Due to copyright restrictions, I am unable to share with you the PPT from our workshop. Here is a very detailed and resourceful brochure from Cullens, the firm that our guest speaker Steve Davey works for.
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.
Under theAustralian PatentsAct, only registered PatentAttorneys 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)
• Patentability advice
• Preparing patent specifications
• Filing and prosecuting patent applications
• Maintaining patent applications and patents
• Trade mark registrability advice
• Filing and prosecuting trade mark
• Renewing registered trade marks
• 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
• Determining status of patents, trade marks
• 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
What is not protected is
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
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
PATENTS, TRADE MARKS AND DESIGNS
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.
PATENTS, TRADE MARKS AND DESIGNS
The patenting procedure
Obtaining a patent in Australia
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
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
20 years from filing
Commencing 4 years
Infringement, or ‘freedom to use’ searches should be carried out prior to using a trade mark, design or
Registrability searches should be carried out prior to taking steps to register a trade mark, design or
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:
“Worldwide” (including WIPO, Japan, Europe & Others): worldwide.espacenet.com
Trade mark searches
Madrid Protocol: www.wipo.int/romarin
European Community Designs: http://oami.europa.eu/ows/rw/pages/index.en.do
Australian business & company name searches
General internet searches
PATENTS, TRADE MARKS AND DESIGNS 5
8 years from filing
Commencing 2 years
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-operationTreaty. 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.
Overseas patent applications
PATENTS, TRADE MARKS AND DESIGNS
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
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,
(As at date of publishing).
PATENTS, TRADE MARKS AND DESIGNS 7
30 months from
19 - 22 months
18 months from
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
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
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
7. The signature of the applicant for registration or some predecessor in his business is normally
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
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.
Trade mark registration in Australia
PATENTS, TRADE MARKS AND DESIGNS
Australian trade mark
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
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”.
PATENTS, TRADE MARKS AND DESIGNS 9
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
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
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.
Copyright 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
PATENTS, TRADE MARKS AND DESIGNS
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
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
Registering a design
A 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”
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
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 registration
Australian 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.
PATENTS, TRADE MARKS AND DESIGNS 11
5 years from filing
10 years from filing
Harvesting the Wealth
Consider 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
AusIndustry can help you:
• Conduct research and development
• Grow your small business
• Undertake manufacturing and
• Commercialise a venture
• Apply for a tax or duty concession
• Gain access to science resources
• Check your eligibility
PATENTS, TRADE MARKS AND DESIGNS
Will you set up
your own start-up
business, assign or
licence the rights?
Have you thought
Do you have the
makings of a true
What will be the
of your new venture?
Pre Start-up Stage
Do you have a
plan and funding
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?
Have you conducted
market research and
Do you need funding
to develop your idea
Do you have
Have you addressed all the growth strategies?
Do you have the desire and drive to
take an idea to market?