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ToolGen’s Guide to Losing a Priority Date and Lots of Money

ToolGen provides a stark reminder of what not to do when filing a provisional patent

ToolGen is a Korean company involved in the development of gene editing products and services. 

In particular, ToolGen is focused on CRISPR/Cas technologies that allow DNA to be cut and edited with precision. The potential therapeutic implications of such technology are immense and there is a wealth of research and patent documents in the area. 

ToolGen filed a CRISPR/Cas-related Patent Cooperation Treaty application, with national phase entry in Australian claiming priority from three provisional applications. The three priority applications and their filing dates are provided below. 

⦁ P1: US Provisional Patent Application 61/717,324 filed 23 October 2012;

⦁ P2: US Provisional Patent Application 61/803/599 filed 20 March 2013; and

⦁ P3: US Provisional Patent Application 61/837,481 filed 20 June 2013.

ToolGen’s Australian application was granted and subsequently opposed. ToolGen then appealed the opposition decision to the Federal Court of Australia. 

The Court considered several matters in their decision, however our focus in this article is the matter of sufficiency of disclosure required to claim priority. 

Under Australian law, each claim is entitled to claim priority from an earlier application, provided the earlier application discloses the claimed invention in a manner that is clear enough, and complete enough for the invention to be performed by a person skilled in the relevant art. 

Importantly, the priority date of a claim is of relevance when assessing the claim against the criteria of novelty and inventive step.

In the complete Australian application, independent claims 1 and 10 were directed to an invention comprising a Type II CRISPR/Cas system. Notably, Type II CRISPR-Cas includes several bacterial species suitable for deriving Cas.  

The complete application relied on the priority dates P1-P3, with P1 being the earliest priority.  P1 is a relatively short document; it does not include any claims and resembles a journal article to which an additional paragraph headed “Summary of the Invention” had been added. 

P1 plainly disclosed a system for cleaving DNA using Cas derived from the bacteria S. pyogenes. P1 disclosed, in a general sense, the existence of Cas proteins derived from other bacterial species and the possibility that they may be used to mediate DNA cleavage in eukaryotic cells. 

Notably, the possibility of using Cas proteins derived from other bacterial species was simply described as a possibility, without further discussion. 

ToolGen argued that P1 disclosed a Cas derived from any bacterial species. The Court rejected that argument because they did not consider P1 to identify any principle of general application that would permit the skilled addressee to determine whether Cas proteins derived from any particular bacterial species might be suitable. 

It was held that P1 did not disclose any such system either explicitly or implicitly. That is, the disclosure was not a disclosure enabling the person skilled in the art to perform the invention. The claims were therefore not entitled to the priority date of P1. 

Because P1 could not be relied on for priority, ToolGen had to rely on their later priorities P2 and P3 which fully disclosed their invention. 

However, there had been three journal articles published after the filing date of P1 but before the filing date of P3 which rendered ToolGen’s application neither novel nor inventive, accordingly, ToolGen’s patent was found to be invalid. 

This case is a stark reminder to 1) ensure that provisional applications are drafted with both detailed general applications and detailed specific applications and 2) regularly update provisional applications if the invention is developed beyond what is initially disclosed. 

Speak to the team at Kings today if you want to avoid a similar situation with your invention. 

Our team have expertise across a range of industries including chemistry, mining, ICT, electronics, and biology and are well equipped to describe your invention appropriately.

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Software Patents in the United States 101

With advances in software occurring exponentially, there has been a global increase in software related inventions. Protecting such inventions is essential, especially in markets such as the United States where, in 2022, 63.5% of issued utility patents were “software-related”.

Software is generally patentable subject matter in the United States under section 101 of the Patents Act, however, patent eligibility for software related inventions depends upon a number of factors.

The United States Supreme Court decision, Alice, outlined broad questions for consideration when determining whether the software recited in the patent claims is eligible for patent protection

First, Alice asks whether the claim is directed to a process, machine, manufacture, or composition of matter. This first step relates to the statutory categories of invention and ensures that the claim falls within one of the four broad statutory categories of invention.

The next question asked is whether the claims recite a judicial exception to the categories of invention – these judicial exceptions include abstract ideas, laws of nature, or natural phenomena. 

Generally, Examiners will assert that claims to software recite abstract ideas and in particular, may fall to the categories of mathematical concepts, methods of organising human activity, or mental processes which are deemed patent ineligible. 

An example of a software patent claim that an Examiner may consider to fall within these categories of abstract ideas may include a method for monitoring stock prices and causing a software program to hold or sell depending on user defined parameters. 

This example may be deemed to rely on the application of mental processes. In particular, checking the stock prices and deciding whether to hold or sell may be undertaken in the mind without the intervention of a computer – albeit on a smaller scale. 

Importantly, the Courts have emphasised that an invention is not considered to be patent ineligible simply because it involves a judicial exception. 

For example, inventions involving judicial exceptions may be patent eligible if the claim recites additional elements that integrate the judicial exception (that is, the abstract idea) into a practical application. 

Importantly, the additional elements must be more than nominal or tangential additions to the claims. The additional elements, either in isolation or upon combination must amount to a meaningful limitation. 

We turn to the United States Courts to understand what may and may not be considered additional elements. In Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) the step of printing a menu that was generated through an abstract process was held to be insignificant extra-solution activity. 

Similarly, in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016), it was found that generic presentation of collected and analysed data was insufficient extra-solution activity to be eligible for patent protection. 

However, what may be considered sufficient extra-solution activity to render a claim eligible for patent protection is outlined in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016). 

In this case, the claims were directed to an internet content filtering system. In this decision, the Court held that the claims added non-conventional and non-generic arrangement of computer components for filtering internet content. 

Furthermore, in guidance notes issued by the United States Patent and Trade Mark Office, it is outlined that what may be considered sufficient extra-solution activity includes going beyond merely automating abstract ideas, and instead utilises the abstract information for a practical application. 

For example, cattle monitoring software using a camera to assign an identifier to each cow may be considered an abstract idea, however, using such monitoring software to operate a gate control mechanism enabling certain cattle to be directed to a different location may amount to sufficient extra-solution activity and may therefore be patent eligible. 

It is important to phrase patent claims having regard to United States Patent and Trademark Office examination policies, as well as the continually developing body of case law. 

At Kings, we pride ourselves on staying abreast of the patent landscape in Australia and overseas so you can feel secure globalising your invention.  

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How to Avoid Copyright Infringement

Australian creators are fortunate to enjoy the protection of a robust copyright system. Materials produced within Australia receive automatic protection that can be used to prevent others from copying your works.

Copyright can hold significant value, especially where a work is used for commercial purposes. This makes copyright infringement a serious matter for anyone that uses, reproduces or licences copyrighted material.

Copyright infringement is a common occurrence that has been complicated by the spread of the internet. Learning how to avoid copyright infringement is an important part of doing business, and in this article we’ll discuss the steps you can take to navigate the issue.


What is Copyright?

Copyright is a form of intellectual property that protects the original expression of information and ideas in certain forms.

These forms include written word, images, music and video. The holder of a copyright has the exclusive right to distribute, display, copy and licence their work.

Importantly, copyright does not protect the ideas or information itself. Instead, copyright only protects the expression of the idea.

For example, the author of a novel has a copyright on the text contained within the book, but the copyright generally does not extend to the plot, themes or structure of the story.

Unlike other intellectual property, copyright is automatically conveyed in Australia as soon as an idea is expressed physically or electronically.

There is no requirement to register your work in order to receive the copyright. This is provided under the Copyright Act 1968.

The duration of copyright depends on the type of work produced and whether it was made public in the creator’s lifetime. Generally speaking, copyright for published works lasts for the lifetime of the author, plus another 70 years.

For unpublished works where the creator is unknown, copyright lasts for 70 years from the date the work was created.


What is Copyright Infringement?

Copyright infringement occurs where copyrighted material is used without permission from the copyright holder, or if it’s used in a way that is disallowed under the Copyright Act.

This applies to situations where an entire work is used, but it also applies when a “substantial part” of the work is used.

The Act does not define what constitutes a “substantial” part of a work. In most cases, the Court considers the quality of the work that was copied, and not simply the quantity.

For instance, it may be an infringement to copy the chorus of a song (its most recognisable part), even though there are many other verses.

The Copyright Act provides both civil and criminal remedies for copyright infringement, including fines and imprisonment

How to Avoid Copyright Infringement

There are many things you can do to avoid copyright infringement in Australia, including:

1. Familiarise yourself with copyright laws in Australia. There are certain circumstances where it’s acceptable to use copyrighted material, even for commercial purposes, and it’s important to know the difference.

2. Use works that are in the Public Domain. Works in the Public Domain are not protected by copyright. These can be used freely by anyone for personal and commercial purposes. This applies to works where the copyright has expired, been waived by the creator, or forfeited.

3. Use works under Fair Use provisions. Fair use (also called fair dealing) allows you to use a copyrighted work for “fair” purposes, such as research and study, critique, parody or reporting the news.

4. Licence works from the creator. Copyright holders have the right to licence their works to others. You can use a licensed work for any purpose that the creator allows – this is common practice for things such as stock imagery.

5. Use works under Creative Commons licences. Creative Commons is an American organisation that allows creators to retain their copyright while providing their works for free use in certain circumstances, such as educational or personal use. Creative Commons allows participating works to be used in Australia.

6. Give proper attribution to the creator. Fair use and Creative Commons provisions all require that you properly attribute the copyright holder when using their work. Failing to attribute the creator may be considered when copyrighted works can be used, negotiate licensing agreements, manage licences and copyright, and protect you from infringing the copyrights of others.


Protect Your IP with the Attorneys at KINGS!

The automatic copyright protection provided in Australia is an excellent tool for any individuals or businesses that are involved in creating original works.

Australian copyright is robust and it may allow you to act if another party infringes on your right. Protecting original works, inventions, branding and ideas becomes much simpler with the help of the experienced attorneys at KINGS.

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How to Protect Your Design From Being Copied

How to Protect Your Design From Being Copied

How to Protect Your Design From Being Copied

Australia provides robust rights for a wide range of intellectual property. This is a major advantage for any business that is looking to sell, manufacture or distribute their products Down Under.

Businesses and individuals can all benefit from trade marks and patents, but it’s also possible to protect the outward appearance that makes your products unique. With an Australian design right, you can prevent others from copying your work, which is crucial in design-centric industries such as fashion, furniture and the automotive world.

In this article we’ll explore how to protect your design from being copied and the process of applying for design rights.


How to Protect Your Design From Being Copied

The design of your products can have a major impact on your business. Distinct design elements are a major component of branding and often contribute to the value of your products. This means it can significantly impact your bottom line if your designs are copied without permission.

In Australia, unique design elements are a form of intellectual property that can be protected with a Design Right. Registering your design grants you the exclusive right to use, sell or licence a design for commercial purposes. If your designs serve as a product feature, or if they help customers distinguish your brand from competitors, design registration is the best way to protect your IP.


What Does a Design Right Protect?

A design right protects the appearance of new and distinctive products. Design rights protect visual features such as shape, colour, pattern, configuration and ornamentation.

Obtaining a design right grants you a monopoly over that design within Australia, allowing you to manufacture, market, sell, licence or distribute the design as you see fit.

Your product is eligible for a design right if it:

  • Has a tangible form

  • Is either handmade or manufactured

  • Is being produced on a commercial scale

Registering a design grants protection for the overall design. A design right does not protect:

  • The materials used

  • Partial design features

  • Designs with no physical form (such as computer graphics)

  • Your brand name and logo

  • The function of the product

Design rights often coincide with other forms of intellectual property, such as trade marks and patents. If a product has a unique design and provides inventive functionality, you could apply for both a design right and patent.


How to Apply for a Design Right

Applying for a design right is a straightforward process. We recommend working with an attorney when registering a design. An attorney will dramatically improve the chances of your application being approved and can simplify the process of applying for multiple designs at once. The process is as follows:

  1. Search existing designs to determine whether your design is new and unique. Searching the design database is complex and should be handled by your attorney.

  2. Lodge your application and pay the application fee. Your documentation needs to include ownership details, the name of the product and a representation of the design (such as a photo or line drawing)

  3. Your application is published on the Australian design database.

  4. Your application undergoes a formalities assessment to make sure it meets legislative requirements.

  5. If issues are found during the formalities assessment, you have two months to overcome them. This may involve modifying your application or challenging the decision.

  6. Once any issues have been overcome, your design is registered and published. Initial registration lasts for 5 years and can be renewed for up to 5 additional years.

It’s important to note that a design right does not automatically grant the right to enforce your design. You must certify your design if you want the option of taking legal action against anyone who uses your design without permission.

Design certification can be requested when you file your application or at any time during the registration period. Certification attracts an additional fee. During the certification process, IP Australia will determine whether your design is identical or similar to any other design in the world. If your design is unique and no other issues are raised, your design will be certified.


Design Rights vs Copyright

Copyright protects the tangible expression of original ideas. Copyright is automatically granted in Australia, and it can be used to protect product designs in some cases.

The major difference between copyright and design rights is an issue of scale. Copyright protection does not apply to products that have been commercially exploited. Designs that are applied to more than 50 items are not protected by copyright. Since you cannot register a design after it has been made public, it’s important to obtain design rights before commencing manufacturing.

International Design Rights

Australian design rights only provide protection within Australia. If you plan to manufacture or sell your product in overseas markets, you should consider applying for design rights in those jurisdictions.

Registering a design in Australia gives you the ability to apply for the same design right overseas within 6 months. As Australia is not a member of the Hague Convention, overseas design registrations typically need to be filed and managed individually. Each jurisdiction has its own requirements for design registration, so this process should be handled with the assistance of an IP attorney.


Secure Your Designs with the Intellectual Property Attorneys at KINGS!

Design rights are an important tool for companies that sell tangible products. The physical form of your products can have a serious impact on profitability, so it makes sense to protect your ideas with the attorneys at KINGS!

KINGS is an independent firm offering intellectual property services throughout Brisbane. Our experienced attorneys can help you obtain, manage and enforce intellectual property rights, including designs, trade marks and patents. Support from our attorneys allows you to maximise each design and stay ahead of your competitors.

If you are preparing to manufacture a new product, contact KINGS and book a confidential consultation today!

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Top 5 Spookiest Halloween Themed Patents

With Halloween around the corner, the team at Kings IP is delighted to present a selection of intriguing Halloween-themed patents. From surprise packages to pet costumes, these patents showcase invention with a touch of spookiness. 


Australian Patent AU4271999A Package surprise designed to contain objects

The invention relates to a surprise box for containing objects. According to the invention, the surprise box comprises a hollow body made of deformable material, provided with a deformable opening 100 giving access to the inside of the hollow body. Inside the hollow body are obstacles that are not visible from the opening. These obstacles complicate searching for and taking hold of objects disposed inside the surprise box (i.e. lollies 30 shown in Figure 2 below). 

Image: Package surprise designed to contain objects

United Stated Patent US2003177562A1 Weather and climate adaptive Halloween costume

This Halloween costume is adapted to accommodate changes in weather and climate so that it can be worn regardless of seasonal and whether variation to ensure that the wearer is kept safe and comfortable. 

The costume includes an insulative material and a venting material upon which a decorative member outlining the appearance of a Halloween character may be attached. A truly terrifying embodiment of this costume is shown below.

Image: Weather and climate adaptive Halloween costume

United States Patent US6035447A Halloween mask with flash device

This face mask rests on a wearer’s face and has a hollow portion between the wearer’s face and the outer surface of the face mask. A flashing device is positioned within the hollow portion. As pictured below, the face mask includes a plurality of apertures 11 through which the flashing device may emit light. Here, the mouth and ear apertures enable light to be emitted from the hollow portion such that the light is visible to a viewer.

Image: Halloween mask with flash device

United States Patent US2010128588A1 Halloween greeting system

This patent relates to a Halloween greeting system for prompting young children to remember to say “trick or treat” and “thank you”. The greeting system includes a Halloween treat container that has a voice recorder/audio player and a remote-control unit for triggering the voice recorder/audio player to play a recorded message.

Chinese Patent CN107006387A Halloween pet costume

The invention discloses a Halloween pet costume. The costume comprises a spider-shaped costume body and two pieces of cloth which can be positioned below the costume body and used for wrapping a pet’ s abdomen. Importantly, this patent “is capable of exaggerating Halloween atmosphere.” We couldn’t agree more. 

Image: Halloween pet costume

While the patent process can seem daunting (and sometimes haunting), the patent law experts at Kings IP are here to hold your hand every step of the way. 

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How to Patent a Product in Australia

Patenting an invention is the best thing you can do to protect your ideas and make the most of new products. 

Since Australia’s patent system can be complex, many people choose to work with professional attorneys when filing applications. A patent attorney can simplify the process and dramatically increase the chances of your patent being granted.

In this article we’ll explore how to patent a product in Australia and the areas where a patent attorney can support your application.


What Does a Patent Protect?

A patent is a form of intellectual property that can be used to protect devices, substances, methods and processes. As long as your product is new, inventive and useful, it is eligible for patent protection.

It is possible to patent a wide range of inventions, including things like:

  • New products, devices, appliances and tools
  • Mechanical devices
  • Medical devices
  • Pharmaceutical drugs
  • Biological materials
  • Business methods
  • Some types of software and computer-related inventions

If you are granted a patent, you earn the exclusive right to use, licence, sell and commercially exploit your invention. You are also granted the right to take legal action against anyone that uses your invention without your permission.


How to Patent a Product in Australia

  1. Determine whether your product can be patented

Patenting a product can be a time-consuming exercise. You should do your research to figure out whether your product can be patented, and whether you want to patent your product.

The details of your invention are made public when you patent a product. In some cases, it makes more sense to keep your invention a trade secret, or to make your invention freely available.

If you want to patent your invention, it must be kept a secret and cannot be publicly published, demonstrated or discussed before a patent application is filed. There is a 12 month grace period in Australia, the United States and certain other countries, during which you can file a standard patent application after publicly disclosing your invention. However, it is strongly advised to file an application before disclosing your invention.

  1. Decide who owns the patent

Patents can be owned by:

  • The person or people who invented the product
  • A company or person who has legally obtained the rights to the invention
  • A company whose employee created the invention in the course of their workplace duties

Your application needs to include details about ownership of the patent. Since patents hold immense commercial value, it’s critical that you structure ownership in the right way.

  1. Perform an existing patent search

Products can only be patented if they are new and inventive. You will need to perform a search of existing patents to ensure that your product doesn’t already exist.

Patent searches should be performed with the help of a patent attorney. The patent database is extensive and determining whether your invention is new and inventive can be complex. Engaging a patent attorney is the most time and cost-effective way to search the database.

  1. Draft your patent application

This is the most important part of the patent process. You need to gather relevant documentation and prepare a specification that describes your invention in detail. Patent specifications must include:

  • A detailed description of the invention and how it is used
  • Claims detailing what you have invented
  • Technical drawings that help describe your invention

There is no requirement to draft your specification with the help of a patent attorney. However, patent specifications are complex, and an attorney can dramatically improve the chances of a patent being granted and enforcable.

Remember that your invention will be made public when you file your application. If your application is rejected, other parties may be able sell the same or similar products. This could have serious commercial impacts.

  1. File your application with IP Australia

If you have used an attorney, they will complete your patent application through IP Australia’s online services portal. The Filing fee must be paid at this time.

  1. Applications are advertised in the AOJP

New Standard Patent applications are advertised in the Australian Official Journal of Patents (AOJP). They are also published to AusPat Search and your invention becomes public knowledge.

  1. Request Examination

Patents must be examined before they can be granted. You can request an examination when you file your application or afterwards. Examination must be requested within 5 years of filing an application, or as directed by the Commissioner of Patents.

Once you have paid your examination fee, an examinerwill review the application and determine whether it meets the requirements for patent protection.

It may take up to 12 months for new patent applications to be examined.

  1. Resolve or respond to issues raised

The patent examiner may raise issues about your application. You have 12 months to resolve and overcome these issues. Patent examiners commonly raise issues about:

  • Products that aren’t new or inventive
  • Products that aren’t suitable for patenting

You can respond to these issues by amending  the claims, or by challenging the examiner. If you choose to challenge the examiner, you will likely need the support of your patent attorney to draft a defence.

  1. Receive your outcome

Finally, you will receive an outcome about whether your application has passed the examination process.

If your patent is accepted, it is published in the Australian Official Journal of Patents for 3 months. Anyone can oppose your patent during this period. Once you have overcome any objections, your patent is granted.


Design Robust Patents with the Attorneys at KINGS!

Australia’s patent system provides robust protection for new and inventive products. If you intend to manufacture, sell, licence or commercialise your product, a patent allows you to make the most of your IP.

Developing patent applications is a time consuming and technical process. Working with the patent attorneys at Kings is the best way to ensure your IP is protected!

Kings is an independent IP attorney Brisbane based firm. Our attorneys specialise in drafting and filing patent, trade mark and design registration applications. With decades of experience in preparing patent applications for mechanical devices, software and ICT products, mining technologies and more, our attorneys can obtain the protection you need.

You can contact us online to get started, or call us directly for a confidential consultation with our patent law experts.

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Fashionable Intellectual Property

Fashion designers strive to produce unique items of clothing that reflect their brand and will have an impact on the market. Often, such items have a new pattern, silhouette, or embellishment that makes them stand out. 

However, with the rise of fast fashion, it can be difficult for designers to retain a strong brand identity and to reap the rewards of the unique items they design. 

Fortunately, designers can secure intellectual property rights in relation to their creations and can use those rights to prevent others from making, selling, or distributing like items. 

Below we outline some of the common IP regimes used by fashion designers. 

Registered Design

Registered designs protect the way a fashion garment looks. The protection provided by a registered design may include the shape of a garment or the pattern of the fabric.

Registered design protection is used in Australia by many local and global fashion brands. In IP Australia’s most recent report on registered design filings, fashion brand Zimmermann was the second largest domestic applicant.

In order for the product to be a registrable design it must be new and distinctive when compared with the prior art base. A design will be new if it is not identical to an existing design and a design will be distinctive if it is not substantially similar in overall impression to such a design. Substantial similarity is considered through the eye of the informed user and more weight must be provided to the similarities than differences. 

Filing a design application in Australia also allows the designer to extend protection into a number of other countries within six months of the date of filing of the Australian design application.

A registered design can provide up to 10 years of protection.

If an owner of a registered design wishes to assert their rights against others, the registered design must first be certified. 

Did you know? 

Kings Patent & Trade Marks Attorneys can assist you with protecting your Registered Design Brisbane wide. 

Trade Mark

A trade mark protects the brand name or logos associated with the brand. For example, Louis Vuitton has several trade marks for their LV monogram.

It is important to remember that trade marks can extend beyond just a brand or a logo. For example, Louboutin holds a trade mark for the colour red (Pantone No. 18.1663TP) applied to the sole of a shoe. 

 Image: Louis Vuitton shoes

A common pitfall when businesses apply for their own trade marks is filing their trade mark in inappropriate classes. When applying for a trade mark, applicants should ensure that they apply in the correct classes noting that there is a distinction between goods and services. If your fashion goods will bear the trade mark, you will need to file in the goods classes. If you are seeking to operate a store under your brand, you will need to file in retail services classes. 

  • Class 25 is generally suitable for clothing, footwear and headgear

  • Class 35 is generally suitable for retail services. 

It is important to also consider where your business might expand in the future. For example, Nike recently jumped on the NFT bandwagon, and filed a trade mark for downloadable virtual goods. A suitable class for such goods is class 9. 

Keep in mind though, if you do not use a trade mark in the classes applied for within 3 years of registration, you may be vulnerable to removal action by third parties. 

Did you know? 

Kings’ Trade Mark Attorney Brisbane team can assist you to ensure you are filing your trade mark in the appropriate class.


Patents protect how something functions. For example, if you have developed a new type of garment closure a patent is most suitable. 

The humble zipper was once novel and inventive enough to be granted a patent. Nowadays, there is a high chance that your zipper has a small “YKK” on the pull tab. YKK is the largest zipper manufacturer globally and an excellent example of a comprehensive IP strategy. While YKK did not invent the Zipper, they developed their own zipper manufacturing equipment that has been patented. YKK also hold trade marks for their YKK brand.


Image: YKK logo

The patent law experts at Kings Patent & Trade Marks Attorneys are not very fashionable, but they can help you prepare an on-trend IP strategy to protect yourself and your brand from unauthorised copying.

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Will my product infringe another person’s patent? Can I get a patent for my invention?

Patent searching is vital before, during, and after the patent process. Patent searches tend to relate to three key aspects, 1) patentability, 2) infringement, and 3) watching. 

Each of these key aspects is important and can provide unique insights at different stages of an invention, from conception all the way to commercialisation and beyond.

Patentability Searches

Patentability searches assess whether your invention is novel (new) over what is already publicly available. Novelty, in combination with non-obviousness, are key criteria for patentability.

During a novelty search, we will look for earlier publications that might disclose your invention, or features of your intention. These earlier disclosures may be found in patent documents as well as academic literature and other sources such as blogs and forums. Any prior public disclosure may affect your ability to obtain patent protection.

It is best to perform patentability searches before embarking on the patenting process. Patentability searches provide a good picture of the market and can help to identify development opportunities.

Often, investors will request to see patent searching of this type before making investment decisions.

Infringement Searching

Infringement searching, sometimes called freedom to operate, is targeted towards granted or pending patents and is focused on the claims of those patents. The claims define the scope of protection covered by the patent. In particular, claim 1 often defines the broadest scope of protection afforded by a patent.

During infringement searching, we will closely analyse pending and granted patents in jurisdictions of commercial interest. We can restrict these types of searches to your competitors, or we can search the technology area more broadly.

It is best to perform infringement searching if your product is near finalisation or if you are aware of any competitors. Alternatively, if you are aware of an existing product that is similar to your invention, we can advise whether you are infringing patents relating to the existing product as well as outline ways to minimise infringement risk.

Patent Watches

Patent watches are useful to keep abreast of your competitors’ patent filings, or a technology market generally. This type of searching can be useful to identify gaps in the market as well as to ensure there is no encroachment on your intellectual property rights.

Searching is a complex matter and all searching needs are different. Contact the patent law team at Kings Patent & Trade Marks Attorneys for a complimentary 30-minute consultation to discuss your search.

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How Long Do Trade Marks Last For?

Trade marks are some of the most important pieces of intellectual property you can own. Each trade mark represents a significant investment in development, goodwill and customer recognition. This makes them incredibly valuable to businesses of any size.

Australia’s trade mark system provides robust protection that allows you to prevent others from using your branding without permission. This helps to protect your reputation and allows you to maintain a competitive advantage.

But, trade marks must be renewed and it’s your responsibility to ensure your registration is up to date. In this article we will find out how long trade marks last in Australia and whether they can be cancelled early.


What is a Trade Mark?

A trade mark is a type of intellectual property that can be used to protect logos, words, phrases, letters, colours, sounds, smells, pictures, movements, aspects of packaging or any combination of these.

Trade marks in Australia are registered by IP Australia. Each trade mark is registered in regard to specific products and services. This grants you the exclusive right to use or licence your trade mark over those products or services. You also gain the right to take legal action against others that are using your trade mark – or a trade mark that is “deceptively similar” in relation to the same or similar products or services – without permission.

Australian trade marks only provide protection within Australia. You will need to register your trade mark separately in other countries, with each jurisdiction carrying its own application and renewal requirements.


How Long Do Trade Marks Last For?

Australian trade marks are valid for up to 10 years from the date of filing. Trade marks can be renewed at the end of the 10 year period. There is no limit on the number of times a trade mark can be renewed.

You can renew your trade marks up to 1 year before the expiry date. If you miss the expiry date, your IP can still be renewed within the 6-month grace period. Late renewals attract an additional fee of $100 for every month, or part of the month, that the payment is late.

If you do not renew your trade mark, the registration will lapse and third parties may be able to register it as their own.

Given the significant value of trade marks, most companies choose to work with IP attorneys to keep their registrations up to date. This ensures renewals are always paid on time and that the trade mark won’t be cancelled.


Early Cancellation of Trade Marks

Your trade marks provide up to 10 years of protection, but they can be cancelled early for a variety of reasons. A trade mark may be cancelled by request of the owner, by court order, or by application from a third party

The owner of a trade mark could choose to cancel a their registration early:

  • If the trade mark is longer going to be used for products and services

  • If the business is rebranding

  • To avoid trade mark disputes

  • To reduce costs associated with maintaining the trade mark

  • When changing strategy to target different markets, products, services or customers

  • When restructuring the business, such as during a merger

  • If the trade mark has attracted negative associations

Aside from voluntary cancellation, a trade mark may also be cancelled at the request of a third party if it has gone unused for a continuous period of 3 years (but no earlier than 5 years after the filing date, if the trade mark was filed before 24 February 2019).

A trade mark is considered to be unused if it isn’t actively appearing on any products, services or materials for which the trade mark is registered. Where a trade mark is being used for only some of the classes of goods for which it is registered, a third party can apply to have the registration altered.


Manage Your Intellectual Property with the Attorneys From Kings!

Trade marks hold enormous value. Recognisable branding is a major component of ensuring your products and services stand out, so it’s crucial that you stay on top of your rights. When you need to make sure your IP is always up to date, Kings Patent and Trade Marks attorneys can help!

Kings is an independent firm that specialises in trade marks, patent law and design registration. Our attorneys have decades of experience, allowing us to develop effective trade marks applications for all classes of goods and services.

We provide support throughout the process and can help develop your application, register your trade mark, maintain your portfolio and protect your rights from unauthorised use. Our IP attorney Brisbane team has experience in all aspects of intellectual property, so you can rely on us to ensure your portfolio is always up to date.


Contact us today if you’d like to know more about trade mark renewal, or call us on 07 3088 8009 to book a consultation!

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What Does a Registered Design Protect?

Australia’s intellectual property laws make it simple to protect the distinctive parts of your business. Elements of your branding can have a major impact on the way customers perceive your products. But those distinctive elements include more than just branding and logos – products themselves may contain unique value that needs to be protected from replication.

This is done through design registration. By registering the design of your products, you gain the right to exclude others from using the design, which can prevent competitors from copying your work. In this article we’ll discuss design rights in more detail, including what can and can’t be protected, as well as how to lodge your application.

What Does a Registered Design Protect?

A registered design protects the visual shape and appearance of a product or parts thereof. The ‘design’ can include anything that makes up the overall appearance of a product, such as its shape, configuration, patterning, ornamentation and visual features.

Design rights are intended to protect the unique appearance of products, and to prevent competitors from manufacturing identical (or “substantially similar”) products. Since the design of a product can have a significant impact on customer buying decisions, design registrations are a critical part of protecting your intellectual property.

It’s important to note that design registration only protects the appearance of a product. It does not protect:

  • How the product is designed
  • The functionality of the product
  • The materials used
  • Designs that aren’t applied to tangible products (such as logos and concept art)

Other aspects of a product (such as the functionality and materials) can be protected by patents. It is strongly recommended that you consider both a patent and design registration in such cases. This is the best way to prevent competitors from manufacturing similar products..

Requirements for Design Registration

Most new products can be registered as designs. This includes items intended for domestic, commercial and industrial use. To be eligible for design registration, a design must be distinctive and visually new.

A visually new design is any design that:

  • Has not been publicly used
  • Has not been disclosed in a previous design application
  • Has not been published in a document anywhere in the world

A distinctive design is any design that:

  • Is not identical or substantially similar to existing designs
  • Has not been disclosed in a previous design application
  • Has not been published anywhere in the world

Minor changes do not necessarily make a design distinctive. A design must not be “the same or substantially similar” to any existing design in order to qualify for registration.

How Long Does Design Registration Last?

In Australia, registered designs last for an initial period of 5 years. Design registrations can be renewed prior to the expiration date for a further 5 years. Registration can only be renewed once, so the maximum duration of a design right is 10 years.

An Australian design right only grants you the exclusive right to use your design within Australia. If you want to protect your design overseas, you will need to apply for protection in those countries individually. Your Australian design application can be used as the basis to apply for the same design overseas within 6 months of your application.

How to Apply for a Design Right

Obtaining a design right is a two-part process in Australia. Unlike other IP rights, design registration does not automatically grant the ability to enforce your rights. If you wish to enforce your rights and take legal action against other people who use your design, you’ll need to register and certify your design:

Part 1 – Registering Your Design

  1. Determine whether your design is eligible for protection.
  2. Work with your attorney to perform a search of existing designs and ensure yours is new and distinctive.
  3. Gather your documentation and lodge an application that includes ownership details, a representation of your design (such as a line drawing or photo) and the product’s name.
  4. The details of your application will be published on the Australian design database while your application is assessed.
  5. IP Australia will assess your application (also called a “formalities assessment”) and provide an outcome. If there are any issues with your application, you have 2 months to solve them. If there are no issues, or if all issues are resolved, your design is registered.

Part 2 – Certifying Your Design (Optional)

  1. Request examination of your design registration. This can be done when you file, or at any time after you file your design application.
  2. Your design will be examined to see if it meets the legal requirements for certification. This includes searching the world for similar or identical designs.
  3. IP Australia issues an outcome. You have 6 months to respond to any issues raised. If no issues are raised, or if all issues are resolved, your design will be certified. This allows you to enforce your rights and take legal action against anyone who uses your design without your permission.

Protect Your Unique Products and Designs with the Attorneys at Kings!

The design of your products can have a significant impact on your success as a business. Protecting unique designs is the best way to prevent competitors from replicating your success, allowing you to maintain an edge in an increasingly global market. Registering a design is a straightforward process, and it becomes simple with the help of the attorneys at Kings!

Kings is an independent intellectual property firm based in Brisbane. We assist our clients with protecting your most valuable assets. If you need to secure products, branding or innovative ideas, our experienced Trade Mark Attorney Brisbane wide team can help you obtain design rights, patents and trade marks that ensure you have exclusive rights to your IP. Contact us today to find out more about our patent law or Registered Design Brisbane based services, or call us directly to book a confidential consultation.

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