1
/ Diploma in Law /LEGAL PROFESSION
ADMISSION BOARD
/ /LAW EXTENSION COMMITTEE
LAW EXTENSION COMMITTEE SUBJECT GUIDE
22 INTELLECTUAL PROPERTY
WINTER SESSION 2016
This Guide includes the Law Extension Committee’s course information and teaching program and the Legal Profession Admission Board’s syllabus. The syllabus is contained under the heading “Prescribed Topics and Course Outline” and has been prepared in accordance with Rule 27H(a) of the NSW Admission Board Rules 2015.
Course Description and Objectives / 1Lecturer / 1
Assessment / 1-2
September 2016 Examination / 2
Lecture Program / 3
Weekend Schools 1 and 2 / 4
Texts and Materials / 5-6
Prescribed Topics and Course Outline / 6-33
Compulsory Assignment / 33
Assignment Question
Sample Examination Questions / 34
34-36
36
LAW EXTENSION COMMITTEE
/WINTER 2016
22 INTELLECTUAL PROPERTY
COURSE DESCRIPTION AND OBJECTIVES
The law of intellectual property includes the areas of copyright, design, patents, confidential information, business reputation and trade marks. The course provides a general introduction to intellectual property, outlining, for each principal category of protection, how the rights arise, the nature of the rights, ownership and exploitation as well as infringement and remedies.
Throughout the course, key policy issues are considered including the rationale and role of intellectual property law, the overlap between areas of protection, the growing importance of Australia’s obligations under international treaties and the interaction of intellectual property law with other areas such as trade practices law.
LECTURER
Ms Beth Oliak, BSEE (Northwestern University), JD (Washington University in St Louis School of Law)
Ms Oliak is a barrister specialising in intellectual property and general commercial litigation. Prior to relocating to Australia, she practiced exclusively in patent litigation for a number of years at a major New York law firm. She is also a registered patent attorney in the United States and has drafted and prosecuted numerous patent applications. She holds an undergraduate degree in electrical engineering and thus her focus has been primarily on computer hardware and software patents. She has lectured, given presentations and prepared articles regarding issues relating to patent law on a number of occasions.
Ms Therese Catanzariti, BEc, LLB (Hons 1)(Syd), LLM (Merit) (Lond)
Ms Catanzariti is a barrister at the NSW Bar and specialises in intellectual property, commercial litigation, wills/probate and taxation. She was previously a senior associate at Mallesons Stephen Jaques (now King Wood Mallesons), as well as senior legal counsel at Nokia Corporation and GE Healthcare in Finland and Sweden. She is a graduate of the University of Sydney, holding Bachelor of Economics (Accounting), Bachelor of Laws (Hons 1) degree, and a graduate of the University of London (QMW) holding a Master of Laws (Merit) degree. Ms Catanzariti has also lectured in intellectual property at UTS, copyright law at UTS and University of Sydney, designs law at UTS, and Entertainment Law at University of New South Wales.
ASSESSMENT
To be eligible to sit for the Board’s examinations, all students must complete the LEC teaching and learning program, the first step of which is to ensure that you have registered online with the LEC in each subject for which you have enrolled with the Board. This gives you access to the full range of learning resources offered by the LEC.
To register with the LEC, go to www.sydney.edu.au/lec and click on the WEBCAMPUS link and follow the instructions. Detailed guides to the Webcampus are contained in the material distributed by the LEC, in the Course Information Handbook, and on the Webcampus.
Eligibility to Sit for Examinations
In accordance with the Legal Profession Admission Rules, the LEC must be satisfied with a student’s performance in a subject in order for the student to be eligible to sit for the examination, conducted by the Legal Profession Admission Board (LPAB). Assignments are used to assess eligibility.
Students are expected to achieve at least a pass mark of 50% in assignments to be eligible to sit for examinations. However, a category of “deemed eligible” has been introduced to offer students whose assignment mark is between 40-49% an opportunity to sit for the examination. In these circumstances students are often advised not to sit. A mark below 40% means a student is not eligible to sit for the examination.
Assignments as part of the Board’s Examinations
Assignment results contribute 20% to the final mark in each subject.
The Law Extension Committee (LEC) administers the setting and marking of assignments. The LEC engages the LPAB’s Examiners to assess or supervise the assessment of assignments.
Submission
Assignments must be received by 11:59pm on the due date unless an extension has been granted. Extensions must be requested by email prior to the due date. Specific supporting evidence must be provided. Assignments that are more than ten days late will not be accepted. Late assignments attract a penalty of one mark out of 20, or 5% of the total marks available, per day.
Assessment
Assignments are assessed according to the “Assignment Grading and Assessment Criteria” outlined in the Guide to the Presentation and Submission of Assignments. Prior to the examination, assignments will be returned to students and results posted on students’ individual results pages of the LEC Webcampus. Students are responsible for checking their results screen and ascertaining their eligibility to sit for the examination.
Review
Where a student’s overall mark after the examination is between 40-49%, the student’s assignment in that subject will be included in the Revising Examiner’s review. The final examination mark is determined in accordance with this review. Assignment marks will not otherwise be reviewed.
SEPTEMBER 2016 EXAMINATION
Candidates will be expected to have a detailed knowledge of the six (6) principal types of intellectual property studied in the course, namely: copyright, industrial designs, patents, confidential information, business reputation (passing off and related statutory actions) and trade marks.
Candidates will be assessed on the requirements for obtaining each of these intellectual property rights, how infringement of such rights is determined, and the remedies available in the event infringement is established. Candidates will also be expected to have an appreciation for the interaction between the six (6) principal types of intellectual property studied in the course.
All enquiries in relation to the examination should be directed to the Legal Profession Admission Board.
LECTURE PROGRAM
Lectures will be held on Monday nights commencing at 6.00pm on 9 May 2016. In the first half of semester, they will be held in Architecture Lecture Theatre 3, Faculty of Architecture, Design and Planning, in the Wilkinson Building, which is across City Road on the Darlington Campus. Please refer to the map at https://sydney.edu.au/maps/embed/?building=G04. Lecture venues for the second half of the semester have yet to be confirmed.
Please note that the program below is a general guide and may be varied according to need.
WEEK / VENUE / TOPIC1
9 May / Architecture LT 3 / Introduction to Intellectual Property/Trade Marks
2
16 May / Architecture LT 3 / Trade Marks
3
23 May / 13 Floor Wentworth / Introduction to Copyright
4
30 May / Architecture LT 3 / Trade Marks
5
6 Jun / Architecture LT 3 / Passing Off
6
13 Jun / No Lecture – Queen’s Birthday Public Holiday
Study Break: Saturday 18 June – Sunday 3 July 2016
7
4 Jul / TBA / Confidential Information
8
11 Jul / TBA / Copyright
9
18 Jul / TBA / Copyright
10
25 Jul / TBA / Industrial Designs
Copyright/Design Overlap
11
1 Aug / TBA / Patents
12
8 Aug / TBA / Patents
Weekend SchoolS 1 AND 2
There are two weekend schools principally for external students. Lecture students may attend but should be aware that weekend school classes aim to cover the same material provided in weekly lectures and are primarily for the assistance of external students.
It may not be possible to cover the entire course at the weekend schools. These programs are a general guide, and may be varied according to need. Readings are suggested to introduce you to the material to be covered in the lecture, to enhance your understanding of the topic, and to encourage further reading. You should not rely on them alone.
Weekend School 1
TIME / MAJOR TOPICS / KEY READINGSaturday 28 May 2016: 4.00pm – 8.00pm in New Law School Seminar Room 115 (New LSSR 115)
4.10pm-5.20pm / Introduction to Intellectual Property
Trade Marks / See readings under "Prescribed Topics and Course Outline"
5.30pm-6.35pm / Trade Marks
6.45pm-8.00pm / Business Reputation
Sunday 29 May 2016 4.00pm – 8.00pm in New Law School Seminar Room 115 (New LSSR 115)
4.10pm-5.20pm / Patents / See readings under "Prescribed Topics and Course Outline"
5.30pm-6.35pm / Patents
6.45pm-8.00pm / Confidential Information
Weekend School 2
TIME / MAJOR TOPICS / KEY READINGSaturday 23 July 2016: 4.00pm – 8.00pm in New Law School Seminar Room 115 (New LSSR 115)
4.10pm-5.20pm / Copyright / See readings under "Prescribed Topics and Course Outline"
5.30pm-6.35pm / Copyright
6.45pm-8.00pm / Copyright
Sunday 24 July 2016: 4.00pm – 8.00pm in New Law School Seminar Room 115 (New LSSR 115)
4.10pm-5.20pm / Copyright / See readings under "Prescribed Topics and Course Outline"
5.30pm-6.35pm / Industrial Designs
6.45pm-8.00pm / Copyright/Design Overlap
texts and materials
For the period from 21 April to 30 May 2016, LexisNexis is offering our students a special discount and free shipping on purchases made through the LexisNexis e-store at www.store.lexisnexis.com.au. Students quoting the promo code LECW2016 will receive a 15% discount on all text titles (except for those authored by John Carter). This discount is not limited to the prescribed or recommended texts for our courses. Students should, however, still compare LexisNexis’s discounted price with that of other outlets. The Co-op Bookshop, for example, offers a discount on texts sold to its members.
COURSE MATERIALS
· Supplementary Materials in Intellectual Property (available via the link to the Law Library in the Course Materials section of the LEC Webcampus)
· Guide to the Presentation and Submission of Assignments (available on the LEC Webcampus)
PRESCRIBED MATERIALS
· LexisNexis Intellectual Property Collection 2016, LexisNexis.
· Stewart, Griffith & Bannister, Intellectual Property in Australia, 5th ed. LexisNexis, 2014 (SGB)
· Ricketson and Richardson, Intellectual Property: Cases, Materials and Commentary, 5th ed. Lexis Nexis, 2013 (RR)
REFERENCE MATERIALS
Australian current texts
· Davison, Monotti, Wiseman Australian Intellectual Property Law, 3rd edition, Cambridge Press, 2015 (DMW 2015) Commentary only, no case extracts.
· Price, Bodkin, Arnold, Adjei, Intellectual Property Commentary and Materials Casebook, 5th edition, Thomson Reuters, 2012 (PBA 2012)
Other useful Australian texts
· Ricketson, The Law of Intellectual Property, Thomson Reuters, 2d ed., 2001
· Shanahan, Australian Law of Trade Marks and Passing Off, 5th ed. Thomson Reuters, 2012
· Bodkin, Patent Law in Australia, 2d ed. Thomson Reuters, 2014
· Phillips, Protecting Designs Law and Litigation, Thomson Reuters, 1994
· Elkington, Hall & Kell, Annotated Trade Marks Act 1995, LexisNexis, 2010
United Kingdom texts
· Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 8th ed. Sweet and Maxwell, 2013
· Skone James, Copinger and Skone James on Copyright, 17th ed. Sweet and Maxwell, 2016
Loose leaf and online services
· CCH, Australian Industrial and Intellectual Property: Copyright, Designs, Patents, Trade Marks, Legislation and Cases
· Lahore, Copyright and Designs, LexisNexis
· Lahore, Patents, Trade Marks and Related Rights LexisNexis
· Garnsey, Dwyer, Duffy and Covell, Intellectual Property in Australia: Patents, Designs and Trade Marks, LexisNexis
Periodicals
· Australian Copyright Council Bulletin
· Australian Intellectual Property Law Bulletin
· Australian Intellectual Property Law Journal
· Copyright Reporter
· Intellectual Property Forum
Blogs
http://ipwars.com/ - Warwick Rothnie (Melbourne IP barrister)
http://ipkitten.blogspot.com.au/ - IPKat – English/EU IP blog
http://www.patentlyo.com/ - Patently O – US IP blog
PRESCRIBED TOPICS AND COURSE OUTLINEMany cases listed are relevant for more than one topic area. Most cases are reported in both the Intellectual Property Reports (“IPR”) and the Australian Intellectual Property Cases (“AIPC”).
An asterisk (“*”) in front of a case denotes that the case is recommended reading for this course. Where possible, the location of case extracts in the text books is identified next to the case reference.
1. INTRODUCTION TO INTELLECTUAL PROPERTY
Relevant chapter for Topic 1 in Prescribed Materials
§ RR: Ch1
§ SGB: Ch 1 and 2
(1) History of intellectual property
· Bakers Marking Law 1266
· Venetian Patent Statute 1474
· Statute of Monopolies 1623
· Stationers Company
· Statute of Anne 1709
(2) Knowledge as property
· Intellectual Property philosophy – personal, economic, market
· Millar v Taylor (1769) 4 Burr. 2303; 98 ER 201
(3) Intellectual property as property
(4) Public domain
(5) International aspects of intellectual property protection
· Berne Convention for Protection of Literary and Artistic Works 1886
· Rome Convention for Protection of Performers, Producers of Phonograms and Broadcasting Organisations 1961
· Paris Convention on Patents and Trade Marks
· WTO Agreement on Trade Related Aspects of Intellectual Property 1995
· Copyright (International Protection) Regulations 1969
(6) Australian statutes
· Constitution section 51(xxix)
· Copyright Act 1968
· Patents Act 1990
· Trade Marks Act 1995
· Designs Act 2003
· Australian Consumer Law (part of Competition and Consumer Act 2010)
Copyleft
Creative Commons
Open Source
Parliament’s right to create and curtail
JT International SA v Commonwealth of Australia [2012] HCA 43 (Tobacco Plain Packaging)
“Rethinking the role of intellectual property”, Dr Francis Gurry, Director-General WIPO, WIPO Seminar, 22 August 2013
2. COPYRIGHT
Relevant chapters for Topic 2 in Prescribed Materials
§ SGB: Ch 5, 6, 7, 8.and 9
§ DMW 2012: Ch. 5, 6, 7, 8, and 9
§ PBA: 2012 Part 2
§ RR: Part 2
(1) What is copyright?
(a) Definitions of copyright