FAQs

Q?

Will a design registration protect the way my product works?

A.

A design registration protects features or appearance of a product (or part of it), namely its shape, configuration, pattern or ornamentation. It will not provide protection in relation to the construction or function of your product.

Q?

Can I register both a product design and a patent?

A.

It is possible to protect your product with both registered design and patent protection. If you wish to apply for dual protection, it is important that both forms of protection are applied for (particularly design protection) before there is any public disclosure of your product design.

Q?

Will copyright protect my product design?

A.

Your product design can be copyright protected. Under certain circumstances, however, any copyright protection can become unenforceable if your product is commercially produced. Under such circumstances, registered design protection is a better alternative.

Q?

What notation should I use if my design has been registered?

A.

After registration, words such as “registered design” or “reg’d” should be used in relation to products bearing the design. While such marking is not mandatory, it is recommended as it may prevent an infringer from claiming that its infringement was innocent.

Q?

Can I register a descriptive term as a trade mark?

A.

In general, a descriptive term cannot be registered as a trade mark. The only way a descriptive term could be registered is if the owner can demonstrate many years of use of the mark such that consumers associate the mark with the owner’s business or products.

Q?

I have registered my business name, so why should I register a trade mark as well?

A.

A business name registration does not provide any proprietary rights to the name, meaning that other parties can use the same name. Only a trade mark registration can be used to prevent other parties from using the same, or similar, marks.

Q?

What searches should I do before using my new trade mark?

A.

In Australia, a search of the Australian Trade Marks Office database should be carried out, along with a common law search for unregistered trade marks. If the mark is to be used overseas, searches should also be conducted in the countries in which the mark will be used.

Q?

Won’t copyright protect my trade mark?

A.

Copyright protects the expression of an idea, not the idea itself. Someone could express your idea, or your trade mark, in a different way, and not infringe your copyright. Copyright may protect the appearance of a particular stylised logo, but not necessarily the particular word or idea in the logo. The registration of a trade mark can give you rights to a particular word expressed in any particular stylised form.

Q?

Why should I register my trade mark?

A.

You should register your trade mark to make enforcement of your rights easier and to stop third parties from registering your mark. If a third party registers your unregistered mark, a court action is required to revoke it. Court actions typically cost around $15,000 to start and can cost over $100,000 to finish.

Q?

Should I register my trade mark word or logo?

A.

Ideally, it would be best to register both. However, if you only wish to register one mark, it is generally best to register a ‘word’ mark, as it will provide broader protection than a logo.

Q?

Will copyright protect my invention?

A.

No. Copyright protection is, at best, limited to very specific aspects of a system, such as source code, and does not extend to an invention in any general form.

Q?

Can I obtain patent protection for a product or process that I have already been selling in Australia?

A.

Yes and no. Patent protection may be provided in some jurisdictions (including Australia) if a patent application is filed within 12 months of the first disclosure. In other jurisdictions, such as Europe, patent rights may be forfeited based upon prior sale of a product.

Q?

At what stage should I file a patent application?

A.

As early as possible. When filed, a patent application has “priority” over later applications and publications. This is particularly important for fast moving technology.

Q?

What other benefits are there in filing a patent application?

A.

Eligibility to apply for government funding, usually a necessity before being able to attract investors, powerful marketing point and may ward off competition.

Q?

Can I patent a business idea?

A.

A business idea by itself is not likely to be patentable. However, a business scheme or method which involves a physical form or device and results in a useful product may be patentable. It is important to note though, that using a computer to implement the business scheme or method may not be sufficient to confer patentability.

Q?

Can I keep my invention a trade secret even if I file a patent application?

A.

Only in the short term. Once a patent application is filed, it will eventually be published and therefore the invention will no longer be a trade secret. However, it is possible to enjoy patent protection and trade secret status for up to 18 months and you can choose to withdraw the application prior to any publication - thereby maintaining the trade secret status.

Q?

If I file a patent application, when will it be published?

A.

When a patent application is published will depend on the type of application. For example, an application for an innovation patent will usually be published within about one month of filing. However, an application for a standard patent is generally not published until about 18 months after the earliest priority date, where the earliest priority date is the filing dating of your first application.

Q?

I am still developing my invention. What type of patent application should I file?

A.

A provisional patent application. However, a complete application detailing any improvements to the invention will need to be filed within 12 months in order to maintain rights to the invention.

Q?

What notation should I use once my patent application has been filed?

A.

“Patent Pending”, “Patent applied for”, or “Patent Application Number...”

Q?

Can I disclose my invention after a provisional patent application has been filed?

A.

In short, yes as you have established a priority date for your invention by filing the application. Provided that the priority of the provisional application is retained by continuing with the patenting process, the invention as described in the provisional specification can be disclosed publicly without jeopardising the validity of any patent that may issue for that invention. However, if further developments are made, an updated application that includes the improvements may need to be filed before you disclose them (as well as the original invention) to the public.

Q?

I have used a consultant to help develop the invention. The consultant claims to own the invention, is that correct?

A.

If the consultant has made an inventive contribution to the invention, the consultant is an inventor and should, in the absence of any agreements to the contrary, be entitled to (co)-ownership. However, if the consultant has transferred his/her rights to the invention by assignment or contract of employment, the consultant cannot claim to own the invention as his/her rights to the invention have been transferred/given away.

Q?

Will the patent office ask to see my invention?

A.

No. However, the patent specification must include full details of your invention.

Q?

Is a prior art search mandatory before filing a new patent application?

A.

No. However, a prior art search is typically a very good idea - if you are aware of relevant prior art you can prepare a better patent application which avoids that prior art. This can also decrease down-stream costs because a patent application which has been drafted to avoid relevant prior art would receive fewer objections from patent examiners.

Q?

Should I use the TM or ® symbol?

A.

The ® symbol should only be used once a trade mark has been registered. The TM symbol can be used at any time.

Q?

Do I need to keep using the trade mark in order to maintain the registration?

A.

Once a trade mark has been registered for a period of 5 years, it will become vulnerable to removal for non-use if it is not used for a consecutive 3 year period. However, a registration is not automatically removed for non-use. In order for a mark to be removed for non-use an application for removal must be filed by a third party.

Q?

Where can I search for registered Australian trade marks?

A.

Searches can be conducted at http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start. However, while the search system can be simple to use, searching for earlier ‘confusingly similar’ trade marks is an art form. A do-it-yourself search can be risky. This is why professional clearance searches are highly recommended.

Q?

Will the Trade Marks Office enforce my registration on my behalf?

A.

The Trade Marks Office cannot enforce a trade mark registration. To enforce a trade mark, the trade mark owner or an authorised user must bring an action in court.

Q?

Will the Trade Marks Office inform me when someone else is trying to register my trade mark?

A.

The Trade Marks Office has no obligation to inform you if someone else tries to register your trade mark. The Trade Marks Office emphasises personal responsibility in monitoring the register to see if someone else is trying to register your trade mark, or something similar.

Q?

Do I need to register my trade mark before I can use it?

A.

You do not need to register your trade mark before you can use it. Common law rights to a trade mark can be generated through extensive use of the trade mark. However, common law rights depend on reputation, which is typically limited to the geographical area in which the mark has been used. Common law rights also have to be proven in court, which is an onerous and expensive. By contrast, proof of reputation is not required to enforce a trade mark registration in court. It is advisable to apply for registration of a trade mark before using it because the examination process may reveal a prior registration which could prevent you from using the trade mark.

Q?

Should I search for third-party patents (i.e. perform a freedom to operate search) before using my invention commercially?

A.

This is a commercial decision. The advantage of performing a third-party patent (or freedom to operate) search is that you can identify relevant patents which you may be at risk of infringing. Once you are aware of such patents, your commercial activities can be modified (if necessary), which would decrease your commercial risk.

Q?

Who is entitled to file a patent application?

A.

The actual inventor/s or someone who has derived entitlement to the invention from the actual inventor/s (e.g. by assignment or contract of employment).

Q?

Can I register the design of a product that I have already been selling in Australia?

A.

In most case the answer will be ‘no”. If you begin selling your product or if you otherwise publicly disclose the design in any way before you apply to register the design, then under Australian law any registration for the design is likely to be invalid and unenforceable. However, there may be exceptions, so you should speak with a patent attorney.

Q?

At what stage should I register my product design?

A.

Before the product (or the design of the product) is publicly disclosed in any way. If you begin selling your product or if you otherwise publicly disclose the design of the product in any way before you apply to register the design, then in most circumstances (and under the law in most countries) any registration for the design of your product would be invalid and unenforceable.

Q?

Should I search for third-party registered product designs before using my product commercially, or even before finalising the design of my product?

A.

Yes, and it’s better to do it before you finalise the design of your product. If you finalise the design of your product and it turns out that someone else already has an enforceable registered design that looks the same or sufficiently similar to yours, they could potentially stop you from selling your product. Or, if you have already sold some of your products, you could potentially be required to pay them compensation (i.e. damages or an account of profits). Rather than risk having to pay this compensation to someone else, and potentially also being left with a quantity or inventory of products that you cannot lawfully sell, it’s much better to do design searching first to make sure that nobody else has a current design registration that would conflict with your product. Also, the benefit of doing design searching before you finalise the design of your product is that, if there is a potentially conflicting design owned by someone else, you may be able to make changes to your product to get around it.

Q?

Can I register a product in Australia that is purely functional in nature?

A.

Yes, but the protection would be limited (and very restrictive) to the visual appearance of the product. A registered design only provides protection for the overall visual appearance of a product and does not protect the functionality of a product. Patent protection is recommended for protecting products that are purely functional.

Q?

Can I enforce my design once registered?

A.

No. A design is registered without substantive examination (i.e. of its newness and distinctiveness). The owner is not able to enforce the design until the design has passed substantive examination and a Certificate of Examination has been issued by the Designs Office. Examination can be voluntarily requested by the design owner or a third party.

Q?

What notation should I use if my design has been registered?

A.

After registration, words such as “registered design” or “reg’d” should be used in relation to products bearing the design. While such marking is not mandatory, it is recommended as it may prevent an infringer from claiming that its infringement was innocent.