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Guide for Australian Businesses and Inventors looking to protect their great ideas
Alder IP
www.alderip.com.au 25 July 2012
Contents
Protecting Great Ideas ............................................................................................................................ 2 What is Intellectual Property? ............................................................................................................ 2 Types of IP ............................................................................................................................................... 3 Patents ................................................................................................................................................ 3 Protecting applications and concepts ............................................................................................. 3 Trade Secrets and Confidentiality ....................................................................................................... 6 Trade Marks ........................................................................................................................................ 7 Protecting Branding and Reputation .............................................................................................. 7 Registered Designs .............................................................................................................................. 9 Protecting the look of your product ............................................................................................... 9 Domain Names.................................................................................................................................. 10 Protecting online reputation......................................................................................................... 10 Copyright ........................................................................................................................................... 11 Circuit Layout Rights ......................................................................................................................... 12 Plant Breeders Rights ........................................................................................................................ 12 How to Protect Great Ideas .................................................................................................................. 13 Why Own and Register IP?................................................................................................................ 13 IP Commercialisation Strategies ....................................................................................................... 14 Further Information .............................................................................................................................. 15
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A granted Australian patent gives the owner the exclusive right to stop others from commercialising your invention in Australia. It effectively allows the owner to take legal action for unauthorised use of the invention in relation to manufacturing, importing or selling. A patent may also be used by your company to license (or authorise) someone else to commercialise your invention on terms that you have agreed with the other person. A patent is a legally enforceable right and forms part of effective asset strategies of most successful companies. Patent protection is not automatic and requires registration process with the Patent Office to be enforceable. To begin the patenting process, an application must be filed with the Australian Patent Office. If a complete patent application has been filed, an Examiner at the Patent Office will evaluate whether your invention meets to legal requirements for a patent to be granted. Specifically, the Examiner reviews your invention to confirm that it is new (novel) and inventive (not obvious) in light of information available at the time of filing. The Patent Office also reviews whether the subject of the patent application is suitable for registration as a patent. Patents may generally cover subject matter relating to any device, substance, method or process which is new, inventive and useful. Artistic creations, mathematical models, plans, schemes or other purely mental processes cannot generally be patented. However, a skilled patent attorney may be able to assist you in converting purely mental processes into a patentable device or system. It is important that you do not publicly disclose or sell your invention before you file a patent application (this may invalidate any subsequent patent as it will no longer be regarded as new). If a third party can show that you have used (for commercial interests), sold or disclosed your invention prior to filing the application, it may further invalidate your patent or patent application. You may talk to employees, business partners, advisors, patent attorneys about your invention but only on a confidential basis. Written confidentiality agreements are advisable and Alder IP can provide these agreements on request.
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Expires within 12 months and next stage application must be filed Preferably should be examined by Patent Office
Published 18 months from Provisional filing date Examined about 20 months Next Stage - National Phase at 30-31 months
enter national phase in each country examined under each country laws Granted and Registered in Country
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The brand identity of your goods and services is probably one of the most important aspects of your business. Its worth protecting your investment in your business and the goodwill of the business by protecting trade marks. Trade marks are used to brand products and services serve as a badge of origin for these items. Trade marks may include: distinctive group of letters, numbers, a word, phrase, sound, scent, shape, logo picture, or any combination of these. Trade marks generally function as a sign that distinguishes your goods and services from that of other traders. This means you cant register a trade mark that directly describes your goods and services. You also can not register a word or phrase that is commonly used by other traders in the same field to describe their goods and services. It is difficult to register a geographic name or surname, except where someone has extensively used the trade mark for a considerable period of time and consumers generally recognise the distinctiveness of the trade mark. In Australia, trade marks may be unregistered or registered. Unregistered trade marks are protected under the common law and the Competition and Consumer Act (Cth 2010). The protection offered by unregistered trade mark is relatively weak and generally difficult to enforce. Whilst, you dont have to register your trade mark in order to use it. Registration is advisable, because it can be an expensive and time consuming exercise to take legal action under the common law. Please note that trade mark registration is different to the registration of company or business names. The registration of company name or business name does not give you the right to use the name nor does it give you rights to exclude others from using the name. You may register trade marks in Australia with the Australian Trade Mark Office (IP Australia). The Trade Marks Office examines new trade mark applications to check whether they met the legislative requirements for registration. In Australia, registered trade marks have an indefinite maximum lifespan and must be renewed every 10 years. Also the trade mark must be used in Australia within a specified time frame to avoid the trade mark being vulnerable to removal from the register for non-use. The following diagram demonstrates the typically application system for a trade mark application in Australia. Please note that other procedures are also available and you should discuss your specific business requirements with an appropriately trained legal advisor.
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Examination
The Trade Marks Office usually examines the TM within 18 weeks of filing They look for deceptively similar existing TMs Examine the distinctiveness of the TM
Registration
TM is registered - Owner can take legal action against infringers TM needs to be renewed every 10 years
Its also highly recommended that you ask your legal advisor to conduct a search of the trade mark register before you start using a particular trade mark, business or company name to avoid infringement of other traders rights. You can access the Australian Trade Mark Register online at http://www.ipaustralia.gov.au Please note that trade mark protection in Australia does not grant rights in overseas jurisdictions. You should consider whether you would like to protect your trade mark application in overseas jurisdictions. Trade mark owners may file further trade mark applications in separate countries or file an international type application called a Madrid Protocol Application. Overseas applications filed within 6 months of the filing date of the original Australian Trade Mark Application may be backdated to the original Australian filing date (Priority Date) which will extend your overseas rights. A Madrid Protocol Application is a one single international application that gives your business rights whichever jurisdictions you decide. The prosecution costs and filing fees are generally minimised because the application is centrally managed by your Australian IP professional or yourself. Please note that you are required to have a pending or granted Australian Trade Mark to file a Madrid Protocol Application. The Madrid Protocol Application automatically lapses if the corresponding Australian Trade Mark lapses or expires.
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A registered design may be used to protect the look or visual appearance of your businesss products. A registered design, which has been examined and certified, gives you a legally enforceable right to prevent others from copying the visual appearance of your businesss products. Registered design protection does not protect functional elements or the way the product works. If your product needs to protection for the functional aspects you are required to use patent law. Also, it is important to note that copyright to a product ceases when the product has been commercially manufactured. Registered Design protection is aimed to protect items that have aesthetic features that consumers like whilst being able to be manufactured on a commercial scale rather than bespoke or one-off products. To be registered as a registered design, your design must be new and distinctiveness. New means that the design has not been publicly used in Australia and has not been published anywhere in the world. distinctiveness of a design refers to the comparison of the present design with other existing similar existing designs in the public domain. The registered design process is intended to protect designs which have been industrially applied rather than artistic works (which automatically obtain copyright). Obtaining a registered design is a much simpler and cheaper process than obtaining patent protection, but the protection only covers the exact representation that is filed. In Australia, registered design applications generally include a set of technical line drawings with generally little or no written description. An IP professional or legal advisor will be able to assist you in filing a registered design application.
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Domain names are the unique identifiers used on the Internet to designate the Internet Protocol addresses of individual computers connected to the Internet. Domain names make it easier for people to remember website or computer addresses without having to remember a long series of numbers. Domain names are a valuable commodity and readily tradeable. They are generally registered on a first come first served basis. The registrars of domain name do not always check or verify the validity of the domain name applications. Sometimes, applicants apply for domain names that they are not entitled to own and this is called cybersquatting. Please note that a domain name registration does not give you the right to use or stop others from using the same or similar name in the course of business. It is highly recommended that domain name applicants also apply for a trade mark (where possible and appropriate). In Australia, the management and oversight of the .au suffix domain names (including .com.au) is conducted by .au Domain Administration (auDA). auDA drafts policies relating to .au domain names. There are numerous other similar organisations around the world that manage the other domain names suffixes. Please note that each one of these administration bodies have slightly different rules and policies governing domain names. You need to review these rules before applying for a domain name. Under current auDA policy, the registrant of an .au domain name must meet certain eligibility criteria. These criteria may include: a demonstrated presence in Australia, the domain name applied for needs to be derived from their own name, or trade mark. Further information about eligibility criteria can be obtained from the auDA website. It is also important to note that domain names are generally subject to arbitration rules and you agree to these rules when you apply for a domain name. These rules allow for people or companies to file a complaint regarding ownership disputes of domain names. In Australia, an complaint can be made to a Domain Name Resolution Provider (such as LEADR) to reclaim an illegally obtained or cybersquatted domain name in the name of a third party. This complaint process is relatively cheap (application fee of $1000-2000) and quick (result usually within 1-2 months). Alder IP can advise your business or company in relation to domain names and domain name disputes. Please contact us for more information.
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IP Commercialisation Strategies
There are numerous commercialisation strategies for IP. The main factors that should be considered are: a) What type of protection is best suited to your business? an experienced IP professional can help you answer this question and provided you with a strategy that is the best fit for your business; b) Budgeting for IP costs IP registration can be expensive and your business should budget for future IP costs in your business plans. Your IP strategy needs to be reconciled against budgeted expenditure for your business; c) What countries should your business protect IP? This is a complex question and needs to be evaluated in light of your business model and your businesss industry. Alder IP usually recommends looking at the factors that affect your business in different countries and making a comparison of the cost and benefits of registering in each individual country. These factors may include: where are suppliers located; where are customers located; where are competitors located; and how enforceable is the IP right in each jurisdiction. d) Timing one of the critical factors to IP management and strategy is timing. Applications should be filed as soon as possible to reduce the likelihood of competing technologies being invented and filing by your competitors. Also timing of applications can be used to your advantage by spreading the IP costs over a longer period to reduce the impact on your businesss cash flow. This effect can make paying for the costs of IP registration easier as your business is likely to be selling more products or services in the future and real cost of cash for a start-up business is very high.
Alder IP commonly works with its clients to develop IP strategies that deliver significant advantages in terms maximising benefits and limiting costs. Please contact us to discuss how an IP strategy can assist your business.
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