Intellectual property at all times has a value! In order to protect that value, there are various methods which can allow for registration of certain types of intellectual property.
Working out a strategy for protection, maintenance, authorisation and renewal of your Intellectual Property early on is a great way to avoid future potential actions which could damage your business (such as infringement proceedings).
Intellectual Property law deals broadly with the ownership, transfer, use and protection of an individual’s rights over its creations. Alongside Australian legislation and case law are international agreements (such as the Paris Convention, the Madrid Protocol, the TRIPS Agreement, the Patent Cooperation Treaty, and the Berne Convention) which work together to protect and enforce Intellectual Property rights for Australians within Australia and other jurisdictions.
To protect your intellectual property, you first need to identify what type of intellectual property you have and what forms of registration should be undertaken (especially for those which require application prior to publication).
Trade Mark
Trade marks are covered by the Trade Marks Act 1995 (Cth) and are best suited for protecting the branding of a business and/or product.
Trade marks are a sign used, or intended to be used, to distinguish one’s goods or services dealt with or provided in the course of trade. Trade mark registration provides protection for a period of 10 years and is the only form of intellectual property protection that may be protected indefinitely (if renewals are maintained and the mark is continuously used).
To successfully obtain trade mark protection, the proposed trade mark must satisfy several criteria, including that the trade mark:
- be distinctive and used (or intended to be used) to distinguish the applicant’s goods and/or services from others similar goods and/or services; and
- is not substantially identical or deceptively similar to registered trade marks on the register; or
- has been honestly and concurrently used with similar or identical trade marks without any consumers being misled by their goods and/or services; and
- is not successfully opposed for registration by another party.
Trade mark protection can be obtained at any time. However prudent individuals will apply for trade mark protection as soon as possible in order to gain protection by registration earlier, and avoid their trade mark application potentially being rejected later because it is substantially identical or deceptively similar to another trade mark registered earlier.
Trade mark protection also has greater advantages, such as the right to prosecute infringement of their trade mark – which unregistered trade marks do not hold such a right.
Design
Designs are covered by the Designs Act 2003 (Cth) and are best suited for protecting the aesthetic/visual features of a product.
Visual features in relation to products include the shape, configuration, pattern and ornamentation of a product which may (but isn’t required to) serve a functional purpose.
Design protection lasts for 5 years from the date of filing, and may be renewed to last up to 10 years from the filing date. Design registration must occur prior to publishing in order to gain protection.
To successfully obtain design protection, the proposed design must satisfy several criteria including:
- meeting the definition of a ‘design’;
- being distinctive – i.e. the design must be new and distinctive when compared with the prior art base; and
- that there is no previous industrial application.
A ‘product’ eligible for protection under the Designs Act is a thing that is manufactured or handmade, or may be a component part of a kit or complex product.
A design is considered:
- ‘new’ unless it is substantially identical to a design that forms part of the prior art base; and
- ‘distinctive’ unless it is deceptively similar in overall impression to a design in the prior art base.
Unlike patents, the threshold for newness/distinctiveness for designs is not ‘novelty’. A design can be adapted from something that is not itself novel (such as a design for a spoon handle made to represent Westminster Abbey), which is a valid and protectable design.
If a design has been published or exposed to the public prior to obtaining registration, it is not registrable under the Designs Act.
Copyright
Copyright is covered by the Copyright Act 1968 (Cth) and is a form of protection for original ‘works’ including literary, dramatic, musical and artistic works, as well as ‘other subject matter’ such as sound recordings, cinematographic films, television and sound broadcasts, and published editions of works.
Copyright protection exists the moment the work is created in a material / tangible form and is not a registrable concept within Australia.
Copyright protection prohibits all individuals, other than the copyright owner, from:
- in relation to ‘works’: reproducing, publishing, performing communicating the work to the public, or making an adaptation of a work; or
- in relation to other subject matter: making copies, causing the public to hear or view, or otherwise communicating to the public the copyright material.
Copyright protection for ‘works’ lasts for the life of the author plus an additional 70 years.
Copyright protection for ‘other subject matter’ lasts for:
- 70 years for sound recordings and films (from first publication);
- 50 years for television and sound broadcasts (from broadcast); and
- 25 years for published editions of works (from publication).
Patent
Patents are covered by the Patents Act 1990 (Cth) and are best suited for protecting new technological and physical inventions.
Patent registration protection lasts for up to 20 years from the date of registration for standard patents, and up to 25 years for pharmaceutical inventions. Continued protection requires ongoing annual renewal.
Patent registration must occur prior to publishing in order to gain protection. However, there is a 12 month grace period from when you publish your product to lodge an application for patent registration. Although the examiner may apply a discretionary view as to whether the patent application should proceed to registration based on the amount and reasons for publicising the product prior to obtaining patent registration.
To successfully obtain patent protection in Australia, the proposed invention must satisfy several criteria, including:
- being novel (the invention must be new compared to the prior art base);
- contain an inventive/innovative step (which is a contribution to the field which is non-obvious to a person skilled in the relevant area);
- be useful; and
- not have been secretly used prior to registration.
The ‘novelty’ requirement means that the invention must be new when compared to the prior art base. As any publicly available works make up the prior art base, this means that publishing the invention before applying for patent protection could jeopardise this requirement (with the exception of the grace period).
The ‘no secret use’ provision imposes a strict requirement that inventions also must not be sold or otherwise used for commercial benefit before the patent application, as this could make the invention no longer registrable under the Patents Act. Use for reasonable trial or experiment is not secret use within this section, nor is use during the course of confidential disclosure.
Early action to register your Intellectual Property can lead to less headaches and more favourable outcomes down the track, as well as more rights in your favour. So it is important to know your rights and take steps to protect them before it is too late.
If you would like more information or advice in relation to intellectual property law, contact Senior Associate of the Matthews Folbigg Intellectual Property Group, Hayley Hitch at hayleyh@matthewsfolbigg.com.au or a Principal of the Matthews Folbigg Intellectual Property Group, Simone Brew at simoneb@matthewsfolbigg.com.au.
