Run through an IP health check with Len Mancini, patent and trade mark attorney and IP lawyer

1. Presented by Len Mancini
Cullens Patent and Trade Mark Attorneys
CCIQ e-Workshop
4 March 2015

2. Webinar Presenter
• Len Mancini
• Cullens Patent and Trade Mark Attorneys
• Patent and Trade Marks Attorney, IP litigator
• Previously practiced IP litigation in London (Herbert Smith) and
Sydney (Maxwell IP)
• Advises clients in respect of IP disputes and infringement issues

3. What is Intellectual Property (IP)
Registrable Non-Registrable

4. Why is IP Important
• Protects a firm’s inventions and innovations from use
by competitors
• Extracts the value in human capital
• You can extract value from it even if you don’t use it
directly
• You can use it as a shield or bargaining tool
• Provides certainty in M&A
• Can give investors and lenders confidence in dealing
with you
• You can monetise it

5. IP Health check
• How do I identify IP?
• How do I make sure I own IP that my
business generates?
• What are the common pitfalls in respect
of the management and use of IP

6. What is IP
Patents
• Allows the functions and or features of
useful products, processes and some services
to be protected
• Requirements for registration
- one or more inventors
- patentable subject matter
- novelty
- Inventive step (20 year std patent) or
innovative step (8 year innovation patent)

7. What is IP
Trade Marks
• Protects the use of “signs” in trade and commerce
where the sign is used as a badge of origin.
• Signs include: any letter, word, name, signature, numeral,
device, brand, heading,
label, ticket, aspect of packaging, shape,
colour, sound or scent.
• Requirements for registration
- distinctive
- capable of graphical representation

8. What is IP
Copyright
• Protects the expression of an author
or artist.
• Works protected include:
- Literary works (books, manuals, compilations)
- Artistic works (photographs, drawings, sculptures)
- Musical works (musical score)
- Sound and Video Recordings
- Computer programs
• Requirement for subsistence (no registration
in Australia is required for enforcement):
- Original work – not copied
- Have an author or authors (for the traditional works)

9. What is IP
Registered Designs
• Protects the design comprising one or more
visual features of a product including shape,
configuration, pattern and ornamentation.
• Requirement for registration:
- design new and distinctive
- has an author

10. What is IP
Plant Variety
• Protects new plant varieties.
• Requirement for registration:
- variety must be distinct,
uniform and stable
- a breeder

11. What is IP
Circuit Layouts
• Protects the 2D plans or layout of integrated
circuits or chips.
• Requirement for subsistence
(not registered in Australia):
-layout must be original
and have an author

12. What is IP
Confidential Information
• Is any information that is agreed to be
confidential. Includes know how and trade
secrets.
• Requirements:
-information not publicly available
-info must be treated carefully
-generally governed by agreement
or employment contract

13. IP Health Check List
• Identify your IP used in your business
• Once identified –
• Work out who owns it
• Register it if possible
• Use it! – make, licence or sell
• Step by step – Cullens IP Checklist

14. IP Health Check List

15. Identifying Your IP
1. Have you identified all of the IP of importance to
you that provides a commercial advantage?
Business name
Innovative products or services (including product designs and important
functional features)
Trade marks including logos and graphics used in association with the product or
service
Domain names
Trade secrets
Lists including customer and client lists
Internal business processes
Artwork
Distinctive packaging designs
Exclusive agreements with suppliers and/or distributors
Customised software, macros and electronic forms and systems
Website and social media accounts

16. Identifying Your IP
1. Business Names – registered as a trade mark?
BUSINESS NAME = TRADE MARK
BUSINESS NAME TRADE MARK REGISTRATION
• At best a registered business name will qualify as an
unregistered trade mark.
• Unregistered trade marks are vulnerable to allegations of
trade mark infringement.
• The business name regulator does not check the trade mark
register before granting business name registrations

17. Identifying Your IP
1. Business Names – registered as a trade mark?
Take home message:
1. Check to see if your business name has been registered as a
trade mark on ATMOSS database
2. If it hasn’t – you are at risk
3. Consider registering the business name as a trade mark for
security and protection from allegations of TM infringement

18. Identifying Your IP
2. Other Trade Marks
Potential trade marks:
• Corporate name
• Logos
• Product names
• Product labels/packaging
• Product Shapes
• Product attributes
• Colours
• Mascots/characters
• Jingles/Slogans/Catch Phrase
• Distinctive sounds/audio
• Distinctive scents

19. Identifying Your IP
2. Other Trade Marks – corporate / trading names
• In cases where there is an underlying corporate
owner of a brand some consideration should be
given to registering the name of the corporate entity
even if doesn’t appear on products.
owns multiple sub brands – but is also
registered in its own right.

20. Identifying Your IP
2. Other Trade Marks - logos
• Logos and graphical symbols of your brand should
also be identified and registered if currently
unregistered
• Logos are often updated – ensure new logos are
registered

21. Identifying Your IP
2. Other Trade Marks – product names and
packaging
Stylised Product Name vs Total Packaging

22. Identifying Your IP
2. Other Trade Marks - packaging

23. Identifying Your IP
2. Other Trade Marks – aspect of packaging
If you have significant volumes
of sales – certain aspects of
your product or its packaging
can become registrable on
their own without any
association with a brand name.
These are powerful and
valuable trade mark rights

24. Identifying Your IP
2. Other Trade Marks – Shape Marks

25. Identifying Your IP
2. Other Trade Marks – Shape Marks

26. Identifying Your IP
2. Other Trade Marks – Shape Marks

27. Identifying Your IP
2. Other Trade Marks – Shape/Colour Marks

28. Identifying Your IP
2. Other Trade Marks – Product Attributes

29. Identifying Your IP
2. Other Trade Marks – Colour Marks

30. Identifying Your IP
2. Other Trade Marks – Colour Marks

31. Identifying Your IP
2. Other Trade Marks – Colour Marks
Trade Mark : 831634
The trade mark
consists of the colour
red as applied to up to
one third of a banana
as shown in the
representation.

32. Identifying Your IP
2. Other Trade Marks – Mascots/Characters

33. Identifying Your IP
2. Other Trade Marks – Slogans/Jingles
OH WHAT A FEELING – as word mark
and also registered as a sound

34. Identifying Your IP
2. Other Trade Marks – scents
Trade Mark : 1241420
Class 28: Golf tees
Endorsements: The mark consists of a Eucalyptus
Radiata scent for the goods.*

35. Identifying Your IP
2. Other Trade Marks – summary
With trade marks the key things to identify:
1. What signs are you using in respect of your
goods and/or services that you were first to
use in connection with your business;
2. Can people in the marketplace identify your
goods and/or services by reference to any of
the signs that you use.

36. Identifying Your IP
3. Artwork

37. Identifying Your IP
4. Innovative Products and Processes/Methods
Patents can be used to protect new and unique
technologies including products and services.

38. Identifying Your IP
4. Innovative Products and Processes/Methods
What you need to be looking out for are features of
your products or services that are less than 12 months
in the market and which you were the first to provide.
Ideally you haven’t publicly disclosed them at all yet.
When you identify them – best seek urgent advice,
particularly if they are in the market already.

39. Identifying Your IP
4. Innovative Products and Processes/Methods
Patentable subject matter often overlooked:
• New building systems
• New (processed) foodstuffs
• New industrial methods of making foodstuffs
• New methods of treatment of humans including
cosmetic treatments
• New methods for installing things
• New safety equipment
• New games and toys
• New waste disposal methods

40. Identifying Your IP
4. Innovative Products and Processes/Methods
Even if your product is not new in the sense that it has
existing/common features, it could still be protected as
a registered design if its visual appearance is new.
Best for protecting aesthetic designs and also any
utilitarian product whose function depends on its
shape.

41. Identifying Your IP
5. Confidential Information
Confidentiality regimes can be used to protect the
following:
• Method of manufacturing non reverse engineerable
products
• Non reverse engineerable processes eg treatments
• Customer lists, supplier lists, database of contacts
• Recipes
• Internal process manuals and product specifications

42. Identifying Your IP
5. Confidential Information
Ideally you want to be able to assert confidentiality to the
point where it is regarded as a trade secret.
If it is not regarded as trade secret it can be regarded as
“know how” which can be taken from one job to the next.
Trade secrets on the other hand must be kept confidential
by departing staff members.

43. Identifying Your IP
5. Confidential Information
Factors as to whether info a trade secret:
• Is the info known outside the business?
• How many employees knew of the info?
• How was the info safeguarded?
• How valuable was the info?
• How hard/expensive was it to develop the info
• How easy could the info be recreated by others

44. Identifying Your IP
2. Confidential Information
1. Control, control and control – set up systems to
control who has access to information.
2. Have a confidential info policy and similar terms
in employment agreements
3. Mark information as confidential or trade secret

45. Identifying Your IP
6. Domains
Internet domains are intangible property. They can be
assigned and sold.
It can be easy to let domains lapse unintentionally
which can cause serious calamity to your business even
if it is not a e-commerce website.
Best practice is to keep a register of domains and who
owns them and their renewal date, hosting company,
domain registrar etc. Use a Whois service to obtain the
info if you don’t have it.

46. Identifying Your IP
7. Other Internet Accounts
Internet accounts and particularly social media
accounts can be valuable.
They are not property and you generally hold them at
the whim of the company that runs the system.
“Ownership” will often be determined by the way you
sign up.
• Don’t let employees sign themselves up for an
account using the business name.

47. Identifying Your IP
7. Software, Macros, Custom Scripts
You may have software developed for you including macros.
You should seek to own the copyright in the software code.
If developed out of house by a third party contractor you should
seek ownership. If ownership will not be provided at the agreed
cost, seek an irrevocable licence to use and reproduce the
software.
Software might form part of your website. This is no different
than executable code.

48. Identifying Your IP
7. Licence Agreements
In many cases the IP that you use is not owned by you.
You might be a franchisee that uses the franchisor's TM.
You might have a licence to manufacture a product or conduct a
service in a manufacturing agreement or reseller agreement.
You might licence your IP to others including manufacturers,
distributors, and resellers.
In every case licence agreements should be documented and
scheduled to identify the IP that is either licensed in or out of the
business.

49. Do you own your IP
2. Do you own all of the IP you think you own?
Has all IP created externally been assigned to you
upon its creation/completion?
Are the employees creations covered by IP clauses
in employment contracts?
Have you granted rights to others including
distributors that might impact on IP ownership?
In whose name are the social media accounts,
domains, hosting agreements etc?

50. Have you Registered your IP
3. Has all of your IP that can be registered been
registered?
novel functional features of products/services as patents
novel shape or design of products as registered designs
business names and product names as word trade marks
distinctive, non-functional shapes of products as shape
trade marks
distinctive logos, graphical artworks and product get up as
device trade marks
scents, sounds and colours that have become synonymous
with the offering of your goods/services in the
marketplace registered as trade marks

51. Is IP owned by the right entity
4. If there is a group of companies or entities is your
IP owned by the right entity?
Has the IP remained in the name of an older entity
(potentially now deregistered) after business
moved to a new structure?
If the IP is in the name of an entity for asset
protection – has you considered the implications?
If IP co-owned between parties and entities– have
the implications been considered?
Have you examined assignment documents that
back up claims to ownership of registered TM you
own or are looking to purchase?

52. Do you enforce your IP?
5. Are you prepared to/ have you enforced your IP?
Have you marked your goods/services with your registered
IP rights – eg. Patent Pending, Aust. Patent No xxxxxx, (TM),
(R), Registered Design No. xxxxxx etc
Do you monitor the patent and trade mark databases for
evidence of potential infringement and other threats to
your IP and oppose them where necessary?
Do you monitor the marketplace for infringement?
Have you noticed infringers in the marketplace and taken
no action?
Do you send letters of demand to all infringers? Do you
follow up on your threats?

53. Do you monitor IP?
6. Monitor IP Landscape
Do you conduct searches of IP registers to identify
state of the art technology and trends in the
provision of goods and services?
Do you conduct searches of patents and design
databases to identify technology that could be
implemented by you royalty free in Australia?
Do you identify gaps in the IP landscape that you
can seek to fill through your own R&D?

54. Do you get product clearances
7. Freedom to Operate – new products and/or
services – do you infringe 3rd party IP
Have you checked whether a new business name infringes
3rd party TM before commencing use?
Have you checked whether the importation or sale of a
new product or service would infringe on the registered
designs or patents of third parties before commencing use?
Have you checked whether the trade marks to be used in
association with the new product or service don’t infringe
the TM’s of others before commencing use?
Have you conducted the check or search with respect to
the IP applicable in the export destinations for the
product/service?

55. Do you export? Have IP in place
8. if you are planning to export your product or
service have you registered your IP rights overseas?
have you registered your TM and
patents/registered designs in the export markets?
have you checked you don’t need to register
copyright or take any steps that you would not
need to take in Australia with respect to any
export markets?

56. IP and your 3rd agreements
9. Have you checked over existing agreements to see
where your company stands with regard to IP?
Do contractor agreements provide that IP is owned by you in exchange for
remuneration?
Do distributor agreements that provide for the authorised use of a TM as a
business name have the goodwill generated in the TM accrue to you as TM
owner?
Do licence agreements (including licence grants in distributor or manufacturer
agreements) ensure that any improvements made by licensees to be owned by
you?
Does every employee have an IP clause in their contract agreeing that IP created
during and for work is owned by you?
Do you warrant that your products/services do not infringe third party IP of
others in the absence of having obtained freedom to operate advice to ensure
you are not liable?
If a third party infringes a licenced IP right, who will pay the legal costs in
pursuing the infringer, you or the Licensee?
If your licensed trade mark or product/service infringes an IP right of a third
party, who will pay the legal defence costs, you or the Licensee?

57. Questions
Do you have any questions?
Please send through your questions by typing them into the question box.

58. Thank you
Please phone us for a complementary consultation to discuss your intellectual
property requirements
Len Mancini
Cullens' Trade Marks Attorney
T: 0755883000 E: l.mancini@cullens.com.au
57-59 Scarborough Street Southport QLD
www.cullens.com.au