Intellectual Property | By Lawyers
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Intellectual Property

FED

This publication assists practitioners with intellectual property law for businesses, including applications and infringements.

1 Matter Plan

Overview

Commentary and precedents covering trade marks, passing off, patents, copyright, moral rights, design rights and plant breeders’ rights to help practitioners advise clients and complete matters involving intellectual property rights with confidence.

From business sales and purchases, commercial transactions, and franchising matters, through to disputes, succession planning, and business structuring, intellectual property rights are often among a client’s most valuable assets. Understanding and protecting those rights is increasingly important for firms across all practice areas. Comprehensive retainer instructions and scopes of work ensure nothing is missed when the client’s instructions are taken and the scope of the retainer defined.

Whether assisting clients with applications through IP Australia, advising on ownership and protection of intellectual property rights, or dealing with intellectual property considerations in commercial transactions, practitioners can now access clear guidance and practical precedents in a single, dedicated resource, with helpful hyperlinks to all relevant IP Australia and other resources.

The Reference materials folder includes guidance on electronic signing and witnessing, and the comprehensive Getting the matter underway folder includes compliance and client care documents. Using the extensive Retainer Instructions when gathering information ensures nothing is missed.

Precedents in this publication include:

  • Agreement for licence of intellectual property rights
  • Clause - Assignment of intellectual property rights - Employment agreement
  • Confidentiality deed
  • Deed of assignment of intellectual property
  • E-commerce website agreement
  • Initial letters to client
  • Letters of demand for:
    • Copyright infringement
    • Patents
    • Trade mark infringement and passing off
  • Letter to client finalising the matter – Intellectual property
  • Retainer instructions
  • Scopes of work
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1 Matter Plan Included

  • Item icon ALERTS - Nil
  • Item icon Full Commentary - Intellectual Property
  • Folder icon Reference materials
    • Item icon AI Prompts
    • Item icon Looking to the Future
    • Item icon Electronic Signing and Witnessing
    • Item icon 101 Costs Answers
    • Item icon Further information
  • Item icon Overview
    Intellectual property is at the heart of many businesses, and protecting, registering, assigning, and transferring intellectual property rights is frequently crucial to a business’s success and value. Intellectual property, or IP, describes a broad range of assets developed through the application ...

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  • Item icon Summary of the process
    Trade mark The usual steps in acting for an applicant for registration of a trade mark are:

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  • Folder icon A. Getting the matter underway
    • Item icon File cover sheet - Intellectual property
    • Item icon To do list - Intellectual property - Patents
    • Item icon To do list - Intellectual property - Trade marks
    • Item icon First steps
    • Item icon Client details and verifying identity
    • Item icon Retainer instructions - Intellectual property
    • Item icon Retainer instructions - Intellectual property - Patents
    • Item icon Retainer instructions - Intellectual property - Trade marks
    • Item icon Conflict of interest check
    • Item icon Initial letter to client with costs disclosure - Intellectual property
    • Item icon Initial letter to client with costs disclosure - Intellectual property - Patents
    • Item icon Initial letter to client with costs disclosure - Intellectual property - Trade marks
    • Folder icon Library of costs agreements
      • Folder icon Australian Capital Territory
        • Item icon Costs agreement - ACT
        • Item icon Scope of work - Intellectual property - Copyright
        • Item icon Scope of work - Intellectual property - Disputes
        • Item icon Scope of work - Intellectual property - Patents
        • Item icon Scope of work - Intellectual property - Trade marks
      • Folder icon New South Wales
        • Item icon Costs agreement - NSW
        • Item icon Standard costs disclosure form for clients - Fees under $3000
        • Item icon Scope of work - Intellectual property - Copyright
        • Item icon Scope of work - Intellectual property - Disputes
        • Item icon Scope of work - Intellectual property - Patents
        • Item icon Scope of work - Intellectual property - Trade marks
      • Folder icon Northern Territory
        • Item icon Costs agreement - NT
        • Item icon Scope of work - Intellectual property - Copyright
        • Item icon Scope of work - Intellectual property - Disputes
        • Item icon Scope of work - Intellectual property - Patents
        • Item icon Scope of work - Intellectual property - Trade marks
      • Folder icon Queensland
        • Item icon Initial letter to client enclosing costs agreement
        • Item icon Costs agreement - QLD
        • Item icon Abbreviated costs disclosure - Costs under $3000
        • Item icon Scope of work - Intellectual property - Copyright
        • Item icon Scope of work - Intellectual property - Disputes
        • Item icon Scope of work - Intellectual property - Patents
        • Item icon Scope of work - Intellectual property - Trade marks
      • Folder icon South Australia
        • Item icon Costs agreement - SA
        • Item icon Scope of work - Intellectual property - Copyright
        • Item icon Scope of work - Intellectual property - Disputes
        • Item icon Scope of work - Intellectual property - Patents
        • Item icon Scope of work - Intellectual property - Trade marks
      • Folder icon Tasmania
        • Item icon Costs agreement - TAS
        • Item icon Scope of work - Intellectual property - Copyright
        • Item icon Scope of work - Intellectual property - Disputes
        • Item icon Scope of work - Intellectual property - Patents
        • Item icon Scope of work - Intellectual property - Trade marks
      • Folder icon Victoria
        • Item icon Costs agreement - VIC
        • Item icon Standard costs disclosure form for clients - Fees under $3000
        • Item icon Scope of work - Intellectual property - Copyright
        • Item icon Scope of work - Intellectual property - Disputes
        • Item icon Scope of work - Intellectual property - Patents
        • Item icon Scope of work - Intellectual property - Trade marks
      • Folder icon Western Australia
        • Item icon Costs agreement - WA
        • Item icon Standard costs disclosure form for clients - Fees under $3000
        • Item icon Scope of work - Intellectual property - Copyright
        • Item icon Scope of work - Intellectual property - Disputes
        • Item icon Scope of work - Intellectual property - Patents
        • Item icon Scope of work - Intellectual property - Trade marks
    • Item icon Time and costs estimates
    • Folder icon If required - Updating costs disclosure
      • Item icon Letter to client updating costs disclosure
      • Item icon Charge securing costs
      • Item icon Guarantee securing costs
      • Folder icon Costs disclosure before settlement in litigation matters
        • Item icon Letter to client - Costs disclosure before settlement - NSW, VIC, and WA
        • Item icon Letter to client - Costs disclosure before settlement - QLD, SA, TAS, ACT, and NT
    • Folder icon General deeds, agreements, execution clauses, and statutory declarations
      • Item icon Deeds and Agreements
      • Folder icon Deeds
        • Item icon Deed for general use
        • Item icon Deed of guarantee
        • Item icon Deed of release
        • Item icon Confidentiality deed
        • Item icon General deed of indemnity
        • Item icon Deed of assignment of agreement
        • Item icon Deed of gift
        • Folder icon Library of standard clauses for deeds
          • Item icon Amendment
          • Item icon Confidentiality for defined information - All parties
          • Item icon Confidentiality for defined information - One party
          • Item icon Confidentiality for terms of deed - All parties
          • Item icon Confidentiality for terms of deed - One party
          • Item icon Costs
          • Item icon Counterparts
          • Item icon Dispute resolution
          • Item icon Events beyond control
          • Item icon Governing law and jurisdiction
          • Item icon Interpretation
          • Item icon No assignment
          • Item icon Notices
          • Item icon Severance
          • Item icon Waiver
          • Item icon Whole agreement
      • Folder icon Agreements
        • Item icon Agreement for general use
        • Item icon Heads of agreement
        • Item icon Non-disclosure agreement - Formal
        • Item icon Non-disclosure agreement - Informal
        • Folder icon Library of standard clauses for agreements
          • Item icon Amendment
          • Item icon Confidentiality for defined information - All parties
          • Item icon Confidentiality for defined information - One party
          • Item icon Confidentiality for terms of agreement - All parties
          • Item icon Confidentiality for terms of agreement - One party
          • Item icon Costs
          • Item icon Counterparts
          • Item icon Dispute resolution
          • Item icon Events beyond control
          • Item icon Governing law and jurisdiction
          • Item icon Interpretation
          • Item icon No assignment
          • Item icon Notices
          • Item icon Severance
          • Item icon Waiver
          • Item icon Whole agreement
      • Folder icon Execution clauses
        • Folder icon Library of execution clauses for agreements
          • Item icon Attorney
          • Item icon Authorised officer
          • Item icon Company
          • Item icon Company - Sole director
          • Item icon Individual
          • Item icon Individual - No witness
        • Folder icon Library of execution clauses for deeds
          • Item icon Attorney
          • Item icon Authorised officer
          • Item icon Company
          • Item icon Company - Sole director
          • Item icon Individual
      • Folder icon Statutory declarations
        • Item icon Commonwealth statutory declaration
        • Item icon Statutory declaration - blank - ACT
        • Item icon Statutory declaration - blank - NSW
        • Item icon Statutory declaration - blank - VIC
        • Item icon Statutory declaration - blank - QLD
        • Item icon Statutory declaration - blank - TAS
        • Item icon Statutory declaration - blank - SA
        • Item icon Statutory declaration - blank - WA
        • Item icon Statutory declaration - blank - NT
        • Item icon Standard annexure note for documents
  • Folder icon B. General considerations and documents
    • Item icon Initial considerations
      Key considerations to discuss with clients include:

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    • Item icon Confidential information
      To obtain the protections afforded by intellectual property rights, creators generally must make their ideas or works public or disclose them in some way. For clients who prefer to keep their ideas or works secret, a lawyer’s most important role often is to draft effective clauses to achieve and ...

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    • Item icon Confidentiality deed
    • Item icon Trade secrets
      The recipe for Coca-Cola is a classic example of a trade secret. Keeping it secret rather than relying on intellectual property rights that require disclosure and ultimately expire has proved more valuable for The Coca-Cola Company. Any confidential business information that provides a competitive ...

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    • Item icon Documents
      A client that owns intellectual property, or wishes to obtain the benefit of intellectual property owned by others, may require the following documents available on the matter plan:

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    • Item icon Shareholders agreement - Concise
    • Item icon Shareholders agreement - Extensive
    • Item icon Partnership agreement
    • Item icon Limited partnership agreement
    • Item icon Joint venture agreement
    • Item icon Standard individual employment agreement
    • Item icon Executive employment agreement
    • Item icon Casual employment agreement
    • Item icon Clause - Assignment of intellectual property rights - Employment agreement
    • Item icon Independent contractor agreement - Concise
    • Item icon Independent contractor agreement - Extensive
    • Item icon Subcontractor agreement
    • Item icon Clause - Assignment of intellectual property rights - Contractor agreement
    • Item icon Deed of assignment of intellectual property
    • Item icon Agreement for licence of intellectual property
    • Item icon Uniform contract for sale of business - Part 1 of 2 - Particulars of sale - By Lawyers
    • Item icon Uniform contract for sale of business - Part 2 of 2 - Terms and conditions - By Lawyers
    • Item icon Uniform contract for sale of business - Annexure page
    • Folder icon If required - Library of precedents for small business clients
      • Item icon Agreement for supply of goods and services
      • Item icon Clause - Special condition for change of company name after completion
      • Item icon Credit application
      • Item icon Director guarantee
      • Item icon Dispatch and delivery policy
      • Item icon E-commerce website development agreement
      • Item icon Example content - Project brief for development of a subscription-based e-commerce website
      • Item icon Example - Job descriptions
      • Item icon Example tax invoice
      • Item icon Liability waiver and consent
      • Item icon Privacy policy
      • Item icon Returns and refund policy
      • Item icon Terms of trade
      • Item icon Website terms of use for advertising and booking personal services
      • Item icon Website terms of use for downloadable online products
      • Item icon Website terms of use for physical products
  • Folder icon C. Trade marks
    • Item icon Rights and benefits of registered trade marks
      Proprietorship A registered trade mark is true intellectual property, in the same sense that land registered under the Torrens system is real property. It can be bought, sold, licensed, mortgaged, gifted, and bequeathed.

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    • Item icon Availability search
      A preliminary search for available trade marks is essential for a client who is contemplating registration or is deciding on a new brand, name, or logo. This applies even if the client has outsourced the design work and has an agreement with the designer that indemnifies the client against ...

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    • Item icon Classes of goods and services
      In a trade mark application, the applicant must provide a description of the goods or services for which they use or intend to use the trade mark. The goods and services must be identifiable under the classes set out in Schedule 1 of the Trade Marks Regulations 1995.

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    • Item icon Letter to client with search results and advice
    • Item icon Information sheet - Applying for trade marks
    • Item icon Application to register a trade mark
    • Item icon How to apply for a trade mark – IP Australia
    • Item icon Letter to IP Australia lodging hard copy application
    • Item icon Timeframes and fees – IP Australia
    • Item icon Letter to client confirming application for trade mark lodged
    • Item icon Letter to client confirming application for multiple trade marks lodged
    • Item icon Filing a trade mark application
      A trade mark application requires:

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    • Item icon Responding to an adverse examination report
      An applicant who receives an adverse examination report has 15 months to rectify the trade mark or their application will lapse. However, examiners need at least 20 business days before the acceptance deadline to consider any response. This means an applicant must actually file their ...

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    • Item icon Examination of a trade mark application
      All trade mark applications are examined by IP Australia in compliance with s 31 of the Trade Marks Act 1995. Under s 31, the Registrar of Trade Marks must examine and report on whether the application complies with the Act, and whether there are grounds for rejecting it. This ...

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    • Item icon Acceptance and publication of a trade mark application
      If the examiner raises no objections, or once any objections have been overcome, the application will be published as accepted in the Australian Official Journal of Trade Marks. The earliest this publication can occur is 5 months after the filing date of the application. Acceptance is not the ...

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    • Item icon Letter to client advising application accepted for publication
    • Item icon Letter to client advising notice of early acceptance
    • Item icon Letter to client advising of issues with application
    • Folder icon If required - Opposition
      • Item icon Declaration
      • Item icon Opposing a trade mark application
        Under s 52 of the Trade Marks Act 1995, anyone can oppose the registration of an accepted trade mark application. In practice, few applications are opposed. For an overview of the opposition process, see IP Australia’s Flowchart – Oppose the registration of a trade mark.

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      • Item icon Notice of intention to oppose – IP Australia
      • Item icon Statement of grounds and particulars for trade marks – IP Australia
      • Item icon Notice of intention to defend – IP Australia
    • Item icon Amending a trade mark application
      A trade mark application can be amended, if required, before or after its acceptance is published on the IP Australia website.

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    • Item icon Request to amend trade mark application or registration under s63 or s83
    • Item icon Request for amendment of owner name and/or address – IP Australia
    • Item icon Request for amendment address for service – IP Australia
    • Item icon Request for amendment (other than name/address/address for service) – IP Australia
    • Item icon Withdrawing a trade mark application
      A trade mark application can be withdrawn at any stage before registration via IP Australia’s Withdrawal of trade mark application (prior to registration) webpage. The prescribed form also can be sent by mail. It may be appropriate to withdraw an opposed application that has poor prospects of ...

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    • Item icon Withdrawal of trade mark application (prior to registration)
    • Item icon International trade mark applications
      Australia is a signatory to the Madrid Protocol which allows Australian trade marks to be registered internationally under the Madrid System administered by the World Intellectual Property Organization (WIPO). Registration protects a trade mark in any of the member countries forming the Madrid ...

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    • Item icon Registration period
      A trade mark’s initial registration period is 10 years from the date the application was filed. Clients for whom a trade mark has been registered should be advised in writing:

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    • Item icon Renewing a registered trade mark
      Registered trade marks can be renewed at any time up to 1 year before the renewal date, for a further 10 years. The number of renewals is unrestricted. IP Australia sends a reminder 2 months before the due date, so trade mark owners must ensure their details with IP Australia are up ...

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    • Item icon Request for renewal of the registration of a trade mark – IP Australia
    • Item icon Assigning or transmitting a trade mark
      Ownership of a registered trade mark can change by assignment or transmission. A trade mark that is the subject of a current trade mark application can also be assigned or transmitted.

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    • Item icon Deed of assignment of intellectual property
    • Item icon Example content - Letter of assignment of a trade mark
    • Item icon Request for a full assignment or transmission of a trade mark (full change in ownership)
    • Item icon Request for a partial assignment or transmission of a trade mark (partial change in ownership)
    • Item icon Licensing a trade mark
      Licensing a trade mark means giving another party permission to use the mark on agreed terms and conditions. Owners often license their intellectual property rights to entities they have set up to hold and protect those assets.

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    • Item icon Agreement for licence of intellectual property
    • Item icon Enforcing a trade mark
      Infringement A registered trade mark is infringed if someone else uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods or services for which it is registered: s 120 of the Trade Marks Act 1995.

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    • Item icon Letter of demand - Trade mark
    • Item icon Letter of demand - Trade mark infringement and passing off
    • Item icon Example content - Letter of demand
    • Item icon Letter to other side in response to letter of demand denying trade mark infringement and passing off
    • Item icon Letter to other side in response to letter of demand agreeing to address alleged trade mark infringement and passing off
    • Item icon Security Under Section 25(3) – Deed of Undertaking – Australian Border Force
    • Item icon Cancelling a trade mark registration
      The owner of a registered trade mark can request its cancellation by filing a Cancellation of an Existing In Force Trade Mark Registration form via IP Australia’s online services or by mail. This form also is available on the matter plan.

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    • Item icon Cancellation of an existing in force trade mark registration
    • Folder icon IP Australia - Trade Marks
      • Item icon Application for a hearing
      • Item icon Application for an award of costs
      • Item icon Application for an extension of time (for application for registration of a trade mark between 15 and 21 months after the first report)
      • Item icon Application for an extension of time under section 224 for acceptance
      • Item icon Application for removal - cessation of protection for non-use
      • Item icon Application for suspension of a trade mark opposition for the purpose of negotiations
      • Item icon Application to record a claim to interest or right in a trade mark
      • Item icon Application to register a trade mark
      • Item icon Cancellation of an existing in force trade mark registration
      • Item icon Declaration
      • Item icon Notice of intention to defend
      • Item icon Notice of intention to oppose
      • Item icon Payment form for credit cards, cheques and money orders remittance details
      • Item icon Payment of trade mark registration fee
      • Item icon Request for a full assignment or transmission of a trade mark (full change in ownership)
      • Item icon Request for a partial assignment or transmission of a trade mark (partial change in ownership)
      • Item icon Request for deferment of acceptance
      • Item icon Request for expedited examination of a trade mark application
      • Item icon Request to amend trade mark application or registration under s63 or s83
      • Item icon Request to discontinue cooling-off period
      • Item icon Statement of grounds and particulars
      • Item icon Withdrawal of a notice or service request
      • Item icon Withdrawal of trade mark application (prior to registration)
  • Folder icon D. Passing off
    • Item icon Common law right
      Common law has long held that obtaining benefits by passing off goods or services as those of another party is tortious conduct. This behaviour amounts to stealing the goodwill of another business. Examples of passing off include:

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    • Item icon Elements of passing off
      An action for passing off requires the claimant to establish 3 elements:

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    • Item icon Remedies
      Common law remedies for passing off essentially are the same as the statutory remedies for trade mark infringement, that is:

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    • Item icon Defences
      Defences to a claim for passing off are closely aligned with the statutory defences to claims of trade mark infringement. See the section on defences against infringement claims under Enforcing a trade mark.

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    • Item icon Letter of demand
      As with other trade mark infringements, the first step when acting for a business owner who has evidence or suspects that another trader is engaged in passing off behaviour is usually a letter of demand to the offending party to cease and desist the passing off behaviour. The letter should:

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    • Item icon Letter of demand - Passing off - No registered trade mark
    • Item icon Example content - Details for letter of demand - Passing off
    • Item icon Letter to other side in response to letter of demand denying passing off
    • Item icon Letter to other side in response to letter of demand agreeing to address alleged passing off
  • Folder icon E. Patents
    • Item icon Availability search
      Before applying for a patent, a search is essential to determine whether the client’s invention already exists. Searches should include:

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    • Item icon Initial considerations
      Once a client has established that their invention does not replicate or conflict with an existing one, they need to consider the:

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    • Item icon Filing a patent application
      There are 2 types of patent applications:

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    • Item icon Apply for a standard patent/patent of addition – IP Australia
    • Item icon Apply for a provisional patent application – IP Australia
    • Item icon Preliminary search and opinion
      Under s 43A, the Commissioner of Patents can conduct a preliminary search and opinion on a standard patent application. In practice, this is only done if the applicant requests it. A preliminary search and opinion:

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    • Item icon Examination of a patent application
      An applicant has 5 years from the date of filing their patent application to request an examination of the application and pay the examination fee. Shortly before the 5 year deadline, IP Australia will send a reminder to any applicants who has not requested an examination. The applicant ...

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    • Item icon Opposing a patent application
      Anyone can oppose the grant of a patent on the grounds set out in s 59 of the Patents Act 1990, namely that:

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    • Item icon Notice of opposition – IP Australia
    • Item icon Statement of grounds and particulars for patents – IP Australia
    • Item icon Request to amend ownership details for an application or patent – IP Australia
    • Item icon Amending a patent application
      A patent application can be amended to overcome an objection, but the ability to do so is guided by strict procedural and substantive rules. See Chapter 5.7 of the Patent Manual of Practice and Procedure.

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    • Item icon Assigning a patent
      Patents can be transferred, or assigned, before and after registration by filing a Request to Amend Ownership Details for an Application or Patent via IP Australia’s online services or by mail. A patent is usually assigned under an agreement to sell either the patent or a business that exploits the ...

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    • Item icon Agreement for licence of intellectual property
    • Item icon Enforcing a patent
      A patent owner is entitled to exclude all others from making, using, selling, or otherwise dealing with the patented invention for a limited period, usually 20 years. Once the patent period has expired, the invention becomes available for public use without restriction.

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    • Item icon Letter of demand - Patents
    • Item icon Example content - Details for letter of demand - Patents
    • Item icon Innovation patents
      Innovation patents protect an incremental advance on existing technology – an innovative step, as opposed to an inventive step required for a standard patent. They were granted under s 62 of the Patents Act 1990 until 2021. Innovation patents still exist, and the Act has not been amended to ...

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    • Folder icon IP Australia - Patent
      • Item icon Application for an extension of term of a standard patent
      • Item icon Application for an extension of time to file evidence
      • Item icon Application for directions to co-patentees
      • Item icon Application for dismissal of opposition
      • Item icon Application for licence to exploit an invention
      • Item icon Application for sealing a duplicate patent
      • Item icon Application for subsequent directions to co-patentees
      • Item icon Application for the grant of a standard patent of addition in lieu of independent standard patent
      • Item icon Application for time and place for hearing of opposition
      • Item icon Application to commissioner for declaration of an eligible person
      • Item icon Application to file further evidence in opposition proceedings
      • Item icon Notice of entitlement
      • Item icon Notice of opposition
      • Item icon Notification requirement of paragraph 6(c) or (d) of Patents Act 1990 ceased to be satisfied in relation to a micro-organism
      • Item icon Offer to surrender a patent
      • Item icon Original complete specification standard patent
      • Item icon Patent declaration form
      • Item icon Patent request - Provisional application
      • Item icon Patent request - Standard patent, patent of addition
      • Item icon Patent request form - Innovation patent
      • Item icon Payment form for credit cards, cheques and money orders remittance details
      • Item icon Provisional specification
      • Item icon Request commissioner to direct examination of another application
      • Item icon Request for commissioners certification authorising release of a sample of a micro-organism
      • Item icon Request for correction of register
      • Item icon Request for determination of a dispute between applicants
      • Item icon Request for examination of patent request and complete specification
      • Item icon Request for exercise of commissioners discretionary powers
      • Item icon Request for postponement of acceptance
      • Item icon Request for postponement of grant of a standard patent
      • Item icon Request for publication of notification that complete specification is open to public inspection
      • Item icon Request for re-examination of a complete specification
      • Item icon Request for substitution of a person for deceased applicant nominated person or patentee
      • Item icon Request form Global patent prosecution highway pilot program
      • Item icon Request to amend a complete specification or any other filed document (including a patent request)
      • Item icon Request to amend ownership details of an application or patent
      • Item icon Request to transmit priority document to the priority document access service (DAS)
      • Item icon Statement of grounds and particulars
  • Folder icon F. Copyright
    • Item icon Creation of works
      Under s 35 of the Copyright Act 1968, the creator of any literary, dramatic, musical, or artistic work is automatically the owner of the copyright in that work. Because copyright automatically arises on creation, there is no system for registering copyright in Australia, and registration is ...

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    • Item icon Creator’s rights
      Copyright gives the creator of an original work exclusive rights to use the work and prevent its unauthorised use or duplication. Section 31 of the Copyright Act 1968 specifies these exclusive rights with reference to different types of works.

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    • Item icon Exceptions to copyright protection
      Divisions 3, 4, 4A, 4B, 5, 6, and 7 of Part III of the Copyright Act 1968 provide exceptions to the protection afforded copyright works. The exceptions set out conduct that will not constitute an infringement of copyright for various types of works. They are generally narrow and specific, and ...

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    • Item icon Assigning copyright
      As no registration system for copyright exists, assignment occurs between the parties. Like any valuable transaction, an assignment of copyright should be in writing. Assignment of copyright in the context of a commercial transaction is often achieved by inserting an assignment of copyright clause ...

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    • Item icon Licensing copyright
      Licensing involves the copyright owner granting another party permission to use and exploit the copyright work, subject to agreed terms and conditions. A copyright owner can license use of the copyright work to their own operating entity or to a third party.

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    • Item icon Agreement for licence of intellectual property
    • Item icon Protecting copyright
      Because there is no registration system for copyright, authors need to take all available steps to protect their works and ensure they can enforce their rights under the Copyright Act 1968. Clients may benefit from practical advice on these steps, which include:

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    • Item icon Enforcing copyright
      Copyright is infringed if all or a substantial part of a copyright work is used without the owner’s permission, contrary to the Copyright Act 1968, and in circumstances where no statutory exception applies. Infringements include:

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    • Item icon Letter of demand - Copyright infringement
    • Item icon Letter to other side in response to letter of demand seeking further details of alleged copyright infringement
    • Item icon Letter to other side in response to letter of demand denying alleged copyright infringement
    • Item icon Letter to other side in response to letter of demand agreeing to address alleged copyright infringement
  • Folder icon G. Moral rights, design rights, and plant breeder's rights
    • Item icon Moral rights
      Part IX of the Copyright Act 1968 confers and protects moral rights in literary, dramatic, musical, and artistic works and in films, but not in sound recordings. Under the Act, performers also have moral rights in certain performances.

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    • Item icon Design rights
      Designs can be registered with IP Australia via a similar online application process to a trade mark application. See the section on filing a trade mark application under Trade marks. The Designs Act 2003 protects a specific product’s visual appearance from being copied.

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    • Item icon Apply for a design – IP Australia
    • Item icon Plant breeder's rights
      A plant breeder’s right (PBR) gives the developer of a new variety of trees, flowers, shrubs, vines, algae, and fungi exclusive commercial rights over that variety. This right is administered by IP Australia and governed by the Plant Breeder’s Rights Act 1994.

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    • Item icon Application for pPlant breeder’s rights – IP Australia
  • Folder icon H. Finalising the matter
    • Item icon Finalising the matter
      For patents, the annual renewal fee must be paid otherwise the client risks losing the patent. IP Australia does not send reminder notices.

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    • Item icon Letter to client advising trade mark registered and finalising the matter
    • Item icon Letter to client advising trade mark not registered and finalising the matter - Too generic or descriptive
    • Item icon Letter to client advising trade mark not registered and finalising the matter - Similar trade mark
    • Item icon Letter to client advising patent registered and finalising the matter
    • Item icon Letter to client advising patent not registered and finalising the matter
    • Item icon Letter to client finalising the matter - Intellectual property
    • Folder icon Example invoices incorporating notification of rights
      • Item icon Example invoice incorporating notification of client's rights - NSW
      • Item icon Example invoice incorporating notification of client's rights - VIC
      • Item icon Example invoice incorporating notification of client's rights - QLD
      • Item icon Example invoice incorporating notification of client's rights - SA
      • Item icon Example invoice incorporating notification of client's rights - TAS
      • Item icon Example invoice incorporating notification of client's rights - ACT
      • Item icon Example invoice incorporating notification of client's rights - NT
      • Item icon Example invoice incorporating notification of client's rights - WA
    • Item icon Closing the file
    • Item icon File closing checklist
  • Item icon Comments and suggestions for By Lawyers

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