Patents, trade marks, copyright and designs in Australia: overview

A guide to intellectual property law in Australia.

The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs: Country Q&A tool.

This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.

Contents

Patents

1. What are the legal requirements to obtain a patent?

The claimed invention and specification must satisfy these requirements:

  • Novelty.

  • Inventive step (innovative step for innovation patents).

  • Utility (the invention must not only have a credible use but must also meet the promises of the specification).

  • No prior secret use by the patentee or those with its authority.

  • A "manner of manufacture" (section 18, Patents Act 1990 (Cth)).

  • Sufficiency (the complete patent specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art).

  • Best method (the best method known to the patent applicant at the date of the complete application must be disclosed).

  • Support (the claims must have an adequate foundation in the description of the invention in the specification, and not extend beyond the contribution made to the art).

 
2. What categories are excluded from patent protection?

Human beings and biological processes for their generation are not patentable. Innovation patents cannot be granted for plants, animals, or the biological processes for their generation.

Laws of nature or abstract ideas and theories divorced from their practical application, products of the fine arts, business schemes, and naturally occurring DNA sequences do not constitute a Manner of Manufacture. Computer software may not satisfy the Manner of Manufacture requirement unless it can be shown that the invention lies in the way in which the method is carried out by the computer.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

Registration is administered by IP Australia. Information on the process is available online at www.ipaustralia.gov.au/patents

Standard (but not innovation) patent applications are examined before grant. Innovation patents must be examined and certified before they can be enforced.

During examination, the examiner needs to be satisfied that the legal requirements are met (other than secret use) (see Question 1). Innovation patents cannot claim inventions that are the same as those covered by another granted patent where the claims have the same priority date(s) (this prevents double patenting using the divisional application process).

 
4. On what grounds and when can third parties oppose a patent application or challenge an issued patent?

There is no standing requirement for an opposition or revocation action. These can brought on the basis that the patent does not meet any of the legal requirements (see Question 1).

Secret use is not an available ground for opposing innovation patents.

A revocation action can also be brought on the ground that the patent was obtained by fraud, false suggestion or misrepresentation.

 
5. When does patent protection start and how long does it last?

Standard patents last 20 years, and innovation patents last eight years. The term generally starts from the filing date of the complete specification.

Standard pharmaceutical patents can, in some circumstances, receive an extension of term of up to five years.

 
6. On what grounds can a patent infringement action be brought?

The patent owner has the exclusive right to authorise others to (among other things):

  • For products: make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things.

  • For processes: use the processes or do any of the above in respect of a product resulting from the use of the process.

Where a use of a product by a person would be an infringement, supplying a product to that person can also constitute an infringement in certain circumstances.

A patentee can impose territorial limitations and prevent parallel imports.

 
7. Which courts deal with patent infringement actions?

Actions are usually brought in the Federal Court of Australia.

 
8. What are the defences to patent infringement actions?

Invalidity is a defence, as is prior use from before the priority date.

Exemptions are available for acts done solely for obtaining regulatory approval, or for experimental purposes.

 
9. What are the remedies in patent infringement actions?

Available remedies include:

  • Damages or account of profits.

  • Injunctions (permanent and interlocutory).

  • Delivery up or destruction of infringing items.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

There is no fast-track or small-claims procedure for patent infringement actions.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?
 
12. Is it necessary or advisable to register trade marks?

Unregistered trade marks can still be protected using the action of passing-off or using the provisions of the Australian Consumer Law. However registration provides broader protection.

Infringement of a registered mark:

  • Does not depend on establishing reputation.

  • Does not require evidence of actual deception, for example, confusing similarity of the marks themselves is sufficient.

  • Extends to closely related goods.

There are also practical benefits, including giving notice to third parties and preventing a subsequent applicant from registering the same or a similar mark.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

Registration of Australian trade marks is administered by IP Australia. Information on the process is available online at

www.ipaustralia.gov.au/trade-marks.

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

An application must be refused if:

  • The mark is not capable of being represented graphically, or distinguishing the applicant's goods or services.

  • The mark contains or consists of scandalous matter.

  • Its use would be contrary to law, or would be likely to deceive or cause confusion.

  • It is substantially identical with, or deceptively similar to, an earlier registered trade mark, in respect of similar goods or closely related services (for goods) or similar services or closely related goods (for services). This ground can be overcome if continuous use of the trade mark, from before the priority date of the earlier mark, can be shown.

 
15. On what grounds and when can third parties oppose a trade mark application or cancel a registration?

Grounds of opposition are:

  • Those grounds available to the authority for refusing an application (other than the trade mark not being capable of being represented graphically) (see Question 14).

  • The applicant is not the owner of the trade mark.

  • The applicant does not intend to use the trade mark in relation to the goods or services.

  • Another trade mark had acquired a reputation in Australia before the priority date of the application, so that the use of the sought trade mark would be likely to deceive or cause confusion.

  • The sought trade mark includes a geographical indication used for other goods, and the goods of the applicant do not originate from that location.

  • The application was accepted on the basis of evidence or representations that were false in material particulars.

  • Bad faith.

A revocation action can be brought by an aggrieved person on the following grounds:

  • Those available for opposition proceedings.

  • Fraud, false suggestion or misrepresentation.

  • The use of the trade mark is likely to deceive or cause confusion.

Non-use actions can be brought, including where the trade mark owner has not used the trade mark for the period of three years ending one month before the day on which the non-use application is filed.

 
16. When does trade mark protection start and how long does it last?

Protection commences from the filing date although an action cannot be started until the trade mark is registered. A trade mark registration needs to be renewed every ten years, and if properly renewed can last indefinitely.

 
17. On what grounds can a trade mark infringement action be brought?

Infringement occurs where another person uses as a trade mark:

  • A sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

  • A sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

    • for goods: goods of the same description or closely related services;

    • for services: services of the same description or closely related goods;

This is unless it is shown that using the sign as that person did is not likely to deceive or cause confusion.

  • A sign that is substantially identical with, or deceptively similar to, a trade mark that is well known in Australia, where the use of the sign would be likely to be taken as indicating a connection with the owner of the registered trade mark.

Certain restrictions on the permitted uses of goods sold under the mark can be created using a notice placed on the goods. A defence is available to a good faith acquirer of the goods who does not know of the restrictions.

 
18. Which courts deal with trade mark infringement actions?

Actions are normally brought in the Federal Court of Australia and Federal Circuit Court of Australia.

 
19. What are the defences to trade mark infringement actions?

Available defences include:

  • Good faith uses of a person's name or the name of their place business (or those names of their predecessors).

  • Good faith uses of the sign to provide certain information about the goods.

  • Uses for comparative advertising.

  • The court being of the opinion that the alleged infringer would obtain registration of the registered trade mark, or of their substantially identical or deceptively similar trade mark, if they applied for it.

Defences are also available:

  • Where the trade mark was first applied to the goods or services with the consent of the trade mark owner.

  • In cases of prior continuous use of the unregistered trade mark.

  • Where the mark is liable to removal because the trade mark was not used in good faith by its registered owner.

 
20. What are the remedies in trade mark infringement actions?

Available remedies include:

  • Damages or account of profits.

  • Injunctions (permanent and interlocutory).

  • Delivery up or destruction of infringing items.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

There is no small claims procedure for trade mark infringement and the Federal Court of Australia's fast-track process is being phased out, but procedures are flexible and will be adapted to suit the scale and urgency of the matter.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

Works need to have been reduced to writing or material form, which can include electronic copies. Other copyrightable subject matter, apart from broadcasts, similarly require a physical embodiment.

Human authors must be identifiable.

 
23. Can copyright be registered? If so, is registration required?

Copyright cannot be registered.

 
24. When does copyright protection start and how long does it last?

Protection begins from when the requirements for subsistence are met and ends:

  • Literary (other than a computer programs), dramatic or musical works not publically communicated or available before the death of all authors, and anonymous or pseudonymous works: at the end of the 70th year from the year when a publication first occurs.

  • Other works: at the end of the 70th year from the year of death of all of the authors.

  • Sound recordings and cinematograph films: at the end of the 70th year from the year of first publication.

  • Broadcasts: at the end of the 50th year from the year of first broadcast.

  • Published editions: at the end of the 25th year from the year of first publication.

Moral rights of authors and performers continue in force until either the author dies or copyright ceases to subsist in the work, depending on the specific subject matter.

 
25. On what grounds can a copyright infringement action be brought?

It is an infringement to do or authorise the following:

  • For works (rights for artistic works are more limited):

    • reproduce in a material form;

    • publish;

    • perform in public;

    • communicate to the public (includes broadcasting or making it available online); or

    • make an adaptation.

  • For sound recordings and cinematographic films:

    • make a copy;

    • cause it to be heard/seen in public;

    • communicate it to the public.

  • For broadcasts:

    • make a film or recording of it, or a copy of such a film or recording;

    • re-broadcast or otherwise communicate to the public.

  • For published editions: make a facsimile copy of the edition.

Importation of works for commercial purposes (for example, sale) is prohibited. There are broad exceptions permitting parallel importation of most items, but very limited exceptions for books.

 
26. Which courts deal with copyright infringement actions?

Actions can be brought in the Federal Court of Australia and Federal Circuit Court of Australia. The Supreme Courts of the states and territories also have jurisdiction.

 
27. What are the defences to copyright infringement actions?

There are numerous exceptions that apply to specific types of conduct. These include fair dealing for the purpose of research, study, criticism, review, parody, satire, or reporting news.

A reasonableness defence is available for infringements of some moral rights.

 
28. What are the remedies in copyright infringement actions?

Available remedies include:

  • Damages or account of profits.

  • Injunctions (permanent and interlocutory).

Actions for conversion or detention can be brought in respect of infringing copies or for devices used (or intended to be used) for making them.

For moral rights actions, available remedies include injunctions, damages, declarations of infringement, orders for apology, and orders that any false attribution of authorship or derogatory treatment of the work be removed or reversed.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

There are no specific fast-track or small-claims procedures for copyright infringement. However, copyright cases are often brought in inferior courts with cheaper and more streamlined procedures.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

The design must be new and distinctive when compared with the prior art base for the design as it existed before the priority date.

Certain classes of designs are not registrable, including designs for medals and those which are scandalous.

 
31. Which authority registers designs?

Registered designs are administered by IP Australia. Information on the application procedure is available at

www.ipaustralia.gov.au/designs

 
32. On what grounds and when can third parties oppose a registered design application?

There is no opposition process to a registered design application. Before infringement actions can be brought, the design must be examined. Any person can request that the Registrar examines a registered design, and provide relevant material.

A revocation action can also be brought by any person once the design is examined, on the following grounds:

  • Failure to meet the newness or distinctiveness requirements.

  • One of the registered owners is not entitled, or an entitled person was not included as an owner in the registration.

  • Registration was obtained by fraud, false suggestion or misrepresentation.

  • Design is a corresponding design to an artistic work, and copyright in the artistic work has ceased.

 
33. When does registered design protection start and how long does it last?

Protection commences five years from the filing date, and can be renewed once for a total period of ten years. Infringement proceedings can only be brought for certified designs.

 
34. On what grounds can a registered design infringement action be brought?

It is an infringement in relation to a product which embodies a design identical to, or substantially similar in overall impression to, the registered design, to:

  • Make, sell, hire, or otherwise dispose of (or offer to do any of these acts).

  • Use in any way for the purposes of any trade or business.

  • Import for commercial purposes.

It is also an infringement to keep such a product for the purpose of doing the above acts.

 
35. Which courts deal with registered design infringement actions?

Actions can be brought in the Federal Court of Australia and Federal Circuit Court of Australia. The Supreme Courts of the states and territories also have jurisdiction.

 
36. What are the defences to registered design infringement actions?

An invalidity cross-claim can be brought.

Importation is allowed of items that were made with the licence or authority of the registered owner.

A defence is available where the applicable product is a part of a complex item, and the infringing item is used to repair that item to restore its overall appearance.

 
37. What are the remedies in registered design infringement actions?

Available remedies include:

  • Damages or account of profits.

  • Injunctions (permanent and interlocutory).

  • Delivery up or destruction of infringing items.

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

There is no fast-track or small-claims procedure for registered design infringement actions but procedures are flexible and will be adapted to the scale and urgency of the matter.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

There is no separate protection available for unregistered designs.

There are copyright/design overlap provisions which limit copyright protection available in respect of artistic works (other than works of artistic craftsmanship, buildings and models for buildings) where a corresponding design that includes the work in 3D form has been ''industrially applied'' and sold, let for hire, or offered for sale or hire. This means that unregistered designs can be effectively left unprotected by law.

Actions can sometimes be brought on the grounds of passing-off or contravention of the Australian Consumer Law.

 
40. When does unregistered design protection start and how long does it last?
 
41. On what grounds can an unregistered design infringement action be brought?
 
42. What are the defences to unregistered design infringement actions?
 
43. What are the remedies in unregistered design infringement actions?
 

Trade secrets and confidential information

44. What are the legal conditions for rights in confidential information to arise?

The information must:

  • Not be publically available and be confidential in nature.

  • Have been given in circumstances creating an obligation of confidence, or the other party must have been subsequently informed that an obligation exists.

  • Be capable of precise identification.

 
45. On what grounds can an action for unauthorised use of confidential information be brought?

An action can be brought for misuse or threatened misuse of the information, or breach of contract where applicable.

 
46. Which courts deal with actions for unauthorised use of confidential information?

Actions are usually brought in state and territory courts. Breach of confidence can also be relied on as a ground in a federal court.

 
47. What are the defences to actions for unauthorised use of confidential information?

There is a defence available for disclosures of a crime, civil wrong or serious misdeed of public importance to party with a real and direct interest in redressing such an act.

 
48. What are the remedies in actions for unauthorised use of confidential information?

Remedies include:

  • Injunctions and damages or account of profits.

  • Equitable compensation for embarrassment, anxiety or distress.

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

There is no fast-track or small-claims procedure for actions for unauthorised use of confidential information, but procedures are flexible and will be adapted to the scale and urgency of the matter.

 

Contributor profiles

Richard Hamer, Partner

Allens

T +61 3 9614 1011
F +61 3 9614 4661
E Richard.Hamer@allens.com.au
W www.allens.com.au

Professional qualifications. Admitted in Victoria (1983), now Australia; BSc Monash University (chemistry/genetics), LLB Melbourne University.

Areas of practice. Intellectual property (particularly patent litigation and licensing in the pharmaceutical and chemical fields) and regulatory work.

Professional associations/memberships. AIPPI, Intellectual Property Society of Australia & New Zealand, AIPLA, LES (President LES Australia & New Zealand 1998-99, Law Council of Australia (Chair IP committee 2013-15).


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