Trademark

Summary
  1. Legislation
    Trademark law in Australia is governed under the Trade Marks Act 1995.
  2. Definition
    Trademark is the way in identifying a product or service from a specific company. It allows customers to differentiate a company’s product or service from a competitor.
  3. Criteria
    A trademark can be :

      1. Letter
      2. Number
      3. Word
      4. Phrase
      5. Sound
      6. Smell
      7. Shape
      8. Logo
      9. Picture
      10. Movement
      11. Aspect of packaging
      12. Combination thereof.

    A trademark in Australia is required to act as a ‘badge of origin’ for those goods or services. It should allow customers to distinguish one company’s good and service from the other.
    The following are not allowed to be trademark:

      1. A mark consisting of scandalous matter
      2. A mark which is contrary to the law
      3. A mark which is deceiving or misleading
      4. A mark not distinguishing the applicant’s goods or services
      5. A mark that is identical to a present one
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Madrid Protocol
    Australia is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six (6) months
    Australia is also a Contracting Party of the Madrid Protocol which allows for a single application, called the ‘international application’ to be filed to the, The International Bureau of the World Intellectual Property organization. This allows for the mark to seek protection in member countries. However, this does not grant an internationally recognize trademark as that does not exist. It merely provides a mean for member countries to apply their respective laws to consider if the mark may be protected.
  5. Ownership
    The ownership of a trademark is the party that intends to use the trademark for the goods or services that are relevant to the company.
    The ‘rightful’ owner is regarded as:

      1. The person who adopts the trademark as his own
      2. The person who has permission to file the mark on behalf of another
  6. Duration and Renewal
    A trademark once granted is protected for 10 years. A renewal fee is to be paid after every 10 years.
Procedure/Timeline
  1. Application
    An applicant can submit an application for a trademark either by paper or electronically. All applications must be submitted to the government office. Once all the relevant documents have been submitted, the application will be examined.
  2. Examination
    The examiner will examine the application to make sure it meets all the legislative requirements as well as the information submitted is correct.
    Should the examiner determine that the application does not meet the legislative requirement, a examination report will be sent to the applicant detailing the grounds in which the examiner rejects the application. The applicant is then required to amend the trademark or provide evidence of use (in certain situations)
  3. Registration
    Once a mark has met all the requirements, it will be registered and the applicant will be notified in writing about it.
    Besides that, the trademark will be entered in the Australian Official Journal of Trade Marks. The mark will also be listed under the Australian Trade Mark Online Search System.
    A registration fee will be made available and is to be paid within six months after the date of acceptance
Requirements/ Documents
The following information/documents are required for a trademark application in Australia:

  1. The applicant’s name and address
  2. The description for the goods or services which will apply
  3. A list of relevant classes
  4. A representation of the trademark
  5. If claiming priority under international convention:
      1. The date of filing
      2. Country
      3. Application number

Note: All documents not in the English Language are to be submitted together with a translation to the English Language. Both documents are to be submitted

Documents
Downloadable Forms
Agents
Fee

Patent

Summary
  1. Legislation
    Patent law in Australia is governed under the Patent Act 1990
  2. Definition
    A standard patent can be claimed for an invention that is new and inventive and must be useful to an industry. It cannot be an obvious invention where a person of the same knowledge and experience in the technological field can invent.A standard patent can be claimed for an invention that is new and inventive and must be useful to an industry. It cannot be an obvious invention where a person of the same knowledge and experience in the technological field can invent.
  3. Criteria
    To apply for a patent in Australia, the invention must be:-

      1. Novel
      2. Involves and inventive step
      3. Useful
      4. Not secretly used in the patent area before claiming a priority date.

    The following are regarded by statute as not patentable inventions:

      1. Human beings, and their biological processes
      2. Mathematical models
      3. Artistic Creation
      4. Plans, Scheme or other purely mental processes
      5. Do note that if the invention is with military aspects, a patent may not be granted in the interest of the defense of the Commonwealth.

  4. Provisional Application
    A provisional application is a cheaper alternative which allows for an applicant to obtain the earliest possible priority date. It is important to note that this does not give you patent protection. This application merely gives the applicant time to consider and determine if the invention is worth pursuing. Basic details of the invention wil be published in the Australian Official Journal of Patents upon filing. (Technical and scientific details will not be disclosed)
    In order to claim priority for the invention, the applicant must complete either a standard or innovation application within twelve (12) months after applying for a provisional application.
  5. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)
    Australia is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, Australia is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist.
  6. Rule of Priority
    Australia practices a ‘First-to-file’ system, which recognizes the first person to file the patent which is not necessarily the first inventor

  7. Duration and Renewal
    A standard patent once granted last for a term of 20 years form the filing date of the complete application.
  8. A renewal fee is expected on a yearly basis beginning from the 4th anniversary of the grant.

Procedure/Timeline
  1. Application
    An application for a standard patent can be made by paper or electronics.
    Should a provisional application have been filed, the application for a standard patent must be filed 12months after filing the provisional application
    Should there have been a convention application, a patent application must be filed within 12 months of filing an overseas application to achieve a similar protection in Australia.
  2. Publication
    Details of the unexamined standard application will be published on the Australian Official Journal of Patents about 18 months after the application’s earliest priority date. The patent is made available to the public.
    The publication at this stage allows the applicant to set the date for which anyone who uses your invention without prior permission is infringing your patent.
    Note: Do note that the publication of a patent does not guarantee that the patent is valid
  3. Examination
    A request for examination must be submitted to within 5 years of the filing date. Failure to do so will render the application lapsed.
    Once the application has been filed, a first report (Adverse Report) will be issued within 16 months of receiving the request for examination.
    Should the examiner not find any objections with the application, a notice of acceptance is mailed to the applicant to indicate that the application is accepted. Before being granted the patent, it is subjected to opposition proceedings.
  4. Adverse Report
    Should an adverse report be received, the applicant has 21 months form the date of the first adverse report to respond by making changes to the application or argue to overcome the objection. (For request of examination made after the 15th April 2013, the applicant would only have 12 months from the date of the first adverse report to overcome all objections.) Failure to respond in the stipulated time frame, will result in the application to cease.Once all objections have been overcome, then the application will be approved.
  5. Opposition
    Once the application has been approved, the patent will be subjected to three(3) months of opposition proceedings before the patent is granted. Within the 3 months, the opposition must show that the accepted application is not valid.
    If an opposition is filed, both the applicant and the opponent are allowed to submit evidences at a hearing before a Hearing Officer. The Hearing Officer will decide if the application is upheld or if the opposition is successful.
    Should one party is unsatisfied with the decision of the Hearing Officer, an appeal can be made to the Federal Court of Australia.
  6. Grant of Application
    If no opposition is filed after the three months, the application together with an acceptance fee will conclude your application. A patent deed will then be sent to you.
Requirements/ Documents
The following information/documents are required for the application of a standard patent in Australia

  1. Applicant’s details (Name, address, details of incorporation)
  2. If applicant is other than the inventor, name(s) of the inventor(s)
  3. Specification
  4. Claims
  5. Abstract and drawings
  6. If claiming priority:
      1. Details of priority
      2. Country of filing
      3. Serial number
      4. Filing date
      5. Certified copy of the priority application (if requested by the Commissioner of Patent)

Note: All documents not in the English Language are to be submitted together with a translation to the English Language. Both documents are to be submitted
PCT National Phase Application
The following information/documents together with the filing fee are required to be submitting a non-provisional utility provisional application:

  1. Receipt from the International Bureau of copies of international application with any amendments to the claims, international search reports, and international preliminary examination reports may be accepted
  2. Payment of national fee
  3. Furnishing of a translation if the international application was filed in any other language other than English
  4. A copy of international application, except where not required by that Office (if necessary)
  5. Amendments, if any, to the claims in the international application. (Unless such amendments have been informed to the Patent and Trademark Office by the International Bureau, where a translation in English is provided should the amendments be made in another language)
  6. An oath or declaration of the inventor
  7. A translation into the English Language of any annexes to the international preliminary report. (If the annexes were made in another language)
Documents
Downloadable Forms
Agents
Fee

Industrial Design

Summary
  1. Legislation
    The primary legislation governing the protection of industrial design in Australia is the Designs Act 2003.
    However, certain specific designs are excluded from the protection of the Designs Act 2003 by the Designs regulation 2004.
  2. Definition
    According to the legislation, design refers to the overall appearance of the product. This may include the a) Shape b) Configuration c) Pattern or d) Ornamentation of the product. However, certain designs such as those designs for medals, Australian currency and scandalous designs.
  3. Criteria
    In order for an application for the protection of Industrial design in Australia, the design must be:

      1. New
      2. Distinctive
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    Australia is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six(6) months.
  5. Rule of Priority
    Australia practices a ‘First-to-file’ system, which recognizes the first person to file the design which is not necessarily the first inventor
  6. Duration and Renewal
    An industrial design protection in Australia is valid for 10 years from the date of filing. A single maintenance fee is required 5 years after the filing date. No additional fee is required.
Procedure/Timeline
  1. Application
    An application must be filed to the Design Office of Australia with at least:
    a) A design application made by one or more people
    b) The design application must specify the person(s) in relation to the design
  2. Request for Registration or Publication
    The applicant may request for a registration or publication but it is subjected to that the request must be included in the design application and made within the period stated.
  3. Formalities Examination
    The Registrar will consider if the design meets the requirements of the legislation, determine if a common design is in relation to more than one product.
    If the formalities check is unsuccessful, a ‘formalities report’ is issued to the applicant. The applicant bears the responsibility to rectify any and all deficiencies in the application within two months from the date of first formalities report. Failure to do so will result in the application be lapsed
  4. Registration
    Once the application has passed the formalities check, the design is then registered. However, a registered design is not enforceable against third parties.A registered design only protects the visual appearance of the product and also provides the exclusive rights for the applicant to use, license or sell the design.
  5. or

  6. Publication
    A design can be requested to be published during the initial application. This however does not guarantee that the patent is valid nor will be accepted. It merely prevents any other party from obtaining the design rights for a similar or identical design. Furthermore, the design has been published, it cannot be examined this would render the design not to be enforceable in the court of law.
  7. Examination (Optional)
    As for mentioned, a registered design is not enforceable until it has been examined and certified by the Design Office. An examination can be requested any time after the design is registered.
    During the examination, the examiner reviews the registered and conducts a search to determine if the design is ‘new and distinctive’. Should the examiner not be satisfied, the applicant can address and overcome the objections raised by the examiner either by arguing it’s justification or making amendments to the design. The applicant has only 6 months to overcome all the objections from the date of the first examination report.
  8. Certification
    Once the examiner is satisfied with the design, a certificate of examination will be provided which allows the applicant to enforce the design.
    However, failure to overcome the objection will render the registration of the design to be revoked.
Requirements/ Documents
The following information/documents are required to file and application for an industrial design application in Australia.

  1. Name and business address of the applicant
  2. Representations of the design
  3. Description of the product to which the design is applied to
  4. Name and address of the all the designer(s)
  5. Detail of the applicant’s entitlement to the design
  6. Convention priority details (if applicable)

Note: All documents not in the English Language are to be submitted together with a translation to the English Language. Both documents are to be submitted

Documents
Downloadable Forms
Agents
Fee

Innovation Patent

Summary
  1. Legislation
    Patent law in Australia is governed under the Patent Act 1990
  2. Definition
    An innovation patent is a fast protection and provides protection for device, substance, method or process that does not have inventiveness. The application for an innovation patent is more lenient compared to that of a standard patent
  3. Criteria
    To apply for a patent in Australia, the invention must be:-

      1. Novel
      2. Innovative
      3. Not previously disclosed publicly in any form
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)
    Australia is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, Australia is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist.
  5. Rule of Priority
    Australia practices a ‘First-to-file’ system, which recognizes the first person to file the patent which is not necessarily the first inventor
  6. Duration and Renewal
    An innovative patent once granted last for a term of 8 years form the filing date of the complete application.
    A renewal fee is expected on a yearly basis beginning from the 4th anniversary of the grant.
Procedure/Timeline
  1. Application
    An application for an innovation patent can be made by paper or electronics.
  2. Publication
    Details of the unexamined innovation application will be published on the Australian Official Journal of Patents shortly after filing. The patent is made available to the public.
    The publication at this stage allows the applicant to set the date for which anyone who uses your invention without prior permission is infringing your patent.
    Note: Do note that the publication of a patent does not guarantee that the patent is valid
  3. Examination
    A request for examination must be submitted to be able to legally enforce the patent
    The request for examination must be accompanied by the payment of the required fee. A competitor can also request for an examination on your patent. If such is the case, they payment for the examination will be borne by both parties equally.
    If the examiner determines that your patent does not meet the requirements of the Patents Act, an adverse report will be sent to applicant.
    Should the examiner not find any objections with the application, a notice of acceptance is mailed to the applicant to indicate that the application is accepted. Before being granted the patent, it is subjected to opposition proceedings.
  4. Adverse Report
    Should an adverse report be received, the applicant has 6 months from the date of the first adverse report to respond by making changes to the application or argue to overcome the objection. Failure to respond in the stipulated time frame, will result in the application to cease. Once all objections have been overcome, then the application will be approved.
  5. Certification
    Once the application is approved by the examiner, it will have been successfully certified
Requirements/ Documents
The following information/documents are required for the application of an innovation patent in Australia:

  1. Applicant’s details (Name, address, details of incorporation)
  2. If applicant is other than the inventor, name(s) of the inventor(s)
  3. Specification
  4. Claims
  5. Abstract and drawings