Outline

Overview

This unit focuses on legal rights concerning the marketing of products, specifically, trade mark law and passing off, and legal rights concerning invention, specifically, patent law. Most aspects of the law of registered trade marks, including some references to passing-off and misleading and deceptive conduct will be covered in the unit, as will the effect of these areas of law on new marketing practices on the Internet. Some specific topics which will be covered in depth are: the differences between registered trade marks, passing-off and unfair competition; character merchandising and the protection of the celebrity persona; the nature of signs and the special problem of shape trade marks; counterfeiting and parallel imports; trade mark infringement; the badge of origin, private property and cultural resource functions of registered trade marks. In patent law, there will be a particular focus on the requirements for patentability under Australian patent law; the requirements for patent specifications; the concept of inventorship and ownership of patents; and patent infringement and defences. Although the unit of study emphasises legal doctrine and is taught from the perspective of a relatively depoliticised formalism, it is also recognised that the deployment and the regulation of intellectual property inevitably have substantial cultural and economic consequences, which in turn inform and shape the development of legal doctrine. So, for example, pharmaceutical patents are both valuable assets to their owners, who accordingly demand extensive legal protection for those assets, and also the target of vigorous criticism in the developing world for the patents' potentially detrimental effect on access to quality and affordable medicines. There will, accordingly, be some attention paid in this unit to the cultural and economic consequences of intellectual property laws, to the significance of access to the public domain and to the effects of international trade pressure in the area.

Unit details and rules

Academic unit	Law
Credit points	6
Prerequisites ?	None
Corequisites ?	None
Prohibitions ?	LAWS3472 or LAWS3423 or LAWS5179
Assumed knowledge ?	None
Available to study abroad and exchange students	Yes

Teaching staff

Coordinator	Fady Aoun, fady.aoun@sydney.edu.au

Assessment

The census date for this unit availability is 2 September 2024

Details
Criteria

Type	Description	Weight	Due	Length
Supervised exam ?	Final exam (50%) Open Book. 2hrs plus 30min reading time	50%	Formal exam period	2 hours
Outcomes assessed:
Participation	Structured Class Participation (10%) On-call	10%	Ongoing	On-call for selected seminar/topic
Outcomes assessed:
Short release assignment	Mid-Semester Research Proposal (10%) Essay Proposal	10%	Week 03 Due date: 16 Aug 2024 at 17:00 Closing date: 26 Aug 2024	650 words / 9 working days
Outcomes assessed:
Assignment	Mid-Semester Research Essay (30%) Research essay	30%	Week 08 Due date: 16 Sep 2024 at 17:00 Closing date: 30 Sep 2024	3000 words / 5 weeks
Outcomes assessed:

Assessment summary

Structured Class Participation (10%):

Students are expected to contribute to class debate and discussion as framed by leading cases and readings set out in the Reading Guide for each seminar/topic. To prepare for this ongoing assessment, students should do their assigned readings and prepare written answers to set tasks (eg problem questions). These efforts, including summarising assigned readings, will help facilitate quality and constructive in class student contributions. To assist in class management and ensure all students can complete this assessment task, students, at a minimum, will be allocated seminars in which they will be ‘on call’ and thus expected to lead discussion on assigned topics, cases and readings. Students who are on-call can be called upon at any point to answer questions about the class materials. Students will be allocated those readings prior to Seminar 1, but with formal assessment of class participation beginning in Week 2 of the semester.

This continuous assessment task will meet LO1, LO2 and LO3 (as relevant to assigned material) by requiring students to demonstrate a basic understanding of and rationale for the Australian trade mark and patent law systems. Students will develop skills of oral and written analysis on legal issues (LO7) and be able to comprehend and apply the law relating to trade marks and patents (LO4), including to content-specific legal problems (LO5). This task also requires students to further develop case analysis and statutory interpretation skills as they relate to the Trade Marks Act 1995 (Cth), Patents Act 1990 (Cth), and the Australian Consumer Law (LO6) as appropriate.

Mid-Semester Assessment (40%)

The mid-semester assessment has two [2] components. Students must complete both.

Research Proposal (10%)
Research Essay (30%)

Students may base their research proposal and essay on either a) a research question devised by the lecturer (details provided in class and available via Canvas from 5.00 PM Monday 5 August 2024 (Sydney, Australian time) (Wk. 2) or b) a research question they devise themselves. A proposal must be developed for either option students choose.

1. Research Proposal – Students will create a research proposal containing the following information:

(1) A proposed working (and preferably engaging) title of no more than 20 words which is sufficiently descriptive of the essay.

(2) A potential abstract summarising the argument of the essay of no more than 100 words.

(3) A clearly defined research question that the essay will address.

(4) A detailed outline of the essay, argument, and methodology of no more than 500 words.

(5) An annotated literature review of the five (5) most relevant secondary sources (eg scholarly journal articles) and a list of primary sources (e.g. cases and legislation).

The proposal should not exceed 650 words (plus an annotated literature review no greater than 750 words) and must be submitted via Canvas no later than 5.00 PM Friday 16 August 2024 (Sydney Australia time).

2. Research Essay – Students will research the question outlined in their proposal and submit an independently written critically reasoned 3000-word (including footnotes and references) research essay. The research essay must be submitted via Canvas no later than 5.00 PM Monday 16 September 2024 (Sydney, Australia time).

The mid-semester assessment task asks students to demonstrate their capacity to prepare a critically reasoned argument supported by relevant research material and, depending on student essay choice, may enliven Learning Outcomes 1-7 inclusive.

Special consideration: Grants of special consideration in relation to the mid-semester assessment may involve alternative tasks designed to fulfil the intended learning outcomes of the original task.

Final Exam (50%):

The final examination (on-campus, supervised examination) will take place during the university formal examination period - the time and venue will be announced in due course via the formal exam timetable. It will comprise one or more questions and may involve a mix of hypothetical problem question(s) and short essay question(s) or other written work. Students will have 2 hours writing time plus 30 minutes reading time. The examination will be open book.

By answering content-specific legal problems through appropriate legal advice (LO5), this assessment requires students to demonstrate an understanding of Australia’s system of registered trade marks, including the law of passing off and misleading and deceptive conduct and respective rationales (LO1) and/or the Australian patent system and rationale (LO2) (both situated in international trade mark and patents systems respectively) and by applying the law relating to (registered and unregistered) trade marks and associated laws (LO3, LO4) and/or patents (LO2, LO3). In so doing, students are expected to apply the skills of case analysis and statutory interpretation (LO6) and communicative skills about IP legal issues (LO7) developed in the course.

Word limit penalty: A piece of assessment which exceeds the prescribed word limit will attract a penalty of 10% of the total marks available for the piece of assessment for every 100 words, or part thereof. The total word count for essay and other written assessments will include all footnotes and any bibliography (if required).

Use of editors and automated writing tools: Use of editors or proof-readers: The use of assistance in preparing and editing assessment tasks in this unit of study is strictly prohibited. Assistance includes human and automated writing tools (not including spell checking). The use of Studiosity does not breach this rule but must be acknowledged.

Special consideration: Successful grants of Special Consideration may involve alternative tasks, as appropriate.

Assessment requirements to pass a unit of study: A student must make a genuine attempt at all assessment tasks set out in this Unit of Study in order to obtain a Pass mark and grade (or above); otherwise an Absent Fail grade will be recorded as the student’s result for this Unit of Study.

Assessment criteria

The University awards common result grades, set out in the Coursework Policy 2021 (Schedule 1).

As a general guide, a high distinction indicates work of an exceptional standard, a distinction a very high standard, a credit a good standard, and a pass an acceptable standard.

Result name	Mark range	Description
High distinction	85 - 100	• Completely answers the question. • Contains striking originality of approach or analysis. • Demonstrates exhaustive or innovative research (where independent research required). • Exceptionally well written, structured and expressed. • Is otherwise exceptional in some way.
Distinction	75 - 84	• Completely answers the question. • Achieves a critical and evaluative approach to the issues. • Content and structure is well organised in support of the argument. • Demonstrates extensive research and analysis to support a well-documented argument. • Generally well expressed and free from errors. • Has a clear structure and is well articulated.
Credit	65 - 74	• Covers main issues fairly well in answering the question. • Contains no significant errors • Demonstrates an attempted critical approach to the issues. • Demonstrates reasonably sound research and analysis in addressing the key issues. • Has a clear structure and reasonably clear expression.
Pass	50 - 64	• Identifies the key issues, but does not follow through with a reasoned argument. • Contains some significant errors. • Displays satisfactory engagement with the key issues. • Offers descriptive summary of material relevant to the question. • Superficial use of material, and may display a tendency to paraphrase. • Demonstrates little evidence of in-depth research or analysis. • Adequate expression. • Overall, demonstrates the minimum level of competence in the assessment and satisfies the requirements to proceed to higher-level studies in the degree or subject area.
Fail	0 - 49	• Does not answer the question. • Contains significant or numerous errors. • Few or no identifiable arguments. • Content that is inappropriate or irrelevant. • Lack of research or analysis. • Difficult or impossible to understand through poor grammar, expression or structure. • Overall, does not demonstrate the minimum level of competence in the assessment.

For more information see guide to grades.

Late submission

In accordance with University policy, these penalties apply when written work is submitted after 11:59pm on the due date:

Deduction of 5% of the maximum mark for each calendar day after the due date.
After ten calendar days late, a mark of zero will be awarded.

This unit has an exception to the standard University policy or supplementary information has been provided by the unit coordinator. This information is displayed below:

For the mid-semester assignment, the late submission of a piece of assessment will attract a penalty of 10% of the total marks allocated to the piece of assessment per day or part thereof. For example, if you submit your paper at 5.01 pm on the due date, you will be penalised 10%. Similarly, if you submit your paper at 12.01 am on the following day, you will be penalised 20%. Late penalties do not apply to exams and tests and any late submission will not be accepted.

Academic integrity

The Current Student website provides information on academic integrity and the resources available to all students. The University expects students and staff to act ethically and honestly and will treat all allegations of academic integrity breaches seriously.

We use similarity detection software to detect potential instances of plagiarism or other forms of academic integrity breach. If such matches indicate evidence of plagiarism or other forms of academic integrity breaches, your teacher is required to report your work for further investigation.

You may only use artificial intelligence and writing assistance tools in assessment tasks if you are permitted to by your unit coordinator, and if you do use them, you must also acknowledge this in your work, either in a footnote or an acknowledgement section.

Studiosity is permitted for postgraduate units unless otherwise indicated by the unit coordinator. The use of this service must be acknowledged in your submission.

Learning support

Simple extensions

If you encounter a problem submitting your work on time, you may be able to apply for an extension of five calendar days through a simple extension.  The application process will be different depending on the type of assessment and extensions cannot be granted for some assessment types like exams.

Special consideration

If exceptional circumstances mean you can’t complete an assessment, you need consideration for a longer period of time, or if you have essential commitments which impact your performance in an assessment, you may be eligible for special consideration or special arrangements.

Special consideration applications will not be affected by a simple extension application.

Using AI responsibly

Co-created with students, AI in Education includes lots of helpful examples of how students use generative AI tools to support their learning. It explains how generative AI works, the different tools available and how to use them responsibly and productively.

Support for students

The Support for Students Policy 2023 reflects the University’s commitment to supporting students in their academic journey and making the University safe for students. It is important that you read and understand this policy so that you are familiar with the range of support services available to you and understand how to engage with them.

The University uses email as its primary source of communication with students who need support under the Support for Students Policy 2023. Make sure you check your University email regularly and respond to any communications received from the University.

Learning resources and detailed information about weekly assessment and learning activities can be accessed via Canvas. It is essential that you visit your unit of study Canvas site to ensure you are up to date with all of your tasks.

If you are having difficulties completing your studies, or are feeling unsure about your progress, we are here to help. You can access the support services offered by the University at any time:

Support and Services (including health and wellbeing services, financial support and learning support)
Course planning and administration
Meet with an Academic Adviser

Weekly schedule

WK	Topic	Learning activity
Week 01	Introduction to IP protection: nature of IP rights, justifications, protection within domestic and international landscapes.	Seminar (2 hr)
Week 01	Passing off I: background, options for protecting business reputation, establishing passing off (the classical trinity – goodwill/reputation)	Seminar (2 hr)
Week 02	Passing off II: establishing passing off (misrepresentation & damage), misleading & deceptive conduct (MDC), remedies.	Seminar (2 hr)
Week 02	Registered trade mark system: introduction, rationale for protection, protectable marks, trade mark registration process.	Seminar (2 hr)
Week 03	Grounds of refusal (absolute I): lack of distinctiveness (geographical names, descriptive terms, coined phrases, slogans, foreign words, invented words, shapes, colours); acquired distinctiveness; losing distinctiveness.	Seminar (2 hr)
Week 03	Grounds of refusal (absolute II): prohibited & prescribed signs, mark not graphically representable, scandalous & marks contrary to law, deceptive & confusing connotation, no intention to use, bad faith.	Seminar (2 hr)
Week 04	Grounds of refusal (relative I): proposed mark vs registered trade marks & prior applications.	Seminar (2 hr)
Week 04	Grounds of refusal (relative II): proposed mark vs registered trade marks (the exceptions), marks with reputation, bad faith, applicant not owner of mark, mark contrary to law, deceptive & confusing connotations, false geographical indications.	Seminar (2 hr)
Week 05	Trade Mark Infringement: the essential elements (use as a trade mark, substantial identity & deceptive similarity, similar goods/services or goods or services of same description or closely-related goods or services); infringement of well-known trade marks; defences.	Seminar (2 hr)
Week 05	Exploitation & loss of trade mark rights: trade mark rights, options for exploitation, when rights could be lost.	Seminar (2 hr)
Week 07	Introduction to patent protection: definition/nature of patent monopoly, justifications/criticisms, international & domestic landscapes, patent registration process, patent specification.	Seminar (2 hr)
Week 07	Patentable subject-matter/Manner of manufacture inquiry I: the NRDC factors, application of tests in different fields of inventions (computer-implemented inventions)	Seminar (2 hr)
Week 08	Patentable subject-matter/Manner of manufacture inquiry II: other fields of invention (discoveries of known principles, products of nature, method of medical treatment of human body); combination patents; excluded subject-matter (comparative perspective)	Seminar (2 hr)
Week 08	Patentability criteria I: assessment of novelty and inventive step/obviousness.	Seminar (2 hr)
Week 09	Patentability criteria II: inventive step/obviousness continued (expansion of prior art base, CGK, PSA, judicial application, APO approach); utility/usefulness; secret use.	Seminar (2 hr)
Week 09	Patentability criteria III – internal requirements (sufficiency of disclosure, clarity of claims, fair-basing/support).	Seminar (2 hr)
Week 11	Ownership of inventions (including employees’ inventions); exploitation of patent rights; patent strategies (both pre-patent application and post-patent grant).	Seminar (2 hr)
Week 11	Infringement (direct, indirect, innocent) and defences/exceptions; remedies.	Seminar (2 hr)
Week 12	Alternative form of protection: confidential information/trade secret (TRIPS, common law/Australian approaches); other jurisdictions (e.g., US, EU, Japan); defences.	Seminar (2 hr)
Week 12	Revision/past assessment review - passing off/trade marks & patents.	Seminar (2 hr)

Attendance and class requirements

Attendance: All students are required to attend at least 70% of classes to satisfy the pass requirements for each unit of study. Failure to meet this requirement may result in a student being precluded from undertaking the final assessment.

Referencing: The Sydney Law School expects you to use the Australian Guide to Legal Citation (4th edition, 2018) for your footnoting style, although you should confirm this with your lecturer. A link to the library website where this is set out comprehensively is available at Referencing and Citation Styles: AGLC4.

Study commitment

Typically, there is a minimum expectation of 1.5-2 hours of student effort per week per credit point for units of study offered over a full semester. For a 6 credit point unit, this equates to roughly 120-150 hours of student effort in total.

Required readings

The prescribed textbook is:

David Price, Colin Bodkin, and Fady Aoun, Intellectual Property: Cases and Materials, ThomsonReuters, 6th ed, 2017 (PBA).

As many of the rights you will be studying are creatures of statute, you will need to acquire the relevant legislation for each section of the unit of study. The legislation is usefully collected in the Butterworths Intellectual Property Collection (produced yearly). Students may choose to obtain access to the legislation via Federal Register of Legislation (Commonwealth Law; formerly comlaw.gov.au) – www.legislation.gov.au. or www.austlii.edu.au. Whichever option you choose, make sure you have access to current legislation during class.

You must have copies of the current legislation published in book form or download a copy published after mid 2012 – that is, the copy you have must include the revisions enacted by Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which had a significant impact on both the Patents Act 1990 (Cth) and the Trade Marks Act 1995 (Cth).

Other required reading materials will be listed in the Reading Guide which will be available on Canvas.

Learning outcomes

Learning outcomes are what students know, understand and are able to do on completion of a unit of study. They are aligned with the University's graduate qualities and are assessed as part of the curriculum.

Outcomes
Graduate qualities

At the completion of this unit, you should be able to:

LO1. Understand and analyse the structure and regulation of the Australian registered and unregistered trademark systems their economic and social rationales, and the legal institutions which support them.
LO2. Understand and critically evaluate the Australian patent system, including its economic and social rationales, and the legal institutions which support it and/or alternate systems for protecting inventions.
LO3. Understand and critically assess the impact of international trademark and patent systems on Australian law.
LO4. Apply Australian law relating to trademarks (including passing off) and patents.
LO5. Apply appropriate legal skills and provide clear and relevant legal advice on complex legal problems related to trademarks and patents.
LO6. Apply case analysis and statutory interpretation skills to specific acts and cases in IP law (Trade Marks Act 1995 (Cth), Patents Act 1990 (Cth), Australian Consumer Law and attendant cases).
LO7. Create logically structured written and oral legal arguments required to communicate IP legal issues to diverse audiences.

Graduate qualities

The graduate qualities are the qualities and skills that all University of Sydney graduates must demonstrate on successful completion of an award course. As a future Sydney graduate, the set of qualities have been designed to equip you for the contemporary world.

GQ1	Depth of disciplinary expertise Deep disciplinary expertise is the ability to integrate and rigorously apply knowledge, understanding and skills of a recognised discipline defined by scholarly activity, as well as familiarity with evolving practice of the discipline.
GQ2	Critical thinking and problem solving Critical thinking and problem solving are the questioning of ideas, evidence and assumptions in order to propose and evaluate hypotheses or alternative arguments before formulating a conclusion or a solution to an identified problem.
GQ3	Oral and written communication Effective communication, in both oral and written form, is the clear exchange of meaning in a manner that is appropriate to audience and context.
GQ4	Information and digital literacy Information and digital literacy is the ability to locate, interpret, evaluate, manage, adapt, integrate, create and convey information using appropriate resources, tools and strategies.
GQ5	Inventiveness Generating novel ideas and solutions.
GQ6	Cultural competence Cultural Competence is the ability to actively, ethically, respectfully, and successfully engage across and between cultures. In the Australian context, this includes and celebrates Aboriginal and Torres Strait Islander cultures, knowledge systems, and a mature understanding of contemporary issues.
GQ7	Interdisciplinary effectiveness Interdisciplinary effectiveness is the integration and synthesis of multiple viewpoints and practices, working effectively across disciplinary boundaries.
GQ8	Integrated professional, ethical, and personal identity An integrated professional, ethical and personal identity is understanding the interaction between one’s personal and professional selves in an ethical context.
GQ9	Influence Engaging others in a process, idea or vision.

Outcome map

Learning outcomes	Graduate qualities
Learning outcomes

Responding to student feedback

This section outlines changes made to this unit following staff and student reviews.

No changes have been made since this unit was last offered.

Disclaimer

The University reserves the right to amend units of study or no longer offer certain units, including where there are low enrolment numbers.

To help you understand common terms that we use at the University, we offer an online glossary.

Current students

Overview

Overview

Unit details and rules

Teaching staff

Assessment

Assessment

Assessment summary

Assessment criteria

Late submission

Academic integrity

Learning support

Learning support

Simple extensions

Special consideration

Using AI responsibly

Support for students

Weekly schedule

Weekly schedule

Attendance and class requirements

Study commitment

Required readings

Learning outcomes

Learning outcomes

Graduate qualities

Outcome map

Responding to student feedback

Responding to student feedback

Disclaimer

On this page

Useful links

Media

Student links

About us

Connect

Current students

LAWS3479: IP: Trade Marks and Patents

Semester 2, 2024 [Normal day] - Camperdown/Darlington, Sydney

Overview

Overview

Unit details and rules

Teaching staff

Assessment

Assessment

Assessment summary

Assessment criteria

Late submission

Academic integrity

Learning support

Learning support

Simple extensions

Special consideration

Using AI responsibly

Support for students

Weekly schedule

Weekly schedule

Attendance and class requirements

Study commitment

Required readings

Learning outcomes

Learning outcomes

Graduate qualities

Outcome map

Responding to student feedback

Responding to student feedback

Disclaimer

On this page

Useful links

Media

Student links

About us

Connect