frequently asked questions

General

What is intellectual property?

Intellectual property (IP) refers to “creations of the mind“, and is often divided into two categories: industrial property and  copyright.

Industrial Property includes:

  • Patents – which protect inventions;
  • Trademarks – which protect your brand;
  • Designs – which protect your products.

Copyright covers literary and artistic works, films, music and architectural design.

The rights assigned to intellectual property are equivalent to any other property right. The owners of patents, trademarks and designs are provided with a monopoly for the defined scope of their intellectual property right.

Why promote and protect intellectual property?

Many reasons! Most importantly, the progress and well-being of humanity relies on the creation and invention of new technology. New medical treatments, faster diagnostics, etc.

IP rights were introduced as a way to encourage more resources and investment in further innovation. In this regard, the promotion and protection of intellectual property encourages economic growth, higher employment, and enhances the quality and enjoyment of life.

Patents

What makes a good Patent Attorney?

A good patent attorney has exceptional technical skills in the area of your invention, in order to rapidly appreciate the nature of your innovation as well as being able to translate that into the legalese required in a patent document.  Indeed, a good patent attorney also needs to be well versed in the legal aspects of patenting,

What is a good Patent Attorney and why do I need one?

Once a complete patent application is filed, additional information and details cannot be included (at least not without altering the priority date).  This means that it is imperative to file the most comprehensive complete patent application in order to provide the best possible chance of gaining broad, commercially advantageous, protection.  Therefore, the best time to employ the skills of a good Patent Attorney is upfront – when filing the provisional and/or complete application – not in the throws of prosecution when it is no longer possible to include additional material.

A good Patent Attorney will consult with you regarding your technology, and truly understand where the commercial value lies. By consulting with a good Patent Attorney early on, they can advise on any further experiments that should be performed in order to obtain robust patent claims.

For more information see here.

How much does a patent cost?

Patents are expensive. The good news is that the bulk of these costs are deferred for many years after the first application, giving you an opportunity to obtain investment or begin selling your product or service. Alternatively, if your idea doesn’t take off you can always stop your application before significant costs are incurred.

Click here for more information on the patent lifecycle, including a guide to official fees and our costing model.

What is “patent prosecution”?

Patent prosecution includes all the activities required to obtain acceptance and grant of a patent. For example, these activities include working through the examination process and responding to Examination Reports.

What should I do if I am about to disclose something about my invention?

If you are about to publish your technology, be it in an academic journal, catalogue, or newspaper, it is important to determine whether the disclosure will impact on your ability to obtain a patent.

We would typically recommend filing your patent application before your publication, especially if you are interested in applying for patents in countries other than Australia.

Filing a provisional application before your publication is a relatively inexpensive way to maximize your ability to obtain a robust patent after your disclosure.

Alternatively, it may be that a patent attorney can assist you with the content of the publication, such that your primary commercial embodiment remains novel and inventive.

Australia has “grace period provisions“, which allow self-publications within 12-months from the complete application date (e.g., PCT application filing date) to be removed from the prior art. In other words, documents that you publish in the 12 months prior to your complete filing date will not impact your patent. Importantly, however, this is not a panacea – for example, some other countries/regions do not have such generous provisions, for example, Europe allows no grace period whatsoever.

Which countries have grace period provisions?

A handful of countries have grace period provisions. That is, if a patent is filed within a certain time after self-publishing the invention, the earlier publication is not considered to be prior art to the patent application.

Countries with a 12-month grace period*
ArgentinaSouth Korea
AustraliaMalaysia
BrazilMexico
CanadaPeru
ChilePhilippines
ColumbiaTurkey
EstoniaUSA
*This is not an exhaustive list, and is subject to change.
Countries with a 12-month grace period*
EurasiaAlbania
JapanSan Marino
Russia
*This is a not an exhaustive list, and is subject to change.

If you have a self-disclosure that you believe may impact your ability to obtain patent protection for your technology, please contact us.

 

Are naturally occurring things patentable?

Possibly. When it comes to obtaining patent protection for substances that occur in nature, things get very complicated very quickly.

Each individual country has its own laws governing what naturally occurring substances are patentable. Therefore, strategies for protecting naturally occurring substances can vary  greatly depending on the country in which the patent is filed!

A very short and far too simple answer is, of course you can’t patent a bumble bee or honey – because these things already exists. But … you may be able to patent an aspect of a chemical (for example, a protein) within the bumble bee or honey.

A better answer would be, contact us to discuss your invention. With inventions in the realm of natural substances, there is no generic answer that will be completely relevant to your individual cirumstances, and the Patent Attorneys at innofy will find you the best strategy to proceed!

Trade Marks

What is the difference between a Trade Mark and a business name?

It’s commonly thought that a trade mark and a business names are simply different words for the same thing. However, this misconception could be disastrous to your business, as each has very different purposes.

A business name is merely the name under which your business operates and is connected to your Australian Business Number (ABN). You must register your business name if you are trading under a name that is not your own.

By registering a trade mark you get exclusive use of the mark throughout Australia. Therefore, a registered trade mark is an incredibly valuable tool for your business. It prevents your competitors from using your business name, logo, or other distinctive mark.

It’s important to appreciate that only a registered trade mark can give you full rights to use a particular name or logo for your business. Although a business name identifies your business, it does not give you any legal rights to actually use the name, or provide you with the ability to prevent your competitors from using the same name for their products. Obtaining a registered trade mark for your most valuable business and product names and logos will provide you with security in the knowledge that your brand will remain yours.

For more information on trade marks please click here.

Can I use symbols to show my brand has a trade mark?

Of course. But you have to be very careful that you are using the appropriate symbol.

If your trade mark is not yet registered, you cannot indicate that it is a registered trade mark. You cannot use the ® symbol until after you receive notification that your trade mark is officially registered. Having a trade mark application in progress does not allow you to use the ® symbol.

The ™ symbol represents unregistered trade marks (including trade marks awaiting official registration). It can be a good idea to start denoting your trade mark with the ™ symbol on your packaging and marketing material before and after you file your trade mark application. This will show people that your mark is important to you. By indicating your mark is being used as a trade mark, third parties may find it harder to argue innocent infringement, if and when your mark makes it to official registration.

Designs

What’s the difference between a Registered Design and a Patent?

Registered designs protect the distinctive look, shape, configuration, ornamentation or pattern of an article, but do not protect the way an article functions.  Therefore, registered designs are ideal if you are wanting to stop direct copies of a distinctive design applied to an article.  Conversely, patents can protect the function of an article.  Check out our registered designs page for more information on the design application process, and the the patents page for detailed information on patent applications.