What does the recent 3:3 decision from the High Court in Aristocrat v Commissioner of Patents mean for the requirement that an invention be a manner of manufacture in Australia? What can practitioners take from the decision? And how should practitioners approach manner of manufacture in the context of computer implemented and other inventions going forward? Join our three experts David Shavin QC (who represented Aristocrat in the High Court, with Cynthia Cochrane SC, Peter Creighton-Selvay and Wen Wu), Christian Dimitriadis SC (who represented the Commissioner in the High Court, with Edwina Whitby), Tom Cordiner QC (who prepared written submissions with Frances St John for IPTA) and Frances St John (who appeared for IPTA unled at the hearing) for an in-depth discussion of the decision.
Note: this seminar will not be recorded and will be conducted according to Chatham House Rules. To hear from our panel, you will need to register and attend.
David Shavin QC was admitted as a solicitor in Victoria in 1977, has practised as a barrister since 1978, and a Queen’s Counsel since 1993, primarily in the fields of Patent, Trade Mark, and Competition Law in Australia and New Zealand. David appears regularly in trials in the federal courts in Australia and the High Court in New Zealand, and conducts appeals in the Federal Court in Australia, the Court of Appeal in New Zealand and in both the Australian High Court and the NZ Supreme Court. David’s patent work has focussed primarily in the fields of both the life sciences and technology, especially computer implemented inventions, in both infringement and validity proceedings and oppositions in AIPO and IPONZ. David has also conducted many competition cases in both Australia and New Zealand relating to the abuse of market power and cartels both at trial and on appeal.
In recent years, he has been involved in several key patent cases developing, in the Australian High Court, the boundaries of patent eligible subject matter (manner of manufacture) in the context of isolated nucleic acids (Myriad), computer implemented inventions (Aristocrat) and AI as an inventor (DABUS) as well as exploring issues of the nature of a patentee’s rights in Calidad.
Christian Dimitriadis SC has practised at the New South Wales Bar since 2001 and has been a member of Nigel Bowen Chambers since that time. He was appointed Senior Counsel in 2014. He was previously a solicitor and a registered patent attorney, and holds tertiary qualifications in both science and law. In his practice at the Bar, he specialises in intellectual property law, including patent, copyright and trade mark matters. He regularly appears before the Federal Court, both at first instance and on appeal, and has appeared in several leading intellectual property cases before the High Court. In the area of computer-implemented inventions, he appeared for the Commissioner of Patents before the Federal Court in Research Affiliates, Encompass, Rokt and Repipe. He appeared with Edwina Whitby in the recent appeal before the High Court in the Aristocrat matter.
Tom Cordiner QC holds the dual qualification of barrister and registered patents and trade mark attorney, in both Australia and New Zealand. After a short stint as a molecular geneticist in the mid 1990’s, Tom has, since 1998, specialised in all aspects of intellectual property law. He was admitted to the bar in 2003 and appointed silk in 2016. Tom most commonly appears in the Federal Court of Australia in trials and appeals, and from time to time the Australian Patents Office and Trade Marks Office for a broad range of clients in all kinds of industries, more particularly pharmaceutical, mining, automotive, agricultural, information technology/telecommunications, wagering, and fashion. In the Aristocrat v Commissioner of Patents High Court proceeding, he was instructed with Frances St John to provide written submissions on behalf of IPTA for its intervention in that case.
Frances St John was admitted as a solicitor in 2009 and has practised as a barrister since 2015. She is a member of Tenth Floor Chambers. She specialises in intellectual property law, including copyright, patents, trade marks, designs, breach of confidence, and false advertising. She regularly appears, led and unled, in the Federal Court and Federal Circuit Court and in IP Australia. She is recognised in various guides as one of Australia’s leading IP junior barristers. Frances has appeared in key patent cases, including the trial in Repipe. In the Aristocrat matter, she prepared written submissions on behalf of IPTA with Tom Cordiner QC and addressed the High Court orally unled.