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Note from August 25 2021, the innovation patent will cease to exist. After this date, you can only file a divisional innovation patent if it is based on a previously filed patent. Read more about this change in our article.

You can protect your intellectual property by filing for a patent, trade mark, or design registration with IP Australia. IP Australia is the government body in Australia that administers intellectual property rights and legislation relating to patents, trade marks and designs. The type of intellectual property right you need will depend on:

  • the products or services you offer; and
  • your branding strategy.

Once you have filed and successfully obtained your intellectual property right from IP Australia, what happens next? And how do you make sure that you maintain your intellectual property right? This article explores how to monitor your intellectual property rights.

Intellectual Property Rights

Registrable intellectual property rights include patents, trade marks and design registrations.

Patents are legally enforceable rights for an invention. An invention might be a device, substance, method or process. There are two complete types of patents in Australia, namely:

  1. standard patents, which can last up to 20 years (extendable to 25 years for some pharmaceutical patents); and
  2. innovation patents, which can last up to eight years.

Trade marks protect your brand. A trade mark could be a word, phrase, sound, smell, shape, logo or even colour. If you consistently use your trade mark, your trade mark can last indefinitely upon payment of renewal fees every 10 years.

Design registrations provide you with the exclusive right to commercially use, license or sell your design. They protect the shape, configuration, pattern or ornamentation of a product. A design registration can last for 10 years, with only a single renewal fee due at the five-year mark.

Renew Your Intellectual Property Rights

Once your intellectual property right is registered, be it a patent, trade mark or design, it is important to remember to keep your intellectual property right in force. This means that you must pay the renewal fee when it is due. This not only applies to intellectual property rights filed in Australia, but anywhere in the world.

One of the struggles intellectual property rights holders experience is keeping track of their renewals. This is because the length of time between each renewal varies depending on:

  • the type of intellectual property right; and
  • when you filed the application.

Patents must be renewed annually from the fourth anniversary of the filing date of the patent application. This allows their term to be extended by 12 months until the next anniversary. You can renew the patent annually for:

  • 20 years from the filing date; and
  • 25 years, in some instances, from the filing date for pharmaceutical patents.

You can renew your trade mark every 10 years to extend their term by an additional 10 years. You can renew a trade mark indefinitely, so long as the trade mark is still in use.

However, you can only renew your design registration once, to extend its initial term of 5 years to the maximum term of 10 years. However, it may be difficult to set reminders five years in advance without using proper systems and protocols.

In Australia, intellectual property right holders will often receive renewal notifications a few months before their IP right requires renewal. However, it is important not to rely on this notification alone, in case you:

  • miss it; or
  • do not receive the notification from IP Australia.

Search the Relevant Intellectual Property Database

It can be difficult to keep track of the status of your intellectual property rights. As such, it is important to be aware of the Australian databases for each type of registerable intellectual property right. These are:

IP Australia regularly updates these databases. They are readily accessible to allow you to find exactly what you are looking for. When searching on these databases, if you:

  • are looking to gather information about a particular intellectual property right, you can use the intellectual property right number which IP Australia has provided you;
  • are wondering how many intellectual property rights of a particular type you might hold, you can search using your applicant name, being the name of the owner of your intellectual property right; and
  • cannot find what you are looking for using words, you can try searching through trade marks and designs by uploading an image from the intellectual property right you are searching for.
For example, you could upload the logo you may have filed for your trade mark right and use it to search for your IP right.

Alternatively, you can search:

  • intellectual property right numbers;
  • inventors or designers; or
  • keywords that relate to the areas where you operate.

Once you locate your intellectual property right, it is important to ensure that the information associated with the right is current, including the:

  • owner of the right; and
  • owner’s address.

If the owner of the right has changed or a business has moved, you must notify IP Australia of this change.

Keep an Eye Out for Infringement

Intellectual property rights provide you with a monopoly on your intellectual property for a period of time. This allows you to exploit your invention in the country where you have filed intellectual property rights. Therefore, in the event someone starts making or offering for sale any intellectual property that your intellectual property rights protect, you can take action to stop them. As such, it is important to keep an eye out for others who may be infringing your intellectual property rights.

Taking the time to perform simple searches on Google, as well as on the Australian intellectual property databases, may make you aware of inventions, brands or designs which are the same or similar to your intellectual property right. Similarly, you may wish to search the ASIC database to see any newly registered business names every so often. While business name registrations do not provide the same rights to a name as trade mark registrations, they are a simple and efficient way of viewing who may be operating with the same or similar name to your brand.

Typically, depending on how saturated the market is, it is likely that you will come across the infringing invention, trade mark or design by word of mouth. However, you may also hear about it from customers who have noticed a similarity between your product, brand or design and another business’ product, name or design.

Enforcing Your Rights

If another business is infringing your intellectual property rights, you can take action to:

  • stop the infringer; and
  • ask for damages you may have suffered.

As soon as you are made aware of the infringement, it is important to gather as much information on the infringement as possible before speaking to a patent or trade mark attorney.

The patent or trade mark attorney will check that your intellectual property right is still in force, using the relevant Australian intellectual property database. You can also do this by searching your intellectual property right number in the search bar of the relevant intellectual property database. The patent or trade mark attorney will then confirm:

  • whether somebody has indeed infringed your intellectual property right; and
  • the best course of action to take to enforce your intellectual property.

A patent or trade mark attorney will be able to assess your intellectual property right against the infringing invention, brand or design to determine whether or not there is a valid infringement. Once determined, you must take reasonable steps to alert the other party of the infringement and your request.

For example, you could ask them to cease and desist from infringing your intellectual property right.

Ultimately, you must enforce your intellectual property rights to prevent others from utilising and generating profit from your registered intellectual property. The earlier you identify and respond to infringement, the less confusion there will be in the marketplace amongst consumers.

Key Takeaways

It is important to monitor your intellectual property rights to ensure that you are aware of their status. This will give you peace of mind that you will know when somebody infringes on your rights, and therefore be able to enforce them. If an infringement has occurred, contact your patent or trade mark attorney to ensure that there is an infringement and discuss your options. If you are interested in protecting your intellectual property or have recently been made aware that somebody has been infringing your intellectual property, contact LegalVision’s intellectual property lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

How often can I renew a trade mark?

Trade marks can be renewed indefinitely as long as you are still using the trade mark. You can renew your trade mark every 10 years.

What should I do if I discover somebody infringing on my intellectual property?

If you find somebody infringing on your intellectual property, you should seek legal advice to decide how to best proceed. You should also gather as much information about the infringement as possible.

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