Intellectual Property

Patent protection

Is patent protection an issue for you?

If you have developed a new product or process which is important to the profitability of your business, then you should consider patenting this invention. The requirements for the validation and registration of patents are very strict, and hence if you are considering obtaining a patent you should obtain advice from a registered patent attorney. We can assist you with such a referral.

A patent will provide you with the exclusive right to commercially exploit your invention. Using or disclosing your invention before it is patented may, depending upon the circumstances, prevent you from being able to obtain a patent.

If you decide against obtaining a patent, you may wish to protect your invention by keeping it a trade secret or by utilising the protection inherent in registered designs or copyright.

It is also important to be vigorous in protecting your patent.  You should have a strategy in place to deal with infringement of your patent.  It is important that you take action against the infringer, either by letter of demand or by issuing proceedings, without delay after becoming aware of the infringement.  Delaying action both sends a message to the infringer that you are not serious about protecting your rights and may also jeopardise your chances of obtaining an injunction to prevent further infringements.

Trademarks, trade names and service marks

Do you have trademarks, trade names and service marks protecting your identifying logos etc?

Registration of your trademarks will provide valuable protection for those marks for all of Australia and also provides a basis for applying for trademark protection internationally.

Registration of the business names, logos and product names associated with your business can make it considerably easier to prevent competitors from using the same or similar names for their business and products. Whilst action can sometimes be taken to protect names and logos without trademark registration, registration will generally make proceedings to prevent others from using these names and logos quicker, cheaper and more likely to succeed.

The ability to place a registered trademark symbol next to your names and logos also can have the effect of discouraging others from copying or making use of the same.

It is important to protect your trademark by taking action against anyone who infringes it. You should not delay in taking action against a party whom you consider to be infringing your trademark as delay sends a message to the infringer that you are not serious about protecting your trademark and is also a factor reducing your chance of obtaining an injunction from the court to prevent further infringements.

Confidentiality agreements

Do you have confidentiality agreements with employees and other parties in close contact with your commercially sensitive information?

The law prevents an employee or a confidante from disclosing your business’s confidential information. Despite this, it is still important for businesses to have their employees, key suppliers, and anyone else with access to their commercially sensitive confidential information, sign a confidentiality agreement.

The most important additional protection provided by a signed confidentiality agreement is that such an agreement, properly drawn, will define (with a degree of certainty which would otherwise be difficult to establish) exactly what information is confidential.

When a company brings an action against an ex-employee or other party to prevent or penalise the misuse of confidential information, one of the first hurdles at which many companies fall is proving that the information disclosed was truly confidential. Including the relevant information in the schedule of a confidentiality agreement will make this job much easier.

Confidentiality agreements also have an important educative role. They reinforce to employees and other confidantes the seriousness with which the business treats its confidential information. They also inform parties of exactly which information is considered confidential, which helps to prevent inadvertent disclosure of the same. 

Intellectual property licences, assignments and agreements

Do you have appropriate licence, assignment or other agreements in place with respect to the intellectual property supplied to you or by you?

If you are making use of another party’s intellectual property, then it is important that you have the appropriate licence or assignment agreement in place. In the absence of an agreement setting out your rights and responsibilities, you may infringe the terms under which you make use of that intellectual property. Such infringement may leave you open to a large award of damages or even result in you having to pay to the injured party all of the profits which you have made from the use of the intellectual property.

If you are allowing another party to use your business’s intellectual property, then it is equally important to have the terms of such use expressed in a licence or assignment document. Failure to document such agreements increases the chance of dispute as to the terms and will increase the cost of enforcing the agreement should a dispute arise. Failure to properly document licenses and assignments can also have a detrimental effect on the ability of the parties to enforce their intellectual property rights against a third party.

Business names, requirements and limitations

If you trade under a business name, do you know the requirements and limitations of registration of that business name?

If you trade under a business name then, unless that name is identical to the name of the person or company operating under that name, then you will need to register the business name.

If you have registered your business name, it is important to note that the only right conferred by such registration is to prevent another party from registering an identical business name. There is nothing to stop a party from registering a similar name unless they are engaged in the tort of ‘passing off’, that is an attempt to pretend that they are you so as to steal away business you would ordinarily expect to get.