Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 26 MARCH 2014

The key to prolonging patent royalty streams

Corrs Chambers Westgarth
Corrs Chambers Westgarth
Contributor
Corrs Chambers Westgarth

Corrs Chambers Westgarth

Corrs Chambers Westgarth is Australia’s leading independent law firm. We provide exceptional legal...

View firm profile
Explore more from Corrs Chambers Westgarth

Policy makers should amend s 145 of the Patents Act to address its uncertain application and potential circumvention .

AustraliaIntellectual Property
Frances Wheelahan
Frances Wheelahan
Author LinkedIn connections

Australian policy makers should amend section 145 of the Patents Act to address the uncertain application of the provision and its potential circumvention in relation to patent pool licence agreements

A recent Federal Court ruling by Justice Flick has provided judicial guidance on whether a licence can be terminated when any one of the patents it covers expires. However, broader issues still need to be considered.

In the case of MPEG LA LLC v Regency Media [2014] FCA 180, Justice Flick ruled that all the Australian patents for the "inventions" it covered would need to expire before the MPEG licence agreement could be terminated under section 145 of the Patents Act. Under section 145, a contract relating to a patent licence can be terminated early by a licensor or licensee when all the patents by which the invention was protected cease to be in force (for example, where they expire).

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

Counterfeit Imports – Tougher Penalties At The Border

Australia strengthens its response to counterfeit goods importation through new legislation that creates strict liability offences and enables infringement notices at the border. The amendments aim to make counterfeit importing unprofitable by ensuring penalties and seized goods exceed potential profits. How will these changes impact intellectual property rights holders and importers operating in Australia?
AustraliaIntellectual Property
Pointon Partners
Pointon Partners
Article

Supporting ‘Human Artistry’: Wholly AI-Generated Recordings Disqualified From ARIA Charts In Australia

The Australian Recording Industry Association has amended its chart eligibility guidelines to exclude songs predominantly created by generative AI, sparking debate about the intersection of artificial intelligence and copyright law. This decision mirrors broader legal challenges facing courts and regulators worldwide as they grapple with determining when AI-generated or AI-assisted works deserve copyright protection and recognition.
AustraliaIntellectual Property
K&L Gates
K&L Gates
Article

How Can You Retain Intellectual Property When A Client Will Not Pay?

A service provider who has not assigned their intellectual property still owns it, regardless of what the invoice says. Under the Copyright Act 1968 (Cth), the creator owns copyright by default, and ownership moves only by written assignment. Paying a designer or developer does not transfer ownership on its own. That default gives service providers real leverage where a client refuses to pay. Retention and suspension clauses turn the default into a contractual right to withhold deliverables.
AustraliaIntellectual Property
LegalVision
LegalVision
Article

Protecting The AI Systems Competitors Can Actually Copy

Businesses building AI products on third-party models face a critical intellectual property challenge: determining what parts of their AI systems can actually be protected when competitors have access to the same underlying models. This analysis explores where protectable value sits in AI workflows, from data retrieval and validation processes to system integration and deployment architecture, and why patent strategy must focus on the commercially defensible elements rather than just the AI model itself.
AustraliaIntellectual Property
Spruson & Ferguson Lawyers
Spruson & Ferguson Lawyers
Article

Australia’s Privacy Act Reforms: Fundamental Changes Proposed In New Exposure Draft

Australia's Privacy Act reform has reached a critical milestone with the release of exposure draft legislation proposing fundamental changes to how organisations handle personal information. The reforms introduce a new 'fair and reasonable' test for data collection and use, a right of erasure for large digital platforms, strengthened consent standards, a statutory controller/processor framework, restrictions on trading personal data, and enhanced data breach obligations. These changes come at a time when em
AustraliaPrivacy
Corrs Chambers Westgarth
Corrs Chambers Westgarth
Article

Cross-border software payments and royalties: implications of final taxation ruling and practical compliance guideline Read More

The Australian Taxation Office has issued its final ruling on cross-border software payments, dramatically expanding what constitutes a royalty subject to withholding tax. With retroactive application to July 2021 and a broad interpretation of copyright law, multinational companies face significant compliance risks and potential exposure across software distribution, cloud services, and digital intermediation arrangements.
AustraliaTax
Corrs Chambers Westgarth
Corrs Chambers Westgarth
Article

EPBC Act Reforms: Consultation On Proposed Regulations To Support Final Tranche Of Reforms

Australia's Department of Climate Change, Energy, the Environment and Water has released consultation papers outlining the regulatory framework for the final phase of environmental protection reforms under the EPBC Act. With submissions closing on 13 October 2026 and implementation scheduled for 1 December 2026, these reforms will fundamentally reshape how projects are assessed and approved, introducing streamlined pathways...
AustraliaEnvironment
Corrs Chambers Westgarth
Corrs Chambers Westgarth
Article

APRA and ASIC's coordinated approach to frontier AI: implications for financial services entities Read More

APRA and ASIC have issued coordinated guidance on frontier AI risks, requiring financial services boards to demonstrate direct oversight of AI governance, cyber resilience and third-party dependencies. The regulators' expectations build on existing prudential standards and directors' duties, with enforcement signals indicating that proportionate action must be taken before incidents occur.
AustraliaStrategy
Corrs Chambers Westgarth
Corrs Chambers Westgarth
Article

Transparency In Automated Decision-Making: What The OAIC Guidance Means For Your Business

Australia's privacy regulator has issued final guidance on new transparency obligations for automated decision-making systems. From December 2026, organisations using computer programs—including AI, algorithms, and everyday software—to make or inform significant decisions about individuals must disclose these practices in their privacy policies. The guidance reveals a broader compliance burden than many expect, particularly for businesses using automated tools across recruitment, pricing, credit
AustraliaPrivacy
Corrs Chambers Westgarth
Corrs Chambers Westgarth
Article

Five Decisions That Will Define Australia’s AI Future

Prime Minister Albanese's speech on 15 July 2026 marked a decisive shift in Australia's approach to artificial intelligence, from voluntary guidance to mandatory national regulation. The announcement establishes Australian Standards for AI, copyright licensing requirements, a national planning framework for data centres, energy obligations, and workplace protections—all underpinned by the concept of sovereign AI.
AustraliaMedia, Telecoms, IT, Entertainment
Corrs Chambers Westgarth
Corrs Chambers Westgarth