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 public health in relation to, inter alia, HIV. 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

Unit code	LAWS5179
Academic unit	Law
Credit points	6
Prohibitions ?	LAWS3479
Prerequisites ?	None
Corequisites ?	None
Assumed knowledge ?	None
Available to study abroad and exchange students	Yes

Teaching staff

Coordinator	Fady Aoun, fady.aoun@sydney.edu.au
Guest lecturer(s)	William Gummow, william.gummow@sydney.edu.au

Type	Description	Weight	Due	Length
Participation	Class Participation Class Participation	10%	Ongoing	n/a
Outcomes assessed:
Assignment	Research Essay Proposal (non-graded) Topic proposal for Research Essay	0%	Week 05 Due date: 24 Mar 2022 at 17:00 Closing date: 27 Mar 2022	600 words / 21 days
Outcomes assessed:
Assignment	Mid Semester Assessment - Research Essay Mid semester assessment - Research Essay	30%	Week 08 Due date: 14 Apr 2022 at 17:00 Closing date: 15 Apr 2022	3,000 words / 21 days
Outcomes assessed:
Assignment	Short Release Final Assessment Final Assignment	60%	Week 13 Due date: 23 May 2022 at 10:00 Closing date: 23 May 2022	3,000 words / 72 hours
Outcomes assessed:

Assessment summary

Class Participation (10%):

Students are expected to contribute to class debate and discussion as framed 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.

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.

Successful grants of Special Consideration may involve alternate assessment tasks, as appropriate.

Mid Semester Assessment – Research Essay (30%):

The 3,000 word research essay is due 14 April 5pm AEST and is non-redeemable. It must be submitted via the Canvas assignment dropbox.

Students who wish to submit a research essay have two options: (1) they may select a research question devised by the lecturer (details provided in class and posted on Canvas by 3 March 5pm) or (2) they can elect to write a research essay on a topic they devise. For either option, students must first prepare a detailed research proposal/scaffold. The proposal should at least contain the following elements:

A title of no more than 20 words which is sufficiently descriptive of the essay;
A clearly defined question which the essay will attempt to address;
An abstract of no more than 100 words summarising the argument of the essay;
A more detailed overview of the essay’s outline, argument and methodology of no more than 500 words; and
Bibliography: A list of cases, statutes and secondary materials you have consulted in the preparation of your proposal and which you will use in your essay.

Students may not submit an essay without prior approval of their research scaffolding/proposal along the lines set out above. Essay proposals should be submitted, by way of email to the lecturer, no later than 24 March 5pm AEST.

This assessment task assesses students’ ability to prepare a critically reasoned argument supported by relevant research material and depending on student essay choice, may enliven Learning Outcomes 1-7 inclusive.

Short-Release Final Assessment (60%):

The short-release assignment will be released at 10am on Friday, 20 May and due for submission at 10.00am AEST, Monday, 23 May). It is comprised of 2 or 3 questions involving a mix of problem question(s) and may contain some short answer/essay question(s) or other written work. The word limit is 3,000 words.

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.

Assessment requirement 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.

Please note that successful grants of Special Consideration may involve alternative assessment tasks as appropriate.

Assessment criteria

The University awards common result grades, set out in the Coursework Policy 2014 (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 sydney.edu.au/students/guide-to-grades

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:

Research Essay: For the research essay, the late submission of a piece of assessment, which has not been granted an extension, will attract a penalty of 10% of the total marks allocated to the piece of assessment per calendar day or part thereof. For example, if your assignment is due on Wednesday, at 5pm and you submit your paper at 5.10pm, you will be penalised 10%. Similarly, if you submit your paper on Wednesday at 11.59pm, you will be penalised 10%. However, if you submit your paper on Thursday at 12.01am, you will be penalised 20%. Short-Release Assignment: For the short-release 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 hour or part thereof. For example, if you submit your paper at 10.10am AEST on Monday, 23 May, you will be penalised 10%. Similarly, if you submit your paper at 11.01am AEST, you will be penalised 20%. Any late submission beyond 5.00pm AEST Monday, 23 May will not be marked.

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.

Weekly schedule

WK	Topic	Learning activity
Week 01	Introduction to & Justifications for IP; the International System; Trade Mark Theory	Seminar (2 hr)
Week 01	Passing Off I	Seminar (2 hr)
Week 02	Passing Off II	Seminar (2 hr)
Week 02	Introduction to the Registered Trade Marks System; Justifications; Processes	Seminar (2 hr)
Week 03	Absolute Grounds of Refusal I	Seminar (2 hr)
Week 03	Absolute Grounds of Refusal II	Seminar (2 hr)
Week 04	Relative Grounds of Refusal I	Seminar (2 hr)
Week 04	Relative Grounds of Refusal II	Seminar (2 hr)
Week 05	Trade Mark Infringement	Seminar (2 hr)
Week 05	Loss of Trade Mark Rights and Exploitation of Trade Marks	Seminar (2 hr)
Week 06	Trade Mark Revision and Problem Question Based Learning	Seminar (2 hr)
Week 06	Introduction to Patents: Registration Process and the Patent Specification	Seminar (2 hr)
Week 07	Patentable Subject Matter – General	Seminar (2 hr)
Week 07	Patentable Subject Matter – Special Topics	Seminar (2 hr)
Week 09	Patent Criteria – the s 18 Grounds I	Seminar (2 hr)
Week 09	Patent Criteria – the s 18 Grounds II	Seminar (2 hr)
Week 10	Patent Criteria – the Disclosure and Claiming Requirements; Patent Ownership	Seminar (2 hr)
Week 10	Patent Exploitation and Patent Strategy	Seminar (2 hr)
Week 11	Patent Infringement	Seminar (2 hr)
Week 11	Other Systems of Protection	Seminar (1 hr)
Week 12	Revision and past assessment review	Seminar (1 hr)

Attendance and class requirements

Attendance: All students are required to attend 70% of live classes (or as otherwise specified by the Unit Coordinator) to satisfy the pass requirements for each unit of study. Attendance requirements may be satisfied by in person and/or online attendance as per the mode of delivery of the unit. Failure to meet this requirement may result in a student being precluded from sitting the final assessment.

Word Count Penalty: A piece of assessment which exceeds the prescribed word limit will attract a penalty of 10% of the total marks allocated to the piece of assessment for every 100 words, or part thereof, over the limit. For example, if you are 3 words over the word limit you will be penalised 10%. If you are 101 words over the word limit, you will be penalised 20%. The total word count for essays and other written assessments will:

exclude: bibliography; footnote numbers; footnote citations; cover page and
include: body text; headings and sub-headings; quotations; anything other than numbers and citations in footnotes.

The prescribed word limit is strict. There is no 10% leeway or any other leniency applied to word limits.

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, and a link to the library website where this is set out comprehensively is available at https://libguides.library.usyd.edu.au/c.php?g=508212&p=3476376.

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 the structure of the Australian registered trade mark system, and the regulation of unregistered trade marks, their economic and social rationales, and the legal institutions which support them
LO2. Understand the structure of the Australian patent system, its economic and social rationales, and the legal institutions which support it and/or alternate systems for protecting inventions
LO3. Understand the nature of the international trade mark and patent systems and how they impact on Australian law
LO4. Understand and be able to apply the law relating to trade marks (including passing off) and patents in Australia
LO5. Analyse content-specific legal problems effectively and apply legal method to present appropriate legal advice clearly and succinctly both orally and in writing
LO6. 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 and attendant cases
LO7. Further develop skills of oral and written analysis and communication about IP legal issues

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.

In response to student feedback and the educational experience last year, changes made : (i) to the assessment regime by including a class participation component, and (ii) consolidating on last year's changes to essay submission process and (iii) in relation to the short release assessment.

Additional information

Resources - Sydney Law Students

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

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

Additional information

Additional information

Disclaimer

On this page

Useful links

Media

Student links

About us

Connect

Current students

LAWS5179: IP: Trade Marks and Patents

Semester 1, 2022 [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

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

Additional information

Additional information

Disclaimer

On this page

Useful links

Media

Student links

About us

Connect