Friday, 20 April 2018

Data 61s Expert Connect

IP, knowledge base, knowledge, information, intellectual property, expert


Australia's research institutions have a wealth of information and knowledge developed over many years.

If you are an inventor, entrepreneur or business owner looking to tap into this knowledge base to help you develop your own concepts, "Data61’s Expert Connect" maybe the tool you need. 

Data61 has created a portal to help identify and unlock the knowledge contained within Australia’s research institutions. It is searchable by field of knowledge, research institution or name to identify relevant experts. 

For those interested, we have included a link to their website: Data 61 Expert Connect

For general IP advice and assistance, contact Greyson Legal.


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2018, All rights reserved.

Easy Access IP



Are you an inventor, entrepreneur or business owner looking to find pathways to develop your own concepts or access other people's IP to help you achieve your goals ?

A number of Australian and international universities are using the Easy Access IP scheme to offer free access to IP. Its a way of helping universities promote their research discoveries and at the same time benefit the wider community.

Under the scheme, the IP is licensed to a commercialisation partner through an agreement for no cost.

If you are interested, we have provided a link to the Easy Access IP website: http://easyaccessip.com

If you need general IP assistance, contact Greyson Legal.


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2018, All rights reserved.

Monday, 26 March 2018

Franchising and IP

Intellectual Property forms an important element of the Franchise model.

This is because the Franchisor (or an associated entity, sometimes called a "Licensor") will own:
  • one or more registered trademarks; and 
  • copyrighted material. 
Through the Franchise Agreement, the Franchisor will grant its Franchisees a licence to use those trademarks and copyright in relation to the Franchised Business being operated by the Franchisee.

Other forms of intellectual property, such as, trade secrets are also a key part of the Franchise model, as the Franchisor will grant the Franchisee access to various processes and procedures, often summarised in a Franchise Operations Manual. 

The Franchise Agreement will include certain confidentiality and restraint obligations on the Franchisee not to use the trade secrets other than for authorised purposes.

Greyson Legal are leading Australian Franchise Lawyers.

Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2018, All rights reserved.

Sunday, 25 March 2018

What Are Trade Secrets ?

Trade secrets, sometimes referred to as know-how, and other confidential or proprietary information have an important role particularly in Business.

Trade secrets are typically broadly defined and may include:
  • sales methods; 
  • distribution systems; 
  • customer databases; 
  • advertising strategies; 
  • supplier list; 
  • manufacturing processes; 
  • etc 
An example of trade secret is the the combination of herbs and spices used in Kentucky Fried Chicken.

There is no formal registration process in respect of trade secrets.

As know-how is important to a Business, it follows that appropriate mechanisms should be adopted by that Business to protect its trade secrets. A few options might include:
  • Only key personnel of the Business having access to the trade secrets; 
  • Where access is given, the relevant receiver of the information has signed a Confidentiality or Non-Disclosure Agreement; 
  • Checking whether the content of the trade secret might also fall into another category of registrable intellectual property, for example, a design or patent. 
Where there is an infringement of a trade secret it would be necessary for the owner to seek remedies under the common law or equity, such as:
  • breach of a Confidentiality Agreement (or breach of confidence in the absence of a written agreement); or 
  • breach of a restraint obligations (ie. to prevent the disclosure or use of trade secrets), 
which may entail pursuing injunctive relief and/or a claim for damages.

If you require further information or assistance in relation to protecting your trade secrets, we recommend you contact our office to discuss your specific situation.

Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2018, All rights reserved.

Thursday, 10 November 2016

Removal of Trademark for Non Use

Old Building

Notwithstanding that a trade mark owner may have registered a mark in Australia, registration on its own is not sufficient to ensure the mark remains the exclusive property of that owner.

When an application to register a mark in Australia is lodged there is a presumption at the time of application that the applicant will act in good faith with the intention that the mark (once registered) will be used in Australia by that applicant in relation to the class of goods/services associated with the mark.

Under section 92 of the Trade Marks Act 1995 (Cth), a person may apply to the Registrar to have a registered trade mark removed from the Register. The grounds upon which a person could seek to have a registered mark removed include, for example:

  • when the application for the registration of the mark was filed, the applicant had no intention in good faith of actually using the trade mark in Australia; or
  • the trade mark has remained registered for a continuous period of 3 years and, at no time during that period, did the person who was then the registered owner use the mark in Australia.

A situation could arise where a competitor wants to register a trade mark that is substantially identical/deceptively similar to a trade mark that is already on the register in relation to the same goods and/or services of the competitor.

That competitor could file an “Application for removal or cessation of protection of a trade mark for non-use” with IP Australia alleging one of the grounds for non use. If the ground alleged relates to the continuous 3 year requirement, there is a further obligation on the competitor that at least 5 years must have passed since the filing date of the registered trade mark.

The registered trade mark owner (as the opponent) would then be obliged to rebut such an allegation in order to avoid having their mark removed for non-use.

In summary, if you are the registered owner of a mark in Australia and you either never intended to use the mark when you applied for it or you have not continuously used the mark for a 3 year period in relation to the goods/services associated with the mark, then you risk losing the right to the mark on the basis of non use.

Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2017, All rights reserved.

What is a Design ?



design, ruler, drafting

A design can be described as the way a particular product looks - its visual appearance. For example, it’s shape, or the way a product is packaged.

“Appearance” of a product should not be confused with the product itself or its “function”. The product’s functionality or the way in which it operates is a separate intellectual property (IP) right which can be protected through patents.

It can be the case that a particular product/invention needs both design protection and patent protection.

Given designs do play an important part in a product’s branding, it is important to protect that IP right.

In Australia, IP rights in designs can be protected through a registration and certification process governed by the Designs Act 2013 (Cth).

Application and Registration

There are a number of steps involved:

  • Application filing and payment of the Application fee;
  • A formalities check is then carried out of the Application by the Designs Office to make sure there are no concerns with the Application;
  • If the design passes the formalities check, the design is then registered.
Once registered, the details of the registered owner and the design will be entered on the Register of Designs and searchable.

Rights of Registered Owner

Once registered, the owner will have exclusive rights in that design, including to:

  • Manufacture a product utilising the design;
  • Commercially use, licence or sell the rights in the design
Enforcing Design Rights

It can occur that a registered design is infringed by someone else, for example, that person may seek to sell a product that incorporates a design identical or substantially similar to your registered design.

In order to take legal action against the “infringer”, the registered design must first be examined and certified by the Design Office.

Examination

It is not compulsory for a registered owner of a design to have the design examined. But, in order to obtain legally enforceable rights in the design, the design must be examined to determine its:

  • Newness; and
  • Distinctiveness
In order to have a design examined:

  • A request for examination needs to be made to the Design Office; and
  • The requisite fee paid.
The Design Office will then assess the design to ascertain whether or not:

New

“New” means the design has not been publicly used in Australia nor has it been published in a document within or outside Australia.
If a product has already been commercialised in Australia using the design (before the product is examined), then it is likely the examined design will fail the newness test.

Distinctive

There exists another application or registered design substantially similar in overall impression to the design being examined.

If an earlier design application or registration did exist, then the examined design may fail the distinctiveness test.

Certification

If the registered design has passed the examination stage, a certificate of examination will be issued by the Designs Office noting the design as certified.

Certification will then allow the design owner to commence legal action against any infringement of the design by someone else.

Application/Registration/Examination Processing Time

Generally, once an application for design registration is lodged, it can take about 3 months for the application to be processed.

If design certification is also requested (which is optional), an additional examination phase of about 3 months applies.

Designs not eligible for Registration

Some designs are statutorily barred from registration. For example, designs which contain certain words, like the word “ANZAC”.

Period of Protection

Registration will protect the design for a period of 5 years from when the application is filed. It can then be renewed for a further period of 5 years. So, a maximum of 10 years.

If a registered design is not renewed, the protection given by the registration will cease. The design then passes into the public domain and will be free for others to use.

Costs

There is an initial application fee when the design is lodged. Further fees apply if the design is to be examined. There are also fees if a registered design is later renewed.

International Design Protection

Registration and certification of a design in Australia only protects the design in Australia.


If you are exporting and require design protection overseas, then separate application needs to be made either directly to the overseas country in question or through the centralized process administered by WIPO. Time limits can also apply.


Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.


Copyright © Greyson Legal 2017, All rights reserved.

What is a Patent ?


circuitboard, computer, invention

Where a person has invented a device, substance, process or method which has the characteristic of providing a “new” way of doing something, or offers a new solution to a problem, it is important that the owner’s IP rights in the invention are protected.

A patent is the vehicle for protecting such rights.

The Patents Act 1990 (Cth) prescribes certain criteria which must be met before an invention can be patented.

In short, the device, substance, method or process must not only be new but must also be “novel, inventive and useful”.

Patent protection is not automatic. A thorough registration process must be adhered to in order to obtain patent approval.

Generally, there are two types of patents in Australia:-
  • standard patent; and
  • innovation patent. 
There are differences between each type in terms of cost, length of protection, application processing time and the type of invention they seek to cover.

A standard patent lasts for 20 years.

An innovative patent lasts for 8 years.

Usually an innovative patent will be utilised where the “inventive threshold” required for the standard patent is not able to be met.

Patent registration provides its holder with a legally enforceable exclusive right to commercially exploit the invention for the duration of the patent. Once a patent expires, the protection ends and the invention enters the public domain, i.e. the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others.

There is a separate patent application process for international protection, which will vary depending on the country.

Contact us for further information:


Disclaimer

The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2017, All rights reserved.