Intellectual property refers to the set of rights and protections over new and original intangible creations. The most common types of intellectual property are copyright, trademarks, patents, registered designs and trade secrets.
Copyright protects the owner’s original expression of their idea. It doesn’t protect the idea itself, names, titles or slogans. It also doesn’t prevent others from independently creating similar work where they did not intentionally copy your work. Copyright protection incentivizes the creation of creative, educational and cultural material. Common material protected by Copyright include books, films, music, sound recordings, newspapers, magazines, artwork and computer programs. The relevant governing legislation is the Copyright Act 1968 Cth.
Trademark protection provides the exclusive right to use your mark, brand or identity. It is an effective way to identify and distinguish your unique product or service from another. However, it is not the same as a business name, company name or domain name. Common works that can be covered by trademark protection include logos, phrases, sounds, scents, branding and packaging. The relevant governing legislation is the Trade Marks Act 1995 Cth.
Patents protect how an invention works, it allows you to prevent others from manufacturing or using your invention, and it incentivises inventors to develop and create new products and ideas. The relevant governing legislation is the Patents Act 1990 Cth.
4. Registered Designs
Registered design refers to the original and new visual features of a product, including its shape, configuration, pattern and ornamentation. The overall visual appearance of the design is what is protected, not the way it works. It typically protects products with a physical and tangible form, products that are manufactured or handmade and products that are produced on a commercial scale. The relevant governing legislation is the Designs Act 2003 Cth.
5. Trade Secrets
Common trade secrets include any confidential information, secret formulas, processes and methods. It is your responsibility to protect trade secrets and there is no relevant governing legislation.
How do you protect your intellectual property in Australia?
Some types of intellectual property must be registered, such as trademarks, patents and designs. See the IP Australia website on how to register these types of intellectual property. However, other types of intellectual property such as copyright and trade secrets are automatically protected without registration.
1. Automatic Protection
Once an idea or creative concept is documented on paper or electronically, it is automatically protected by copyright in Australia. Copyright lasts the life of the creator plus an additional 70 years. Even though protection is automatic, it is important to ensure you have proof the work is your own in case a dispute arises. Some evidence that is worth keeping includes draft dated records, plans, outlines and file notes of discussions and agreements with other people.
Trade secrets are protected for as long as you keep them protected, however it does not ensure you exclusive rights. The most common way to protect secrets after they are disclosed is via a confidentiality agreement. In the event confidential information is disclosed or threatened to be disclosed without your permission, you can bring an equitable action for breach of confidence, or an action for breach of contract where a confidentiality agreement was in place.
2. Registered Protection
Trademark protection lasts initially for 10 years and can be renewed so long as it is in continued use. If you stop using the trademark, it can get removed. When registering your trademark, keep in mind that other people can try oppose your registration, typically when it is deceptively similar to their own. Also note that trademark protection only applies to the set classes of goods or services you intend to use your trademark in association with.
Trademarks or brands can also be protected where you have a distinct business reputation. If you do not have a registered trademark and someone is falsely associating themselves with your business, goods or services, you could bring an action in passing off or an action in misleading and deceptive conduct pursuant to section 18 of the Australian Consumer Law. However, these actions can be costly so it is preferrable to register your trademarks instead.
Patents have a very lengthy and difficult registration process. It is advised you receive advice from a specialised Patent Attorney as they have experience in a field of engineering or science in addition to legal expertise.
It is very important not to share the invention publicly before applying for patent protection, otherwise it may be refused. There are three main types of patents: a standard patent that lasts up to 20 years, an innovation patent that lasts up to 8 years and a pharmaceutical patent that lasts up to 25 years. Each type varies slightly in their application processes. The types of inventions that can be patented include appliances, mechanical devices, computer-related inventions, business methods, biological inventions, micro-organisms and other biological materials.
Design protection only lasts up to 5 years or a maximum of 10 years on renewal. Protection, which involves the registration and certification of the design, allows you to prevent others from making, selling or using the design in the course of trade. Like patentable inventions, it is important to keep the design a secret until you have applied for protection. However, some things such as scandalous designs, medals, emblems and bank notes cannot be registered.
Can intellectual property created in Australia be registered outside Australia?
Copyright materials can only be automatically protected in countries party to specific treaties Australia is party to. Such treaties include the WIPO Copyright Treaty, the WIPO Performance and Phonograms Treaty, the Berne Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Rome Convention.
To become a party to the international copyright treaties, a country must legislate to achieve a minimum standard of copyright protection. Key countries that grant protection to Australia include: Canada, China, France, Germany, Hong Kong, Indonesia, Japan, South Korea, Malaysia, New Zealand, Singapore, the United Kingdom and the United States.
There are two ways Australian trademarks can be protected overseas. The first is by filing an application directly with each country you want protection in. The second is by making a World Intellectual Property Organisation (WIPO) application through the Madrid System, nominating the member countries to the treaty in which you seek protection. When applying, you must already have an approved trademark application in Australia.
The Madrid System provides protection in multiple countries via one application, however you must comply with the laws existing in the designated countries, not the laws in Australia. Once approved, the protection lasts for 10 years but can be renewed. The Madrid System also allows foreign trademark owners to designate Australia in their international applications.
You can file a Patent Cooperation Treaty (PCT) application for your invention to be protected in up to 153 counties, being the countries signature to the treaty. However, when making the application, you must comply with the laws in the designated countries, not the laws in Australia.
To protect your design internationally you may have to directly apply for protection in the country of interest according to their rules and regulations. Alternatively, Australia is party to the Paris Convention which allows you to use your earlier application as the basis for a new application in another country party to the convention (about 170 countries). Unfortunately, Australia is not a party to the Hague Convention which allows you to register up to 100 designs in multiple countries or regions via a single application.
For more on copyright and intellectual property commercialisation, see our previous article here.
This article was written by Lauren Hooper