IP Australia (the government body incorporating the Patent, Designs and Trade Mark Offices) has announced changes to some of their official fees which are proposed to take effect from 10 October 2016 (subject to amending regulations being made).
The most notable fee changes relating to patents and trade marks include:
• Increases to patent renewal fees, with a $50 increase in the 10th to 14th anniversary range; a $130 increase in the 15th to 19th anniversary range; and a $250 increase in the 20th to 24th anniversary range.
• Increases to trade mark application fees, with the majority of trade mark application fees increasing by $130 per class. For example, trade mark application fees will increase from $220 to $330 per class, and trade mark renewal fees will increase from $300 to $400 per class. The increase of trade mark fees will be partially offset by the removal of the $300 registration fee. This should consequently mean that the overall up-front cost to register a trade mark will be reduced.
For a full list of fee changes, please click here to visit IP Australia’s website.
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Insights from Bluedot Innovation’s Filip Eldic, and Madderns Electronics and ICT specialist Bill McFarlane.
Research and Development firm Bluedot Innovation delivers precise and easy to use location services technology to the world’s most exciting companies.
Emil Davityan (L) and Filip Eldic (R) of Bluedot Innovation
Madderns has worked with Bluedot throughout their rapid and meteoric rise, from a two-man tech startup in early 2013 to a successful software business now running offices in Melbourne, Australia and San Francisco, USA.
“Our Bluedot Point Software Develop Kit product enables mobile apps to trigger any action — like opening websites, sending messages and playing video — when users walk or drive through precise locations set anywhere in the world,” says Filip Eldic, Bluedot Co-Founder and Executive Director.
“Amongst many recent examples, the largest client contract we’ve signed to date is an AU$24 million, 14 market deal.”
But in the early days, all Filip and co-founder Emil Davityan had was an idea, drawn as a flow chart on paper. That was enough to get started on protecting their intellectual property (IP).
“Even before we had built the technology, I had a conversation with Bill McFarlane at Madderns to confirm it was protectable. We’ve worked together ever since,” Filip explains.
“Protecting our IP right from the beginning has been instrumental in allowing us to develop our products and to raise capital at strong valuations.”
Bluedot is now in the position to tap into a global location services market that is expected to grow to US$39 billion by 2019.
Protecting IP key to success
Bluedot co-founders Filip Eldic and Emil Davityan prioritised protection of their IP as a core component of their commercial strategy.
“Right from the outset, we decided to consciously invest in protecting our IP,” explains Filip.
This has paid dividends not just in ensuring peace of mind to limit copycat activity, but also from a growth perspective.
“When originally raising investment, we had no physical product so we needed to provide solidity and assurance for investors,” says Filip.
“Having a patent already filed at such an early stage gave us a significant ability to raise money at a good evaluation.”
Bluedot has attracted approximately AU$4 million in funding since the very early days of their operations, and are now working with top tier investors in Australia and the US to raise a substantial round for the next stage of the company’s growth.
“If we didn’t generate quality IP, underpinned through a comprehensive IP strategy, these capital raises would have taken place at much lower evaluations and we wouldn’t be able to provide clear assurances to clients around ownership and access to IP,” Filip says.
Working in partnership with Madderns
Bluedot co-founder Filip Eldic explains that Madderns have been a crucial part of their success.
“When we first met with Bill McFarlane, he realised we had a unique and valuable idea that could transform mobile location services,” says Filip.
“Since then, Madderns have been an incredibly good partner for us.”
He says Madderns have been strategic and flexible, and worked with Bluedot to manage budgets as their startup was growing and cost-conscious.
“Without that flexibility we wouldn’t have been able to work in this space,” explains Filip.
“No other firm came close to Madderns in terms of expertise, approach, and flexibility.”
Expert guidance for patenting technical innovation
Part of both the Electronics and ICT teams at Madderns, Bill McFarlane worked with Bluedot to develop, file and progress patent applications to ensure IP protection in selected countries across the world.
Bluedot owns patent applications that protect the highly unique and commercially valuable aspects of their software capability. This includes the application of geofences to trigger actions, and reduced phone battery drainage associated with use of the mobile device as it pinpoints locations anywhere in the world.
Bill explains the steps in protecting technological inventions through patenting.
“In Australia, the first step in the process is to file a provisional patent application, a figurative flag in the sand that places a ‘first to file’ date on the intellectual property,” says Bill.
The provisional application does not provide any rights to enforcement, and is effective for 12 months. The client can use that time to file further provisional applications as the idea develops, and importantly to decide whether to file complete patent applications in Australia or another country.
The filing of a complete application can be achieved through filing an International (PCT) application.
“The PCT application acts like a global reservation system,” Bill explains.
“You file a single complete application, and that delivers you the right to file in 148 countries around the world.”
The 148 countries are signatories to the Patent Cooperation Treaty, and include Australia, China, Japan, Indonesia, India, USA, Canada, much of Europe, some South American countries, parts of Africa and several Arab States. The PCT application is administered by the World Intellectual Property Organization.
Filing a PCT application provides the applicant with another 18 months of protection, during which time they can assess individual markets and decide which countries in which to submit the patent applications.
“Once you’ve reached this point and made your assessment of the patent coverage that best suits your commercial strategies, you enter the national phase of the PCT application system. Bluedot are currently at this point, selecting chosen countries with two of their patent applications,” says Bill.
Bill also provides Bluedot with strategic trademarks advice and filing services, another important aspect of IP protection for tech startups.
Bill McFarlane and his colleagues in the Electronics and ICT teams at Madderns have also worked with many other companies for IP protection related to technical inventions and products, including:
Contact Bill at Bill.McFarlane@madderns.com.au
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Did you know that sending an email overseas may find you in breach of the Defence Trade Control Act 2012 and that you will be personally liable? Did you know that a penalty for such an act without a licence includes imprisonment?
Australia takes seriously its international counter proliferation obligations, using Australian export control laws to ensure Australia exports responsibly. Australia’s export control policies are in place to enable the export of defence and strategic goods where it is consistent with Australia’s national interests and international obligations.
The Defence Export Control Office (DECO) is the government entity that supervises these obligations as defined in a number of Acts and the one that is the subject of this article is the Defence Trade Controls Act 2012. The DECO web site, from which passages of this article are included, is http://www.defence.gov.au/DECO/Notices.asp#N2 .
The Defence Export Control Office (DECO) is responsible to the Minister for Defence for regulating the export of defence and strategic goods and technologies and importantly for you and the patent attorney profession this includes the export of information about controlled goods and technologies by way of electronic email.
The implementation date for the application of this Act is 17 May 2015, so you have plenty of time to set procedures in place in your working environment so that you, your staff or colleagues are not going to fall foul of this Act.
Thus, the inclusion of such information in an academic paper, patent specification or even an email containing such information, sent overseas or copied to someone, such as a fellow researcher or patent attorney overseas, is prohibited unless a license to do so is obtained before the act of export. It does not matter to where overseas the export of the information is made, so it does not matter that it may only be sent to someone in what most would consider an allied nation such as the United States of America.
Interestingly, an email containing the same information sent and received within Australia is not an export.
More specifically if you want to know whether the information is of the type that MUST be licensed before exportation, the first point of enquiry is the Defence and Strategic Goods List (DSGL) http://www.defence.gov.au/DECO/DSGL.asp .
This list contains all controlled items in relation to the arms control treaties and international export control regimes to which Australia is committed, and identifies specific Australian goods and technologies. The important issue is to realise that information that discloses certain technical details of these goods and technologies is information subject to the Defence Export Controls Act 2012.
The DSGL is made up of two parts.
Part One covers defence and related goods – these are goods and technologies designed or adapted for use by armed forces or goods that are inherently lethal. These goods include:
- military goods – goods or technology designed or adapted for military purposes; and
- non-military lethal goods – equipment that is inherently lethal, incapacitating or destructive such as non-military firearms, non-military ammunition and commercial explosives and initiators.
Part Two covers strategic goods and technologies developed for commercial needs but may be used as part of a military program, for the development or production of a military system or weapons of mass destruction. This is also known as the Dual-Use List.
This document is 361 pages long and unless you are continually required to deal in such matters, it has been a welcome initiative of DECO to provide a web interface to assist concerned and responsible persons to check if their goods or technology fall within its ambit. Thus it is important for academics, their administrators, inventors and patent attorneys to make the check and determine if a planned export will require a licence or at least a further discussion with DECO to determine the circumstances. The web site is http://www.defence.gov.au/deco/ .
DECO has indicated that every effort will be made to assess enquiries and applications within a reasonable time frame, but clearly, the earlier before the planned or intended export you conduct a check or contact DECO the better. It will be unrealistic to expect DECO, to properly assess your situation within hours or days if the type of information is not clearly identifiable as being a restricted export or requires authorisation of an export licence.
Once formalised, the progress of individual cases is closely monitored and reported to the applicant. Applicants are consulted early in the application process and throughout the process and are provided the opportunity to present all relevant information that can assist in making an assessment of the application for a licence or indeed the necessity for a licence. Where it is determined that an application requires inter-agency consultation, applicants are provided with written advice explaining the process and that advising time frames may extend beyond 35 days.
The export control systems in place and the types of goods and technology are continually evolving and must be constantly monitored and updated by DECO into the DSGL. Australia’s export control policies and procedures are therefore regularly reviewed to take account of changes in our strategic circumstances. Thus it is the responsibility of you and your patent attorney to check and recheck the DGSL or enquire with DECO as required.
As stated above the implementation date for the application of this Act is 17 May 2015, so now is the time to create procedures for you your working environment so that you, your staff or colleagues are not going to fall foul of this Act. DECO is relying on education as the main instrument of encouragement to Australians and punitive measures will not be taken. However, DECO has indicated that repeat and intentional export of such information will be met with the full force of this very important law.
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