IP FAQs

Intellectual Property is a collection of rights relating to products of the mind and individual rights include patents, trademarks, designs, copyright, trade secrets.

A patent is a government granted right to exclusively use an invention for a limited term.

A trademark is a sign that is used to indicate where a product or service comes from so that you can distinguish that product or service from others offering the same thing. A registered trademark is a government granted right to exclusively use the trademark in relation to specified goods or services.

A design is the appearance of a product. A registered design is a government granted right to exclusively use that design in the product for a limited term.

A copyright is an automatically acquired right to prevent reproduction of an original work. There is no process of registering copyright in Australia.

A trade secret is confidential information of value to an organization or person that gives or may give that organization a benefit. It is only a trade secret as long as it is kept a secret. Once other people are free to tell everyone else about it, it is no longer valuable as a secret.

PATENTS FAQ

A patent is granted for an invention (which is the application of an idea, rather than merely an idea by itself). The invention must be new (not previously known) and inventive (not obvious) at the time of filing.

The inventor(s) or another person having the legal right to have the patent transferred to them. Usually if an employee invents an invention in the course of their employment the employer will be able to have the patent transferred to them as an explicit or implied term of the employee’s employment contract.

A patent application must be filed with a patent specification, which in broad terms describes what the invention is along with at least one example of how to implement the invention. Golja Haines & Friend are experts at drafting patent applications.

Usually 3-7 years, depending on which country and what obstacles there are in obtaining the patent. Once filed however you can proceed to commercialize the invention. You do need to keep it secret until the application is filed.

If there is a need to obtain a patent more quickly then in many cases there are some tricks/mechanisms that you can use to speed up the process.

Before you disclose or commercialize the invention, when you are in possession of the invention, ie, more than a mere idea and before someone else beats you to it and files. So, not too early and not too late. Talk to Golja Haines & Friend to help you decide.

Most patents last for 20 years. Some non-standard patents last different amounts of time. For example an Australian Innovation Patent lasts for 8 years. Generally annual renewal fees are required, although just when they are required varies from country to country.

Firstly you need to have filed your application or obtained your patent. The patent needs to be valid and the alleged infringement needs to fall within the scope of protection you will get granted or have been granted.

If there is a good case, a Cease and Desist (aka Letter of Demand) is sent to the infringer asking them very nicely to stop infringing or you will sue them. Mostly this works or at least leads to a settlement of some kind. If however they don’t stop, perhaps because they don’t think the patent is valid or that they don’t believe they are infringing, then subject to advice we release the lawyers and we start legal proceedings. If possible it is a good idea for someone else to be paying for this.

Contact Golja Haines & Friend for friendly advice on these and other types of queries.

When it comes down to it this is the whole point of the patent, to use this commercial advantage. So how?

1. Sell the product and use the patent to stop competitors
2. Partner with someone to do 1)
3. Sell the patent, so that someone else will do 1)
4. Let someone else use the invention, which they would not otherwise be able to do because of the patent, in return for a royalty (i.e. license the patent) or
5. Combinations or variations of these.

TRADEMARKS FAQ

The two main requirements are that the trademark must be able to distinguish the applied for goods and services from those of other traders (an absolute requirement), and it must not be too similar to other peoples applications/registrations/existing reputations (a relative requirement). A trademark application will fail the first test if is likely that others will fairly want to use the trademark, such as if it is a descriptive term, a common surname, a geographical term or merely laudatory or a superlative.

A trade mark application must be filed with the mark and a list of goods and/or services to be covered. It is important to select the right mark to apply for. This might seem simple however this may not be the case if you have a composite logo with graphics and words. You also need to ensure you have an appropriate specification of goods and services. This is often not as simple as it seems either because this will, in part, define the scope of protection you get for with the trade mark registration.

The filing process generally starts in Australia. If filed within 6 months of the Australian filing date then overseas application can be made which will enjoy the benefit of the Australian filing date as the effective filing date in that other country.

There is a mechanism for filing in many countries at once – though the Madrid Protocol. This is in effect a central application process many countries use and thus is cost effective.

Generally each country will conduct an examination of the application. If allowed the registration will be granted on a country-by-country basis, although there are some regional trade mark registrations. There is no such thing as a world-wide trade mark registration, however you can obtain a trade mark registration in however many countries you can afford.

Contact Golja Haines & Friend if you would like help or advice regarding registering your trade mark.

Usually 8 months in Australia and 1-2 years in other countries, depending on which country and what obstacles there are in obtaining the trade mark registration.

If there is a need to obtain a registration more quickly then in many cases there are some tricks/mechanisms that can you use the speed up the process. Golja Haines & Friend can help with this.

Before someone else uses or files for it. A number of countries have a first to file system and others have a first to use system. If someone else beats you to it they may have superior rights that could cause to stop using the trade mark.

Most trade marks registrations can last for ever as long as they are renewed.

Firstly you need to have filed your application or obtained your registration. Provided they don’t have superior rights because of earlier use (although they are some other circumstances in which another party can have superior rights), having the registration gives you the means to stop someone using a mark that is too similar for similar goods and services.

If there is a good case a Cease and Desist (aka Letter of Demand) is sent to the infringer asking them very nicely to stop infringing or you will sue them. Mostly this works or at least leads to a settlement of some kind. If however they don’t stop, then subject to advice we release the lawyers and we start legal proceedings.

The trade mark is useful in making money because it enables customers to easily identify your product/service for purchase and repurchase.

Trade marks can also be sold or licensed.

Contact Golja Haines & Friend today to find out more about these options.

DESIGNS FAQ

A new and distinctive shape, configuration, pattern or ornamentation applied to an article can also be protected.

How a product looks can often be the reason that it gets chosen over another, so you need to make sure your design is protected.

Getting your application right is important, both to properly protect your work, and to save you money. Contact Golja Haines & Friend to discuss what will work best for your circumstances.

A design application must be filed with drawings or pictures of the product in its as sold form.

If desired applications can be filed overseas within 6 months of the Australian filing to gain this date as the effective filing date in another country.

Design registrations are not examined before grant in Australia.

Registration is relatively quick, within about a month.

Before you disclose or commercialize the design.

Most design registrations last for 10 years in Australia. There are some older ones that will last 16 years under the old system. Other countries have different terms for design registrations.

An assessment needs to be made of what the scope of the registration is. Australian design registrations must be examined before enforcement can occur. An assessment also needs to be made whether the alleged infringement is substantially identical in overall impression.

If there is a good case a Cease and Desist (aka Letter of Demand) is sent to the infringer asking them very nicely to stop infringing or you will sue them. Mostly this works or at least leads to a settlement of some kind. If however they don’t stop, perhaps because they don’t think the design is valid or that they don’t believe they are infringing, then subject to advice we release the lawyers and we start legal proceedings. If possible it is a good idea for someone else to be paying for this.

Contact Golja Haines & Friend for more information.

When it comes down to it this is the whole point of registering a design, to use this commercial advantage. So how?

1. Sell the product and use the patent to stop competitors
2. Partner with someone to do 1)
3. Sell the design, so that someone else will do 1)
4. Let someone else use the invention, which they would not otherwise be able to do because of the design, in return for a royalty (ie license the design), or
5. Combinations or variations of these.