76085 Intellectual Property: Trade Marks and Patents
Warning: The information on this page is indicative. The subject outline for a
particular session, location and mode of offering is the authoritative source
of all information about the subject for that offering. Required texts, recommended texts and references in particular are likely to change. Students will be provided with a subject outline once they enrol in the subject.
Subject handbook information prior to 2024 is available in the Archives.
Credit points: 6 cp
Result type: Grade and marks
Requisite(s): ( 70327 Introduction to Property and Commercial Law OR (70107c Principles of Company Law AND (94 credit points of completed study in spk(s): C04236 Juris Doctor OR 142 credit points of completed study in spk(s): C04250 Juris Doctor Master of Business Administration OR 94 credit points of completed study in spk(s): C04363 Juris Doctor Master of Intellectual Property OR 94 credit points of completed study in spk(s): C04364 Juris Doctor Graduate Certificate Trade Mark Law and Practice) AND 70106c Principles of Public International Law) OR (94 credit points of completed study in spk(s): C04320 Juris Doctor Graduate Certificate Professional Legal Practice AND 70106 Principles of Public International Law))
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
These requisites may not apply to students in certain courses.
There are course requisites for this subject. See access conditions.
Anti-requisite(s): 77889 Trade Marks Law AND 77890 Trade Marks Practice AND 77891 Patent Systems AND 77898 Patent Law AND 78025 Intellectual Property: Law and Policy
Description
Intellectual property law deals with intangible, creative, inventive and informational assets. This subject examines two areas of this law: trade marks, including the related areas of passing off and the Australian Consumer Law (ACL); and patents. In this subject students develop an understanding of the doctrinal law of trade marks, passing off, the ACL, geographical indications of origin, and patents in terms of the relevant statutory frameworks and their application in the case law. Students also learn about litigation processes and remedies.
Students develop legal knowledge and analytical skills through problem-solving activities that mirror the legal and factual issues that arise in legal practice. These activities provide opportunities for students to develop commercial skills and become solution-focused legal practitioners. The subject further fosters students' skills of critical analysis and oral communication through class discussion of different theoretical, jurisprudential and policy issues underlying areas of law, using readings of works by leading scholars in the field. Students also undertake research to critically evaluate laws, practices and policies. The subject combines a practical with a theoretical approach, enriching students' understanding of the complex public and private interests at play, and preparing them for a career in legal practice or general commerce.
Subject learning objectives (SLOs)
Upon successful completion of this subject students should be able to:
| 1. | Identify and apply legislation and case law relating to trade marks, passing off, the ACL, geographical indications and patents to resolve problem-based scenarios. |
|---|---|
| 2. | Critically analyse and evaluate the legal framework pertaining to the regulation of different types of intellectual property in Australia. |
| 3. | Construct and articulate logical, reasoned, persuasive and justifiable legal and scholarly arguments. |
| 4. | Identify and locate research material relevant to contemporary policy debates and creatively and analytically evaluate the factual, legal and theoretical issues which arise. |
| 5. | Think critically and strategically in relation to commercial disputes and adopt a solution-focused approach to legal problems. |
Course intended learning outcomes (CILOs)
This subject also contributes specifically to the development of the following graduate attributes which reflect the course intended learning outcomes:
- Legal Knowledge
A coherent understanding of fundamental areas of legal knowledge including:
a. The Australian colonial and post-colonial legal system, international and comparative contexts, theoretical and technical knowledge;
b. The broader contexts within which legal issues arise and the law operates including cultural awareness, social justice and policy;
c. The impact of Anglo-Australian laws on Indigenous peoples, including their historical origins in the process of colonisation and ongoing impact; and
d. The principles and values of justice and ethical practices in lawyers' roles. (LAW.1.1) - Critical Analysis and Evaluation
A capacity to think critically, strategically and creatively, including the ability to:
a. Identify and articulate legal issues in context, including the skill of critical reading and writing;
b. Apply reasoning and research to generate appropriate responses;
c. Engage in critical analysis and make a reasoned choice amongst alternatives; and
d. Think creatively in approaching legal issues and generating appropriate responses. (LAW.3.1) - Research skills
Well-developed cognitive and practical skills necessary to identify, research, evaluate and synthesise relevant factual, legal and policy issues. (LAW.4.1) - Communication
Effective and appropriate communication skills including:
a. Highly effective use of the English language to convey legal ideas and views to different and diverse audiences and environments;
b. An ability to communicate to inform, analyse, report and persuade;
c. An ability to strategically select an appropriate medium and message;
d. An ability to assess how messages are received and alter communication strategies accordingly; and
e. An ability to be responsive and adaptive to the perspectives of collaborators, clients, counter parties and others. (LAW.5.1)
Teaching and learning strategies
Strategy 1: Student preparation for class activities
Preparation and reflection outside the classroom is central to the learning in this subject, which relies on students having familiarised themselves with the law and relevant critical material prior to each class. Each week key resources, including recorded lectures, text book reading, cases, chapter/articles and/or short videos or podcasts, will be set for students to engage with before class. Quizzes and short answer questions will be set to assist students to engage actively with the material and focus attention on key issues. Relevant details will be found on the Canvas subject site. Students will use the Discussion Board to ask questions or share ideas prior to the class. In class, students will engage in collaborative discussion and evaluation of the preparatory materials, which will assist them in developing new perspectives, testing their ideas and understanding, and identifying areas for clarification. Students will have the opportunity to ask questions of their peers and of the teacher to assist them in consolidating their own learning.
Strategy 2: Learning through class discussion, argument construction and problem solving
The ability to solve problems and construct arguments are essential skills for a legal adviser. They involve interpreting and analysing legislation and cases, and applying the legislation and principles developed through the case law to novel and difficult factual situations. All students will participate in problem-solving exercises and debates throughout the session, both individually and in groups. Each week students will engage in class and group discussion and oral presentations on the issues and problems that arise in the readings, are set as debate topics and provided as factual scenarios.
This allows students to improve their skills of oral communication as well as their ability to construct reasoned legal arguments and offer commercially-viable solutions to the problems of hypothetical clients. This mirrors the experience of working in a professional legal team, where both individual communication skills and teamwork are essential.
Strategy 3: Engaging with lectures and guest presentations
The teacher and guest speakers will provide perspectives on the recommended readings and clarification of the law. The ability to listen and think at the same time is a crucial skill for a lawyer or legal adviser, who will often need to master new information delivered orally and provide an intelligent response immediately. Through lectures, students will enhance their ability to concentrate for extended periods, to synthesise ideas with effective note-taking and to listen critically and reflexively. Students also engage in the lecture by answering questions in Canvas and formulating questions to ask during class. Class discussion activities in the tutorial will extend the ideas of the lecture in new directions or in greater depth. It is therefore important to actively participate and engage with the lecture material to clarify understandings and challenge ideas.
Strategy 4 Applying research skills
Students undertake independent research relevant to class discussion and assessment tasks. Class discussion will be based on a list of readings, which students will be required to locate using the UTS Library and databases. The class discussions and problem question will require students to identify relevant case law and secondary material on their own. Being able to use the library and legal databases to find relevant material is a key skill for a lawyer. Critical reading and analysis of judicial and scholarly material are also crucial skills in law. The class discussions will allow students to gauge how successful they have been in their critical reading, by testing their knowledge and learning from others. In this way, students will develop and refine skills in identifying and synthesising relevant material and deploy it to make reasoned, logical, justifiable and persuasive written and oral arguments. They will apply these skills in the written assessment tasks and receive further feedback (see below).
Strategy 5 Feedback
Detailed guidance as to the assessment criteria and the provision of timely feedback are an important part of the learning process. Students will carry out a simple research task in Week 0. This task involves finding an article in the media (whether mass media or social media) which raises an issue of trade mark, passing off or patent law. Students will upload a brief report to Canvas in Week 1 which explains their choice, including what the article is about and why they selected it. The objective of the task is to encourage students to start thinking about the ways in which they interact with intellectual property law every day and its impact in the broader community.
Ongoing formative feedback on oral communication skills is provided during class discussion to individuals and groups throughout the teaching session. Formative feedback on problem-solving skills will be provided through class discussion. Before the Problem Question Assessment tasks are due, students will be involved in preparing several short problem questions and other practical exercises for discussion in class. Oral feedback will be provided by the teacher, and students will also gain guidance from listening to the approaches of their peers, which can then be put into practice in the Problem Question Assessment tasks. Formative feedback on research and critical analysis skills is provided in-class during discussions and by formal written feedback on written answers to discussion questions.
Subject Delivery:
The subject is delivered in weekly 2 hour seminars, with around 1 hour of lecture material uploaded on Canvas to be listened to prior to each seminar.
Content (topics)
- Trade marks: History, Background, Registration; What is a sign?
- Trade marks: Substantive requirements/grounds of opposition and rejection Part I
- Trade marks: Substantive requirements/grounds of opposition and rejection Part II
- Trade marks: Infringement and defences; Loss of rights
- Trade marks: Litigation and remedies; Special marks: Geographical Indications, collective marks, domain names
- Passing off and Australian Consumer Law: The tort of passing off; Section 18 of the Australian Consumer Law
- Patents: History; International framework; Registration; Litigation
- Patents: Patentable subject matter; Validity
- Patents: Claiming and Disclosure; Infringement
- Patents: Ownership
- Patents
Assessment
Assessment task 1: Legal problem Assignment - Patents
| Objective(s): | This task addresses the following subject learning objectives: 1, 2, 3, 4 and 5 This task contributes specifically to the development of the following graduate attributes: LAW.1.1 and LAW.5.1 |
|---|---|
| Weight: | 35% |
| Length: | 1500 words |
| Criteria: |
|
Assessment task 2: Legal problem Assignment - Trademarks
| Objective(s): | This task addresses the following subject learning objectives: 1, 2, 3, 4 and 5 This task contributes specifically to the development of the following graduate attributes: LAW.1.1 and LAW.5.1 |
|---|---|
| Weight: | 40% |
| Length: | 1999 words |
| Criteria: |
|
Assessment task 3: Class Preparation, Participation, and Critical Reflection
| Objective(s): | This task addresses the following subject learning objectives: 2, 3 and 4 This task contributes specifically to the development of the following graduate attributes: LAW.1.1, LAW.3.1, LAW.4.1 and LAW.5.1 |
|---|---|
| Weight: | 25% |
| Length: | Week 1 Activity 300-400 words Written Response 500-600 words |
| Criteria: |
|
Minimum requirements
Pursuant to cl3.8 of the UTS Student Rules there is a requirement in this subject to attend and engage with at least 80% of the timetabled classes. If a student does not attend at least 80% of the classes then the student may be refused the opportunity to submit Assessment Task 3. Logging into an online (eg Zoom) class will not be considered attendance if, when called upon, it is discovered that the student has not been paying attention to the class. Logging into an online session of itself will not be considered as satisfying the requirement of attendance. If a student is unable to attend at least 80% of classes in this subject the student should apply for Special Consideration.
Required texts
K Bowrey, M Handler, D Nichol and K Weatherall, Australian Intellectual Property Law: Commentary, Law and Practice (OUP, 3rd ed, 2021)
Recommended texts
A Stewart, W. van Caenegem, J. Bannister, A. Liberman and C. Lawson 'Intellectual Property in Australia' (Lexis Nexis, 6th Ed, 2018)
R. Reynolds, N. Stoianoff, A Adrian and A. Roy, Intellectual Property: Text and Essential Cases (Federation Press, 5th ed, 2015)
M. Davison, A. Monotti, L. Wiseman, Australian Intellectual Property Law (CUP, 4th ed, 2020) (available online through library)
S Ricketson, M Richardson and M Davison, Intellectual Property: Cases, Materials and Commentary (Lexis Nexis, 6th ed, 2019)
A Fitzgerald, D Eliades and R Olwan, Intellectual Property: Principles and Practice (Lawbook, 2022)
R Burrell and M Handler, Australian Trade Mark Law (OUP, 2nd ed 2016)
Other resources
Books
K. Bowrey, M. Handler and D. Nicol, Emerging Challenges in Intellectual Property (OUP, 2011)
C Bodkin, Patent Law in Australia (Thomson Reuters, 2014)
Looseleaf/Online services
Dwyer, James, Patents, trade marks and related rights (LexisNexis AU)
Websites:
IP Australia: http://www.ipaustralia.gov.au/
Advisory Council on Intellectual Property: http://www.acip.gov.au/
World Intellectual Property Organissation: http://www.wipo.int/portal/index.html.en
Intellectual Property Research Institute of Australia: http://www.ipria.org/