All about patents, trade marks and
intellectual property (IP) in general
A patent is a temporary monopoly of up to 20 years that provides the patent owner the right to exclude others from making, selling, using or importing the invention covered in the patent. In return, the patent owner has the obligation to fully describe the invention to the public in a patent document.
Unlike copyright, patent rights are not automatic and must be applied for at the Patent Office in each country where protection is desired.
The maximum term of a standard patent is 20 years.
In Australia, an invention can also be protected in an innovation patent. The maximum term of an innovation patent is 8 years.
In Australia, there are two types of patents; a standard patent and an innovation patent. The inventiveness requirement for an innovation patent are significantly lower than for a standard patent. In exchange for the lower threshold of inventiveness, the innovation patent has a maximum term of only 8 years, instead of 20 years for a standard patent.
As such, an innovation patent is ideal to protect innovations that may be difficult to protect with a standard patent and that have a shorter shelf-life. In fact, the innovation patent system was introduced in Australia in 2001 to encourage small to medium enterprises (SMEs) to protect their innovations and thereby promote innovation throughout the industry.
There are two main requirements for an invention to be patentable:
Novelty
The most important requirement for a patentable invention is whether the invention is new. Novelty is assessed by checking whether the invention has been used or published before the filing date of your patent. This can include any published documents such as patent documents, scientific publications, presentations, but also verbal publications including discussions with potential business partners and VCs. It is therefore important to keep the invention confidential and to have confidentiality agreements in place before discussing the invention with anyone.
Some countries including Australia offer a “grace period” of 12 months. As such, under certain circumstances even if the invention has been published or used in the public space, this publication may be disregarded to obtain a granted a patent.
Inventiveness
The second requirement is whether the invention is obvious compared with previous technologies and inventions. This requirement is applied differently in each country and typically involves assessing whether a person skilled in the field of the invention would consider the invention as obvious.
Inventiveness is highly subjective and can be difficult to assess. We can advise you in this regard when we discuss your invention in more detail.
After your patent application has been filed with the Australian Patent Office, you can mark your product with “patent pending”. This means that an application for a patent has been filed, but has not been granted yet. After a patent is granted, you can mark your product with “patented” which is usually followed by the official patent number.
Adding a statement that you own intellectual property rights on your product is not compulsory in Australia, but it has legal and practical advantages. For example, potential competitors may be discouraged from copying your product or otherwise infringing your rights. From a legal perspective, by marking your product with “patent pending”, it will be difficult for an infringer to argue that it did not know about your IP rights (innocent infringement). This can become relevant in court proceedings when remedies for infringement are decided.
A trade mark is an element or sign that is used to distinguish your business or your products and services from a competitor. Common types of trade marks include business and product names, logos and slogans. Less common types of trade marks include sounds, scents, colours and shapes. For example, in Australia only one scent mark has ever been registered which was for a eucalyptus-scented golf T-shirt.
The registration of a trade mark provides the owner with the exclusive right to use, license and sell the mark for the goods and services for which it is registered.
It is important to understand that the registration of a business name is not the same as the registration of a trade mark.
The registration of a business name is compulsory and done through the Australia Securities and Investments Commission (ASIC). However, the business name registration does not give the owner any rights to stop others from using the same or similar business name. Even more so, you could register a business name under ASIC and still be at risk of infringing someone else’s trade mark.
Before choosing a name for your business or product, it is therefore important to do a search on the trade mark register. We are happy to assist you in this regard.
There are two ways to file trade mark applications overseas:
If you have filed an Australian trade mark application and you wish to maintain the original filing date of this application (also referred to as “priority date”), the International or overseas application needs to be filed within 6 months of the original filing date. In this way, your International or overseas applications gets “back-dated” to your original filing date in Australia.
If your business is selling or promoting goods or services to an overseas market, it is important that your trade mark – whether for your business name or for your goods and services – is protected. Failure to protect your trade mark in an overseas market, may have significant consequences. You may, for example, be excluded from using your own business name or may face the risk of infringing a registered trade mark.
Notably, even if a trade mark is a direct copy of your registered Australian trade mark, a third party can become the owner of the mark in another country, either by using the mark first in a first-to-use country or by filing an application first in a first to file country.
A prominent example for this is the “Burger King” trade mark. Have you ever wondered why Burger King is called “Hungry Jack’s” in Australia? This is because the trade mark “Burger King” was already taken by a small takeaway food shop in Adelaide, when Burger King Corporation was looking at expanding its business to Australia.
The Madrid Protocol is an International Treaty that allows trade mark owners to register a trade mark in any of the member countries by filing a single trade mark application and paying only one consolidated set of fees.
The Madrid Protocol has currently 116 member countries, including the United States, the European Union, New Zealand and most of the ASEAN countries. Only two ASEAN countries have currently not joined, Malaysia and Myanmar. A list of current member countries can be found here.
Protecting your trade mark overseas using the Madrid Protocol is typically simpler and cheaper than directly applying to each country. This is particularly true if you wish to protect your trade mark in more than 2 countries. Another benefit of the Madrid Protocol is that you can add further member countries at a later date.
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