Intellectual Property (IP) stems from your creativity and innovation and may be found in the solutions you provide for the technical problems and/or market needs that you have identified and/or addressed.  In general, IP may be seen as any product of the intellect that has commercial value.  Some examples of IP are:

• the underlying functionality that differentiates your products and services
• your reputation in trade
• the get-up, look and feel of your products
• product designs – the visual appeal and appearance of your goods
• the know-how that your company thrives on
• trade secrets
• original literary or artistic works

Over the last four centuries many laws have come into existence throughout the world that protect IP in much the same way that “real estate” and other forms of property have enjoyed.  In this respect, IP may be bought, sold or transferred in ownership like a house, a car or a boat and like these articles it may also be ‘rented’ or ‘leased’ to others.

In the past the primary capital worth of a company or business was found in its plant, machines, buildings and other real assets.  In recent times, however, a great deal of a business’ worth comprises IP.  For example, a company such as Fosters Brewing has well over 50% of its capital in intellectual (invisible) property.  As another example, the word or brand (trade mark) Coca Cola™ is worth many billions of dollars.

The following are more specific forms of IP protection.

Patent

A patent provides a monopoly in the exploitation of an invention, which may include but is not limited to any device, machine, substance, composition of matter, biological material (not including human beings or means of their reproduction), method or process, which is new, inventive and useful.

A patent can be legally enforceable and gives the owner exclusive statutory rights to prevent others from exploiting the invention; authorise others to exploit the invention and; dispose of some or all of the patent rights for the life (term) of the patent.  Patent protection is not automatic and in most countries you have to apply for a patent and have it successfully pass through an examination process to ensure it meets the necessary legal requirements for granting a patent.  It is important to note that, even after grant, a patent is not automatically deemed to be valid and enforceable.  Moreover, a patent does not provide immunity from infringing any other rights of another party.

Generally a patent cannot be granted for an invention unless it satisfies various legislative criteria.  Amongst other things, the criteria requires that the invention is:

• Inventive – Not obvious to a person of ordinary skill in the relevant technical field at the time of filing the first patent application;
• Novel – New and ‘unique’ in the sense that no prior art or technology publicly discloses all the features of the claimed invention.

There is no such thing as a ‘world patent’ because the laws for patenting differ from country to country.  However, there is an international process for applying simultaneously for patents in most countries.  .smoorenburg pini. can directly attend to Australian, New Zealand and international patent applications.  .smoorenburg pini. can also pursue patent protection for your invention in specific individual countries through our extensive network of IP associates worldwide.

In Australia, patent protection is provided under the Patents Act 1990.  There are two types of patents in Australia — ‘standard’ patents and ‘innovation’ patents.  A standard patent gives protection for up to 20 years or, in the case of certain pharmaceuticals, up to 25 years.  An innovation patent, when Certified, gives protection for up to 8 years and requires that the invention has an innovative step (instead of the inventive step required in the case of standard patents).  While other countries typically have protection analogous to the standard patent, protection analogous to innovation patents is not universal.

.smoorenburg pini. can also arrange patent searches in Australia and New Zealand or other countries through our network of associates.  Patent searches are usually directed to providing information regarding (a) the state of the art in a particular technology, (b) the possibility of infringing another party’s patent, or (c) the novelty of a new invention.

Trade Mark

A trade mark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or any combination of these.  It is used to distinguish goods and services of one trader from those of another.

In many countries, traders can acquire certain rights in a trade mark by virtue of its use.  In addition, virtually all countries provide a system by which traders may formally apply for trade mark registration.

Trade mark applications must successfully pass through an examination process to ensure they meet necessary legal requirements for registration.  In particular, the trade mark must be capable of distinguishing your goods or services from those of other traders.  This means, for example, that you cannot register a trade mark that directly describes your goods and services.  You also cannot register a trade mark that is substantially identical or deceptively similar to an existing trade mark.

In Australia, trade mark registration is provided under the Trade Marks Act 1995.  A registered Australian trade mark gives you the exclusive legal right to use, control the use, license or sell it within Australia for the goods and services for which it is registered.  In contrast to the granting of a patent, a valid registration of a trade mark can provide immunity from infringing the trade mark registration of another trader for the same or similar mark.

In most countries, initial registration of a trade mark lasts for 10 years.  After that time you can continue to renew your registration for successive periods of 10 years on payment of the appropriate fee.  A trade mark can therefore have an infinite life representing significant business value.  In most countries, however, you must use your mark in a bona fide way to avoid it becoming vulnerable to removal from the Register.

.smoorenburg pini. can attend to the application and registration of trade marks in Australia and New Zealand as well as international registrations that designate countries that are party to international agreements and protocols for registration of trade marks.  .smoorenburg pini. can also make use of their extensive network of overseas IP associates to pursue protection for your trade marks via registration in most industrialised countries.

.smoorenburg pini. can also arrange trade mark searches in Australia and New Zealand or other countries through our network of associates.  Trade mark searches are usually directed to providing information regarding (a) the possibility of infringing another party’s trade mark registration, or (b) the registrability of a trade mark.

Other ‘name’ registrations

Copyright

Copyright protects the original expression of ideas, not the ideas themselves.  This includes for example, the expression of ideas embodied in works of art, literature, music, films, broadcasts and computer programs.  In Australia, it is not necessary to apply for copyright protection – copyright protection exists automatically from the moment an original work is created, irrespective of its aesthetic or creative merit.

Copyright protection is provided under the Copyright Act 1968 and gives exclusive rights to license others in regard to copying, publicly performing, broadcasting, publishing and making an adaptation of a work.  Rights vary according to the nature of the work.  Those for artistic works, for instance, are different to those for literary and musical works.

Although copying can infringe copyright, the Copyright Act includes specific, limited exemptions from infringement.  For example, a certain amount of copying is permissible under ‘fair dealing’ provisions.  Copyright does not protect a copyright owner from independent creation of a similar work.

Although it is not mandatory in Australia for copyright material to bear a copyright warning notice (or the copyright owner's name and date of creation of the copyright material) it can help prove your ownership of the copyright.  It is also necessary to establish copyright ownership in some countries overseas.  It can also act as a deterrent to potential infringers.

In Australia there is also some overlap between copyright and design law.  For example, copyright in a  three-dimensional artistic work is lost if the artistic work is applied  industrially.  In such a case, it is necessary to register the design if protection is required. However, copyright in associated material, such as the two-dimensional plans and specifications for the artistic work is not lost upon industrial application.

In Australia, the duration of copyright varies according to the nature of the work and whether or not it has been published.  Over the years there have also been a number of amendments to the provisions of the Copyright Act that relate to duration of protection.  As a result the date of creation or publication of the copyright work may also be relevant.  However, copyright for literary, dramatic, musical and artistic works generally lasts 70 years from the year of the author's death or from the year of first publication after the author's death.  Copyright for films and sound recordings lasts 70 years from their publication and for broadcasts, 70 years from the year in which they were made.

Most countries around the world are members of the Berne Copyright Convention and/or the Universal Copyright Convention.  Australia is a member of both conventions.  These conventions provide a high level of uniformity of copyright protection around the world, and reciprocal rights for nationals of member countries.

Circuit Layout Rights

Circuit layout rights automatically protect original layout designs for integrated circuits, and computer chips.

In Australia circuit layouts are protected under the Circuit Layouts Act 1989.  While the rights provided under the Act are based on copyright law principles they are a separate, unique form of protection.

In Australia it is not necessary to apply for circuit layout protection – circuit layout protection exists automatically from the moment the layout design is created.

Circuit layouts are usually highly complex and the intellectual effort in creating an original layout may be considerable and of great value.  An integrated circuit or chip made from the plans is the key to the operation of all kinds of electronic devices, from heart pacemakers to personal computers.

The owner of an original circuit layout has exclusive right to copy the layout in a material form, make integrated circuits from the layout and exploit it commercially in Australia.

Commercial exploitation may occur by importation, sale, hire or distribution of a layout or an integrated circuit made according to the layout.

The maximum possible duration of circuit layout protection is 20 years.  Rights in an original layout subsist for 10 years from the first commercial exploitation – provided this occurs within 10 years from creation of the layout – or 10 years from the year in which it was made, if not commercially exploited.

Plant Breeder Rights

Plant breeder's rights (PBR) are used to protect new varieties of plants by giving exclusive commercial rights to market a new variety or its reproductive material.  This includes transgenic plants, algae and fungi.

In Australia, plant breeder’s rights are provided under the Plant Breeder’s Rights Act 1994.  An owner of the rights can direct the production, sale and distribution of the new variety, receive royalties from the sale of plants or sell the rights.  Plant breeder’s rights are not automatic and in Australia it is necessary to file an application and have it successfully pass through an examination process to ensure that it meets the necessary legal requirements for registration.

In particular, it is necessary during examination to establish that:

• the new variety is distinct, as well as being uniform and stable; and
•  the variety is clearly distinguishable from any other variety, the existence of which is a matter of common knowledge.

Confidential Information

The term ‘confidential information’ is synonymous with terms such as ‘trade secret’, ‘proprietary knowledge’, ‘know-how’ and ‘industrial secrets’.  Confidential information can be an extremely valuable asset.

Keeping information secret may be an appropriate strategy in certain circumstances.  For example, it may be appropriate when the construction, manufacturing process or formulation of a product is difficult copy, or when reverse engineering is unlikely.  It may also be a necessary form of protection if, for example, a key invention cannot be protected by a patent.

However keeping information out of the public domain can be logistically difficult and may necessitate extreme vigilance.  It may include actions such as physical barriers restricting access to manufacturing plants, electronic security on key documents and contractual fetters on any person handling the confidential information.  In particular, confidentiality may be difficult and expensive to maintain over long periods or when a large number of people, such as employees, contractors and consultants must be made privy to the confidential information.  Employers can be particularly vulnerable to loss of control of confidential information when employees leave their employment.

Furthermore, mere possession of confidential information does not stop anyone else independently establishing the same confidential information.

Like most countries, Australia has no system of registration of confidential information, and no legislation specific to protection of confidential information per se.  Depending on the factual circumstances, enforcement of rights in confidential information typically falls under competition legislation or common law relating to contracts.

.smoorenburg pini. can assist you with advice how to protect confidential information, including confidentiality agreements for the protection of intellectual assets.

The above summary is based on information available from the Australian Patent Office www.ipaustralia.gov.au.