How to Protect Your Intellectual Property Rights
“The law of intellectual property has a pivotal role in providing both incentive and security for those engaging and investigating in the innovative process.” – Ricketson, “The Future of Australian Intellectual Property Law Reform and Administration” (1992) 2 AIPJ 1 at 3, 5.
What is Intellectual Property?
It is all too easy to become wrapped in a tricky Intellectual Property (IP) dispute. Despite Australian IP laws in place, technologies continue to make it easier for competition to get their hands on your creative works.
IP is not a singular. The matters that fall within the scope of IP are diverse and extensive.
IP refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.
IP is intangible property that is the result of creativity which can be owned and dealt with in the same way as other forms of property including selling and licensing.
What are Intellectual Property Rights?
IP rights are rights to stop others from engaging in unauthorised activities in relation to the protected subject matter. IP rights are not mutually exclusive and it will often be necessary to rely on two or more systems concurrently to effectively protect the same subject matter.
In many cases, the rights come into play sequentially with one right taking over from another at different stages of a product’s life-cycle.The categories of IP rights include; patents, copyright, trademarks and designs.
The Patents Act 1990 (Cth) provides that a patent gives a person an exclusive right to commercially exploit their invention for the life of the patent. In exchange, the inventor is required to disclose to the pubic how the invention works.
The following are some of the key conditions that have to be met in order to obtain a patent:
- Patents may be granted for inventions in any field of technology;
- The invention can be either a product or a process that is capable of being used for an industrial or business purpose or be useful;
- It must be novel; that is, it must have a new characteristic which isn’t already known in the body of existing knowledge in its technical field;
- It must involve an ‘inventive step’, not just an obvious solution to a problem;
- The subject matter must be ‘patentable’ under law; and
- The invention must be disclosed clear and complete in an application in order to enable it to be replicated by a person with an ordinary level of skill in the relevant technical field .
When registering a patent, the immediate priority is to be quiet.
In other words, don’t tell anyone about the invention before you file for registration because this puts it at risk of falling into the public domain. This means, the work no longer has a right owner (of the economic rights).
However, if you have to disclose the invention before it is registered it is advised to obtain legal assistance to draft a non-disclosure agreement, this way it will be protected from the use of others.
In Australia, the cost of registering a standard patent including solicitor fees is usually between $5,000-$8,000 and annual maintenance fees are payable from its fifth year. Over a 20 year term these will add a further $8,000 to cost .
In Australia, a copyright right is governed by the Copyright Act 1968 (Cth) (“Copyright Act”) and the Copyright Regulations 1969 (Cth) (“Copyright Regulations”). These laws protect work from being illegally copied or downloaded.
Under these two statutes, the following interests are protected; “works” and “subject matter other than works”.
Broadly speaking, works commonly protected by copyright throughout the world include:
- Literary works such as novels, poems, plays, reference works, newspaper articles;
- Computer programs, databases;
- Films, musical compositions, and choreography; artistic works such as paintings, drawings, photographs, and sculpture (please note ‘artistic work’ in s10 of the Copyright Act includes a ‘drawing…whether the work is of artistic quality or not’);
- Architecture; and
- Advertisements, maps, and technical drawings.
Importantly, registration is not required for copyright. This very fact makes copyright difficult; how can you protect your work without registration?
In the majority of countries, and according to the Berne Convention, copyright protection is obtained automatically without the need for registration or other formalities . However, what you can do to make your copyright claim very clear is by adding © symbol at the end of your work. Even though this doesn’t mean anything in Australia, nonetheless, many right owners still include the symbol © as a highly visible way to emphasise that the work is protected by copyright and that all rights are reserved.
The possibilities of the kinds of trademarks that can be registered are almost limitless. Section 17 of the Trade Marks Act 1995 (Cth) (“TMA”) provides a “trade mark” is a ‘sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’.
Furthermore, a “sign” is specified in the TMA to include ‘any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, an aspect of packaging, shape, colour, sound or scent’.
So when are trademarks used? It is common for business people to want more than one mark or more than one class of trade mark registered. For example, a computing business might want to register the words of the name of the business, the logo and the slogan for safety.
When will a person infringe on a registered trade mark? Section 120 of the TMA provides a ‘person infringes a registered trade mark if the person uses a trade mark sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods of the same description as that of goods…in respect of which the trademark is registered’.
Trademarks can be registered through online services found on Ipaustralia.gov.au, fees start at $420 per mark, per class for both the application and registration. If you’re thinking about registering a trade mark, it is recommended to seek professional legal advice because registration is progressively becoming more difficult.
A design is governed by the Designs Act 2003 (Cth) (“Design Act”). The Design Act protects the right to reproduce a ‘design’, defined in s 5 of the Act to be the overall appearance of the product resulting from one or more visual features of the product. It differs from a trade mark which can be said to be the ‘badge of origin’ and a patent which requires an inventive step.
Enforcement of design protection under the Design Act can only occur if the design is registered with IP Australia.
What makes a design registrable? A design is a registrable design if it is ‘new and distinctive when compared with the prior art base for the design as it existed’ immediately prior to the date of application for registration.
It is advised to register a design with IP Australia online services before distribution for sale in order to protect the design from competition imitating it. The initial fee is approximate $250; additional fees will apply depending on the nature of the application. However, just like trademarks, there are a number of relevant steps in the process of registering a design which can make it tricky; it is advised to seek professional legal advice to ensure everything is in order.
In summary, it is important that a degree of skill be exercised in drafting the documents and following the procedures necessary for obtaining IP protection. By arming yourself with the expertise of a professional in the field, you can be assured that your intellectual property will be adequately protected.
If you would like more information regarding your intellectual property rights, please don’t hesitate to contact Butlers Business and Law on (02)49 7002 or fill an enquiry form out on our website https://butlers.net.au/contact/, and our professional solicitors can assist you.