Patents

An Australian patent gives the owner a legal right to prevent third parties from exploiting the patented invention in Australia. To obtain patent protection for an invention, a patent application must be filed in Australia. The invention must be new and inventive (when compared with what is already known) and useful. The Patents Act 1990 (Cth) provides for the filing, granting and enforcing of patent rights.

Standard patents have a life of 20 years from the date of application, subject to payment of renewal fees. An extension of up to 5 years can be granted for pharmaceutical patents. IP Australia regulates the grant of patents in Australia, including carrying out pre-grant examinations and adjudicating in pre-grant oppositions.

Australia is a party to the Patent Cooperation Treaty (PCT) which allows for a single PCT application to be used to file a patent application in a number of countries. However, Australian patent applications filed from a PCT must still undergo the same Australian examination processes as a standard patent application filed directly in Australia.

Trade marks

Trade marks can be used by the owner as a marketing tool and enable brand protection, particularly if registered. The owner of a trade mark that is used or intended to be used in Australia may apply to IP Australia to register the trade mark under the Trade Marks Act 1995 (Cth). Registration is available for trade marks in respect of goods and/or services. Trade marks are registered for use in one or more ‘classes’ of goods and/or services, and the application must specify what goods and/or services are to be covered. To qualify for registration, a trade mark must be capable of distinguishing the applicant’s goods and/or services from those of other persons. An Australian trade mark is registered for an initial 10-year period and is renewable (subject to payment of renewal fees) for additional 10 year periods thereafter, but third parties may apply to have a registration removed for long periods of non-use.

Although registration of a trade mark is not compulsory, an unregistered trade mark is more difficult to protect and enforce unless a substantial reputation has been built up in the mark. Advantages of registration include the fact that registration provides the proprietor with a statutory right throughout Australia to take action against unauthorised users or infringers of the trade mark without the need to prove reputation.

Australia is a party to the Madrid Protocol relating to international registration of trade marks. Australian trade mark applicants can therefore file a single international application in a number of countries around the world based on their Australian application.

While not an IP right as such, businesses trading in Australia should consider registering domain names ending in ‘.au’ that relate to their trade marks and business names, if they are able to satisfy the .au eligibility requirements.

Businesses must also ensure that they register any business names of entities through which they trade in Australia, where those names are different to the entity’s corporate name.

Copyright and moral rights

Australian copyright law encourages businesses to develop new material by offering protection to original, creative works. Under the Copyright Act 1968 (Cth), copyright protection for original artistic, literary, dramatic, musical and other works, sound recordings and cinematographic films is automatic (if qualifying criteria are satisfied). In Australia, it is not necessary (or possible) to ‘register’ copyright.

The range of materials protected by copyright is diverse and can include, for example computer programs, graphs, videos, broadcasts, training manuals, price lists and product brochures. The duration of copyright protection varies depending on the type of material being protected. Generally, copyright protection in literary, dramatic, musical and artistic works subsists for the life of the author plus 70 years. 

The Copyright Act 1968 (Cth) also gives individual authors of most copyright works and subject matter certain 'moral rights' in relation to their work. Moral rights include the right to be identified as the creator of a work, to not have authorship falsely attributed and to prevent derogatory treatment of a work. Moral rights cannot be assigned, but consents can be given by the authors to not being attributed as author, and to treatment of the copyright material that may otherwise be derogatory. Moral rights generally continue in force until copyright ceases to subsist in the underlying work or subject matter.

Registered designs

Industrial designs may be protected against copying under the Designs Act 2003 (Cth), which provides protection for the overall appearance of a product, including its shape, configuration, pattern and ornamentation, provided the design is new and distinctive (based on designs previously used in Australia or published in the world). Design registration does not protect how a product works. Protection lasts 10 years, provided renewal fees are paid.

IP Australia will conduct a formalities check on a new design application prior to registration. Enforcement may occur only after the issue of a certificate of examination, upon request – registration alone does not give an enforceable right.

Any copyright in a design is generally lost if the design is embodied in a product and ‘industrially applied’, or if the design is registered under the Designs Act 2003 (Cth).

Some decisions of IP Australia in relation to the registration of IP rights, for example final decisions in opposition proceedings, can be appealed to the Federal Court of Australia.

IP rights are typically enforced by litigation in the Federal Court of Australia.

Subject to meeting certain threshold requirements, urgent interlocutory injunctions can be obtained to restrain infringing conduct pending final proceedings. Once you become aware of an actual or threatened infringement of your IP rights in Australia it is very important not to delay obtaining and acting on legal advice, because urgent relief is not available where there has been undue delay.

Remedies for infringement of IP rights include:

• damages or an account of the profits made by the infringer (you cannot get both);
• injunctions (interim and permanent);
• declarations of infringement; and/or
• orders that infringing goods be delivered up for destruction.

In litigation proceedings, written pleading documents set out the scope of the infringement (as alleged by the rightsholder) and any defences (relied upon by the alleged infringer). It is common for an alleged infringer to defend infringement proceedings by filing a written cross-claim seeking to invalidate the IP right in issue. The infringement claim, defence and any cross-claim for invalidity are typically heard together at trial, with these issues of liability being bifurcated from the question of any remedies. Questions of any remedies are typically dealt as a subsequent stage in the proceeding if required.

Proceedings are case-managed and heard by a single judge at first instance (with no jury).

The trial will usually involve any witnesses who have given a written affidavit appearing to give oral evidence and be cross-examined. Witnesses may be lay people, for instance giving evidence on commercial matters, or independent technical experts giving evidence to help the Court understand the relevant IP rights and associated issues of infringement and validity. If multiple expert witnesses are involved in the case, with overlapping areas of expertise, they may be required to produce a joint report prior to the commencement of the trial and, at trial, be cross-examined together in what is known as an ‘expert hot tub’. At the end of a trial, the judge will typically reserve judgment and deliver a written decision at a later date, after careful consideration of the evidence and submissions presented.

After judgment, the parties have a short period of time (usually less than one month) to decide whether to appeal the decision to the Full Federal Court (usually a panel of 3 judges, again with no jury).