Intellectual Property Glossary
Confused by intellectual property jargon?
We’ve created this handy intellectual property glossary to provide definitions for some of the more complex intellectual property related terms.
We’ve created this handy intellectual property glossary to provide definitions for some of the more complex intellectual property related terms.
The assignee is an individual or corporate body to whom a right to intellectual property has been legally transferred from an assignor.
An assignee is an entity and / or individual that is the recipient of a patent transfer. An assignee will receive the transfer of these rights from an assignor, who is the current owner of the patent. This transfer may come as the result of the sale of intellectual property.
Company A (assignor) decides it wishes to sell its intellectual property to Company B. Company A legally transfers the right to its intellectual property to Company B, and as a result Company B becomes the assignee.
A legal transfer of intellectual property rights by the owner of an intellectual property right (assignor) to another entity and / or individual (assignee).
The concept of assignment simply covers the transfer of rights from one party to another. An assignment agreement must show an intention to transfer rights and include any necessary conditions that the parties should be expected to abide by.
Company A (assignor) decides it wishes to sell its intellectual property to Company B. As the assignor, Company A legally transfers the right to its intellectual property to Company B, and as a result Company B becomes the assignee.
The Australian Office Journal of Designs is a monthly publication that is published by IP Australia to notify the public about changes made to the design registered. The various what design applications have been filed at IP Australia, and of these, what design applications have been registered and/or certified.
The Australian Office Journal of Designs is published on a monthly basis and is available online at IP Australia. The Australian office general designs is intended to be a notification to the public of changes made to the register of designs. Changes made to the register designs can include:
AJOP is the official patent journal provided by IP Australia that reports on all major events and actions involved in the life cycle of an Australian Patent.
The Australian official journal of patents reports on the main stages in the progression of a patent application up to and when the patent becomes sealed. The journal therefore provides detailed information on patent filings, publication, acceptance, opposition, sealing and certification. The journal can be used to gain a weekly update on the status of pending patents in Australia.
A database that can be used to search for similar trade marks, by comparing prospective trade mark features with those of trade marks that already exist.
ATMOSS is a free online database provide by IP Australia that allows the user to engage in a comprehensive search of existing trade mark rights in Australia. ATMOSS can also be used to keep track of the progress of trade mark applications, and the status of trade marks that have been previously registered. ATMOSS is therefore a highly useful tool for those who are in the process of registering their trade mark.
If an individual or entity has an idea for trade markable material that they wish to legally identify as their own, they may use ATMOSS to see if their idea is already in existence. ATMOSS can therefore be used prior to applying for a trade mark and when formulating the original idea for a trade mark.
The initial stage of the patent application process that sets the priority date for disclosure of the inventions details.
The basic application is the first document filed in the patent application process, and as a result, it will set the priority date for disclosure of the invention details. Typically speaking the Basic Application criteria is satisfied with the submission of a Provisional Application to IP Australia. The basic application is therefore the first ever submission of an application in regards to a specific invention.
Company A submits a Provisional Application to IP Australia. This submission establishes the priority date for any disclosure of the invention details. As a result, the Provisional Application is classified as the IP rights ‘Basic Application’.
The Berne Convention for the Protection of Literary and Artistic Works was most recently amended on 28 September 1979 but dates back to 1886.
It’s primary purpose is to have one member state of the Convention treat copyright of works of other signatory members in exactly the same way as it does for its own nationals. The Berne Convention conveniently extends to registered designs per Article 2 (7) of the Convention which states: “(7) Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.” In this way, a registered design of one member state of the Convention is recognised by each other member state of the Convention. Conveniently, where an Australian applicant for a registered design or owner of a registered design wishes to extend the registered design into another member state, so long as it files the foreign design application within the other member state within 6 months, it can do so and claim the filing date of the Australian registered design.
A “biomedical patent” is a patent having claims that are focussed on covering a biomedical technology. A biomedical technology is a technology that focuses on applications of biological and chemical sciences, including biotechnology, recombinant DNA technologies, cancer biology, medical treatments, medical devices and pharmaceuticals.
The pharmaceutical, biotechnology, medical engineering technology and healthcare related industries usually require patents to allow them to recoup the costs of research and development of new technology to a commercial stage. This can be In some instances a 20 year patent term can be extended to assist in giving sufficient monopoly cover. These technologies are covered by patent claims to specific devices (such as an instrument), software and servers that controls optical systems, whole of system and processes.
A business idea patent is more commonly referred to as a business method patent. This is a patent which claims rights in an invention relating to a method of carrying out business.
As technology has evolved and advanced, the business world has found ways of incorporating technology in the way business is conducted. As a consequence, provided there is a focus on the technological aspect, such methods of conducting business may be patented provided the method satisfies all the tests for patentability. However, not all business ideas are able to be patented. For example, a business idea that does not involve any technology use is considered a mere scheme or plan that is not eligible for patent protection.
A certification trade mark (CTM) is used to identify to consumers, goods or services, that carry such mark, and have met the rules and standards imposed by the certification mark owner. Typically, the rules demand certain criteria such quality, accuracy, place of manufacturing or material type.
A certification mark criteria is outlined by the holder of the mark and checked for fairness by the Australian Competition and Consumer Commission (ACCC). The owner of a certification mark outlines rules and standards for others to adhere to in order to attach a certification mark to their product. The rules outlined by the certification mark holder are checked by the ACCC in order to ensure that they satisfy the ‘Certification Trademark Rules Checklist’, which can be found on the ACCC website. If an entity’s product or service satisfy the rules outlined by the certification trade mark owner, then they may attach the CTM to their product offering. Certification trade marks can be used to enhance the credibility of a good or service, as they show that the product has satisfied the requirements outlined by the CTM.
The ‘C-Tick’ is an example of an Australian certification mark that certifies a products compliance with the electromagnetic interference standards, as outlined by the Australian Communications and Media Authority.
Chemistry patents underpin a wide range of endeavours from industrial processes, pharmaceuticals/treatments, plastics/polymers, dyes, cosmetics, adhesives, costings, and many more. Claims of a chemical patent can be prepared in a number of different ways for different jurisdictions.
Patent protection is essential for protecting research and development (R&D) investment and commercial outcomes from chemical processes, chemical compounds, pharmaceutical formulations, and treatments for diseases such as Alzheimer’s, HIV and Hepatitis. Inventive advances and often risk investment in R&D investment often directly impacts on and positively affects quality of life but may have extended development life cycles before a commercial return can be made. Often there is a scientific community push for publishing advances to establish a pseudo claim of first to invent – this needs to be resisted until a patent has been filed otherwise publication may adversely affect the ability to obtain adequate and deserved commercial compensation for substantial investment.
The automatic protection of the original layout designs of electrical circuits within; integrated circuits, computer chips, semiconductor’s, and computer reliant equipment.
IP Australia defines a circuit layout as the two-dimensional representation of the three-dimensional location of electronic components within an integrated circuit. A circuit layout right is automatically assigned upon the date which the original plan or design is created. It is therefore not necessary to apply for circuit layout right protection, as this is automatically granted. However, if an issue were to come into contention, the onus of proof is placed on the inventor of the circuit layout right to prove that they were the original developers of the invention. An owner of a circuit layout right has the exclusive right’s to copy the layout in material form, make integrated circuits from the layout and exploit the circuit layout commercially within Australia.
Company A were the first to draw a two-dimensional representation of the three-dimensional location of electronic components within the circuit layout of a new computer reliant heart pacemaker. So long as it can be proven that they were the first to document this invention, Company A will be automatically granted circuit layout rights over the invention.
A civil engineering patent is a patent that can protect various aspects relating to civil engineering technology.
Civil engineering patents can relate to items as diverse as the configuration of structural framing, support configurations, cladding configurations, and the layout and configurations of modular constructions. In addition, patents can protect methods or processes of producing and/or constructing these.
Trade marks are classified according to the categories of the goods or services that they fall under.
When applying to register a trade mark it is important to identify the classes of the goods and / or services that are to be covered. The IP Australia Classification Search Database can be used to determine the appropriate classes of goods and / or services that an idea is best related to. Australia uses the ‘Nice Classification System’, which is an internationally recognised system that is used to group different types of goods and services into distinct classes. The Nice system divides goods and services into 45 separate classes. This ultimately determines the extent of trade mark filing fees, as fees are calculated on a per class basis.
The list of 45 separate classes can be accessed through the World Intellectual Property Database WIPO.
A form of trade mark that is owned by an association, on behalf of members, which distinguishes the goods or services of members from those of non-members.
The primary function of a collective mark is to inform a consumer that the goods and / or services that they are using, comply with the standards outlined by the collective mark. Collective marks are owned by an association that represents a specific group of people. Membership indicates satisfaction of the requirements outlined by this association. Collective marks are generally used to distinguish goods or services based on geographical origin, materials used, manufacturing methods or other common characteristics. As a result, ownership of a collective mark is exclusive. As such, the proceeds of this exclusivity can be used in the marketing efforts of an organisation.
An example of a collective mark is the ‘CA’ used to identify Chartered Accountants. This acronym is used to identify members of the Institute of Chartered Accountants, who have satisfied the requirements of obtaining the mark. Members of the association can use this mark to demonstrate to potential customers the standard of accounting that they have reached.
A distinguishable symbol or word that has not been registered as a trade mark but has been used to the extent that it is recognised as identifying goods or services provided by a particular entity.
Company A has developed a reputation for a distinguishable feature of its brand through prolonged use and marketing of this feature. Even if company A has not registered this feature as a trade mark it is likely to be considered a common law trade mark if it can be proven that the trade mark has an established reputation.
A detailed description of the invention in language that would enable the public to work the invention once patent rights have expired.
A complete specification outlines the purpose and structure of an invention and identifies the subject matter that the patent owner intends to protect as their intellectual property. The complete specification must describe the invention fully in language that the public can understand. Furthermore, the complete specification must include a detailed description of the best way to put the invention into effect. Lastly, the complete specification must include at least one claim that defines the scope of the invention. It is crucial to the potential success or failure of a patent application that every aspect of the invention is described in extreme detail in order to ensure that potentially critical components of an invention are not missed.
A computer patent is a patent application or granted patent that claims subject matter related to computers, for example, hardware components, software, or design integration.
Computer patents generally comprise patentable subject matter around the world, unless the patent claims relate to computer software being used to execute a simple business process, such as one that could otherwise be carried out using pen and paper. Computer / IT related patents are the most filed upon subject matter in the world, with many of the world’s highest filers of patent applications being involved in the electronics industry. Patent claims in computer patents are often phrased in terms of code, software applications, processes carried out by a computer, hardware, a computer or server or even an entire system comprising server and client devices.
A confidentiality agreement can be made with anyone whom you wish to impose a legal obligation of confidence. This obligation of confidence imposes a constraint on the holder of confidential information not to reveal such information. A confidentiality agreement can therefore be used as a form of protection for some innovations, propriety knowledge or intellectual property. A confidentiality agreement can also be used as a form of protection for trade secrets. It is, however, important to note that a confidentiality agreement only protects the intellectual property from being exploited by those with whom you have an agreement. The best method widespread protection for intellectual property is to have it patented.
Coca Cola Ltd uses confidentiality agreements to prevent its employees from revealing trade secrets. The benefit of this method of protection is that Coca Cola never has to reveal its secret recipe in a patent application, and subsequently can maintain its claim of holding a ‘secret recipe’.
A construction patent is a patent that can protect aspects relating to various forms construction, including residential, commercial or high-rise construction. This is very similar to a civil engineering patent.
Construction patents can relate to a wide variety of items including tools or processors that may be used in the construction of buildings, as well as the configuration and/or layout of particular modular construction types, or even protecting novel and inventive features around the configuration of the buildings themselves. Construction patterns can also protect a novel and inventive series of process steps carried out in assembling a construction.
A consumer product is an item that is consumed consistently in quantities of high turnover and relatively low cost, and can range from edible items, disposable items, drinks, appliances, hardware, toys, electronics including mobile phones and game players, over the counter medications, medical equipment, toiletries, sporting equipment, and fast moving consumer goods. A consumer good patent is a patent having claims that are focussed on covering innovative aspects of fast turnover consumable products. Such a patent allows companies and entrepreneurs to benefit financially from their bright ideas and investment in innovation.
Consumer product patents are the granted form of applications which can relate to technologies as diverse as rehydration drink compositions (GatoradeTM), dental straighteners, a children’s toys. These technologies are covered by patent claims to specific compositions, devices, treatments and processes. Ideally, a consumer product patent should be filed by a patent attorney with wide ranging industry experience in fast moving consumer goods.
A form of intellectual property protection that grants the creator of the original work, the exclusive moral and commercial rights to; copy, publish, communicate, and publicly perform the copyrighted material.
Copyright protection provides the original creator of a literary, musical, dramatic or artistic work, the exclusive rights to control how that material is used. The Copyright Act 1968 (Cth) does not require the submission of any formal application in order to gain protection for copyrightable material within Australia. Unlike many other forms of intellectual property, whereby registration is a precondition to protection, copyright protection is granted from the date that the work is first created. As a general rule, this copyright protection lasts for 70 years after the death of the creator of copyrightable material.
While the copyright symbol is no longer required for copyright protection in Australia, it may be a useful tool for alerting potential users of your content that copyright is claimed on such material. For example; Company A creates a glossary of patent terms and wishes to copyright the material. They may alert potential users of this information with; ‘© Company A 2015’, by placing this image in a prevalent place on their webpage.
A trade mark that is so similar to another trade mark that it is likely to deceive or cause confusion.
A trade mark is protected from other trade marks that are seen to be deceptively similar to one that is already in existence. Trade marks that are deceptively similar to another may deceive consumers into purchasing unwanted products, and damage a brands reputation. Trade mark protection from deceptively similar trade marks prevents competitors from using another entities reputation to further their own business operations.
Company A adopts a brand name and logo that has a high level of similarity to the brand name of Company B. If Company A attempts to register this similar brand and logo as a trade mark, it may be subject to objection upon examination. Furthermore Company A may attract infringement proceedings from the owner of the similar trade mark. This demonstrates the importance of developing a unique trade mark, and the potential consequences of similarity.
A registrable design refers to new and distinctive features such as shape, pattern or ornamentation that make a product unique.
Designs may be registered in order to protect a product that has potential commercial use. A design may be registered in Australia as long as it is both new to the world and distinctive. It is important to note the distinction between design registration and copyright. Copyright provides protection for the original work until it is industrially applied (more than 50 items sold or hired), after which design protection is required. Furthermore, designs that have previously been publically disclosed may not be considered new and distinctive. It is therefore important to register a design before it is commercialised in order to receive design protection.
Speedo registered the design of its ‘Fastskin Suit’ due to the innovative nature of its streamlined design.
A patent application that has been divided into two or more separate applications containing matter included in a previously filed application (parent application).
When submitting a divisional application, an entity and / or individual will submit two separate invention specifications, both of which have the same description of the invention. Where the applications will differ, is in the claims that define the scope of protection desired from the patent. The divisional application therefore allows an applicant to make two separate applications that are more specific to the claims made. Divisional applications are often submitted when an examination report states that, the basic application filed claims more than one invention. The main benefit of submitting a divisional application is that it allows you to make a separate patent application, while maintaining the priority rights established by the parent application.
Company A submits its patent application for examination. The results of the examination find that claims 1-54 are similar in nature but claims 55-65 require a separate application. Company A may file a divisional application, while maintaining the priority date set by the parent application.
A unique name that is controlled by an entity and / or individual that corresponds with an internet protocol address.
Simply registering a domain name does not constitute use as a trade mark, and will not provide the with entity proprietary rights. A domain name can be trade marked if it can be shown that the domain name is used as sign to distinguish the goods and / or services of one entity from those of another. If it cannot be demonstrated that the domain name is used as such a sign, then it will not be protected under the Trademark Act 1995 (Cth). As a result, other businesses may register your company’s domain name in any state or country other than the one you are registered in. It is, however, important to note that even if a domain name cannot be proven to be a trade mark, the inappropriate use of a companies name may constitute passing off at common law, or be deemed to be false or misleading conduct under the Trade Practices Act 1974 (Cth). While there are difficulties involved in protecting a domain name as intellectual property, there are numerous avenues to protection if anticompetitive behaviour is impacting your business activities.
Company A wishes to register its domain name companyA.com but neglects registering this domain name as a trade mark. A close competitor of company A decides to register this domain name in other states in order to stall company A’s marketing activities. Without trade mark protection Company A would not have proprietary rights to sue. It is however important to note that other avenues to protection may arise out of the Trade Practices Act 1974 (Cth).
Electrical engineering patents are patents having claims directed to an electrical device or component, to a product utilising electrical components, or to a technology which generally relates to the application of electricity, electronics, and/or electromagnetism.
An electrical engineering patent is the granted form of an electrical engineering patent application which relates to the technology of electricity, especially the design and application of circuitry and equipment for power generation and distribution, machine control, and communications. Electrical engineering patents may relate to: electrically powered (either from mains outlet or battery powered) consumer devices; new types of electrical components; modifications/improvements of existing electrical components that are used to manipulate electrical signals, currents, voltages etc. for an improved outcome; or devices or methods for improved manufacture of electrical components or devices. Electrical engineering patent applications should be prepared and filed by a patent attorney with an explicit technical background in electrical engineering due to the level of specialisation required to adequately understand such technology.
An electronics patent is a patent that protects various aspects of a new idea relating to electronics technology.
Electronics patents can relate to a wide variety of technologies covered by the term electronics. Examples of subject matter that can be protected include methods of laying down layers of conductors and semiconductors to form electronic circuits, the chemical formulation of particular conductor and semiconductor materials, methods of connecting hardware to a circuit board, and specific structures of and even methods of operating specific electronic items such as transistors or the like.
An “embodiment” is an example of an invention or idea. A new idea or invention may take many different forms and each form is called an ‘embodiment’. In a professionally prepared patent specification, the embodiments of your new idea are disclosed in full technical detail in the description section of your patent specification and covered by your patent claims. In many jurisdictions it’s important to disclose a broad range of embodiments in your patent specification to underwrite, in a legal sense, the breadth of your claims.
Say your new idea is a headrest for an office chair and that before this time, headrests for chairs did not exist. Then a first embodiment of your new idea might be a typical swivel mounted workstation chair with a headrest, a second embodiment might be a reception chair with a headrest, a third embodiment might be an armchair with a headrest and a fourth embodiment, a sofa with a headrest and so on.
The process whereby a patent, trade mark, design or plant breeders right is assessed to meet the requirements of the relevant act.
Once a standard patent application has been submitted, examination must be requested within five years of the filing date. If you have not done so already, IP Australia will direct you to request an examination approximately 1 year before this expiry date. Once examination has been requested it will generally be completed by IP Australia within 1 year. The results of this examination will either come in the form of an Adverse Report or a Notice of Acceptance. If an adverse report is received, there will be an outline of the contentious issues within your IP claims, and a description regarding why your application does not meet the requirements of the Patents Act 1990 (Cth). You will then have 12 months to address or retract all of the issues within the adverse report. IP Australia will then further examine the application based on their set criteria, and if satisfied, the patent will be granted.
A process for getting a patent application granted as a patent in a shorter time period than would ordinarily occur.
Examination is the process by which patent applications are tested by examiners at the various patent offices to check whether the invention being claimed by a particular patent application meets all the requirements for patentability. If the patent application is found to have met the requirements, then it is granted as a patent. However, the process of examination is usually dependent on backlogs being currently experienced at the various patent offices, and the workloads of the individual examiners. Expedited examination is a process for requesting that such testing be carried out on an expedited basis, in order to get a patent granted faster. Expedited examination is usually requested when a competitor has put competing product onto the market in a territory or country, that would infringe the claims of a patent application in that country if it was granted as a patent.
The date a patent application is submitted to IP Australia in complete form.
The filing date is a critical point in the lifetime of a patent as it defines a number of key issues such as the start of the patent term and the calculation of when annuity payments fall due. In the case of a Basic Application, the filing date may also define the priority date for the disclosed invention.
ICT stands for Information, Communications & Technology and so an ICT patent is one that is filed in these areas of technology.
ICT patents are the most commonly filed in the world and cover a very broad range of patentable subject matter from information processing systems including computers and communications technologies over a vast range of protocols including telecommunications. ICT patents is also a term used to describe patents for software including enterprise software, middleware, cloud-based software and apps and for digital storage and audio-visual systems. Whilst the majority of ICT subject matter is patentable, some countries do specifically exclude software patents from patentable subject matter in law.
A prohibited act in regards to the use of another persons patent without their permission. Such permission is usually granted through a license.
Apple Inc v Samsung Electronics Co was a high profile case involving patent infringement in regards to smartphones and tablets. Samsung was granted a limited ban by the US International Trade Commission on certain Apple products being sold. While this decision was ultimately vetoed, patent infringements ultimately cost both organisations a large amount of financial resources and heartache.
A second tier form of patent that protects innovations that offer a comparatively small advance in existing technology, thus satisfying an innovative step rather an inventive step.
An innovation patent is a second tier form of patent protection in Australia that is primarily developed for use in protecting incremental innovation. Innovation patents can be obtained if a product has a feature that is new when compared with existing prior art. The new features can be obvious, but must at least make an improvement to the functionality of the product. In order for an innovation patent to be granted, it must be filed with IP Australia who will conduct a substantive examination of the application. If the patent is seen to be new and to include an innovative step over existing prior art, it may be certified. The three primary benefits to obtaining an innovation patent are; (1) they are relatively inexpensive, (2) they can be granted quickly, and, (3) it is relatively difficult for third parties to revoke this form of patent. It is however important to note that innovation patents are only valid for eight years, and may not include more than five claims.
Company A has a standard patent that is about to expire. Company A creates a development for their standard patent that satisfies the innovation step required to obtain an innovation patent. By obtaining an innovation patent, Company A is able to maintain patent protection to their developments.
A part of the invention that is deemed to have exceeded common general knowledge and prior art that existed in Australia before the priority date.
The innovative step is an important component of the application process for innovation patents in Australia. An innovative step exists when the invention differs from what is previously known, and / or if the difference makes a substantial contribution to the way a current invention works. Whether or not an innovative step is deemed to exist will be viewed in light of common general knowledge, and through the perspective of a person that has been identified as skilled in the specific art that the invention covers. Innovation patents and their allowance for innovative steps, allows an individual and / or entity to protect incremental advances in existing technology, and widens the scope of intellectual property law in Australia.
Intellectual Property (IP) is a catch-all term used to describe a range of different types of assets, also known as, or more generally, a special class of intangible assets or creations of the mind that can be owned by law by an individual or organisation and is able to be traded similarly to tangible ‘bricks and mortar’ assets. Intellectual Property generally refers to such assets including, patents, trade marks registered designs, and copyright. IP generally includes legal rights protecting discoveries and inventions; trade reputation & goodwill; music, literature & other artistic works; & words, phrases, symbols, and designs. Intellectual Property is also often used to refer to other asset classes including, for example, trade dress or trade secrets.
Intellectual Property law has evolved over many centuries, however the term itself was not coined until the 19th century and it wasn’t until the late 20thcentury that the term became common place around the world. The legal rights surrounding IP have their origins in the ancient Greek colony of Sybaris where innovative chefs were granted year-long monopolies for creating particular culinary delights. One of the first legal instruments issued to protect the intellectual creations of a person was issued by the Republic of Florence on June 19, 1421 to architect Filippo Brunelleschi. The first lasing institution of intellectual property protection, however, did not come into existence until the Florentine patent statute of 1474, 150 years prior to England’s Statute of Monopolies in 1624. In the Florentine patent statute, the rights of inventors were recognized, an incentive mechanism was included, compensation for infringement was established, and a term limit on inventors’ rights was imposed. The Statute of Monopolies granted fourteen-year monopolies to authors and inventors and ended the practice of granting rights to “non-original/new” ideas or works already in the public domain. From these humble beginnings, it was estimated in 2000 by Leonard Nakamura of the Federal Reserve Bank of Philadelphia, that intangible assets were responsible for 1 trillion US dollars of investment having a capitalized value of in excess of $ 6 trillion in that same year.
There are many great examples of good product design that are the result of many years of development and refinement. Particularly notable is the iPhone by Apple Inc. which, when it was first released in the United States in June 2007, started a revolution in the personal mobile device industry and effectively starting the smartphone movement. The iPhone concept was originally conceived of by Steve Jobs in 2005 as a method of interacting with a computer using a multi-touch screen – effectively making the keyboard or individual letter keys (e.g. on Blackberry devices at the time) obsolete. The initial designs were carried out in secret within Apple Inc. and when the first prototype was shown to Steve, he conceived of the idea to integrate it into a mobile phone which was announced in his keynote address at the Macworld conference as on January 9 2007 with the words: “I have been looking forward to this for two and a half years …. today, Apple is going to reinvent the phone.” The iPhone design sparked a massive push by existing mobile phone developers to try to ‘catch up’ to the Apple iPhone resulting in the current landscape of a variety of smartphone devices by many manufacturers, most of which have – either directly or indirectly – been in some form of litigation with Apple, Inc over copying of the design of the iPhone hardware and software enabling the user interactions with the device. Time magazine named the iPhone the Invention of the Year in 2007.
An Intellectual Property (IP) asset is an intangible asset (either registered or unregistered) that has a tangible value, for example, on the balance sheet of a company.
Intellectual property assets come in two flavours, registered and unregistered. Registered IP Assets include patents, trade marks, registered designs, or plant breeder’s rights. This type of asset, after meeting the eligibility requirement, is registered by the government in a particular country and provides the asset owner with monopoly rights in the country of registration to exploit the asset. Unregistered IP Assets most notably include copyright, and circuit layouts, although trade secrets and employee knowledge are other forms of an unregistered IP asset. Unregistered IP assets exist immediately on creation of a work in a tangible form (for example, writing a poem or song lyrics down on paper, or writing computer software code) without requiring any additional action by the creator to be able to claim their rights.
It was estimated by Kevin A. Hassett and Robert J. Shapiro in October 2005 that the value of intellectual property assets in the United States was worth between $USD 5 trillion and $USD 5.5 trillion or equivalent to about 45% of US GDP. This estimate was updated by the authors in 2011 in their report “What Ideas Are Worth; The Value of Intellectual Capital and Intangible Assets in the American Economy” where they estimated that the value of intellectual capital in the U.S. economy had increased to between $USD 8.1 trillion and $USD 9.2 trillion and the value of intellectual assets (which includes intellectual capital plus the economic competencies of employees of U.S. firms) totalled an estimated $USD 14.5 trillion in 2011. This amounts to an estimated ~44% of the market value of U.S. firms across all industries with notable industries including Media (~75% of market value), Telecommunications Services (~72% of market value), and Household & Personal Products (~61% of market value).
An Intellectual Property (IP) Audit is in many ways very similar to a stock audit or inventory audit where an analysis of the quantity of stock a business has at hand, what the ongoing stock requirements are likely to be and determining strategic plans to ensure stock requirements can be met in the future. The difference between a stock audit and an IP audit is simply in the asset being reviewed. In particular an IP audit will aim to analyse and capture information about the intellectual assets owned, used or acquired by a business so that informed and considered decisions about the future direction of the business can be made.
It is not uncommon that, in most businesses, an IP audit has not been undertaken. Often, when an IP audit is carried out, the business owners are often surprised by the quantity and value of intellectual assets the business has. Such an audit may uncover, for example, among others:
An IP audit may also be invaluable in uncovering potential risks to the business that could ultimately result in costly legal proceedings with employees or third parties, for example, unknowingly infringing on the patent rights of another. There are two main steps in an IP audit:
An IP audit should consider IP assets that are internal to the business such as trade marks, patents, designs, copyright, trade secrets manuals, custom computer software, recipes/formulations, processes, licenses in/out etc.; and also external assets such as product brands (trade marks), distribution networks and contracts, client lists, marketing/advertising/ goodwill, customer loyalty, product certifications and import/export networks and contracts. Not only can an IP audit identify the strengths and weaknesses of a business, but it can also be a very effective tool to bring together different departments in the business to work together toward the common goal of increasing the value of the goods or service provided by the business and increase the likelihood of business success.
An Intellectual Property Lawsuit is an action taken in the Courts to enforce a person’s rights in Intellectual Property. Those rights are generally the person’s creative or intellectual rights such as can be created by musicians, authors, artists, and inventors which are protected by Statutes that define the scope of the protection and the scope of the possible infringement and damages that Courts can award. It also includes non-tangible commercial rights of businesses such as their reputation, goodwill or trade secrets associated with businesses or scientists or engineer’s non-tangible assets such as inventions and know-how.
The law of intellectual property typically encompasses the areas of Copyright, Patents, and Trade Mark law. It is intended largely to encourage the development of art, science, information and technology by granting certain property rights to creators, which include inventors, in the arts and the sciences. These rights allow the creators to protect themselves from infringement, or the unauthorized use and misuse of their creations The main statutory forms of protection of Intellectual Property include:
Intellectual Property and its enforcement in an Intellectual Property lawsuit can be to protect your business or creativity. Let us take an example on the golf course. Your newly designed golf club or putter could be protected by patents and allow you to have the monopoly to exploit that invention for twenty years. The name or brand under which you sell the golf club could be a mark which brings customers back to you and therefore should be exclusive to you with regard golfing equipment. The shape of the head of the golf club could be a new creative and distinctive design which is protectable. Further the book that you have published on how to improve your golf swing by use of your new golf club is a protectable literary work. Further the grass on which you play which took a number of years to develop could be a new plant breed that is a new grass with unique properties and uniform reproducibility and can therefore be protected. Further the layout of the circuit board in your golf shot measuring device could be unique in order to fit into a small easily carryable attachment. Clearly all the creative work that has been expended into the project would usually only occur if later you can claim monopoly rights and enforce those rights through an intellectual property lawsuit. It is therefore important to work with your patent attorney at BaxterIP to review and assess your creations.
Intellectual property rights or “IP rights” is a term that refers to legal monopoly rights conferred by Governments on certain intellectual works, such as works of art, inventions, designs, branding and literature. The idea behind the issuance of most registrable intellectual property rights is that the person who created the intellectual works enjoys a limit time-period monopoly in exchange for disclosing their work to the public.
Broadly speaking, there are 6 main types of registrable intellectual property rights in most countries including:
There are also numerous forms of non-registrable intellectual property rights. In Australia, non-registrable intellectual property rights include copyright, trade secrets and trade dress (or “get-up”).
Whilst there is no such thing as an “International patent”, the term is generally used to refer to a Patent Cooperation Treaty (PCT) international patent application.
A PCT international patent application allows a patent applicant to maintain or create a priority date effective internationally (Taiwan being the main exception) that can be claimed by a PCT national phase patent application at any time prior to 30 or 31 months after the priority date (depending on the country). The PCT patent process includes a patent search, publication and an optional patent examination stage. The patent search and examination procedures offered by the PCT route can be quite valuable as they allow any novelty or inventive step issues with the patent claims to be addressed centrally, prior to national phase.
An “invention” can be said to be any apparatus or method that is novel and innovative. This could be assessed according to the newness in marketability or the novelty in a technical sense or according to a range of other criteria. In order to give it a single meaning it is often considered to be assessed as to whether the novel and innovative apparatus or method would fulfil the requirements of being patentable. That is – can you obtain a Patent?
The Patents Act 1990 defines a technical meaning of “invention” in Schedule 1 of the Patents Act as: “invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention. “ Generally for a new apparatus or method to be an invention and to be patentable, it must fulfil three main tests:
It is important to not use fake systems in identifying if a new apparatus or method is an invention and is patentable. One common fake system is that there only needs to be 10% difference. This goes against a famous Court decision on invention which stated that to be patentable there only needs to be “a scintilla of invention”. It can be seen that it is not the quantity of how different is the invention to the prior art but the quality of how non-obvious or unexpected and effective is that difference to the prior art. It is therefore important to work with your patent attorney at Baxter IP to review and assess your invention.
A letter issued to an expected infringer of patent rights that outlines the nature of the infringement, what is expected in return for such infringement, and a time frame for response before legal action is initiated.
A letter of demand is an effective means of communication between the holder of a patent, and individuals who may have infringed on another’s patent rights. An effective letter of demand will hopefully resolve the situation, and encourage the infringer to stop, for fear of legal proceedings.
A treaty that is administered by the World Intellectual Property Organisation (WIPO) that provides international registration for trade marks.
The Madrid Protocol enacted a system of international trade mark registration for member states of the Paris Convention. This treaty facilitates simultaneous filing of trade mark applications in numerous different countries. All applications for protection under the Madrid Protocol are examined according to trade mark legislation in each of the member countries. This international form of registration automatically replaces a national or regional registration and allows for more widespread protection of trade mark. The Madrid Protocol is highly beneficial as it allows the holder of trademarkable material to only make one application, one payment, and as a result, be protected in all states that are included in the protocol.
The distinction between inventions that are patentable and those that are not.
Historically speaking there has always been a divide between material that is deemed to be patentable and material that is not. This distinction arose out of fears that discoveries and abstract ideas would be patentable. This opposed the traditional notion that only inventions that meet certain criteria are patentable. Without this divide there would be an unnecessary level of patentable material, which could ultimately stifle rather than promote innovation. Furthermore an inundation of patentable material could further increase the amount of litigation within the intellectual property sphere. Things that cannot be patentable include; artistic creations, mathematical methods, plans, schemes, and other purely mental processes.
In Kiren-Amgen Inc v Board of Regents of the University of Washington, the Deputy Commissioner of Patents found that; ‘a claim directed towards naturally occurring DNA characterised by specifying the DNA coding for a portion of a molecule, would likely be claiming no more than a discovery per se and not be a manner of manufacture’. The court found that gene paths found within naturally occurring DNA cannot be patented, thus demonstrating the importance of the manner of manufacture test when considering whether or not an invention can be patented.
A medical patent typically refers to a patent or patent application, the subject matter of which relates to either a medical device, method of medical treatment or software for controlling medical equipment.
Medical patents are one of the fastest growing areas of patenting, particularly reflecting growing demand in the aged care sector around the world. Whilst the term “medical patents” is normally used to refer to medical device patents, such as surgical, therapeutic or diagnostic devices and methods of medical treatment, the term is often also used more broadly to refer to new medical grade compounds, that is, pharmaceuticals or other therapeutic compounds and various forms of biotechnology. Various software control system such as for large scale medical equipment found in hospitals (X-ray machines, MRI machines, robotic surgical tools) and cloud based patient data analysis often also come under the umbrella of the term ‘medical patents’.
A mobile application patent is a patent that protects novel and inventive steps carried out by software on a mobile electronic device.
Protection of a software application used on a mobile electronic device can be achieved by protecting:
The final stage of the PCT application process, whereby an entity and / or individual files national patent applications in the countries where IP protection is required.
The National Stage is the final stage in the PCT application process. The national stage patent application process can be summarised as: (1) filing of the ‘National Phase’ patent application with IP Australia, and, (2) filing ‘national’ patent applications in countries of interest outside of the Australian jurisdiction. National stage applications must be filed in Australia 31 months after the earliest claimed priority date. IP Australia will assess the application based on their set criteria, and if satisfied, the patent will be granted. It is important to note that a national phase application in Australia will only grant patent protection within the Australian jurisdiction. As a result, individual national patent applications will need to be filed in all the countries in which patent protection is sought. This is a lengthy process and therefore requires significant consideration of a variety of salient features. Baxter IP has developed 9 filing strategies to consider when deciding where to extend the geographical coverage of the intellectual property. These strategies include consideration of;
An international classification of goods and services used for the purpose of registering trade and service marks.
Australia uses the Nice Classification System to group different types of goods and services into distinct classes. Countries party to the Nice Agreement are obliged to apply the nice classification system when classifying trade and service marks. The Nice system divides goods and services into 45 separate classes. This ultimately determines the extent of trade mark filing fees, as fees are calculated on a per class basis.
The list of 45 separate classes can be accessed through the World Intellectual Property Database / WIPO.
A license without the features of exclusivity, thus allowing the owner of intellectual property to retain the right to commercialisation of their asset and the authority to grant an unlimited number of licenses.
Simply put, a non-exclusive license does not preclude the owner of intellectual property the right to assign multiple license agreements, and personally commercialise their IP. Through granting a non-exclusive license, the licensor retains the right to commercialise their intellectual property. Furthermore, the owner of the IP is able to assign multiple licensees while retaining the right to exploit their intellectual property. In comparison to an exclusive license, this allows an owner of intellectual property to retain control over the commercialisation process, while expanding the reach of their IP through licensees.
A notice to a patent applicant, from a third party, which initiates a formal dispute to a pending patent application or a registered patent or trade mark.
A notice of opposition is filed when a third party wishes to initiate a formal dispute of a pending patent application. A trade mark that has been filed or accepted may be opposed if it satisfies any of the grounds of rejection as outlined in the Trade Marks Act 1995 (Cth). A common example of grounds for rejection is when a trademark is perceived to be identical or deceptively similar to a registered or pending trademark. Oppositions to registration are initiated through filing a notice of opposition and providing a statement of the grounds of opposition and particulars.
“Novelty” is a term typically used in reference to the primary test for whether an idea or invention is patentable. “Novel” is a rather archaic term that basically means “new”. Thus, for an idea to be patentable, it must be new and satisfy various other criteria.
In terms of patent law in most countries, the test for “novelty” is international in scope meaning an idea must be new in respect of any piece or, in some circumstances, combination of pieces of information that are publically known. Any idea that has been written about publically, such as on the internet, in a trade journal or other literature or performed/used publically is known as prior art. In a patent application, an idea is defined in a patent claim and thus the test for novelty of a patent is one where the claim is compared with the prior art to see whether it is new. For a claim to be new it must include at least one feature that is not in the prior art.
A novelty search is a type of search conducted, normally on patent databases but often across other literature such as technical journals and blogs, to determine whether an idea is new.
There are 2 main criteria for patenting an idea in most countries around the world; the first is that the idea must be new or “novel” and the second is that the idea must comprise an “inventive step”. Novelty is determined by comparing the idea with other ideas that are publically known such as those that have been published on the internet, in technical journals and in various patent databases such as, for example: Espacenet, Patent Scope or the USPTO patent office database in what is known as a “novelty search”. If an idea is different from that which is already known, it is novel. A novelty search can be conducted prior to, or post, filing a patent application. Often the decision as to whether a novelty search is performed is driven by financial or timing requirements. In Australia, a very common way to have a detailed novelty search conducted is to request what is known as an “International-type” search by IP Australia, based on a filed provisional patent application.
A special form of claim, as included in the complete specification, that includes a description and / or drawing that provides details of the preferred form of an invention.
An omnibus claim is a form of claim that provides a description, drawing or example of the invention that is outlined in the complete specification, which does not expressly define any technical features of the intellectual property. This form of claim provides a description or drawing that defines the essential features of the invention, and its preferred embodiment. It is important to note that under amendments made in the Intellectual Property Laws Amendment Act 2012 (Cth) the practice of employing omnibus claims has been effectively abolished.
A third parties entitlement to formal objection of a pending patent, trade mark or designs registration.
For a third party to oppose a patent application they must submit a notice of opposition and a statement of grounds and particulars. There are two types of opposition that may be lodged. This includes, an opposition to the grant of a standard patent, or an opposition to the grant of an innovation patent. It is important to note that a statement of grounds and particulars must be lodged within three months of the notice of opposition. Prior to the lodging of this statement, evidence must be filed according to the means approved by the Commissioner of Patents. A hearing will then be held that takes into account the evidence and grounds of the opposition, after which, the outcome of the opposition will be revealed within three months of the hearing date.
An optical engineering patent is a patent having claims that are focussed on covering an optical engineering technology. An optical engineering technology is a technology that focuses on applications of optics.
Optical engineering patents are the granted form of optical engineering patent applications and can relate to technologies as diverse as lenses, microscopes, telescopes, optical disc storage systems and fiber optic communication systems. These technologies are covered by patent claims to specific devices (such as an instrument), software and servers that controls optical systems, whole of system and processes.
When an entity and / or individual represents the registered intellectual property of another as their own.
Entities and / or individuals are protected from breaches of passing off, under tort law within the common law framework. A form of action can be brought in order to enforce unregistered trade mark rights and protect the goodwill of traders from misrepresentation in the course of trade. Passing off often occurs when an entity that is not the owner or licensee of intellectual property represents goods in a way that deceives or confuses consumers in the course of trade. If an entity is lead to believe that passing off has occurred, the onus of proof will be placed on the entity and / or individual. They will need to demonstrate that there was goodwill owned by the trader, this goodwill was misrepresented, and as a result, there has been subsequent damage to this goodwill.
A set of exclusive rights that is granted to an inventor or assignee for a limited period of time in return for detailed public disclosure of an invention.
A patent is a form of intellectual property right that can be granted for an invention, such as a device, substance, method or process. Once submitted, the invention must undergo examination to establish whether or not it is new to the world, inventive and useful. A patent can be used to exclude others from commercialising the patented invention without permission. This exclusion will last for the duration of the patents term. The standard patent terms are twenty years for a standard patent and eight years for an innovation patent. While the patent application process is complex, in a simplified form there are four steps that need to be followed. Stage one involves a Provisional Patent Application. This is to be followed by a novelty search, Patent Cooperation Treaty (PCT) International Patent Application, and a National Phase Patent Application. IP Australia will assess the application based on their set criteria, and if satisfied, the patent will be granted. Patent protection is a crucial component in developing an intangible idea with unknown value, into a twenty-year monopoly over the potential market for the invention. By protecting an invention, the holder of a patent has the ability to stop third parties from copying the idea, and passing off the invention as their own. This will enable to patent holder to recover research and development costs and gain a competitive edge in the market.
The process of filing national and international patent applications in order to gain protection for intellectual property.
While the patent application process is complex, in a simplified form there are four steps that need to be followed. Stage one involves a lodging a provisional patent application with IP Australia in order to set a priority date. This is to be followed by a novelty search, which will provide an indication of whether or not the invention will be approved by IP Australia (IPA). If the steps are deemed to be a success, a Patent Cooperation Treaty (PCT) International Patent Application should be lodged. This is the first step towards securing patent protection in countries other than Australia. The final stage of the patent application process involves filing a National Phase Patent Application with IP Australia, and filing national patent applications in other countries in which protection is desired. IP Australia will assess the application based on their set criteria, and if satisfied, the patent will be granted.
We are in an international global market and therefore need patent protection around the world. However there is no single patent that gives enforceable coverage around the world. But the Patent Systems of over 190 countries will allow a single application to start the process of patent protection around the world. A patent covers the concept and application of an invention. If your commercial markets extend beyond the boundaries of Australia, you may want to consider protecting your innovations and technical advances in countries around the world. Obtaining patent protection is a multi-stepped process, and extending patent protection to countries outside Australia can be obtained by a first application filed in Australia. Patent protection is essential for encouraging research and development (R&D) investment by allowing commercial outcomes from inventive advances such as pharmaceutical formulations, and treatments for diseases such as Alzheimer’s, HIV and Hepatitis. This is clearly advantageous for quality of life outcomes, and therefore patents represent a practical means for encouraging investment and obtaining a commercial return on such investment.
Patents are specific to particular countries or groups of countries and have their particular patent legislation. For example, a Patent granted in Australia provides exclusive rights in Australia only. In order to obtain a corresponding exclusive right in countries such as the USA, Europe, China and many more, separate action is required. International Treaties and Conventions provide agreed international processes for countries that are signatories. One example is the Paris Convention for protection of Industrial Property signed by over 190 countries. This Convention is started with one application in a Convention member country such as the first application in Australia. The patent applicant then has 12-months under the Convention to file an application in other member countries. While there is no mechanism for obtaining a singular international patent, there are two approaches to filing overseas. In one approach, overseas patent applications can be filed directly in each jurisdiction for which exclusive rights are sought. In the second approach, the patent applicant may file a single international patent application under the Patent Cooperation Treaty (PCT). The Patent Cooperation Treaty (PCT) provides a practical mechanism for obtaining patents in countries of commercial interest by entering the national phase in one or more PCT member countries such as the USA, Europe, Australia, and China. The PCT is administered by the World Intellectual Property Organisation (WIPO) which defers separate local and overseas filings for a period of up to 30/31-months from the earliest filing date.
A great example of Patents around the world is detailed here.
In the above example, the patent applicant focussed attention on addressing risks of AIDS and Hepatitis C infection associated with accidental infection during blood collection where blood collection needle devices and syringes were commonly used. The applicant identified a global market for its solution (a protection assembly) to the above problems. In this case, the following steps were taken by the applicant:
The applicant has subsequently grown and expanded and continues to develop new IP and take steps to protect its IP around the world.
A patent attorney is a scientist or engineer that has legal training in patents, including in drafting patent specifications which need to describe the full technical details of inventions. In Australia a patent attorney must be registered with the Professional Standards Board for Patent & Trade Mark Attorneys and can only practice in technologies in which they have studied or in which they have acquired experience.
The Patents Act 1990 defines Patent Attorneys in Chapter 20 and in Part 1—Registration, privileges and professional conduct of a patent attorney and in Part 2—Offences if Part 1 is not followed. Further in Section 227A of the Professional Standards Board for Patent and Trade Marks Attorneys, the definition of a patent attorney is elaborated. Therefore patent attorneys must follow strict professional standards and are officially given the following privileges by Section 200 of the Patents Act 1990:
An example of why it is important to engage a patent attorney is in defining the best scope of monopoly for your invention in your patent claims. Your patent claims needs to at least match the scope of your disclosure if not define a broader invention. Say for example, your invention is: “the use of a flashing light on a vehicle in order to indicate to the surrounding public that an emergency situation has occurred and to allow other vehicles to pass.” Now let’s assume that this is novel idea and that the way you enact your invention is by:
However, you may not have considered other concepts for mechanisms that could be used, such as:
An Australian patent attorney must be technology aware, legally aware and skilful in drafting patent claims defining your invention. The definition of your invention must be supported by a description of various embodiments of the invention to support your patent claims. It is therefore important to work with your patent attorney to review and assess different versions of your invention, so that you can make a full disclosure and achieve as wide a monopoly as possible, by justifying your monopoly claim with a wide range of examples.
An international patent law treaty that provides a uniform filing procedure for gaining patent protection across the entirety of the member states.
The Patent Cooperation Treaty was signed in 1970, and binds the 148 contracting states to a unified system of international patent filing. In order to gain patent protection in a variety of countries of interest, a Patent Cooperation Treaty International Patent Application (PCT) can be filed. A PCT is filed with the World Intellectual Property Organisation (WIPO), who will then conduct an International Search and Written Opinion on the patentability of the invention. Prior to this search of the PCT contracting states, an Intellectual Preliminary Examination can be conducted. This examination will provide a further opinion on the international patentability of your application. It is important to note that PCT applications do not result in the granting of an international patent, as there is no such thing as an international patent. A PCT application will, however, determine a filing date in all of the member states, and facilitate a smooth transition into the separate National Patent Application phase.
Patent enforcement is when a patent owner exercises their legal patent rights against another person or entity who are perceived as infringing the patent.
Patent rights provide a patent owner with the exclusive right to exploit a claimed invention. When another person or entity exploits the claimed invention without the authority of the patent owner there is an answerable case for infringement of the patent. The patent owner may instigate court proceedings against the infringer; thereby enforcing the patent rights.
A patent firm is a firm that provides the professional services of a registered patent attorney in relation to intellectual property rights.
A patent firm offers professional intellectual property services to its clients. The professional advice and assistance from a patent attorney is important for a client to understand their position with respect to intellectual property rights and seeking effective protection for registered intellectual property rights, such as patents, trade marks and registered designs.
A patent in China will give the patent applicant(s) enforceable monopoly rights to their invention within China to discourage and prevent third parties from making, selling or importing infringing products within China.
There has historically been much debate over the value of seeking patent registration in China due to the perception that Chinese manufacturer’s and entrepreneurs do not value or even recognise the intellectual property rights of others. However, due to a concerted programme by the Chinese government including the establishment of specialised patent courts, there has been a marked shift in the value that Chinese business people, and especially the courts, place on the intellectual property rights of others within China. This is seen by a large increase in intellectual property infringement cases between internal Chinese parties and the success rates of foreign owned enterprises succeeding against Chinese parties in the Chinese courts, with statistical evidence indicating that foreign parties are succeeding in the courts, either as a rights holder or infringer, against the Chinese party (in popular jurisdiction such as Beijing or Shanghai, the foreign party is successful in about 80% of all patent infringement lawsuits). Largely due to this increased perception of the value of patent rights, China outstripped even the United States in recording the largest number of filed patent applications in 2011: i.e. 526,412 invention patent applications were filed in China compared with 503,582 patent applications in the United States. Of these applications, nearly 80% of Chinese patent applications were filed by Chinese applicants, whereas in the US, just shy of 50% of US applications were filed by domestic parties. Accordingly, China is rapidly becoming an important jurisdiction to consider in any sophisticated foreign filing programme for applicants seeking patent protection for their ideas internationally.
To patent in the USA can mean either to file a patent application in the United States or to achieved a patent issued in the United States (that is, an enforceable legal right), nor does this phrase differentiate between a utility patent or a design patent.
The United States patent system is broadly similar to patent systems in other countries in that it provides for issuance of patents for ideas that are new, useful and non-obvious. The patent system is administered by the USPTO (United States Patent and Trademark Office). The most recent patent legislation to pass in the United States is the Leahy-Smith America Invents Act which came into effect on 16 March 2013. The Act switched the US system from a “first to invent” system to a “first inventor to file” system, eliminated interference proceedings (essentially ownership dispute proceedings) and introduced post-grant opposition. Some differences in terminology under US and Australian patent law are tabulated below:
The process by which patent applications are filed in individual countries or territories while claiming priority to an earlier priority patent application or patent applications. An international or PCT patent application is often incorrectly referred to as a “worldwide patent”.
Initially, a priority establishing patent application is filed in your local country. Within a year of this date, the applicant needs to file patent applications at the patent offices of the countries that they want patent protection in, or a file a PCT patent application (also called an international patent application). If the applicant has filed a PCT patent application, this extends the deadline for filing patent applications in overseas countries by a further 18 or 19 months, depending on the country. The set of patents that relate to the subject matter that was initially disclosed in the priority applications are called ‘equivalent’ patents or patent ‘families’.
An applicant can file an Australian provisional patent application first, which gives them 12 months in which to file overseas patent applications or an international patent application. By the end of the 12 months, an applicant can file a US patent application that claims priority back to their Australian provisional patent application. The filing date of the Australian provisional patent application is recognised in the US as if a provisional patent application had been filed there.
A patent lawyer is a common term used in jurisdictions such as the US to describe a patent specialist working in the specialty field of law governing intellectual property.
A patent lawyer is involved in all aspects of law covering patents and intellectual property rights of inventors. A patent lawyer also provides legal representation in cases of patent infringement, challenges to the license of an invention and appeals to the USPTO. Prospective patent lawyers typically earn either a 4-year degree in a field of science like chemistry, biology or physics or a technical degree in electrical, civil, mechanical or biomedical engineering. Patent lawyers are required to complete a law program from an accredited law school and pass a state bar exam. If a patent lawyer would like to represent inventors in front of the USPTO, then he or she must sit for and pass the USPTO licensing exam, which is commonly known as the ‘patent bar.’ In cases where a lawyer has attained five years of continuous service with USPTO, the licensing exam is waived.
Patent litigation is the process of enforcing your rights as a patent owner in the court system.
Patent Litigation is the process of enforcing your rights as a patent owner in the court system against a competitor or other person that may be infringing your patent rights by, for example, selling or using your patented invention and is commonly known as suing another party for patent infringement. In many countries the use must be commercial or have a commercial purpose to constitute patent infringement. Patent litigation is often an expensive procedure requiring the services of a patent attorney and a solicitor, and most often also a barrister for each party to the litigation action including the patent owner and the respondent (the potential infringer).
A particularly notable example of recent patent litigation include the much-publicised litigation between US company Apple Inc. and South Korea-based Samsung Electronics Co. Limited regarding potential copying of Apple iPhones and tablet devices by Samsung. Apple commenced litigation against Samsung in early 2011, despite already being engaged in existing litigation with Motorola Mobility. By August 2011 Apple and Samsung were involved in 19 ongoing cases in nine countries, expanding to 10 countries in October that year. Apple’s aggressive strategy of multinational litigation of technology patents became known as the “smartphone patent wars” which, at its height involved smartphone manufacturers including Sony, Google, Apple Inc., Samsung, Microsoft, Nokia, Motorola, Xiaomi, and HTC, among others. By July 2012, the litigation actions between Apple and Samsung had increased to more the 50 separate actions worldwide. The patents asserted by Apple largely related to a series of patents filed in 2007 around the release of the first Apple iPhone. In response Samsung counter-sued accusing Apple of infringing a number of Samsung-held patents relating to mobile-telecommunications technologies. Despite small wins by parties in various litigation actions, no clear winner emerged and Apple and Samsung finally agreed to settle out of court on undisclosed terms in July/August 2014 simultaneously abandoning patent litigation actions against each other in 9 countries outside of the United States including South Korea, Japan, Australia, the Netherlands, Germany, France, Italy, Spain and the U.K. Patent litigation continued in the United States and in 2015 Apple prevailed at the US district court on trade dress, design patent and utility patent claims, with a total award of almost a billion dollars. On appeal, the US Federal Circuit court reversed the earlier judgement regarding trade dress but affirmed on the design and utility patents. Samsung is still fighting in the US to have these decisions overturned, with Samsung achieving success in May 2015 in having a damages award of $380 million dollars against them overturned and the issues in that judgement to be re-tried (for a third time) and also in August 2015 in possibly having a key Apple Design Patent invalidated through a re-examination procedure with the US Patent Office. At present (August 2015), further appeals by Samsung against adverse judgements against them are still ongoing…
The filing of an additional patent that is used to protect modifications or improvements to intellectual property that is currently patented.
A patent of addition cannot exist on its own. In order to file a patent of addition the applicant must have an existing (parent) patent. This implies that an application for a patent of addition can not be made unless you already have an existing patent, or the parent patents application has already be examined. While patents of addition are rare, the underlying principle surrounding their acceptance is that an applicant should be able to protect new features that have been developed for their current patents. So long as the new features are obvious, and do not improperly extend the patentees rights, they are accepted. Furthermore, a patent of addition can be used to alleviate issues that may arise when two inventions are different, but too similar to be individually patented because of issues associated with prior art. The rarity of patent of additions may be somewhat accounted to their complexity. It is therefore important to consult an experienced patent attorney as a guide for prospective applicants.
Each country has their patent law which provide monopoly protection for new apparatuses and systems. Most of the times the patent law is administered by a government office known as the Patent Office. Also as well as patents the Patent Office usually controls Design Registrations covering the look of commercial articles and Trademarks covering the commercial name used to market the product or system. It also can cover Plant Breeder’s Rights and Circuit Layout protection. In the spirit of entities relating to innovation and to have a good marketing presence as well as show the range of Intellectual Property they administer the Patent Office often has another overarching name.
In Australia, the Patents Act 1990 creates the Patent Office in Chapter 21 including Sections 205 to 207 which state: 205 Patent Office and sub‑offices (1) For the purposes of this Act, there is to be an office called the Patent Office. (2) The Commissioner may establish one or more sub‑offices of the Patent Office as the Commissioner considers appropriate. (3) The Commissioner may abolish any such sub‑offices. 206 Patent Office seal There is to be a seal of the Patent Office and impressions of the seal must be judicially noticed. 207 Commissioner of Patents (1) There is to be a Commissioner of Patents. (2) The Commissioner has such powers and functions as are conferred on him or her under this Act or any other Act. This title of Patent Office is important and protected under Section 177 as follows: 177 False representations about the Patent Office (1) A person must not use, in connection with his or her business, words that would reasonably lead to the belief that his or her office is, or is officially connected with, the Patent Office. Penalty: 30 penalty units. (2) Without limiting subsection (1), a person who: (a) places, or allows to be placed, on the building in which his or her office is situated; or (b) uses when advertising his or her office or business; or (c) places on a document, as a description of his or her office or business; the words “Patent Office” or “Office for obtaining patents”, or words of similar import, whether alone or together with other words, is guilty of an offence against that subsection. The Patent Office has being established under this Act to perform three major functions:
The Patent Office in each country fits into their particular legal system and administers the patent law and other intellectual property rights according to their legislation and according to the treaties that they are signatory. For example the Paris Convention has over 190 country signatories and allows a 12 month spacing from your initial Australian application to filing in any one or more of those 190 signatory countries. However Patent Offices also undertake a number of other duties including:
The status of a patent application from the time it is originally filed until the time the patent is granted.
Upon filing a provisional application an invention can be classified as a ‘patent pending’. This is a crucial point in the patent application process. If a provisional patent application has been filed and adequately describes the invention, the patent will be classified as a ‘patent pending’. The holder of a pending patent will gain priority in the patent review process. Australia operates on a first to file basis in relation to patents. It is therefore important that once an invention has been drafted, the provisional specification is lodged as soon as practically possible. Once the provisional specification has been lodged, the holder is provided 12 months to refine and develop the invention before committing to file a patent application. This is therefore a crucial point in the application process as once a patent is classified as pending; the holder has secured initial protection for their invention.
Patent protection relates to the rights of exclusivity given to the holder of a patent, in exchange for the disclosure of their new and inventive technology to the public.
Once a patent application has been filed, and has met all of the requirements that an invention must meet in order to be patentable, then the patent application is granted as a patent. Only once a patent is granted does it have patent rights. Patent rights are the right of the patent holder or patentee to exclude other people from exploiting the invention without their permission. For example, the patentee can prevent others from making, using, exercising, selling, offering for sale, or importing infringing articles, or infringing processes.
Baxter IP regularly acts for clients to send a cease and desist letters to people that are selling articles in Australia that infringe patents held by our clients. Baxter IP also acts for clients to file patent applications, and to ensure that ensure that their patent applications meet the requirements in order to be granted.
Patent Registration is the broad term referring generally to the granting (or sealing) of a patent application, and loosely relates to the registering of the patent details in the official record of granted patents held in the patent office of the jurisdiction where the patent has been allowed (accepted) and subsequently granted as an enforceable patent right.
While “Patent Registration” typically refers to the act of granting a patent right in a particular jurisdiction, patent registration can also be used to refer to the entire process of obtaining grant of the patent from initial filing of a patent application through to finally securing a granted patent. For example, an applicant may be seeking patent registration for an invention and this process commences with the filing of a patent application (usually a provisional patent application). In some countries, for example Hong Kong, securing patent rights in that county may simply be a registration in the traditional sense where a patent application or granted patent has been achieved in one country and the patent applicant is merely extending, or ‘registering’ that granted patent in a related Jurisdiction.
The patent registration process can combine all elements of the application/examination/acceptance/grant procedure in securing granted patent rights in a particular jurisdiction, but more typically simply refers to the final step of the granting of the application. In some countries which do not have the resources for a completely independent patent system, for example, Hong Kong, the local patent procedure in that jurisdiction simply recognises granted patent rights achieved in either the United Kingdom or China, thus the act of securing corresponding patent rights in Hong Kong is merely a process of registering the applicant’s desire that the patent protection granted elsewhere is also to be deemed enforceable in Hong Kong, but without requiring a full application/examination/acceptance procedure with the Hong Kong patent office (which does not have the resources for a completely independent patent system).
Use of a patent search engine to identify whether or not the invention is new and subsequently patentable.
There are a variety of patent search tools that can be used to determine whether or not an invention can be protected or if it infringes a patent that is already in existence. A commonly used search method in Australia is a ‘novelty search’, which will provide an indication of whether a patent application will be allowed by IP Australia. A patent attorney can direct IP Australia to conduct this novelty search by carrying out an International Type Search (IPS). The information obtained from this search can be used to identity whether or not the invention is new. As this is the second step in the patent application process, this information can also be used to draft a more focused Patent Cooperation Treaty (PCT) International Patent Application. The patent search stage is a critical component of the patent application process as it may help to determine the validity of the patent application.
A patent searcher is a person that undertakes searches to see if your invention is likely to pass the test of being novel compared to any prior publication in the world. That is, a patent searcher will look to see whether, in their opinion, all or most of the features of your invention are disclosed in a prior published document. A patent searcher is often a scientist or engineer that has experience in patents. Often they are experts in the use of computer based patent database search engines. It is valuable for a patent attorney to be involved in patent searching as they can make use of their expertise in the relevant technology and in patent law as well as their experience in drafting patent specifications to be able to interpret the results and advise on the likely patentability of your invention. A patent attorney is fully qualified to undertake patent searching.
The Australian Patents Act 1990 in Section 18 defines four tests to be met for a patentable invention to exist. The second test is that: subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim: (b) when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an inventive step; prior art base means: information in a document that is publicly available, whether in or out of Australia (i.e. worldwide); and information contained in a published specification filed in respect of a complete application if: (A) the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and (B) the specification was published on or after the priority date of the claim under consideration; and (C) the information was contained in the specification on its filing date.
Note: For the meaning of document see section 2B of the Acts Interpretation Act 1901.
Here is an example of the importance of selecting a high quality patent searcher: An inventor has created a new food processor which is able to pulverise food to such a fine degree that it produces a liquid with no remaining pulp. The patent searcher could use a patent database search engine to find reference to all food processors and give you a large list of outputs. This is great to see the competition and in effect provides the “patent landscape” or “state of the art”. However it does not answer the question of whether the inventor’s invention is a patentable invention and overcomes the novelty test. The patent searcher might further proceed to look for all food processors that pulverise or provide liquid only outputs. Such a search could locate some relevant prior art but again will not give a result that can be relied on to provide an indication of the patentability of the invention. In contrast, a high quality patent searcher might use the following approach:
Having a new product that is easily marketable is not a definition of a patentable invention. Therefore, searching for marketable improvements or for resulting benefits of products is not a search that will help determine patentability. Instead it is necessary to determine the essential features of the invention that provide that result. This could be, in this case:
A patent search by a patent attorney can be highly focused. It will be able to provide a search result which provides an indication of the novelty of the invention. The patent attorney must be technology aware, legally aware of the requirements, and skilful in drafting the claims defining your invention. The definition of the invention must be supported by the description of the embodiments of the invention to provide clear limits on the scope of monopoly. It is therefore important to work with your patent attorney to review and assess different versions of your invention, so that you can make a full disclosure and achieve as wide a monopoly as possible, with a justifying wide range of examples.
The allocation of a monetary value to a patent, or other form of intellectual property.
Patents and other forms of intellectual property are evaluated using one or more of several different methods, depending on what the specific scenario is. The value of intellectual property can change depending on who its owner is, and what they intend doing with it. Intellectual property that is more readily able to be evaluated is intellectual property that already has revenue streams associated with it. For example, a patented product may already have revenue from sales Patents and other forms of intellectual property can be evaluated for a wide variety of reasons. One reason may be for establishing what others need to invest to match the value of the patent. For example, parties may want to know what the value of a patent is that one party is bringing to a joint venture, so that the other parties can bring items of similar value to the venture. Another reason may be to establish tax liability. Another reason may be to establish what tax benefits may be obtained from depreciation of a valued asset, or to establish a base value for capital gains tax. The valuation of a patent and other intellectual property is typically done using a wide variety of methodologies, including:
In 2014, one of Baxter IP clients wanted a valuation of their business, which was centred on their patent, for presentation to angel investors as a justification for the investment that they wanted in return for the shareholding offered. We valued their business and they got the investment that they required from the investors. Their business is now expanding internationally.
Patentable material is subject matter that satisfies the legal requirements for patent protection in a particular jurisdiction.
If a particular subject matter is deemed to be ‘patentable’, it may become a form of intellectual property right, which is commonly known as a patent. Historically speaking there has always been a divide between inventions that are patentable and those that are not. This is known as the method of manufacture. Material that is deemed patentable includes certain; inventions, substances, methods or processes. Material may be identified as being patentable, but will not become a patented until IP Australia has assessed the application based on their set criteria. Once this criterion is satisfied the patent will be granted, and the subject matter will be transformed from patentable material to patented intellectual property.
Physics patents are patents having claims directed to a physics principle or to a device relying on a physics principle. For example, a physics patent may relate to a device relying on such principles as nuclear physics (e.g. nuclear reactors), optical physics (e.g. lasers), electromagnetism etc.
A physics patent is the granted form of a physics patent application which relates to a technological solution relying on one or more fundamental principles underpinned by physics and could apply to devices in an extremely large field – as large as the field of physics itself – and generally requires the realisation of a commercial advantage out of a complex or abstract concept. Physics patents may relate to any field ranging from nuclear technology, electro-optical systems, nanotechnology or quantum mechanics through to mechanical devices relying on the motion of bodies under the action of forces or medical devices for diagnosis or treatment of patients based on fundamental physics principles. Due to the extremely broad nature of physics, and that it is practically impossible for any one person to be expert across all physics, physics patent applications should be prepared and filed by a patent attorney with an explicit technical background in the area of physics to which the invention relates due to the level of specialisation required to adequately understand such technology.
The provision of exclusive control over the propagating and harvested material of a newly developed plant variety, seed or organic material.
A Plant Breeders Right can be used to protect new varieties of plants that are distinct in nature, uniform and stable. This owner of a plant breeders right is given exclusive control over the propagating and harvested material of the plant, and thus owns commercial rights to its production, sale and distribution. The aim of the Plant Breeders Rights Act 1994 (Cth) is to encourage innovation in the plant breeders industry, and encourage investment in its development. By obtaining a plant breeders right, the holder is able to gain compensation for their efforts in developing the new plant. The application process for obtaining a plant breeders right is simpler than obtaining a patent. The first step is to file a part 1 application with IP Australia. The results of this application will determine the validity of the plant, and if successful will provide provisional plant breeders rights to the holder. The next step is to file a Description of Variety and have a substantive and physical examination of the plant. This will determine the distinctive features of the new variety, and determine the validity of the application. There is then a six-month opposition period where a photo and description of the plant is posted in the Plant Varieties Journal. Once these requirements have been satisfied and the opposition period has passed, the Plant Breeders Right may be granted. To have a fully registered Plant Breeders Right will take on average 2.5 years.
The Australian Wheat Growers association uses an endpoint royalty system to collect royalties from licensees of Plant Breeders Rights that they hold.
Matter that has been exposed to the public domain and as a result is not patentable.
Prior art does not require a physical existence, or have to be commercially available. The mere publication of any previous description of an invention is enough to satisfy its requirements. Many ideas or inventions are never commercialised, and yet there will be evidence of them somewhere in the public domain. This is enough to satisfy the notion of prior art. The implication of this is that if prior art exists, the inventive step required in a patent application will not be satisfied, and as a result a patent will not be granted. The potential existence of prior art highlights the importance of the nominal search phase of the patent application process. Extensive research of existing inventions that may contain similarity to your invention is therefore required. This will reduce the risk for potential patent holders of wasting time and money on a patent application that cannot be granted due to the existence of prior art.
The date that the provisional patent application is filed, this is the date from which an invention will be judged as being new or in breach of prior art.
The priority date for a patent application is established in stage one of the patent application process after a provisional patent application has been lodged with IP Australia. This date is considered to be the effective date of filing for the examination of the inventive step and non-obviousness of the patent application. The priority date is crucial as it determines the time limit for when prior art will be considered. In other words, any material that satisfies the criteria of prior art, but is created after the priority date of an application, will not be taken into account. The result of this is that only information that has been made publicly available up until the priority date can be seen as prior art. The priority date also sets a time limit for the provisional application process, whereby all refinements to this application must be made within 12 months of the priority date.
Product design is the process of defining, creating and/or refining a product by a business to be offered to its customers.
Product design broadly covers all stages of development of a product from conceptualisation through to realisation of a marketable and saleable item. There are various elements of product design focussing on different elements to the final product. These elements usually include some components of brainstorming of ideas be a group of people focussing on solving a particular problem; technical drawing and/or prototyping to bring the concepts of the brainstorming session into a tangible form; refining the design of the product for say, greater usability or to improve the ergonomic features of the product; and bringing the product into a final form for sale to consumers. However, this is often not the end of the product design process – the design may be constantly varied and improved as a result of feedback from the market or the consumers themselves. The product design process has benefited greatly in recent years with the improved accessibility to 3D printing techniques enabling rapid turnaround of subsequent product iterations. Often it is during the early product design stages of brainstorming and conceptualisation that patentable products are conceived as a novel means for solving a particular problem.
There are many great examples of good product design that are the result of many years of development and refinement. Particularly notable is the iPhone by Apple Inc. which, when it was first released in the United States in June 2007, started a revolution in the personal mobile device industry and effectively starting the smartphone movement. The iPhone concept was originally conceived of by Steve Jobs in 2005 as a method of interacting with a computer using a multi-touch screen – effectively making the keyboard or individual letter keys (e.g. on Blackberry devices at the time) obsolete. The initial designs were carried out in secret within Apple Inc. and when the first prototype was shown to Steve, he conceived of the idea to integrate it into a mobile phone which was announced in his keynote address at the Macworld conference as on January 9 2007 with the words: “I have been looking forward to this for two and a half years …. today, Apple is going to reinvent the phone.” The iPhone design sparked a massive push by existing mobile phone developers to try to ‘catch up’ to the Apple iPhone resulting in the current landscape of a variety of smartphone devices by many manufacturers, most of which have – either directly or indirectly – been in some form of litigation with Apple, Inc. over copying of the design of the iPhone hardware and software enabling the user interactions with the device. Time magazine named the iPhone the Invention of the Year in 2007.
The initial stage of the patent application process that sets the priority date for disclosure of the inventions details.
The provisional patent application is the first stage in the patent application process. The provisional application is an invention specification, which is lodged with IP Australia that includes both:
Upon filing a provisional application an invention can be classified as a ‘patent pending’. This is a crucial point in the patent application process. A provisional patent application that adequately describes the invention will give the holder of the application priority in the patent review process. Australia operates on a first to file basis in relation to patents. It is therefore important that once an invention has been drafted the provisional specification is lodged as soon as practically possible. Once the provisional specification has been lodged, the holder is provided 12 months to refine and develop the invention before committing to filing a complete patent application.
An expert in a specific plant group who is accredited by IP Australia to certify applications for plant breeders rights.
The primary role of a qualified person, in relation to plant breeder’s rights, is to ensure that the applications for a plant breeder right are technically rigorous. Qualified persons oversee the comparative trial for a plant breeder right, and help to provide evidence that is clear, concise and useful. There are two categories of qualified persons. A consultant-qualified person is accredited to act as a consultant for plant breeder right applications conducting duties such as; comparative varieties, experimental design, statistical analysis, and preparation of the description of variety. A non-consultant qualified person is accredited to certify applications for which they are the breeder, owner or authorised agent of the potential plant breeder’s right.
A usage based payment made by the licensee to the licensor for the ongoing use of intellectual property.
A royalty payment is a form of compensation that is paid to the owner of an intellectual property right, for the use of their intellectual property. There is a variety of compensation metrics that can be used in calculating the size of royalty payments. A commonly used method is to simply pay a portion of the proceeds from sales, which are related to an intellectual property right. Through this method of compensation licensees can purchase the right to; manufacture with, use, sell or advertise to sell a patented invention.
This is the finalisation of a patent application, which involves the Commissioner of Patents authenticating the patent, after which the deed is sent to the owner.
A patent is deemed to have been granted when the Commissioner of Patents marks the patent with the seal of the Australian Patent Office. For a standard patent, so long as there is no opposition, sealing occurs within six months of the patent being published in the Australian Official Journal of Patents.
A software patent is a very broad ranging term that is normally used to describe a patent application, the intent of which is to protect a software process. In practice, however, software patent applications are often directed to specific computing devices, networked architectures or systems to attempt to avoid patentable subject matter objections. Patenting of software or computer programs per se is specifically excluded in some countries such as Europe, New Zealand and South Africa.
Writing patent applications that are acceptable very much requires identification of a ‘technical effect’. A technical effect or technical engineering improvement may be, for example:
Approaches that are advantageous in software patenting include differentiating how a solution differs from its closest “real world” equivalent (e.g. does the invention involve multiple devices or specialised devices that solve problems in a way for which there is no “conventional” parallel. Software has structures, data has structure. How do these structures contribute to an improvement in the operation of the computer or another technical field?
A set of exclusive rights that is granted to an inventor or assignee for twenty years in return for detailed public disclosure of the invention.
A patent is a form of intellectual property right that can be granted for an invention, such as a device, substance, method or process. Once submitted, the invention must undergo examination to establish whether or not it is new to the world, inventive and useful. A patent can be used to exclude others from commercialising the patented invention without permission. This exclusion will last for the duration of the patents term. A standard patent differs from an innovation patent due to its duration and the significant level of inventiveness required. The standard patent terms are twenty years. While the patent application process is complex, in a simplified form, there are four steps that need to be followed. Stage one involves a provisional patent application. This is to be followed by a novelty search, Patent Cooperation Treaty (PCT) International Patent Application, and a National Phase Patent Application. IP Australia will assess the application based on their set criteria, and if satisfied, the patent will be granted. Patent protection is a crucial component in developing an intangible idea with unknown value, into a twenty-year monopoly over the potential market for the invention. By protecting an invention, the holder of a patent has the ability to stop third parties from copying the idea, and passing off the invention as their own. This will enable to patent holder to recover research and development costs and gain a competitive edge in the market.
A recognisable name, term, symbol or design that identifies a good or service, which is legally registered for use of a specific user.
Obtaining a trade mark is a way of protecting recognisable features of name, term, symbol or design that are specific to your good or service. A trade mark is therefore a method of distinguishing the goods and services of one firm from those goods and services of others. It is important to distinguish between a registered and common law (unregistered) trade mark. A registered trade mark is one that satisfies the criteria of IP Australia, and is legally registered for use by a specific user. A common law trade mark is an unregistered trade mark that has been used to the extent that it is recognised as having distinguished the good or service provided by one entity from those provided by other entities. While this form of trade mark is unregistered, in certain circumstances the common law may prevent another entity from using the trade mark in a way that may be considered unfair. A trade mark is protected from other trade marks that are seen to be deceptively similar to one that is already in existence. Trademarks that are deceptively similar to another may deceive consumers into purchasing an unwanted product and damage a brands reputation. Trademark protection from deceptively similar trade marks therefore prevents competitors from using another entities reputation to further their own business operations. The unauthorised use of existing trade marks is known as brand piracy and could leave an individual and / or entity liable to legal action in regards to trade mark infringement. For those concerned with infringing on an existing trade mark, the Australian Trademark On-line Search System (ATMOSS) can be used. ATMOSS is a free online database provide by IP Australia that allows the user to engage in a comprehensive search of existing trade mark rights in Australia. ATMOSS can also be used to keep track of the progress of trade mark applications, and the status of trade marks that have been previously registered.
McDonalds ® is a registered trade mark within the fast food industry. This protects McDonalds against having competitors copy their registered logo.
Trade mark dilution occurs when a well-known trade mark loses value and uniqueness from incorrect use. There are laws in place, like the Trade Marks Act 1995, and the Australian Consumer Law (ACL) to protect the owners’ trade marks and also protect consumers from being misled when purchasing goods or services. The existence of customers who are unable to determine the difference between the mark of the trade mark owner and a description of the good or service, for example, suggests that trade mark dilution may exist. Trade mark dilution can be proved a number of ways, including through customer surveys.
Forms of trade mark dilution include blurring, trade mark tarnishment, and freeriding. Blurring is when a third party uses an identical or almost identical trade mark to market goods or services unrelated to what the trade mark is actually registered for. Trade mark tarnishment occurs when a famous trade mark is used in an undesirable way. Freeriding, which is also known as parasitic exploitation, is when the owner of a mark similar to a famous mark receives the advantage of a positive association between the two marks.
A trade mark dilution case: Victoria’s Secret against Victor’s Secret
In 2002, the United States Supreme Court heard an argument between the owner of the Victoria’s Secret trade mark and Victor and Cathy Moseley. The Moseleys opened a store in Kentucky and named it Victor’s Secret, which sold similar items to that of the Victoria’s Secret line. After a cease-and-desist letter was sent from the company to the Moseleys, the Moseleys changed their store name to Victor’s Little Secret. Victoria’s Secret did not settle on this small change and sued the Moseleys. The Court was asked to determine if the use of Victor’s Secret or Victor’s Little Secret created economic harm or were likely to cause the famous Victoria’s Secret trade mark to lose value and uniqueness. It was determined that Victor’s Secret and Victor’s Little Secret did infringe on Victoria’s Secret’s trade mark on the basis of trade mark tarnishment. The Moseleys’ trade mark was said to degrade Victoria’s Secret’s trade mark and reduce the positive association of the famous mark.
Rights of Trade Mark Owners
A registered trade mark gives the registered owner an exclusive monopoly right (Section 20) to:
A registered trade mark provides a relatively straight forward basis for licensing, franchising, or even taking action to stop another trader from using a similar Trade Mark in relation to related goods/services without the registered owner’s authorisation.
Trade Mark Infringement and litigation
If a third party uses a registered trade mark without authorisation from the registered owner, the third party may be infringing exclusive rights accorded in a registered trade mark. Section 120(1) of the Trade Marks Act 1995 (Cth) states: “A person infringes a registered trademark if the person uses as a trademark a sign that is substantially identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered”.
The test for review of the marks under substantial identity is based on a side by side comparison of the respective marks, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison; as well as comparing if the goods/services are closely related.
The test for deceptive similarity does not involve looking at the trade marks side by side. The issue is not abstract similarity but deceptive similarity. The test is therefore between, on the one hand, the impression based on recollection of one mark that a person of ordinary intelligence and memory would have; and, on the other hand, the impressions that such a person would get from looking at the second mark.
An invented commercial method or compilation of information that is not commonly known, but can be protected by a business to retain an economic advantage.
There are two main forms of trade secrets. One form of trade secret is; a commercial method or compilation of information that does not meet the patentability criteria, but is sufficiently new and innovative to be protected from competition. An example of this would be a manufacturing process that is not deemed to be satisfactorily inventive to be protected as a patent, but is crucial enough to an organisations competitive advantage, that it should be kept as a secret from competitors. Another form of trade secret is one that would meet the patentability criteria, but the owner makes a conscious decision to protect the intellectual property as a trade secret, rather than patent the material. This may be done to avoid the 20-year protection limit imposed by patent protection. Furthermore, an organisation may choose to protect their IP as a trade secret so that they do not have to reveal information surrounding their invention to the public. A common form of protection of trade secrets is the use of a confidentiality agreement. This is useful as an employer can use this contract to prevent employees from revealing trade secrets. It is however important to note that a confidentiality agreement only protects the intellectual property from being exploited by those with whom you have an agreement. The best method of widespread protection for intellectual property is to have it patented.
Coca Cola Ltd uses confidentiality agreements to prevent its employees from revealing trade secrets. The benefits of this method of protection is that Coca Cola never has to reveal its secret recipe in a patent application, and subsequently can keep its claim of holding a secret recipe.
The USPTO stands for the United States Patent and Trademark Office.
The USPTO is the largest of many patent and trade mark offices around the world and is located in the United States of America. The USPTO receives applications for patents and trade marks that, once granted at the USPTO, will have force in the United States. The USPTO receives just over half a million utility patent applications every year, as well as 35,000 design patent applications and about 1000 plant patent applications. From these applications, the USPTO issues about 300,000 patents, 23,000 design patents, and about 1000 plant patents every year. Of the utility patents that are issued, about 167,000 are granted to foreign residents. The USPTO has examiners that are qualified in different technical fields of technology, and that are able to examine patent applications in a wide range of technology types.
A voluntary request for a patent, trade mark, design or plant breeders right to be assessed to meet the requirements of the relevant act.
After submitting a patent application examination must be requested within 5 years of the filing date. If you have not done so already, IP Australia will direct you to request an examination approximately 1 year before this expiry date. Once examination has been requested it will generally be completed by IP Australia within 1 year. The results of this examination will either come in the form of an Adverse Report or a Notice of Acceptance. If an adverse report is received, there will be an outline of the contentious issues within your IP claims, and why your application does not meet the requirements of the Patents Act 1990 (Cth). You will then have 12 months to address or retract all of the issues within the adverse report. IP Australia will then further examine the application based on their set criteria, and if satisfied, the patent will be granted.
WIPO stands for the World Intellectual Property Organisation. WIPO is a self-funding agency of the United Nations, with over 188 member countries.
One very important aspect of WIPO is that it administers the Patent Cooperation Treaty (PCT), which facilitates filing of a so-called international patent application. The Australian Patents Office (IP Australia) is a receiving Office for WIPO, and is an authorised searching and examination Authority. A PCT application can therefore be filed with IP Australia. An international patent application provides a patent applicant with additional time to both establish business partnerships (locally and overseas) and defer entry to the national phase in over 148 contracting member states. WIPO also administers the Madrid Agreement and Madrid Protocol International Trade Mark systems, the latter of which Australia is a member. This allows effective filing of overseas Trade Marks in member countries stemming from a home-base application in Australia.
A great example of WIPO is seen in International Patent Application No. PCT/AU2001/000168. The PCT system and process is explained in brief at the following link: This international patent application was:
The PCT application allows the applicant to file in a multitude of PCT member countries, and decide up to a maximum of 30 or 31 months after the first Australian provisional patent application, which country’s patent protection is required. There is a further aid in the PCT system, since within three (3) months of filing we obtain an international search report (ISR) and written opinion detailing relevant patent documents found by the Australian Patent Office. If we proceed further to enter ‘Chapter II’ of the PCT, we have opportunities to amend claims and submit arguments for further consideration. We can therefore strengthen the patent document to overcome any cited documents before entering the national phase in one or more PCT member countries.
An international or PCT patent application is often incorrectly referred to as a “worldwide patent”.
The description of an international or PCT patent application as a worldwide patent is incorrect for a number of reasons:
Baxter IP clients regularly file international patent applications in order to extend the deadline for filing patent applications overseas. They would typically do this for a number of reasons: