Workshop 2 - Legal Concerns (Steve Davey) Cullens Brochure

PATENTS, TRADE MARKS AND DESIGNS


Founded in Queensland in 1936, Cullens is one of Australia’s most experienced firms of patent and trade

mark attorneys with offices in Brisbane, the Gold Coast and Townsville.

Whether you need patent protection or a design or trade mark registration, the Cullens team will secure

the most advantageous legal protection for your intellectual property. We do that by taking the time to

learn about your business, long term objectives and competitors.

The Cullens team has expertise in a wide range of technologies, including mechanical, electrical, chemical,

civil and mining engineering, biotechnology, pharmaceuticals, chemistry, computer science, physics,

electronics, biology and agriculture, as well as expertise in design and trade mark matters.

Our clients have trusted us for over 75 years to advise and guide them in all aspects of protecting their

intellectual property and managing risk.

Patent Attorneys

Under the Australian Patents Act, only registered Patent Attorneys are permitted to prepare and amend patent

applications on behalf of clients. For a particular invention, it is desirable to choose a patent attorney who is

familiar with the technology involved to ensure adequate disclosure and claiming of the invention.

All professional work at Cullens is performed by or under the supervision of a registered attorney who has the

appropriate knowledge, skills and qualifications for that work.

We are bound by the Code of Conduct for Patent and Trade Marks Attorneys of the Professional Standards

Board for Patent and Trade Mark Attorneys.

Cullens Patent and Trade Mark Attorneys

Professional services (practising in Australia and New Zealand)

Patents• Patentability advice

• Preparing patent specifications

• Filing and prosecuting patent applications

• Maintaining patent applications and patents

Trade Marks• Trade mark registrability advice

• Filing and prosecuting trade mark

applications

• Renewing registered trade marks

Designs• Design registrability advice

• Filing and prosecuting design applications

• Renewing registered designs

Other IP Services• Infringement and validity advice

• Monitoring competitors’ intellectual property

• Novelty and infringement searches

• Oppositions

• Determining status of patents, trade marks

and designs

• Audits to facilitate the identification and

protection of intellectual property

• Managing intellectual property portfolios

• Licensing intellectual property

• Assignment of intellectual property

• Industrial copyright advice

• Plant breeder’s rights

• Circuit layout rights

• Searching and registering domain names

• Business names

Contents

Introduction ....................................................................................................... 2

Obtaining a patent in Australia ........................................................................... 3

The patenting procedure flowchart ................................................................. 3

Australian standard patent application flowchart ........................................... 4

Australian innovation patent application flowchart ........................................ 5

Searches ............................................................................................................ 5

Overseas patent applications .............................................................................. 6

International patent application flowchart ..................................................... 7

List of countries party to the Patent Co-operation Treaty ................................. 7

Trade mark registration in Australia ..................................................................... 8

Australian trade mark registration flowchart .................................................. 9

Registering trade marks in overseas countries ................................................... 10

Copyright ......................................................................................................... 10

Registering a design ......................................................................................... 11

Australian design registration flowchart ....................................................... 11

Overseas design registration ............................................................................. 11

Commercialisation ............................................................................................ 12

Commercialisation pathway flowchart ......................................................... 12

This booklet is intended to provide general information on patents, trade marks and designs.

The contents should not be relied upon as detailed legal advice for any specific case. While every effort has been made to ensure that the contents are correct at the time of publication, please note, the relevant laws and practice are subject to change.

The booklet may be freely copied provided that Cullens is acknowledged in the copy.

All rights reserved © July 2013

PATENTS, TRADE MARKS AND DESIGNS 1

What is not protected is

at risk

2

In the world of business, market advantage is acquired through the creation of intellectual property, be it

ongoing product and process innovation, novel designs or distinctive brands. These are the cornerstones

of any business, differentiating it from competitors and providing a sustainable commercial edge in a

competitive environment.

Are your most valuable assets protected?

Intangible assets are often regarded as the most valuable on a company’s balance sheet. Consider for

example, the value of the Coke® brand, or the licensing revenue generated by a successful pharmaceutical

covered by a portfolio of patents.

Intellectual property falls within the class of intangible assets. A number of forms of intellectual property

can be protected, for example, by patents and designs, registered trade marks, domain names and plant

breeder’s rights. Other forms include copyright and circuit layout rights, which are automatic rights. When

considering which type of protection to acquire, the nature of the product or process, its potential life span

and the potential market place should be taken into account. If your business plan includes exporting to

or manufacturing in a country other than Australia, your intellectual property may need to be protected in

the countries or region in which you will conduct business.

Prompt attention to your intellectual property will help you to avoid the potentially disastrous

consequences of failing to take appropriate action at the right time.

Co-ordinating your business plan, marketing plan and intellectual property portfolio will

pay dividends in the future, add value to your business and assist in keeping your

competitors at bay.

What is worth copying is

worth protecting‘‘

‘‘


Introduction

‘‘

‘‘

Patents

A patent is the statutory right to the exclusive use of an invention. Thus, the owner has the right to prevent

others from making, selling, using or importing the invention for as long as the patent remains in force.

Patents can be obtained in respect of products and processes that are new and useful. In general, in order

to be patentable, the invention should be of an industrial, commercial or trading character, as opposed to

a purely artistic or intellectual exercise.

The invention must be new and involve some ingenuity or exercise of inventive skill, but it is not necessary

that the invention be complex or a major breakthrough. Even simple or small improvements can be

patented, provided that such improvements result in significant advantages.

Whilst in general it is necessary for an invention to be new at the time of the first filing, Australia provides

a grace period of twelve months from a disclosure by the applicant within which to file a complete patent

application. However, where reliance is made on the grace period, the rights granted upon issue of a

patent may be limited.

Furthermore, a disclosure in the grace period, before the filing of an application, may invalidate overseas

applications in the majority of countries which do not have an equivalent grace period.

Filing a patent application in Australia

When applying for a patent in Australia, it is necessary to submit a description of the invention (called

the “specification”) to the Patent Office to obtain a priority date. The invention should be described in

sufficient detail in the specification to enable “a person skilled in the art” to put the invention into effect,

without the need to exercise further inventive skill or ingenuity.

Any public disclosure or commercial use of a patented invention after the priority date will not prejudice

the validity of that patent. Normally, once the invention has been described in a patent application, it

may be advertised, sold or otherwise disclosed to the public without prejudice to the validity of the patent

to issue on that application.

A patent application may be either a “provisional” application or a “complete” application.

Provisional patent applications

A provisional application is useful if the invention is in its infancy and changes and modifications are

envisaged in the 12 month period following the filing of the provisional application. Filing a provisional

application with the Australian Patent Office establishes a “priority date” for the invention described

in the provisional specification. If the applicant wishes to obtain a patent, the applicant must file a

complete application within 12 months of filing of the provisional application. Filing the provisional

application effectively gives the applicant a 12 month window in which to proceed with patenting

and enables development of a market-ready prototype. However, if no further development of the

invention is envisaged, or if the applicant wishes to obtain a patent as soon as possible, it may be

more appropriate to file a complete application in the first instance.


The patenting procedure

3

Obtaining a patent in Australia

Meet with Patent

Attorney

Undertake Search

File Provisional Application

File Innovation

Patent Application

File Standard

Patent Application

File International

Patent Application

12 months▲

▲

4

Complete patent applications

The complete application may be for a standard patent or an innovation patent.

The term of a standard patent is 20 years, commencing on the date of filing of the complete application.

After a standard patent application is filed, it will be examined by a Patent Examiner, but only if an

examination fee is paid. Examination must be requested within five years of the filing of the complete

application, or within two months of a direction from the Patent Office to do so, whichever is the earlier,

otherwise the application will lapse. During examination, the Patent Examiner will conduct novelty

searches and examine the application for compliance with the Patents Act and Regulations. If objections

are raised by the Examiner, the applicant is allowed a period to overcome the objections and place the

application in a condition for acceptance. If and when the application is accepted by the Patent Office,

the acceptance is advertised in the Official Journal of Patents. An acceptance fee is payable within three

months of the advertisement.

In some instances the Patent Office will also issue a novelty search report prior to publication of the

application.

Any person may oppose the grant of a patent on a standard application by filing a Notice of Opposition

within three months of the advertisement of acceptance. If an opposition is filed, both the applicant and

the opponent are given an opportunity to lodge evidence, and the matter is then heard by a Delegate of

the Commissioner of Patents. The majority of patent applications proceed to grant unopposed.

If there is no opposition, or if the opposition is unsuccessful, a patent will be granted on the application

(if the acceptance fee has been paid).

To maintain the patent, or patent application in force, it is necessary to pay annual fees. These fees are called

“continuation fees” during the application phase, and “renewal fees” after the patent has been granted. No

continuation fees are payable for the first four years after the filing of the complete application.

You are not entitled to represent that an invention is patented until the patent has been granted. Once

the patent has been granted, you are entitled to mark the product with the word “patented”. While the

patent application is pending however, you may use the notation “patent pending” or “patent applied

for” or “patent application no. ...”.

Innovation patent applications

If a complete application for an innovation patent is filed, the application will immediately undergo a

formalities check and a patent will be granted if all formal matters are in order. No examination of the

subject matter is made, other than to ensure that it is not excluded subject matter.

The innovation patent will be granted for a term of eight years, subject to annual renewal fees being

paid, but the patent cannot be enforced until the patent is examined and certified by the Patent Office.

Examination may be requested by the patentee, a third-party or upon the direction of the Commissioner.

A third-party can oppose the certification after the patent has been granted by the Patent Office.

Innovation patents are suitable for protecting lower level inventions, which cannot be protected by

standard patents. However, they can also be used for high level inventions, particularly those with short

market life.PATENTS, TRADE MARKS AND DESIGNS

Australian standard patent application

Application Rejected

Patent Refused

Appeal to Court

Appeal to Court

Publication of

Application

Opposition by Third- Parties

Expiry20 years from filing

Commencing 4 years from filing

Direction to Request

Examination

Request Examination

Annual Renewal

Examination

Application Accepted

▲

▲

File Standard

Patent Application

Response Filed

Report Issues?

✔

No Objections

Opposition Successful

Objections

▲

▲

▲

?

Opposition Dismissed

▲

✘

Grant

Preliminary Search & Opinion

?

$

✔

$

$

$

$

$

$

$

$

$

Infringement, or ‘freedom to use’ searches should be carried out prior to using a trade mark, design or

invention.

Registrability searches should be carried out prior to taking steps to register a trade mark, design or

patent.

Searching is a specialist task and it is recommended that searches be carried out by a

Patent and Trade Mark Attorney.

Resources for conducting searches:

Patent searches

Australia: www.ipaustralia.gov.au

USA: www.patft.uspto.gov

“Worldwide” (including WIPO, Japan, Europe & Others): worldwide.espacenet.com

Trade mark searches

Australia: www.ipaustralia.gov.au

USA: www.uspto.gov/main/trademarks.htm

Madrid Protocol: www.wipo.int/romarin

Design searches

Australia: pericles.ipaustralia.gov.au/adds2/adds.adds_start.intro

USA: www.patft.uspto.gov

European Community Designs: http://oami.europa.eu/ows/rw/pages/index.en.do

Australian business & company name searches

ASIC: www.search.asic.gov.au

General internet searches

Google: www.google.com.au


Searches

Australian innovation patent application

Patent Revoked

Patent Revoked

Appeal to Court

Appeal to Court

Grant

Opposition by Third Parties

Expiry

To enforce

8 years from filing

Commencing 2 years from filing

Request Examination

Annual Renewal

Examination

Certification

▲

▲

▲

File Innovation

Patent Application

Response Filed

$

$

$

$

Report Issues

$

$

0-3 months▲

▲

?

✔

No Objections

Opposition Successful

Objections

▲

▲

▲

$

? $

Opposition Dismissed▲✔

$

$

Patents are granted by the patent offices of individual countries (and a limited number of multinational

patent offices). In order to obtain patent protection in overseas countries, it is normally necessary to

obtain a patent in each country in which patent protection is required. The Patent Office is usually an

authority of the government of a country and since there is no world government, it follows that that

there is no “World Patent”.

Patent applications under the Paris Convention

One method of obtaining patents in multiple countries is to lodge a separate patent application in each

country of interest. Once the first patent application has been filed in a country which is a member of the

Paris Convention (e.g. Australia), the filing of corresponding applications in other convention countries

can be deferred by up to twelve months from the first filing without loss of priority. Most countries are

party to the Paris Convention.

The cost of filing overseas patent applications varies from country to country, and costs in non-English

speaking countries are usually greater due to the need to translate the patent specification and associated

correspondence. Note that costs will also be incurred after filing the application due to the need to

process the application through to the grant of a patent.

Patent Co-operation Treaty applications

Another method is to utilize the provisions of the Patent Co-operation Treaty. Most countries of the world are

party to the Patent Co-operation Treaty [“PCT”].

Under the provisions of the PCT, a single International (PCT) patent application can be filed with the

International Bureau. The deadline for filing individual applications in those countries can then be deferred to

30 or 31 months (depending on the country) from the priority date of the application. During the PCT phase,

an international novelty search is conducted and the applicant is provided with the results of that search.

The applicant will therefore have the benefit of the search results before having to decide whether or not to

proceed in any or all of the countries covered by the PCT application.

The PCT allows a patent application to be filed initially in one language at one Patent

Office and with one set of fees, while keeping open the option of proceeding in multiple

countries. The international patent search provides an indication of the novelty or otherwise

of the invention, and therefore the possibility of obtaining strong patents. The PCT application

can be amended, if required, to distinguish the invention from any document located in

the international search, which can minimise future processing costs.

It should be noted that the PCT application is an intermediate step and does not take the place of

individual “national” applications in each country, but defers the national processing of the patent

application in each country. The costs of a PCT application are additional to the costs of the national

processing of the patent application in each selected country.

6

Overseas patent applications


European patent applications

Most European countries are party to the European Patent Convention (“EPC”), which allows a single

“European” patent application to be filed with the European Patent Office. The European patent application

will be examined by the European Patent Office and if the application is in a condition for acceptance,

a European patent will be granted. From 2014, it will also be possible to obtain a unitary European

patent, i.e. a single patent covering multiple European countries without the need for individual national

validation. In order to obtain patent protection in any of the countries designated in the European patent

application, the European patent is then validated in those countries, and a translation of the European

patent specification into the national language of each individual country is required. If patent protection

is required in more than three European countries, it is usually cost effective to file a European patent

application.

List of countries party to the Patent Co-operation Treaty:

Albania, Algeria, Angola, Antigua and Barbuda, Argentina, Armenia, Australia, Austria, Azerbaijan,

Bahrain, Barbados, Belarus, Belgium, Belize, Benin, Bosnia and Herzegovina, Botswana, Brazil, Bulgaria,

Burkina Faso, Cameroon, Canada, Central African Republic, Chad, Chile, China, Colombia, Comoros,

Congo, Costa Rica, Côte d’Ivoire, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic

of Korea, Denmark, Dominica, Dominican Republic, Ecuador, Egypt, El Salvador, Equatorial Guinea,

Estonia, Finland, France, Gabon, Gambia, Georgia, Germany, Ghana, Greece, Grenada, Guatemala,

Guinea, Guinea-Bissau, Holy See, Honduras, Hungary, Iceland, India, Indonesia, Ireland, Iran (Islamic

Republic of), Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lao People’s Democratic Republic, Latvia,

Lesotho, Liberia, Libyan Arab Jamahiriya, Liechtenstein, Lithuania, Luxembourg, Madagascar, Malawi,

Malaysia, Mali, Malta, Mauritania, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique,

Namibia, Netherlands, New Zealand, Nicaragua, Niger, Nigeria, Norway, Oman, Papua New Guinea, Peru,

Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Saint

Kitts and Nevis, Saint Lucia, Saint Vincent & the Grenadines, San Marino, Sao Tome and Principe, Senegal,

Serbia, Seychelles, Sierra Leone, Singapore, Slovakia, Slovenia, South Africa, Spain, Sri Lanka, Sudan,

Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, Thailand, The former Yugoslav Republic

of Macedonia, Togo, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan, Uganda, Ukraine, United Arab

Emirates, United Kingdom, United Republic of Tanzania, United States of America, Uzbekistan, Vietnam,

Zambia, Zimbabwe.

(As at date of publishing).


International patent application

Opinion Issues

International Search

Report Issues

Preliminary Examination

Commence National Phase in

Designated Countries

3-4 months

Optional

Optional

30 months from Priority Date

19 - 22 months from Priority Date

18 months from Priority Date

Publication of

Application

Preliminary Examination

Report Issues

$

▲

▲▲

▲▲

▲

File International

Patent Application

$

$

Amendments

Request International Preliminary Examination

$

$

$

Reply (Optional) $

$

?

Choosing a trade mark

A trade mark is used to signify that products or services originate from a particular entity or business,

and/or that the products or services are of a particular quality.

When choosing a trade mark, it is advisable to choose one which is easily registered so that registration

can be obtained quickly and with a minimum of cost.

A trade mark may consist of a word(s), number(s), a logo or a combination of these. A trade mark may

even be a three dimensional shape, sound or smell (although these are more difficult to register).

The following points should be borne in mind when selecting a new trade mark:

1. The trade mark should be distinctive, or at least capable of becoming distinctive with use.

2. Invented words are normally inherently distinctive and hence registrable, subject to there being no

conflicts with other trade marks. Note however, that simply putting two known words together to form

a new word does not necessarily constitute an “invented” word. For example, GOODBUY would not

be considered to be an invented word since it is simply a juxtaposition of the words GOOD and BUY.

Examples of trade marks which are invented words include KODAK, XEROX and SPAM.

3. The trade mark must not be directly descriptive of the goods or services for which registration is

sought.

4. Geographical names should be avoided as it is extremely difficult to obtain a trade mark monopoly for

a geographical name.

5. Common surnames should not be chosen as trade marks since they are difficult to register. If

registration of a common surname as a trade mark is sought, it is normally necessary to file evidence

of use of the trade mark to establish that it has become distinctive as a trade mark despite its surname

significance.

6. The name of a person, especially a common name, is not normally registrable unless that name is

represented in a special or particular manner. However, the names of fictitious persons are normally

registrable.

7. The signature of the applicant for registration or some predecessor in his business is normally

registrable.

8. Distinctive logos are normally registrable.

Before using a new trade mark, it is strongly recommended that a trade mark search be conducted to

ascertain whether that trade mark is available for use or registration in relation to the goods or services

of interest. Unauthorised use of a trade mark which is deceptively similar to a registered trade mark

may amount to infringement and render the user liable to a claim for substantial damages or an account

of profits.

Trade marks should not be confused with business names. Business name registration is required in the

public interest, and does not grant proprietary rights in that name to the registered owner. Trade marks

are assets with many of the same implications as capital assets (like equipment), including the ability to

be bought, licensed or sold.

A name may be registered as both a business name and a trade mark.

8

Trade mark registration in Australia


Australian trade mark registration

Appeal to Court

Pre-Filing Search

Registration Refused

Registration

4 months

2 months

File Trade Mark

Application(s)

Examination by Trade

Marks Office

Advertisement of AcceptancePay Registration

Fees

Examiner’s Report Issues

Respond to Report

Renewal(10 years)

$

$

$

$

$

?

No Objections

Meet with Trade Mark

Attorney

$

Application Rejected

Oppositionby Third-

Party

Registering a trade mark in Australia

For the purpose of registration of a trade mark, goods and services are classified into 45 international

classes. An application may nominate goods and services falling into one or more classes. The cost

of the application depends on the number of classes nominated (but not the number of goods or services

in a specific class).

Where a trade mark is used by members of an association, it may be registered as a “collective trade

mark”.

Trade marks which are used to certify that the goods or services comply with prescribed standards can

be registered as “certification marks”. Examples of such certification marks include the well-known wool

mark, and the trade mark of the Standards Association of Australia.

If a trade mark is well known in respect of certain goods or services, and confusion may arise if the same

trade mark is used by others in respect of other goods or services, a “defensive” registration of that trade

mark can be obtained in respect of such other goods or services, even though the registered proprietor

may not have any intention of using the trade mark on those other goods or services.

After an application has been filed with the Trade Marks Office, it will be examined by the Trade Marks

Examiner. If objections are raised by the Trade Marks Examiner, a period of 15 months is allowed within

which to overcome objections, for example by submitting argument, amending the application or

submitting evidence of use of the trade mark. Limited extensions of time may be obtained upon payment

of extension fees.

If there are no objections to registration, or if the objections are overcome, the application is accepted

and acceptance is advertised in the Official Journal of Trade Marks. A registration fee is payable within

six months of the advertisement.

Any person may oppose the registration of the trade mark within two months of the advertisement of

acceptance. If opposition is filed, both the applicant and the opponent are given an opportunity to lodge

evidence and the matter is heard by a Delegate of the Registrar of Trade Marks. In the majority of cases,

trade mark applications are not opposed.

If there is no opposition, or if the opposition is unsuccessful, the trade mark will be registered (assuming

that the registration fee is paid). The initial term of registration is 10 years from the date of filing of the

trade mark application.

Thereafter, the registration can be renewed indefinitely for 10 year periods.

If a registered trade mark is not used during a continuous period of three years in relation to the goods

or services for which it is registered, any interested person may apply for removal of the trade mark on

the ground of “non-use”.


$

10

Almost all overseas countries have trade mark laws which allow registration of trade marks. Registration

is strongly recommended in any overseas country in which active manufacturing or trading is proposed,

for the following reasons:

a. In overseas countries, it is generally more difficult to rely upon common law rights to protect an

unregistered trade mark.

b. In many countries, there is a “first to file” rule whereby the first person to file a trade mark application

is entitled to registration notwithstanding the earlier use of the same trade mark by another person.

c. Registration provides control over the use of the trade mark by a licensee or distributor in the particular

overseas country.

Before using a trade mark in an overseas country, it is recommended that a search be conducted to ascertain

whether the mark is, in fact, available for use and registration in that country and that the prospective

trade mark will be acceptable to consumers in a particular overseas country or overseas market. That is, the

proprietor should ensure that the trade mark does not have an unfavourable meaning or does not translate

unfavourably, derogatively, or descriptively in the particular overseas country.

Trade marks can be registered on a country-by-country basis, i.e. a separate application is filed in each

country of interest.

However, the Madrid Protocol also allows an applicant to register trade marks in at least 86 countries in a

cost effective way by filing a single international application in English. The international application must

be based on an existing Australian trade mark application or registration. The international application is

then forwarded to every designated country where it is examined. If objections are raised, there will be an

opportunity to make submissions to overcome the objections. If no objection is raised and no opposition is

filed in a particular country, the trade mark is then protected in that country. Renewal fees are payable every

10 years.

European Union countries can be covered by a single Community Trade Mark application. The application

will be examined by the Community Trademarks Office, accepted if no objections/oppositions are raised

and registered for a period of 10 years. Renewal fees are payable every 10 years.

CopyrightCopyright protects “works” including literary, dramatic, artistic and musical works. Some of the “works”

which can be covered by copyright include: computer programs; compilations such as anthologies,

directories and databases; artistic works such as logos, drawings, cartoons, photographs, maps and plans,

paintings and sculpture; dramatic works such as choreography, plays and mime; musical works including

the music itself, separately from any lyrics or recording; cinematograph films; sound recordings; broadcasts;

published editions (typographical arrangements of publishers).

Copyright protection in Australia is free and automatic if the author is an eligible person. An original

“work” is protected by copyright from the time it is first written down or recorded in some way. Generally,

copyright lasts from the time the work is created until 70 years after the year of the creator’s death. Once

copyright has expired, anyone can use the material without permission.

The general rule under the Copyright Act is that the first owner of copyright in a “work” is its creator.

There are, however, some exceptions to this general rule, which can be excluded or varied by agreement.

For example, in the case of an employer/employee situation, the first owner of copyright will be the

employer if the artistic work was created as part of the employee’s usual duties.

Registering trade marks in overseas countries


Business owners who commission work such as the design of a logo for a trade mark, software, or the

design of a web page should have a written agreement stating who will own the copyright. A written

agreement can avoid any misunderstanding or disagreement which can otherwise occur as to what the

business can do with work they have commissioned. In the absence of any agreement, the creator of the

work usually retains ownership in many cases – not the business.

While assignments and exclusive licences must normally be in writing and signed by or on behalf of the

copyright owner to be fully effective, it is good business practice to put all agreements relating to copyright

into writing.

Industrial designers should further keep in mind that most designs cannot rely on dual protection under

the Copyright Act and the Designs Act as they may become unenforceable under the Copyright Act once

commercialised.

Registering a designA design registration protects features of appearance of a product (or part of it), namely its shape,

configuration, pattern or ornamentation. A design registration does not provide protection in relation

to the construction or function of a product. The Designs Act 2003 allows for the registration of designs

of component parts of complex products, but those registrations will be subject to a “right of repair”

infringement exemption.

An Australian design registration has effect throughout the whole of Australia.

In order to obtain a valid design registration, there should not have been any public or unrestricted

disclosure of the design prior to the filing of the design application.

When applying for registration of a design, the application must be accompanied by representations of

the product(s) illustrating the design features for which protection is required. Such representations are

preferably drawings, but photographs may suffice.

The application will undergo a formalities check and the design will be registered if all formal matters

are in order. However, the owner of an unexamined design registration will be unable to commence

infringement proceedings against an alleged infringer until the design registration has been certified

following examination.

Examination of the design can be requested at any time after registration. If the design is found to be

“new and distinctive” and not “substantially similar in overall impression” to an earlier registered design,

a Certificate of Examination will be issued. If not, the design registration will be revoked.

The total term of registration is 10 years subject to payment of a renewal fee five years from the date of

application for registration.

Overseas design registrationAustralian design registrations do not extend beyond Australia. Consequently, it is necessary to file design

applications in other countries if overseas design protection is required. Overseas design applications are

usually filed on a country-by-country basis. However, the European Community can be covered by a single

Community Design registration.

Overseas design applications can claim priority from an Australian design application but the overseas

design application must be filed within six months of the filing date of the Australian design application.


Australian design registration

File Design Application

Appeal to Court

Certificate of Registration

Issues

Design Revoked

Certificate of Examination

Issues

Objections

5 years from filing

10 years from filing

Request Examination

Report Issues

Response Filed

Renewal

Examination

Expiry

$

$

$

$

✔

$

$

?

Enforcement

▲

▲

▲

No Objections▲

$

$

▲

Harvesting the WealthConsider how you might exit the business, access the financial rewards or invest in other ventures

Taking an idea to the marketplace requires consideration of several issues at each stage of the commercialisation

pathway. From investigating the feasibility of an idea to finally reaping the profits involves not only

determination, but extensive business skills and funding. In order to determine the commercial viability of

a proposed venture, the entrepreneur should have a detailed understanding of the product or service, the

industry he/she will be competing in, the nature of the market and the amount of capital needed to kick-

start the venture. The marketplace has to be researched to determine where the target market is located,

whether the finished product will be able to compete on price and whether the market is big enough to ensure

commercial viability. It is also necessary to determine the expected life cycle of the product or service and

to know how it will generate revenue and profits. The flowchart below was adapted from the Ideas2Market

guidebook on commercialisation published by the Department of State Development and Innovation. For more

information on each step of the process, visit: www.ausicom.com/ideas2market.php

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Useful resources:AusIndustry can help you:

• Conduct research and development

• Grow your small business

• Undertake manufacturing and

production

• Commercialise a venture

• Apply for a tax or duty concession

• Gain access to science resources

• Check your eligibility

www.ausindustry.gov.au

Commercialisation


Commercialisation pathway

Commercialisation Options

Will you set up your own start-up business, assign or licence the rights?

Organising the Business

Entrepreneurship

Have you thought about logistics,

staffing and alliances?

Do you have the makings of a true

entrepreneur?

Business Planning

Commercial Structure

Have you written your

business plan?

What will be the commercial structure of your new venture?

Financing Growth

Intellectual Property

Evaluation

Evaluation

Feasibility Study

Growth Stage

Start-up Stage

Pre Start-up Stage

Growth Strategies

Evaluation

Do you have a realistic financial plan and funding

support?

Should you protect your IP?

Have you addressed all the start-up strategies?

Have you addressed all the start-up strategies?

Is your proposed venture commercially viable?

Achieve and maintain your competitive edge

Make your new venture viable

Consider the following

Do you have systems to continuously improve and maintain quality?

Marketing

Developing Your Idea

Have you conducted market research and developed marketing

strategies?

Do you need funding to develop your idea

and prototype?

Human ResourcesDo you have

human resource management strategies?

Have you addressed all the growth strategies?

Your IdeaDo you have the desire and drive to

take an idea to market?

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Brisbane

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Phone +61 7 3011 5555 Fax +61 7 3229 3384

Gold Coast

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Australia

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Townsville

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Phone +61 7 4728 3222 Fax +61 7 4728 3233

Mail GPO Box 1074, Brisbane QLD 4001, Australia

Email [email protected]

Web www.cullens.com.au