Intellectual Property 101

When running a business, it is important to distinguish whether you can register a trademark, or a patent or even if you already own copyright, all of which can bring value to your business.

Trademarks   

Trademarks are a form of Intellectual Property that allows you to distinguish the goods or services of your business from those of other businesses. It gives you exclusive rights to commercially use, license or sell the trade mark. This means that no one else in Australia can commercially use your trade mark within the class of goods and services its registered under.

IP Australia is the government body that regulates various forms of Intellectual Property in Australia.

Trademarks vs. Copyright

Copyright and trademark are two different things; governed by two separate departments and two separate laws.
Trademarks require official registration in order to claim ownership and protection. Without official registration you may claim something is your ‘trademark’, but, you are not provided with legally enforceable rights to that ‘trademark’ unless you go through the official process.

Copyright is automatic so you do not need to register. If you are the original creator/author, then you are entitled to display a copyright notice, and, you are provided the right to communicate your work to the public, promote it for sale and make alterations or adaptations to that work. If you find someone else is copying your work you may be entitled to take infringement action.

For works created since January 2005, copyright generally lasts for the life time of the creator or author + 70 years. Where the duration is dependent on the year of publication, copyright will last for 70 years after it is first published

Trademark Process

As IP agents, Company123 can guide clients through the application process, which involves the following steps:
 

Step 1: Conduct an analysis on the likelihood of success for your trademark

This is an optional step but is strongly advised to allow for clients to be well-informed before proceeding to application which can be costly.
This process can involves:

 Trade Mark Search Report, prepared by our trade mark specialists

•    A Trade Mark Search Report will outline the likely outcome of your application, highlighting any potential difficulties, problems or potential conflicts.
•    The search report will also provide advice in regards to appropriate classes, if the text, phrase or logo needs to be changed as all as well as some general trade mark information.
•    The search report is a great starting point if you are unsure about Trade Marks, as this allows you to see how likely your mark will be registered without paying the full fee.
•    Search reports are generally delivered with 5 business days and if you are happy with the outcome, you can proceed to the application.

with the option to add an:

 Expedited Analysis Report, coordinated by Company123 with IP Australia which allows for both speedy analysis results and a quicker application process afterwards as well. You can read about this system on the IP Australia website.

For further clarification on how Expedition works feel free to call our specialists at 03 9832 0660.
 

Step 2: Lodging an application

Before submitting an application, there are some simple questions to answer first (when conducting an analysis prior to application, these questions are answered as part of the analysis).
First, what type of trademark are you applying for?
For example, a text or a logo? Each has to be a separate application.  These are the most common types, but there are various specialised and niche types of trademarks, which can be found on the IP Australia website.

Next, what class/classes your trademark should be registered for?

There are 45 different classes, encompassing a wide range of goods and services.

To help you decide what goods or services to list think about the exact nature of your business and ask yourself the following:

    Where do you derive your business income?
    What is the nature of your business?
    What are you known for by your customers/clients?
    What products or services does your business provide?

IP Australia provides a Trade Mark Assist service that can help further determine what classes are best for your trademark.

To lodge an application through Company123, this form has to be filled out.

Once payment is made, Company 123 as IP agents proceed to lodge the same day, and the Notice of Filing is given by IP Australia within 1 business day.
 

Step 3: Examination

Next, the proposed trademark is taken under examination, which ordinarily takes 4-6 months.
With Expedition, this can be cut down to 1-2 months. (important to note that although you will receive early acceptance, for official registration every trademark has to wait at least 7 months)
 

Step 4: Acceptance/Adverse Report

If successful, the trademark will be issued a Letter of Acceptance, and will proceed to Step 5.
If unsuccessful, IP Australia will issue an Adverse Report detailing the issue.
From there, there are often options to overcome the objection.
Sometimes this involves amending the application by limiting the scope, sometimes providing evidence of Prior Use.

Further information can be found here.
 

Step 5: Advertisement to the Public.

During this 2 month period, it is advertised for opposition purposes.
If there is no opposition (which is common), the application will proceed to Step 6.
 

Step 6: Registration

When a trademark is registered, you will receive a Certificate of Registration and the trademark is valid for 10 years, after which it must be renewed.

Patents

Patents grant exclusive rights to exploit inventions for a period of time. Novel processes and/or compositions created by a company may rise to the level of patentable inventions that can be registered with the USPTO or may constitute trade secrets of the company.

A patent is a legally enforceable right for a device, substance, method or process. For your application to be successful, your invention must be new, useful and inventive or innovative.

When granted, a patent will give you exclusive commercial rights to your invention (a monopoly).

Benefits of having a patent

The protection provided by the Australian patent system contributes to the success of new inventions and the millions of dollars in earnings they generate.

A patent will:

    give you the right to stop others from manufacturing, using and/or selling your invention in Australia without your permission
    let you license someone else to manufacture your invention on agreed terms or take legal action against people who are using your invention without your permission
    encourage Australians to continue their research, to develop new and innovative products, exploit new technology and promotes the transfer of technology to Australia
    give our trading partners the incentive to provide similar rights and thereby protect our exports in markets overseas.

Types of Patents

The type of patent you hold will determine the duration of your protection.
•    A standard patent lasts for up to 20 years.
•    An innovation patent only lasts for up to eight years. (The innovation patent is being phased out, learn more).
•    Pharmaceutical patents can last up to 25 years.

Who can apply for a patent?

A patent can be owned by:
•    the inventor(s)
•    the person who has legally obtained rights to the invention from the inventor(s) or an intermediary
•    a company, organisation or other employer of someone who made the invention in the course of their normal duties.

You must provide an address for legal service and this needs to be in Australia or New Zealand. Your address for correspondence can be anywhere in the world.
A firm or partnership is unable to obtain a patent. The partners in the firm or partnership can, however, obtain a patent jointly in their own names.

What if you do not patent your invention?

Having considered all the issues, you may decide that patenting is not the best option for your particular circumstances. You may prefer to keep your invention as a trade secret.

When making this decision, you should assess the risk of someone discovering your invention through industrial espionage or, if your invention is a product, by reverse engineering.

You also need to consider the consequences of someone else independently developing the same invention.

Another alternative is to openly use and publish details about your invention. Publicly disclosing an invention will prevent someone else obtaining a patent for it. However while no one would have a commercial monopoly on your invention, your competitors would be free to use it for their own benefit.

The Process of Patents

All Australian patent applications must be filed with IP Australia.
It is also recommended to engage an attorney specialising in patents.
For more on the process, see the IP Australia website.

Designs Rights

A design right is a type of intellectual property (IP) to protect designs. It is registered under the Designs Act 2003. Design registration aims to protect designs that have an industrial or commercial use. A registered design gives you, the owner, exclusive rights to commercially use, licence or sell it.

Australian designs are protected under the Designs Act 2003 which came into force on 17 June 2004. The new Act was introduced to update existing legislation that dated back to 1906. Under the 1906 Act, all designs were examined and registration only occurred following examination.

The current legislation, Designs Act 2003, assists in the protection of the overall appearance of a product resulting from one or more visual features of the product and takes into account the perspective of the informed user.

Today, approximately 7000 new products are protected by design registrations each year in Australia. These registrations vary from new dress designs through to mobile phones and cars and a range of other objects in between.

What designs cannot be registered?

Some designs can not be legally registered. These include designs for medals, Australian currency and scandalous designs. Integrated circuit layouts are automatically protected by a modified version of copyright.

Protection for artwork is automatically protected by copyright. You do need design protection if your artwork is applied to a product, which gives that product a unique look.

Different Types of Automatic protection:

Copyright:

Protects:  Drawings, art, literature, music, film, broadcasts, computer programs
Meaning: The owner's original expression of ideas is protected, but not the ideas themselves
Example: Games of Thrones TV series

Trade Secrets:

Protects: Any confidential information, including secret formulas, processes, and methods used in production
Meaning: These types of IP rights give creators certain rights and privileges depending on the type of IP protection
Example: Coca-Cola has used trade secrets to keep its formula from becoming public for decades

Circuit layouts:

Protects:  Layout designs or plans of integrated circuits used in computer-generated designs
Meaning: Similar to copyright, the owner’s original layout design is protected, but they have a unique form of protection
Example: Computer chips or semi-conductor chip designs in pacemakers and PCs

For more details on types of automatic protections, please read further:

Copyright

Copyrights protect original creative expressions or works of authorship. The moment an idea or creative concept is documented on paper or electronically it is automatically protected by copyright in Australia.

Copyright protects the original expression of ideas, but not the ideas themselves.

Common works protected by copyright include books, films, music, sound recordings, newspapers, magazines and artwork.

It also protects originally created typographical arrangements, databases, media broadcasts, computer programs and compositions of other people's work such as academic journals or CD compilations.

Copyright protection is provided under the Copyright Act 1968 and gives you exclusive rights to license others in regard to copying your work, performing it in public, broadcasting it, publishing it and making an adaptation of the work.

Copyright is managed by the Department of Communications and the Arts, rather than IP Australia.

Trade secrets

Trade secrets are commercial information strictly guarded in secrecy having economic value to a business.

A trade secret is different from a trade mark. IP Australia does not ‘register’ trade secrets.

A trade secret is proprietary knowledge and it is up to you to protect that knowledge. One way you might keep this knowledge out of competitors’ hands is by ensuring employees or distributors sign confidentiality agreements.

Examples of trade secrets include:
•    the age-old recipe for Coca-Cola
•    the combination of herbs and spices used in Kentucky Fried Chicken.

The Coca-Cola company has used trade secrets to keep its formula from becoming public over a period of decades. It never applied for patent protection, so it was never required to disclose the formula.

Common law provides protection for infringement of trade secrets, breach of confidentiality agreements and passing off trade marks. Proving a breach of confidentiality under common law can be complex and is potentially more costly than defending registered rights.

Limitations of trade secrets

Secrecy does not stop anyone else from inventing the same product or process independently and exploiting it commercially. It does not give you exclusive rights and you are vulnerable when employees with this knowledge leave your firm.

Trade secrets are difficult to maintain over a long time or when many people know the secret. When contractors and employees leave, you should ask them to provide written undertakings that they will not compete with your business after they leave, in addition to signing a confidentiality agreement. It is often much easier to prove competition than breach of confidentiality.

These undertakings are difficult to enforce and need to be prepared by your legal adviser. You need to be careful that the undertaking does not restrict the contractor's or employee's right to earn a living.

Circuit layouts

Circuit layouts are the layout designs or plans (topographies) of integrated circuits used in computer-generated equipment. They are sometimes referred to as computer chip or semi-conductor chip designs.

As with copyright, this is the responsibility of the Department of Communications and the Arts, not IP Australia.

Circuit layout rights automatically protect original layout designs for integrated circuits and computer chips. While these rights are based on copyright law principles, they are a separate and unique form of protection.

A circuit layout is a two-dimensional representation of the three-dimensional location of electronic components in an integrated circuit.

Circuit layouts are usually highly complex and the intellectual effort in creating them is considerable and may be of great value. An integrated circuit or chip made from a layout is vital in all kinds of electronic devices, from pacemakers to personal computers.

If you are the owner of a layout design, you are not required to register it to be granted rights. As the owner of an original circuit layout, you have the exclusive right to:
•    copy the layout in a material form
•    make integrated circuits from the layout
•    exploit it commercially in Australia.

Commercial exploitation may occur by importation, sale, hire or distribution of a layout or an integrated circuit made according to the layout.

The duration of protection from the first commercial exploitation, continue for 10 years. The first commercial exploitation must occur within 10 years of creation of the layout, or 10 years from when it was made. So the maximum possible protection period is 20 years from the year of making an eligible layout.