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Overview - Registrable Intellectual Property

The three main forms of registrable IP rights are patents, trade marks (or brands), and designs. These are explained in more detail below.

Patent and design registration generally requires that the item must be new at the time an application for registration is filed, whereas trade mark registration is not so prescriptive.

Which of these options is preferable really depends on the nature of the product or process that is sought to be protected.

The objective with all of these rights is to try and render the product or process proprietary, in other words to put a fence around the product or process, with a view to deterring others from encroaching on the ownership territory.

Patents

Patents are intended to protect the functional aspects of a product or process, that is, in essence the way the product or process works.

The inventiveness threshold is reasonably high and, as noted above, at the time of filing a patent application generally (with some limited exceptions) requires the product or process to be new, ie. not previously publicly disclosed, and to also involve an inventive step (in other words, not be obvious) when compared to any previously similar product or process.

The starting point for patent protection is usually an Australian provisional patent application, which must provide a written description of the invention in as much detail as possible, together with any drawings of the product or process, in order to demonstrate to a reader how the product or process works.

Within 12 months of the filing of the provisional application, the application must be completed by preparing an Australian complete application and/or any desired international application(s).

An international application filing mechanism reserves your right to file individual national patent applications in the markets of interest at a later time.

Note that the latter filing option isn’t a grant mechanism, as each national or regional patent office will then examine the application to determine whether it meets the patentability criteria in the country or region concerned.

Designs

Design registration is intended to protect the external aesthetics of a product, and can be a useful tool if the product doesn’t reach the patentability threshold of inventiveness.

Similarly, and as noted above, with some limited exceptions the design must be new, ie. not previously publicly disclosed at the time a design application is filed.

As also noted, the newness threshold for a registrable design is lower than for a patent, but the protection that flows from design registration is correspondingly lower.

Again, it is possible to use an. Australian design application as a basis for corresponding applications in any export markets you want to service.

Trademarks

Trade marks are those words, logos or phrases that marketers use to distinguish their products and services from those of others, and well-known examples include Apple, Nike, Microsoft and Adidas to name but a few.

Similarly, it is also possible to use an Australian trade mark application as a basis for corresponding applications in any export markets you want to service.

We regularly counsel clients on trade mark issues including searching and providing clearance/infringement opinions, trade mark filing, prosecution and registration both domestically and internationally, trade mark oppositions, and the management of client portfolios.

We also provide freedom to operate and infringement opinions to clients in fast moving product categories, including food and beverages, clothing, electrical goods, and novelty items.