MBIP at IPTA2023 Conference

Jeremy Moller and I were in Hobart, Tasmania in the last week of April 2023 for the annual Institute of Patent and Trade Mark Attorneys of Australia (IPTA) conference.  The Institute is a professional body for Australian patent and trade mark attorneys and represents about 95% of registered Australian patent attorneys.  Jeremy and I are both Fellows of the Institute.  This year was the 104th Annual General meeting of the Institute and there were approximately 130 attendees at the conference.  The conference was held in the Hotel Grand Chancellor on the waterfront in Hobart.  There are certainly many worse places to be than Hobart on a sunny day and fortunately most of the days we were there were clear and bright.

For those who haven’t had the pleasure of visiting this city, it is a lovely part of Australia. European settlement of Hobart dates back to 1804 and the Salamanca area of Hobart, which is on the downtown waterfront, has many quaint brick buildings and many very pleasant cafes, where a person can sit in the sun and chat with friends and colleagues.

1: View from the Hotel Grand Chancellor Hobart

I’ve been to most of the IPTA conferences over the last 12 years.  The business and educational sessions this year were up to their usual high standard. By that I mean that I found that the topics concerned the latest developments in Australian IP law, different perspectives on a topic were presented by different speakers and there was some robust (though always cordial!) discussion, which helps to keep a person even more alert than usual. 

The Wednesday 26th April 2023 sessions were entirely devoted to trade marks.  I particularly enjoyed Barrister Ben Fitzpatrick’s insightful and entertaining presentation The Matrix of the Metaverse and Trade Marks, in which Ben captivated the audience with his discussion of the emerging application of trade mark law to the use of brands in cyberspace.  A number of challenging questions were posed such as whether or not the use of “virtual” goods in cyberspace falls within the scope of a trade mark registration for corresponding real goods.  On the same day there was also an in-depth discussion on the principles for assessing inherent registrability of trademarks under section 41.  We were fortunate to receive the thoughts of Justice Julia Baird (Federal Circuit Court of Australia), Nicholas Butera (Davies Collision Cave), Prof. Michael Handler (Uni NSW) and Blake Knowles (IP Australia), and heard different views regarding assessing factual and inherent distinctiveness of trade marks in Australia.

On Thursday 27th April the sessions were less trade mark focussed and more concerned with developments in Australian and New Zealand patent law and IP law generally.  We received a presentation from Michael Schwager of IP Australia, which included data  showing  that IP right filings in Australia have largely returned to, or surpassed, their pre-pandemic figures.  Standard patents, trade mark and design filings were discussed.  I did notice that provisional patent application filings weren’t mentioned. I view provisional patent filing numbers as a barometer for local invention activity in Australia because unlike standard patent applications which are predominantly owned by foreign applicants, provisional patent applications are generally filed by Australians.  Provisional patent application filings have been decreasing in Australia for years and that is something which is concerning to me.  Hopefully there will be a detailed look at provisional patent filings and the reasons for the decline at next year’s conference.

Apart from the educational sessions the conference was also a great opportunity to meet up with old acquaintances.  Jeremy and I very much enjoyed catching up with our friend and former workmate, patent attorney Mark Smith.

2: Jeremy, Mark, Michael – IPTA 2023

Next year the 105th Annual General Meeting and conference of the Institute will be held in Canberra.

Michael Buck
written by Michael Buck, Principal