What is IP?
Intellectual Property (IP) is the product of your intellectual and creative effort. IP can take many forms such as an invention to solve a problem, a design to make a product visually appealing or a brand to distinguish your products and services in the marketplace. It could also be a literary, dramatic, musical or artistic work or even your own commercial or technical know-how that is proprietary to you.
Registrable IP rights are various types of legal rights (e.g. patents, registered trade marks, registered designs) that are specifically designed to protect the different forms of IP. These rights are “registered” by satisfying a set of requirements relevant to the form of IP being considered. Being a type of legal property, registrable IP rights are capable of being sold, assigned, gifted, licensed etc, which makes them a commercial asset to your business.
Importantly, an owner of a registrable IP right will also be able to legally enforce their rights through access to the Courts. In many cases, in the absence of any IP rights, competitors will be free to copy your IP once it has been disclosed.
Protecting your IP is essential if you’re looking to take your ideas to the world, and Madderns can help you both in Australia and in overseas markets. It will also allow you the time to develop your ideas before taking them to market.
Various types of IP rights are discussed below. If you want to know how to protect your IP, or what type of protection you need, contact us.
A patent is a type of intellectual property right that gives its owner a legal right to exclude others from making, using and selling their invention in a given country or region for a limited period of time, in exchange for publicly sharing their knowledge about the invention.
A patent is a form of registerable IP right, meaning an application for patent of the invention is typically filed but not enforceable (or pending) until it passes an examination and is granted by a patent office in the given country or region.
The patent application will share the inventor(s) knowledge of the invention, and will eventually be published for all to see. The patent application will include a set of claims, which set out the scope of the monopoly being sought in respect of the invention.
Examination of a patent application typically involves an assessment (i.e. the examination) by a specialist Patent Examiner of the claimed invention’s novelty (or newness) and inventiveness (or non-obviousness).
A patent application and granted patent in-turn must be maintained by paying renewal fees if it is to remain in force for the maximum possible term, but can be allowed to lapse sooner if no longer required.
A trade mark is a sign or identifier used to promote and differentiate products and services in the marketplace. Trade marks include brand names, logos and slogans as well as more unusual trade marks such as colours, shapes and sounds.
A registered trade mark is a form of registrable IP right, where a trade mark has been assessed as being sufficiently “distinctive” or unique. Examples of distinctive trade marks include invented words, phrases that are emotive or allusive but not directly descriptive, unusual combinations of words, and stylised logos. It is generally difficult to obtain a registered trade mark for descriptive words, common surnames and geographical names.
A ‘design’ is the overall visual appearance of a product such as its shape, configuration, pattern and ornamentation.
A registered design is a form of registrable IP right where the design has been assessed as being new and distinctive when compared with earlier designs that are in the public domain.
A registered design cannot be used to protect how a product works, its composition or internal structure.
Plant Breeders Rights
Plant Breeder’s Rights (PBR) are a type of registrable IP right that provides protection for plant varieties. The purpose is to encourage plant breeders to invest their time and effort developing new plant varieties for the public. In exchange, the plant breeder receives a limited period of protection, during which they can prevent others from, for example, selling, importing or exporting their plant variety. The length of protection is 25 years for vines and trees, and 20 years for everything else.
For a plant variety to be registrable and hence protectable under PBR, it must satisfy certain criteria. The plant variety must have a breeder, meaning it has been produced deliberately and not simply discovered in nature. The variety must also be distinct, uniform and stable. “Distinct” means that the variety must be distinct from the closest known relatives, which are usually the parents used in the breeding program. “Uniform” means that when many plants of the variety are grown in a field, there will be minimal variation between plants. “Stable” means that over successive generations, the characteristics of the plant variety do not change.
While others are not allowed to, for example, sell, import or export a protected plant variety, another person (such as a plant breeder) is still allowed to use that variety for breeding purposes. This means that the PBR system encourages the continued development of new plant varieties.
Plant breeders can apply to IP Australia for protection of a new plant variety. The application must be filed within one year of a variety being exploited (for example, sold to a customer) in Australia. The application process involves a two-part application. Application part 1 is a simple application with a description of the new plant variety and the breeding process used. Application part 2 requires a growth trial to prove the plant variety is distinct, uniform and stable. The growth trial can take one or up to several years, depending upon the plant species. An external consultant (known as a Qualified Person) with experience in the particular plant species is retained to assist in the management of the growth trial.
An Australian application part 1 can be used as the basis for obtaining corresponding protection of the new plant variety in other countries which are members of the International Union for the Protection of New Varieties of Plants (UPOV). As of 22 February 2021, there were 77 countries which were members of UPOV (see, List of UPOV Members at https://www.upov.int/members/en/). To extend PBR protection to other countries, an application must be filed in each of those other countries within 12 months of the Australian application part 1.
A domain name is the online address for a business and often corresponds to the business name in order to assist internet users to locate the business’ website (e.g. madderns.com.au). The primary function of a domain name is to provide an easily recognisable and memorable name to a numerically-addressed internet resource (usually comprised of a long string of numbers). The global domain name system is managed by the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit organisation that creates and implements policies governing domain names.
The right to use a domain name is delegated by Domain Name Registrars, which are accredited and authorised by ICANN to sell domain names and as such is a type of registrable IP right. With the growth of internet based businesses, domain names are increasingly recognised as a valuable business asset.
Circuit Layout Rights
Circuit layout rights protect the three dimensional layout or design of an integrated circuit (IC). Protection is provided for any fixed (e.g. 2D) representation of the 3D location of the components and interconnections in the IC and prevents copying of the layout or making an IC using the protected layout. Like the copyright on which it is based, no formal registration is required and protection is provided for 10 years from the date of the first commercial exploitation of the IC.
Importantly, circuit layout rights do not prevent someone copying the functionality of the IC provided they use a different layout (IC functionality may be protected through a patent).
Copyright is a type of IP right designed to protect original literary, dramatic, musical and artistic works from being copied. Copyright protection is automatic upon creation with no formal registration process required. The term of protection is generally from the date of creation of the work to 70 years after the death of the author.
Importantly, and unlike patent protection (as an example), copyright protects the form of expression of an idea as opposed to the idea or concept itself. The references to “literary” and “artistic” works are given an expansive interpretation.
As an example, a literary work could encompass computer programs and an artistic work would likely include engineering plans and drawings.
In general, whether copyright subsists in a work is not related to its merit as piece of artistic expression.
As patent and trade mark attorneys we would not typically advise in relation to copyright except for the circumstance where copyright protection could potentially overlap with designs protection.*
*for more information, please visit the Australian Copyright Council website.