Issues Magazine

Intellectual Property: Protecting Your Valuable Assets

By Joanna Jones

The first step to protecting your creative and intellectual effort is to identify and classify your intellectual property to determine the most appropriate way to protect it.

Broadly speaking, intellectual property (IP) is a term for a group of rights provided for by law that affords protection for “creative and intellectual effort”. Intellectual property rights fall into two primary categories: registrable and non-registrable rights.

Registrable intellectual property rights must be applied for and include patents, registered designs, trade marks and plant breeder’s rights. In contrast, circuit layout rights, copyright and confidential information (so called “trade secrets”) arise automatically and therefore fall under the category of non-registrable rights.

Intellectual property is a key component of success in today’s business world, and should be regarded as a valuable asset to be protected to safeguard against other parties infringing your creative and intellectual effort.

A patent provides an exclusive and legally enforceable right to commercially exploit an invention for a period of time.

What Can Be Patented?
Patents protect the functionality of an invention and can be granted for products, methods, apparatus, materials or processes that are novel and sufficiently inventive. Notably, not all inventions are patentable. In Australia, exclusions to patentability include human beings and the biological processes for their generation, mathematical models, plans and schemes, and abstract ideas or concepts (although the practical implementation of the idea or concept may be patentable).

Why Is a Patent an Asset?
The owner of a patent has a monopoly that provides the right to prevent others from exploiting the invention for the term of the patent. This is 20 years for a standard patent and 8 years for an innovation patent, which offers a shorter period of protection for incremental product developments. The owner of a patent can choose to exploit the invention themselves, or can license, transfer or sell the patent to others.

! Watch out for …
Public disclosure: Any demonstration, sale or discussion of an invention before the filing of a patent application may jeopardise the novelty of the invention.

A registered design protects the overall appearance of a product.

What Designs Can Be Registered?
Almost any type of manufactured product can be protected by a registered design, from paper clips to motor vehicles, and clothes to vacuum cleaners. To be registrable the design must be new in appearance; in other words, the appearance of the product must differ from that of existing products.

Why Is a Registered Design an Asset?
The owner of a registered design that has been examined and certified has an exclusive and legally enforceable right to use, license or sell the design for a maximum of 10 years in Australia.

! Watch out for …
As with patents, any public disclosure may jeopardise a design application. Notably, registered design protection protects the overall appearance of a product only but does not protect the functionality of the product when embodied in a product of different appearance.

Trade Marks
Trade marks are names, words, logos, shapes, colours, scents, sounds or any combinations thereof that distinguish the goods or services of one person from those of another.

What Can Be Registered?
The main requirement for registration is that a trade mark should be capable of distinguishing the goods or services to which the mark is applied. Trade marks that are simply descriptive of goods (e.g. wine) or services (e.g. plumbing) are typically difficult to register.

Why Is a Trade Mark an Asset?
Trade marks enable people to identify a product or service, so the “brand” may become a powerful and valuable business asset. A registered trade mark provides the owner with the exclusive right to use the mark in relation to particular goods and services within Australia and with the right to stop other people from using substantially identical or deceptively similar trade marks for the same class of goods or services or similar or closely related goods or services. The owner of a registered trade mark can also choose to license, transfer and sell the trade mark to others. The registration term is for 10 years and is renewable indefinitely upon payment of an official fee.

! Watch out for …
You do not have to register a trade mark to have some rights to the mark but it is usually advisable because proving your rights and taking action under common law can be a lengthy, expensive process.

Plant Breeder’s Rights
Plant breeder’s rights are used to protect new varieties of plants and provide exclusive commercial rights to market the new variety or its reproductive material.

What Can Be Registered?
Any new variety of plant that is distinct, uniform and stable can be registered.

Why Are Plant Breeder’s Rights an Asset?
The owner of the plant breeder’s right can direct the production, sale and distribution of the new variety in Australia, as well as receive royalties from the sale of the plants or sell their rights. The term of protection is 25 years for trees or vines and 20 years for other species.

! Watch out for …
Plant breeder’s rights do not extend to the use of a grower’s crop (in other words, the grower does not have to pay a royalty on the crop produced), nor do the rights extend to the use of the variety in plant breeding or retention by growers of seed for the production of another crop on their land.

Copyright protects the original expression of an idea (not the idea itself) from copying and certain other uses. The original expression can be in the form of original works of art and literature, music, film, sound recordings, broadcasts and computer programs.

What Can Be Registered?
Copyright is automatic and no registration is required in Australia. Material is automatically protected from the time it is first written down, painted or drawn, filmed or taped.

Why Is Copyright an Asset?
Depending on the material, copyright for literary, dramatic, musical and artistic works generally lasts 70 years from the year of the author’s death or from the year of first publication after the author’s death. Copyright for films and sound recordings lasts 70 years from publication. Copyright for broadcasts lasts 70 years from the year in which the broadcast was made.

! Watch out for …
Although making copies of copyright material can infringe the owner’s exclusive rights, a certain amount of copying is permissible under the fair dealing provisions of the legislation. Notably, copyright laws do not protect you against the independent creation of a similar work.

Circuit Layout Rights
Circuit layout rights protect original layout designs for integrated circuits and computer chips.

What Can Be Registered?
Circuit layout rights are automatic and no registration is required.

Why Are Circuit Layout Rights an Asset?
The owner of an original circuit layout has the exclusive right to copy the layout in a material form, make integrated circuits from the layout and exploit the layout commercially in Australia. The rights subsist for 10 years from the first commercial exploitation of the layout (provided this occurs within 10 years from creation of the layout) or, if not commercially exploited, 10 years from the year in which the layout was made. Accordingly, the maximum possible protection period is 20 years from the year of making an eligible layout.

Confidential Information (Trade Secrets)
A trade secret is both a type of intellectual property and a strategy for protecting your intellectual property. It can be a useful strategy for protecting proprietary knowledge. One of the most famous examples of a trade secret is the formula for Coca-Cola™.

! Watch out for …
A trade secret should be protected by a signed confidentiality agreement. Trade secrets are not useful for products that can be readily reverse-engineered and copied by a third party.