Patents in Australia
A patent is a statutory right to the exclusive use of an invention. It gives the patent owner the right to prevent others from making, selling, using or importing the invention for as long as the patent remains in force.
What can be patented?
Patents can be obtained in respect of products and processes that are new and useful. In general, in order to be patentable, the invention should be of an industrial, commercial or trading character, as opposed to a purely artistic or intellectual exercise.
The invention must be new and involve some ingenuity or exercise of inventive skill. It is not necessary that the invention be complex or a major breakthrough. Even simple or small improvements can be patented, provided that such improvements result in significant advantages.
A new invention
Whilst it is necessary for an invention to be new at the time of the first filing, Australia provides a grace period of twelve months from a disclosure by the applicant within which to file a complete patent application. However, where reliance is made on the grace period, the rights granted upon issue of a patent may be limited. Furthermore, a disclosure in the grace period, before the filing of an application, may invalidate overseas applications in the majority of countries which do not have an equivalent grace period.
Claiming patent protection
You are not entitled to represent that an invention is patented until the patent has been granted. Once the patent has been granted you are entitled to mark the products with the word “patented”. While the patent application is pending you may use the notation “patent pending” or “patent applied for” or “patent application no. …..”.
The 10 Point “Can’t Go Wrong” IP Checklist
1. Determine who did it
Who is the inventor of the new invention? Is there perhaps more than one inventor, e.g. a team who work together? What was each member of the team’s contribution to the invention? Who is the author of the artwork, script, logo or drawings?
2. Make sure you own it
Questions to ask:
Have you got the issue of ownership of intellectual property covered in your employment contracts? Is it necessary to have the inventor(s) assign ownership of the invention to a company?
Do you need to get the copyright in your website or logo of photos used in marketing material assigned to you?
3. Assess commercial worth
Determine whether it would be an economical proposition to commercialise your invention. If your invention is worth spending time and money on in order to commercialise it, then you should protect it by means of a patent or a design registration.
Once you have adopted a new brand name, slogan, logo or distinctive packaging, it would be worth protecting it by means of registering a trade mark to stop your opposition from copying your branding.
4. Is it new?
Just because an invention is not readily available in commerce, it does not mean that your invention is new. An initial general search on the Internet will not only reveal who your competitors are and what they are offering, but also give you a good idea of how unique and “new” your invention is. The next step is to have a commercial novelty search undertaken by the Australian Patent Office.
5. Understand when IP is created
Questions to ask:
Have you appointed a person to monitor your workplace and to record when new intellectual property is created? Who has the responsibility of investigating the commercialisation potential of the IP? Do your employment agreements include confidentiality clauses? Do you have confidentiality agreements in place when you discuss new IP with others?
6. Will you infringe?
The golden rule is: Search before you use or adopt! Searching is a specialist task and it is recommended that searches be carried out by a Patent and/or Trade Marks Attorney.
Patents and Designs
An infringement search is usually undertaken very early in the commercialisation process to determine whether the manufacture or sale of a product, or use of a process, in a particular country would infringe a patent in that country.
Trade Marks
How sure are you that nobody else in the entire world has already adopted the great new brand name or logo for similar or related services or goods? Unauthorised use of a trade mark may amount to infringement and render the user liable to a claim for substantial damages or an account of profits.
7. Get the right IP for the job
Question to ask:
Should this IP be protected by a patent, a trade mark, a design or is it perhaps protected by copyright?
8. File with an IP office to get a priority date
A priority date establish a date from which your rights are formally protected once registered.
9. Make public and commercialise
Once an application is filed, you can talk more freely to manufacturers, marketers and the like about the commercialisation of your invention.
10. Check overseas markets/ file overseas
Does your future marketing plan include selling in any overseas countries? Patents, designs and trade marks are mainly national rights and if you file an application in Australia, you do not have protection in any overseas countries (See International patent, design and trade mark registration)
© 2006, Ian de Jonge, Cullens Patent and Trade Mark Attorneys
