Australia: Business Succession Factsheet: Protecting your intellectual property

Intellectual Property alert
Last Updated: 8 September 2012
Article by Hayden Delaney and Michele Davis

Many business owners invest significant amounts in developing intellectual property that they use in their business. However, they often give very little consideration to how this valuable asset should be protected.

In this factsheet, senior associate Hayden Delaney and solicitor Michele Davis outline the key things that business owners should consider to protect the intellectual property they develop in their business.

What type of IP do you have?

One of the keys to effectively protecting your intellectual property is taking the time to identify what intellectual property you and your business own.

Legislation in Australia protects the different types of intellectual property that exist. Some rights arise automatically, while others require registration and examination in accordance with applicable legislation or regulations.

The definition of intellectual property is broad and encompasses things such as know-how, confidential information, business names, domain names, current and future registered and unregistered rights related to copyright, circuit layouts, designs, trade marks, moral rights, patents, inventions and discoveries.

While 'intellectual property' is all these things, it will usually fall into one (or more) of the following categories:

  • Copyright
  • Moral rights
  • Trade marks
  • Designs
  • Patents
  • Plant breeders' rights

Copyright

Key characteristics

  • Copyright protects the original expression of an idea, not the idea itself.
  • Copyright applies to original works of art, literature, music, films, broadcasts and computer programs.
  • Copyright protection automatically arises at the time of creation.
  • Copyright generally last 70 years from the author's death or first publication or broadcast.

Copyright is protected under the Copyright Act 1988 (Cth). The creator/author of the copyright is generally considered to be the owner of the copyright. However, there are exclusions. For example, if the copyright is created during the course of employment by an employee, the employer is the owner. However, a contractor will own the copyright in any work it undertakes, unless the copyright has been assigned in writing.

Copyright owners have exclusive rights to do certain acts with an original work or other subject matter, including publishing, making adaptations of the work, broadcasting and licensing others to use the work. The Copyright Act also provides for a number of 'fair dealing' provisions that exempt certain uses of copyright work from being an infringement of copyright, such as for education purposes or news reporting.

As with all intellectual property rights, for an assignment or transfer of copyright to be effective, it must be in writing.

Moral rights are a neighbouring right to that of copyright, although you do not need to be the owner of copyright in order to hold moral rights. Moral rights are the right to be attributed as the author/creator of the work and to take action if someone else claims they are the author/creator of the work or if the work is altered, distorted or treated in a derogatory manner. Moral rights cannot be assigned, although they can be waived by the rights holder.

Trade marks

Key characteristics

  • A trade mark is used to distinguish goods and services of one trader from those of another trader.
  • A trade mark can be a word, logo/picture, sound, smell, shape, aspect of packaging, or any combination of these.
  • There may be common law rights in unregistered trade marks.
  • The initial registration of a trade mark lasts for 10 years.

The Trade Marks Act 1995 (Cth) provides the framework for the protection of trade marks. IP Australia administers the application, examination, registration and renewal of trade marks in Australia. However, it is up to the owner (or in some cases the licensee) of the trade mark to maintain and enforce trade mark registrations.

Australia is a signatory of the Madrid Protocol, which enables international trade mark applications to be made in up to 81 countries on the basis of an originating Australian trade mark registration.

Domain and business names

It is important to note that the registration of a domain name or a company name does not give a company or an individual rights to a registered business name (as provided under the Business Names Registration Act 2011 (Cth)), nor does it mean that the domain name or company name are not infringing any trade marks which may be registered with IP Australia. A registered business name does not give the owner of the name a registered trade mark.

Therefore, while businesses need to register a business name in order to be able to lawfully trade under that name, business owners need to consider the extent of the protection that that registration provides, and whether they should also register a trade mark for that name.

Designs

Key characteristics

  • A design can include the features of shape, configuration, pattern or ornamentation.
  • To be registrable, a design must be new and distinctive.
  • The initial period of design registration is five years, renewable for an additional period of five years.

The Designs Act 2003 (Cth) regulates the protection of designs. IP Australia administers the application, examination, registration and renewal of designs in Australia. The design right holder is responsible for maintaining and enforcing its rights in the design.

Design registration is intended to protect designs that are to be applied industrially. Unlike patents, design rights only cover the appearance of an item, not how it works.

Patents

Key characteristics

  • Patents generally cover any device, substance, method or process which is new, inventive and useful.
  • Australia offers two type of patents: standard and innovative.
  • Depending on the type of patent, a patent holder has protection for eight to 20 years.
  • A patent application is to have a maximum of five claims.

Patents are regulated by the Patents Act 1990. Patents are administered by IP Australia. The individual holder is responsible for maintaining and enforcing its rights in its patent.

There are two types of patents in Australia: standard and innovative.

A standard patent, once granted, gives long term protection over an invention for a period of 20 years. The threshold for applying for a standard patent is an 'inventive step'.

Innovative patents grant protection for a period of eight years and are designed to protect inventions that may not sufficiently satisfy the inventive threshold required for standard patents. The threshold for applying for an innovative patent is an 'innovative step'.

Plant breeders' rights

Key characteristics

  • The new plant variety must be distinct, uniform and stable.
  • Protection can last up to 25 years, depending on the variety of the plant being registered.

The protection and administration of plant breeders' rights are covered by the Plant Breeder's Rights Act 1994 (Cth). In order to be registered, the plant variety must be new or recently exploited. The period for 'recent exploitation' ranges from a year to six years of commercial sale of the plant variety before registration, depending on the plant variety and whether it has been sold overseas or only in Australia.

In order to obtain protection, the applicant must verify the claims that the plant variety is distinct from all other varieties of common knowledge; this is usually done by conducting a comparative growing test.

IP Australia is responsible for the administration and registration of plant breeders' rights. The maintenance and enforcement of plant breeders' rights are the responsibility of the rights holder.

International protection

Importantly, it is also possible to register designs, patents, plant breeders' rights and trade marks internationally, and to obtain protection on a wider basis in many countries throughout the world. Because Australia is a party to various international treaties, most applications internationally can be made through IP Australia (at a cost).

© HopgoodGanim Lawyers

Award-winning law firm HopgoodGanim offers commercially-focused advice, coupled with reliable and responsive service, to clients throughout Australia and across international borders.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions