Summary
- Registering IP before going to market is strongly recommended, as public disclosure can disqualify a patent or design from registration, and early registration secures a priority date and strengthens enforceability against infringers.
- The three most common forms of IP in Australia – patents, designs, and trade marks – have different timing requirements, with patents and designs requiring registration before public disclosure, while trade marks can be registered at any time.
- Before investing in registration, businesses should conduct preliminary searches using free databases to identify existing registrations and assess registrability, reducing the risk of wasted costs.
- This article explains when and how to protect intellectual property for startup founders and business owners operating in Australia.
- LegalVision, a commercial law firm specialising in advising clients on intellectual property law, outlines the key timing considerations and preliminary steps for protecting IP.
Tips for Businesses
File a provisional patent application before disclosing any new invention, as public disclosure may eliminate eligibility for patent protection. Register designs before launching or advertising your product, as there are no grace periods. Conduct free database searches before lodging any formal IP application to identify conflicts early and avoid unnecessary costs.
Protecting your intellectual property (IP) gives your business a legal monopoly over its most valuable assets. The earlier you act, the stronger your position. For startups, knowing which types of IP to protect and when to invest in registration can make the difference between long-term success and costly disputes. This article will outline some of the key issues to consider when exploring IP protection. It will also discuss some preliminary steps you can take to help determine whether your IP can be protected and therefore reduce the risk of over-investing too soon.
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Before Going to Market
Ideally, you should consider protecting your IP before launching your business. This is because once your product or service is in the public domain, the risk of others using your IP rises. Generally, it is much easier to enforce your IP against infringers if it is registered and protected. The last thing you want is someone else stealing or copying your IP after having invested time and money into your business launch. Protecting your IP early on can also help you with:
- deterring competitors from copying your IP;
- establishing a competitive advantage; and
- attracting investment for your business.
Despite the obvious benefits of protecting your IP before going to market, it is not practical for many startup businesses due to the costs involved with IP registration. If money and resources are limited, then it may make sense to ‘test’ your business model before investing in your IP. If you decide to launch your business before registering your IP, there are some key legal issues you should consider as explained below.
After Going to Market
It is possible to register your IP after launching your business, or at any time during your business lifecycle. However, registering your IP at a later stage can make it more difficult and costly to protect and enforce your IP against infringers in the long run.
In addition, some forms of IP are more time sensitive than others. The timing considerations associated with the three most common types of IP registered in Australia are set out below.
Patents
A patent protects a new invention. Generally, once you have publicly disclosed your invention:
- it may no longer be eligible for patent protection; or
- you may need to rely on grace periods.
Therefore, if you have created a product or service that is new and inventive, you must keep this confidential until you have applied for patent protection.
You may also consider filing a provisional patent application before launching your invention. This is often the first step for many businesses. Once you file a provisional patent application, you will be given a priority date. This is the date from which your application is given preference over subsequent inventions.
A provisional patent application is only valid for 12 months. However, it can act as a placeholder for your full patent application and allow you to disclose and use your invention in the meantime.
Designs
A design protects the visual appearance of a product that is distinctive and unique. Similar to patents, you must register and protect a design before you go to market and start advertising your product.
This is because once your design is disclosed and in the public domain, it is no longer considered distinctive and therefore cannot be registered. There are no grace periods for designs.
Trade Marks
A trade mark protects elements of your brand, such as your business name and logo. You can apply for a trade mark at any time and there is no time limit. However, it is recommended to apply early on to secure your priority date and reduce the risk of someone applying for a similar trade mark before you.
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When Should I Protect My IP?
There is no right or wrong answer as to when you should seek protection for your IP. The benefits and risks associated with obtaining IP protection before and after going to market will vary for each business and depend on various factors.
In addition, some forms of IP will be more valuable to your business than others. While most businesses will own copyright and have trade mark protection to some degree, not every business will need a patent. Therefore, it is important to understand the benefits of each different type of IP and prioritise them according to which protections will maximise the value and success of your business.
What Can I Protect?
Each form of IP has its own eligibility requirements. Before investing money in registering your IP, you should understand whether you are likely to qualify for registration by seeking advice from a legal professional.
You can also perform your own preliminary searches and investigation to help assess the registrability of your IP and any potential risks. This is especially important during the ideation stage of your business.
The table below outlines some of the free databases you can use to search for any existing IP registrations similar to yours.
| Official search systems | Other search systems | |
| Patent |
| |
| Design | ||
| Trade Mark |
|
Doing your own investigation can help reveal any red flags before registering your IP. However, it is best to seek advice from a legal professional who can assist with performing detailed searches and provide a formal assessment.
Key Takeaways
It can be difficult to decide when to invest in IP protection and what you should protect. There are obvious benefits to registering your IP before launching your business. However, this is not practical for some startups due to limited funds and resources. Hence, your business will need to make a judgement call about what IP to protect and when. However, as a rule of thumb, the earlier you register and protect your IP the better. This will give you a significant advantage over your competitors, especially when it comes to preventing others from misusing your IP.
If you have questions about a potential infringement claim, LegalVision provides ongoing legal support for businesses through our fixed-fee legal membership. Our experienced intellectual property lawyers help businesses manage contracts, employment law, disputes, intellectual property, and more, with unlimited access to specialist lawyers for a fixed monthly fee. To learn more about LegalVision’s legal membership, call 1300 544 755 or visit our membership page.
Frequently Asked Questions
Applying via the Madrid Protocol pathway is generally your best option if you plan to expand your business and are looking to register your trade mark in at least three countries overseas.
If you want to register your trade mark in one or two countries overseas, it is generally more cost-effective and faster to file direct applications in each relevant country. In doing so, you can typically skip the additional steps involved with the Madrid Protocol. In this case, your application will likely be allocated to an examiner faster, and you will receive a status update more quickly.
A provisional patent application secures a priority date for your invention and acts as a placeholder for your full patent application, giving you 12 months to disclose and use your invention while maintaining protection. It is often the first step for startups that need time before committing to a full patent application.
No. Unlike trade marks, designs must be registered before you go to market. Once your design is publicly disclosed, it is no longer considered distinctive and cannot be registered. There are also no grace periods available for designs, making early registration essential.
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