triggered among competitors in the same industry, respondents actively try to defend themselves. Reversely, for the applicants who urge such requests, they may get themselves into trouble by recklessly initiating a litigation based on a conviction without a material evidence. Even so without a litigation, it may not be satisfying for a party to observe the competitor’s gradual encroachment into a common-share market. Especially in pharmaceutics- related patent litigations like a case below, the other party’s information obtained prior to a trial would be a valuable information in determining whether to proceed to litigations further, since a manufacturing process is often not overtly displayed. The case to be introduced below is a litigation after a long period of appeals and cross-appeals, between the Pfizer Ireland Pharmaceuticals Ltd and the Samsung Bioepis AU Pty ltd, which ended up being a precedent concerning a preliminary discovery by the Australian Federal Court. Facts Overview Specialized in biomedicals, the Samsung Bioepis Ltd, which was co-founded by the Samsung biologics Ltd, a subsidiary of the Samsung Group, and the Biozen Ltd from the United States, is primarily in charge of developing biosimilars. In turn, these biosimilars are produced by its parent company, the Samsung biologics. In 2016, the Bioepis Ltd was successful in getting an approval of two biologics consisting of Etanercept in the name of BREZNYS by the Australian Register of Therapeutic Goods (TGA). These products are known to be affiliated with one of the Disease Modifying Anti-Rheumatic Drugs (DMARD) commercially sold as ENBREL, whose patent is beheld by the Pfizer Ltd. Approved by the U.S. Food and Drug Administration (FDA), the Pfizer Ltd’s ENBREL is a very first DMARD, leading a global DMARD market up until now. Although having a doubt as to a possible infringement of its own company’s patent right by the TGA-approved BREZNYS products, the Pfizer Ltd did not have any affirmative evidence to be submitted in a patent litigation. The Pfizer Ltd contemplated that had it obtained a document as to the Bioepis’s manufacturing process submitted to be authorized by the TGA, it could have determined a prospect of the litigation as to an infringement of its own patent more meticulously. Thereafter, as the Pfizer Ltd submitted an application for a pre-trial discovery order to a court pursuant to rule 7.23 of the Federal Court Rules 2011, and the Bioepis Ltd rejected the discovery request, the federal court handed down a judgment as to the trial provided below. Federal Court of Australia’s decision According to the rule 7.23 of the Federal Court Rules 2011, a prospective applicant may apply to the court for an order if the prospective applicant reasonably believes that he or she may have the right to obtain relief in the court from a prospective respondent, does not have sufficient information to decide whether to start a proceeding in the court to obtain that relief despite making reasonable inquiries, reasonably believes that the prospective respondent has or is likely to have or has had or is likely to have had in the prospective respondent’s control documents directly relevant to the question whether the prospective applicant has a right to obtain the relief, and inspection of the documents by the prospective applicant would assist in making the decision. The Pfizer Ltd’s head of manufacturing process technology, Dr Ibarra informed Mr Silvestri, who is a chief in-house council, of the company’s patent information and an expert opinion with respect to the product’s manufacturing process. Following the Dr Ibarra’s opinion, the Pfizer Ltd alleged in the court that it is highly probable that the Bioepis’s product, BREZNYS, infringed its patent right. Against this, Professor Gary on behalf of the Bioepis submitted an expert opinion denying the Pfizer LTd’s allegation that the counterpart’s evidence is not sufficient for them to form a reasonable belief that its product, BREZNYS, has infringed the Pfizer Ltd’s patent right. A federal court judge, Burely J stood on the side of the Bioepis, determining that the expert opinion submitted by the Pfizer Ltd alone is not sufficient enough for it to form a reasonable belief that the Bioepis’s product infringed its patent right, and such belief is no more than a mere suspicion. Furthermore, Burely J added that the mere fact that the BREZNYS and the ENBREL are both biosimilar products does not mean that their manufacturing process are alike. An Appeal in the Full Federal Court of Australia- different opinion as to a “reasonable belief” Upon an appeal by the Pifzer Ltd, all three judges from the Full Federal Court of Australia upheld the appeal, determining that the federal court made a mistake in its judgment. The full federal court of Australia emphasized that a determination with respect to the rule 7.23 is not a mini-trial dealing with the infringement issue, and the purpose of a pre-trial discovery is to reduce the costs to be incurred in the court proceeding and by right support the applicant’s determination. That is, judging factual correctness of each party’s expert opinion as to the possibility of patent infringement in an adversarial manner is not a point at issue, rather its more of reasonableness of the Pfizer Ltd’s belief. In conclusion, the Pfizer Ltd won whereas the Bioepis Ltd lost, and the full federal court ordered the Bioepis Ltd to disclose the documents requested by the Pfizer Ltd. An Application for special leave to the High Court In May 2018, the Bioepis Ltd applied for a special leave to the High Court in order to appeal the Full Federal Court’s decision. Hight Court Judges, Nettle J and Gordon J rejected a special leave and affirmed the Full Federal Court’s decision. Overall, the Pifzer Ltd won and the Bioepis Ltd lost. Implication This final decision lays out the conversion from the court’s conventional proclivity to requiring subjective determination as to facts in patent infringement cases to objective yet reasonable determination. That is, there is an unanimous decision in the court that an applicant fulfills the requirements of the rule 7.23 as long as he or she forms a objective and reasonable belief, which resonates the interpretation of ordinary meaning of the terms in the rule 7.23. Such decision is a good news to patent holders unlike to latecomers in the market. It has become highly likely for patent holders to obtain their opponent’s evidence without burdening themselves to initiate litigations if they utilize a “pre-trial discovery” scheme wisely in circumstances where there are doubts as to possible patent infringements. Also, prior to initiating litigations, they would be able to negotiate with their opponents based on evidences that they obtained through a pre-trial discovery. In a state-of-the-art biomedical technology, telecommunication, and software-related patent arena, it has become more difficult to discern and reason a manufacturing process or structural analysis using advanced technology such as reverse engineering. Therefore, given such circumstances, Australia’s “pre-trial discovery” regime has become a strong weapon. On the other hand, for prospective respondents against a pre-trial discovery request, they have to allege neither their opponents’ belief are objective nor subjective evidence as to such belief is sufficient. It would be hard for them to ward off the opponent’s spear just by contending a factual correctness based on the evidence provided by the prospective applicants.

03 Sep 2018