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How Do I Know if My Invention Qualifies for Patent Protection?

The patent system allows innovators to claim exclusive rights to their inventions. That’s important, because it means inventors can recoup their expenses in research and development, and it encourages the market to consistently invest in new technologies.

However, not all inventions are patentable. To qualify for patent protection, your invention must meet four key criteria laid out in the Patents Act 1990.

Satisfying these criteria can be complex. Applications are assessed on a case-by-case basis, and determining eligibility requires the help of an experienced patent attorney.

 

In this article, we’ll discuss the basis of patent eligibility, and help you figure out whether your invention qualifies for patent protection.

What Do Patents Protect?

Patents protect a broad range of inventions, such as devices, substances, methods and processes. This can include things like:

  • Mechanical and electrical devices
  • Manufacturing and processing technologies
  • Engineering developments
  • Organic chemistry
  • Biotechnology and biology
  • Microorganisms
  • Pharmaceuticals
  • Medical technology and devices
  • Business methods
  • Computer-related inventions

Certain categories of inventions are not eligible for patent protection in isolation. These include:

  • Human beings
  • The biological process for generating human beings
  • Artistic creations
  • Mathematical models
  • Plans, schemes and mental processes

The Eligibility Criteria for Patent Protection

There are four major criteria used to determine whether an invention is eligible for patent protection. Each of these contains an incredible amount of nuance and complexity. We recommend speaking  with a patent attorney to determine whether your invention satisfies each of the criteria.

As a general framework, patentable inventions must be:

1. New

The invention must be novel. This means that prior to your invention being filed, no one else can have done the same thing as you.

This requirement also means your own invention cannot be made public before the date of your application.

In most countries, you lose the right to patent your idea if it is publicly disclosed before the priority date of your patent application. That is, the date on which you file a provisional patent or standard patent application.

 

There is a 12-month grace period in Australia that allows you to file an application once your idea has been made public.

It’s important to remember that this grace period may not apply in other jurisdictions. If you intend to patent your idea in multiple countries (e.g. if you plan to market or manufacture your product overseas), you may be unable to patent an invention that has been publicly disclosed.

Be cautious about ways in which your invention can be made public. For instance, if you apply for a public grant as part of the development process, some (or all) of your invention may be made publicly available through the grant provider. This is a common problem for creators working with institutions such as universities.

 

We recommend keeping your invention a secret. You can use agreements such as an NDA to prevent others from sharing your ideas.

2. Useful

The invention must be useful in industry. This criteria is typically based on whether the invention works as intended, and whether it produces some kind of economic benefit. Typically, this is the easiest of the criteria to meet as most inventions will have some kind of usefulness.

3. Inventive

Your invention must be different to existing devices, substances, methods and processes, and involve an inventive step over existing devices, substances, methods and processes. 

The “inventiveness” of an invention is based on whether the inventive step would have been obvious to a person who is “skilled in the relevant art”. That is, your invention cannot be an obvious development to a skilled, non-inventive worker in the field.

 

It’s important to work with patent attorneys that are subject matter experts when developing your patent application. The way your invention is documented and presented can make the difference between a patent application being granted or rejected.

4. Directed to Suitable Subject Matter

The “manner of manufacture” test determines whether an invention is of a suitable subject matter. This typically excludes inventions relating to artistic creations, mathematical models, human beings, and plans or schemes that are purely mental in nature.

Whether an invention is directed to suitable subject matter is determined on a case by case basis. Generally speaking, anything that is a useful art (as opposed to a fine art) is considered a suitable subject matter.

Inventions that relate to fine arts can be protected with other forms of intellectual property, such trade marks, copyright and design rights.

How Do I Know if My Invention Qualifies for Patent Protection?

The simplest way to find out if your invention qualifies for patent protection is to speak with a patent attorney.

Patent attorneys are experts in the field. While developing your patent application, your attorney can search existing patent documents to determine whether your idea is new and involves an inventive step.

Searching existing patents is often time consuming and complex. Patents are divided into classes and subclasses. It’s crucial to perform a comprehensive search before lodging an application to allow you to form an appropriate IP management strategy.

Remember that filing a patent application takes time and money, and it requires you to publicly disclose the details of your invention. Therefore, if your application is unsuccessful, it can be a substantial loss to you and your business.

Working with a patent attorney is the best way to prevent this outcome. Your attorney can accurately assess whether an invention is suitable for a patent, and develop an application with the highest likelihood of success.

Protect Your Most Innovative Ideas With the Patent Attorneys at Kings!

Patents are the ideal tool for protecting your inventions. Australia’s patent legislation is robust, and it can help you maximise the value of new ideas.

Applying for a patent is complex. Before you begin, contact the attorneys at Kings and determine whether your invention is suitable for patent protection.

Kings is an independent firm based in Brisbane that offers intellectual property services. Our experienced attorneys specialise in patents, trade marks and design registration, so we can help you protect your most precious ideas.

Our team holds dual qualifications and are subject matter experts in a variety of fields. Our qualifications and experience allow us to support patent applications in engineering, technology, pharmaceuticals, biotechnology and beyond.

 

Contact us for a confidential consultation, or give us a call to find out whether your invention qualifies for patent protection.

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Is Intellectual Property Law Ready for Artificial Intelligence?

Artificial Intelligence (AI) is changing the way we think of intellectual property (IP) law. Is Australia’s legislation equipped to handle widespread AI innovations and inventions? 

Australia enjoys some of the world’s most robust intellectual property law. Local regulations allow creators, inventors and innovators to turn their ideas into valuable commercial solutions. These hold immense value, so it’s important for legislators to prevent AI from disrupting the protection that has already been afforded to IP holders.

But the cornerstone of our current legislation revolves around human inventors. So what happens when computer systems are able to develop novel concepts with little – or even no input – from humans?

It’s a question that’s being asked all over the world at the moment. Is intellectual property law ready for artificial intelligence? There’s no simple answer to this question, but we’re going to discuss how IP law relates to AI, and what’s being done to ensure legislation keeps up with changes in technology.

How Does AI Relate to Intellectual Property?

AI relates to intellectual property in dozens of ways. These are the our three major areas of concern for the immediate future of the industry:

IP Rights for AI Platforms

Like other software and hardware systems, AI platforms will be eligible for protection under Australia’s IP law. In most cases, the current IP law is suitable for protecting new AI systems.

As with computer-related patents, AI platforms will only be patentable if they include a new and novel technical advancement. For instance, you may be able to patent a new AI tool that improves how information is processed and displayed on a computer, of, how a computer operates.

As a general rule of thumb, new AI platforms will need to innovate “how” the computer handles a process, rather than using the computer in a normal manner to bring about an action.

IP Rights for AI Generated Creations

IP rights for AI-generated creations are currently a grey area.

Under the legislation in Australia, there are no specific provisions for whether or not AI-generated creations can be protected with patents, trade marks, design rights or copyright.

Currently, inventions that are created by AI (or with the assistance of AI) can be granted normal IP protection if there is novelty, utility, and it is for appropriate subject matter.  As we recently saw in the DABUS decision, it is also necessary for a human to be listed as an inventor.

AI Platforms for Managing IP Applications and Documentation

AI tools are being used all over the world to streamline legislative processes. With AI, it’s possible to rapidly analyse documentation, search for information and generate responses with great accuracy.  

We have seen an increase in people using AI to perform novelty searching for their invention.  This can be a great starting point, but results are typically inadequate.  

Furthermore, ownership of input ideas (including those that may be novel) is unclear.  For example, if you search your novel idea in ChatGPT, this may be used by ChatGPT (instead of you) or, may form a public disclosure.  We’re here to help if you have disclosed your invention before protecting it, just reach out  to our team as soon as possible!

It’s likely that AI will be used to identify gaps in the market and generate content and inventions.  For example, searches such as “what are problems with excavator buckets and repair of excavator buckets”, may be useful in identifying market pain points for inventors to consider and resolve. 

Encouraging invention is beneficial to us all, but these types of tools also have the potential to poorly advise applicants and make seeking later intellectual property protection difficult.

IP Australia is Investigating Generative AI

We believe the current legislation is poorly equipped to keep up with developments in AI. Until now, AI tools have been niche products in industries such as pharmaceuticals (for high throughput screening), and their use hasn’t caused an issue for Australia’s IP laws.

But what happens as AI tools become more widespread? How does the system cope when a user with no industry experience can use AI to generate a novel invention and automatically file a patent application with IP Australia?

These are some of the questions that IP Australia has set out to answer during a recent discovery process.

One of the main concerns raised by IP Australia is the use of generative AI to flood the system and prevent others from obtaining patents and designs in particular industries. For example, generative AI could be used to publish thousands of variants of a particular product design, making it difficult to obtain new design rights for similar products.

This process has been referred to as defensive publishing, or patent trolling, and it poses a genuine risk under our current legislation.

While there are no concrete answers yet, it’s good to see IP Australia being proactive and acknowledging the risks that AI may pose to inventors and our IP system.

Is Intellectual Property Law Ready for Artificial Intelligence?

The answer to this question is still unclear. The sudden emergence of AI has put Australia’s IP legislation on the backfoot, but existing rulings are enough to help us manage the transition.

We are happy to see that IP Australia is already taking steps to integrate AI into the current framework. While this will require lots of work and iteration over the coming decades, it will allow inventors to make the most of their skills without discounting the usefulness of AI.

Protect AI Generated Works with the Attorneys at Kings!

One of the main challenges we’re encountering with AI is that there are no solid answers. IP Australia is trying to catch up with developments in Artificial Intelligence, but it’s likely to take years before our system reflects the real-world landscape.

For now, if you have created an invention using AI, or if you are looking to protect a newly developed AI tool, the team at Kings can help!

Kings is an independent intellectual property firm based in Brisbane. Our attorneys have vast experience in technological innovations, so we are uniquely positioned to manage IP applications involving AI.

When developing and managing your intellectual property, we consider how AI was used, current legislation and upcoming legislative changes. This ensures you receive the best protection possible and that you’re able to commercially exploit your work to the fullest extent.

Contact us today for more information, or book a confidential consultation to see how we can help.

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Can You Patent an Idea Without a Prototype?

There are lots of ways to approach developing a new invention. One of the most common methods, especially in relation to mechanical inventions, is to create a prototype.

Prototyping an invention is a great way to refine the concept and work through any roadblocks. Prototyping can be an extended process, and the resulting end product may be quite different from the first iteration, which presents a challenge in protecting your ideas.

Since it’s important to protect new inventions as soon as possible, clients often ask if you can patent an idea without a prototype.

 

In this article, we will discuss the need for prototypes when obtaining patents, and some of the other ways you can protect inventions during the development process.

Can You Patent an Idea Without a Prototype?

There is no legal requirement to produce a prototype of your invention before applying for a patent. However, Australian patents are only granted for inventions that are:

  • New – The invention must be novel.

  • Inventive – The invention must be sufficiently different to existing products and patents.

  • Useful – The invention can be made, or used in an industry.

In many cases, the best way to ensure an invention meets these criteria is to develop working prototypes, but this is by no means a necessity.

 

Developing a finalised prototype can be a lengthy process, especially if you seek to engage third parties such as engineers or industrial designers.

Protecting Inventions With Provisional Patents

Provisional patent applications are a great tool for ensuring your rights are secured at the earliest possible date, while continuing to develop and prototype an invention.

Provisional applications are not published, however, subsequent complete applications or PCT (international-type) applications are published. 

A provisional patent application is an affordable way to establish a “priority date.” With a provisional patent application, you can secure your invention broadly, as well as any possible iterations and developments disclosed within the application for a period of 12-months. It is important to describe any alternate iterations in as much detail as possible in your provisional patent application. 

If the invention develops beyond the aspects described in your original application, it is possible to file updated provisional applications outlining the new aspects. Importantly, the new material will have a later priority date, and any claims based upon the new material will have the same later priority date. 

As an illustrative example of the benefits of a provisional patent: 

Company A is developing an invention and wants to create a prototype of the product. They lodge a provisional patent application in February of 2023 before prototyping begins, describing  the broad aspects of their product. 

After several prototypes, Company A arrives at a specific product that best serves their purpose. Company A calls their patent attorney and informs them of the specific product in November 2023.

The patent attorney informs Company A that the specific product is described in the provisional patent application, but also advises the company to file an updated provisional patent that describes the specific product in detail.  

Company A files an updated provisional patent in November 2023. They  subsequently file a complete patent application before the end of their 12-month provisional patent application period. 

 

Company B, develops a prototype for a similar invention and files a standard patent application in October of 2023.

When Company B’s patent application is examined, Company A’s invention will be cited as “novelty destroying.” This is because Company A’s patent application has an earlier priority date of February 2023.

This applies even though Company B had a refined prototype earlier than Company A, and even though Company A’s patent was not yet published at the time Company B’s patent was filed. 

As can be seen, provisional patents can be a useful tool for inventors, and especially those seeking to undertake further research and development of their invention. 

Provisional patent applications are also notably cheaper than standard patent applications. They may also enable the applicant to adjust their international filing strategy for a longer period of time than standard patent applications.  

Because of the reduced costs and the additional time to develop an international filing strategy, provisional patent applications are also a great tool for inventors seeking investors. Investors can help with costs of further research and international filing.

 

Provisional patent applicants can also rest assured that their rights are secured and they can disclose the invention to potential investors with little risk. 

How to Protect an Idea Without a Patent

Sometimes, the 12-month term of a provisional patent application is not enough time for applicants to refine their invention.

In such instances, we may refile the provisional patent application. Importantly, refiling the provisional application will mean that the priority date becomes the later, refiled date. 

Because of this later priority date, if you are aware of competitors developing similar inventions, or if technology in your industry is rapidly advancing, we would not recommend this course of action.

Additional Protection for Your Intellectual Property

While a patent is the ideal tool for protecting your invention, you may not yet be ready to file a provisional patent application, or you may be seeking additional protection. In those cases, you can protect your ideas and brand in the following ways:

  1. Trade secrets – A trade secret is a type of confidential information that provides you with a competitive advantage. An idea or invention can be protected as a trade secret using confidentiality agreements between you and your employees, suppliers and manufacturers. 

    For example, the formula for Coca Cola is trade secret. If Coca Cola attempted to patent its recipe, they would be required to make the formula publicly available, and it would enter the public domain once the patent lapsed.

    By keeping the formula a trade secret, Coca Cola is able to maintain their competitive advantage.

    Trade secrets are protected by common law. You may be able to take legal action against anyone who violates a contract or formal agreement which protects your trade secrets.

  2. Non-disclosure agreements – Non-disclosure agreements (NDAs) – sometimes called a confidentiality agreement – is a contract used to protect sensitive information.

    The employees of businesses often sign NDAs that prevent them from sharing commercial information. If you are developing an invention, have your employees, suppliers, manufacturers and other parties sign an NDA that prevents them from sharing your work without permission.

  3. Manufacturing agreements – A manufacturing agreement is a contract between you and any third parties that are involved in producing your invention. As long as you do not make your invention publicly known in the process, you can use a manufacturing agreement to prevent a manufacturer from:
    1. Copying your invention
    2. Copying your product
    3. Competing against you in the marketplace
    4. Contacting your clients (or potential clients)
    5. Sharing your trade secrets
  4. Copyright – Parts of your invention may receive automatic copyright protection in Australia. Copyright protects the original expression of an idea or information. It does not protect the idea itself, so you should not rely on copyright to protect a patentable invention. 

    For example, if you draw a detailed schematic of an invention, the drawing will receive automatic copyright protection. Copyright does not prevent someone else from using the schematic to produce a working prototype or commercialising their prototype.

  5. Design rights – You can use design rights to protect the visual appearance of a new product. While a design right does not protect the functionality of an invention, it can protect unique visual features that will make your product distinctive in the marketplace. 

    Design rights can also be useful where the product must have a certain distinct visual appearance in order to function. In such instances, protecting the visual appearance may also indirectly protect the function associated with its visual appearance. For example, a design right can protect the form and function of a fan with improved air movement capabilities resulting from a uniquely shaped blade. 

  6. Trade marks – You can register unique branding and product names as trade marks. This will not provide any protection for your inventions, but it may increase the commercial value of your business and improve brand recognition.

A good example of this is Viagra. Viagra is a trade mark for the product sildenafil. The sildenafil product was protected by patents, with the Australian patent expiring in 2012. However, because of the established branding of Viagra, the applicants still enjoy a significant market share (despite generic products entering the market). 

Protect Your Intellectual Property With the Patent Attorneys at Kings!

Your intellectual property is one of your most valuable assets. While Australia provides robust IP law that you can use to enforce your rights, it’s important to have the right protections in place.

If you are a private individual or business seeking a patent, the attorneys at Kings can ensure your ideas are secure and tailor an intellectual property strategy to your goals and budget.

Kings is an independent firm offering intellectual property services throughout Australia and New Zealand. Our attorneys are experienced in drafting patent specifications, filing applications, prosecuting applications, and enforcing your rights.

We can manage your patents from start to finish, helping you maintain a competitive edge with tailored advice, representation and professional services.

Contact us today to book a complimentary, confidential consultation with the attorneys at Kings!

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Single Letter Trade Marks – No Ragrets

It is typically very difficult, near impossible, to obtain registration for single letter trade marks unless they are heavily stylised. 

For example, some notable single letter trade marks that are heavily stylised and have proceeded to registration in Australia include:

Australian Postal Corporation

480136

Toyota Jidosha Kabushiki Kaisha

509295

McD Asia Pacific LLC

326539

Often, it is a condition of registration that the trade mark includes an endorsement to the effect that the registration of the trade mark shall not give right to the exclusive use of the letter contained therein.

The Trade Mark Examiner’s Manual provides the following commentary: 

Single letter trade marks without “get up” are generally not prima facie capable of distinguishing. The likelihood of other traders needing to use a simple, unembellished single letter in the form of initials or abbreviations is quite high (e.g. the letter M is commonly understood to indicate “mobile” in relation to phones and the letter E is commonly used to indicate a wide fitting in relation to shoes). One letter trade marks, unless represented in an unusual manner, generally possess limited inherent adaptation to distinguish and usually require evidence of use.

As the Trade Mark Examiner’s Manual notes, other traders may need to use a single letter in the form of initials or abbreviations and therefore such trade marks are typically objected to on the basis of lack of distinctiveness (section 41 objection).

However, this commentary, and objections raised by trade mark examiners can be overly pessimistic, especially in view of Wesbeam Holdings Pty Ltd [2006] ATMO 73.

In this Trade Marks Office decision, the Hearing Officer considered the use of the letter “E” in conjunction with the word “purlin” for roofing and beams – (for those not in the building industry, a purlin is a structural beam of a roof). 

During trade mark examination, less weight is placed on components of the trade mark with a descriptive tinge in relation to the goods and services.  In this case, the term purlin.  This leaves the letter “E” to be considered. 

Importantly, the Hearing Officer referred to the Trade Mark Examiner’s Manual and noted a degree of flexibility in deciding on their degree of inherent adaptation to distinguish.  On one hand, if the single letter is highly stylized, it will add a significant amount of capacity to distinguish to a descriptive word.  On the other, a simple letter “A” for instance, will add nothing to the construction (“A” is simply the indefinite article referring to a single member of the class of words immediately following, setting up a construction such as ‘a purlin’.)  In this case, the Hearing Officer held that the letters “Z” or “C” would not add anything to the word “purlin”, as these two letters are in use in the trade as descriptive adjuncts to that word. 

The Examiner noted that the letter “E” does not have any particular connotation in relation to the claimed goods and services.  Adding it to a word descriptive of a piece of building material does add something to the construction.  In this case, the Hearing Officer found that the addition of the letter “E” added enough to the construction of the trade mark to satisfy the Hearing Officer that other traders would not need to add the letter “E” to their products in this field. 

This case highlights that single letters may be registrable in conjunction with descriptive words, where the single letter has no meaning or connotation in relation to the goods and services. 

As a hypothetical example, if the goods of the “EPURLIN” application were in relation to electronic roof beam measuring or similar, the letter “E” would be considered a typical descriptor of “electronic” and the trade mark would face a section 41 (descriptiveness) objection.  Only where the letter has no meaning or connotation to the goods and services may the trade mark be registrable. 

Book a free consultation with the team at Kings IP today to discuss your trade mark. 


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Section 41 Distinctiveness Objections in Trade Marks – Unusual, Archaic and Clunky Phrases

An objection raised by IP Australia under section 41 of the Trade Marks Act 1995 refers to an issue with the applied trade mark being capable of distinguishing the goods and services from the goods and services of others. 

An example of when a section 41 objection may be raised is if an applicant sought protection for the hypothetical trade mark Apple in relation to apples.  Because trade marks are negative rights, if such a trade mark were registered, the owner would be able to prevent others (including apple farmers) from using the term Apple to describe their goods.  This means that other people (apple farmers) who would have a legitimate need to describe their products with the word Apple, would be precluded from doing so.  

As a result, the Trade Marks Act prevents the registration of trade marks that are descriptive of the goods and services for which protection is sought.  Importantly, the operation of this section is relevant where the goods and services for which protection are sought are described by the trade mark.  This is why we may have the registration of Apple in relation to phones, computers, and other electronics.

If you have received a s41 objection, the Trade Marks Office should have undertaken a two-part assessment process. 

Apple Logo

  • First, they should have arrived at an ordinary signification of the trade mark in the light of the applied for goods and/or services.
  • Secondly, they should have determined that there is a likelihood that other traders might legitimately wish to use the trade mark for that ordinary signification in connection with their similar goods or services.

 We will focus on the second part of this test here, that is, the legitimate desire for other traders to use the trade mark. We have reviewed the recent Trade Marks Office decisions and have noticed that linguistically odd phrases that include descriptive components may be found registrable as it is unlikely that other traders would desire to use the trade mark.  

For example, in KJ Ince Pty Ltd [2023] ATMO 139 it was held that FLOWERS FOR ALL was not descriptive of flowers and floristry services. 

In this decision, the Hearing Officer considered at length the use of “for all” to refer to “all people” or “all persons”. 

In particular, the Hearing Officer considered “for all” to be unusual and further, that in this day and age, the use of “for all” could possibly even be considered archaic.  In their reasoning, the Hearing Officer referred to other uses of the term “for all” such as in the Pledge of Allegiance and in The Three Musketeers book.

The Three Musketeers

It would be unusual, in common parlance in Australia today, for people to use the term ‘for all’ to refer to all people. It is far more likely that the expression ‘for everybody’ or ‘for everyone’ would be used. If a person today were, in everyday conversation, to use the term ‘flowers for all’—especially without the additional ‘people’ or ‘persons’—it likely to strike the listener as odd, or be taken as an intentional attempt to use this (potentially) archaic terminology for effect.

While this decision pertained to a revocation action, it involved a fresh consideration of section 41. 

Similarly, in Green Canpump Inc. [2023] ATMO 135, CANPUMP was found not to be descriptive of pumps and pumping related machinery. 

In this decision, the Hearing Officer considered the ordinary signification of CANPUMP and commented that the trade mark may indicate “able to pump”.  With this in mind, the trade mark was considered an oddity, effectively saying to potential purchasers: “here is a pump that is able to pump stuff”. Accordingly, the irregularity rendered the trade mark distinctive. 

These decisions provide an indication that uncommon, archaic, clunky, or odd linguistic phrases may be distinctive, even where there may be descriptive components of the trade mark.  

Give the team at Kings IP a call today to discuss your trade mark.  We can assist you with trade mark matters at all stages.

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How Long Does a Registered Design Last?

Australian regulations provide excellent protection for new ideas, inventions and products. One of the most versatile forms of intellectual property is design registration.

Registering your design is an excellent way to protect the unique appearance of your products. This increases the value of your products, helps grow your business, improves brand awareness and differentiates you against competitors.

Design registration is a relatively straightforward process, but it only provides protection for a limited period of time. In this article, we’ll find out how long a registered design lasts in Australia, as well as what happens when your protection ends.

  

What is a Registered Design?

A registered design protects the appearance of a new and distinct product (or parts of a product). This includes the shape, pattern, ornamentation and configuration of the product.

Design rights are intended to protect the unique appearance of products. Designs can affect how consumers perceive and interact with products, so they hold significant value for brands.

Registering a design only protects its unique appearance. Design registration does not protect the functionality of a product, how it was designed, or the materials used in manufacturing.

  

How Long Does a Registered Design Last?

Registered designs last for a period of 5 years in Australia. They can be renewed for a further 5 years. This means your design can be protected for a maximum of 10 years.

Registering a design in Australia grants you the exclusive right to commercially exploit your design within Australia. If you want to protect your unique designs in other countries, you’ll need to apply for design registration in each jurisdiction.

Every country has its own regulations surrounding designs. The duration of registration varies depending where you are in the world:

Jurisdiction

Duration of Registration

Renewal Requirements

China

Designs last up to 15 years

Every year after registration

New Zealand

Designs last up to 15 years

Every 5 years

Europe

Designs last up to 25 years

Every 5 years

USA

Design patents last up to 15 years from grant

N/A

The duration and renewal requirements of each country can present a challenge when managing your IP. It’s best to work with an IP attorney that will ensure your designs are protected and that registration is renewed on time, every time.

This is especially important if you are working with overseas partners to manufacture or sell your product.

 

What Happens After Design Registration Ends?

Your design protection ceases once the registration period ends.

You are still allowed to use your design for commercial purposes, but you no longer have the exclusive right to that design. This means that other parties can freely use your design for their products. 

We typically recommend maintaining your design registration for as long as possible. While you may not manufacture a product for the full duration of the design registration, your IP holds significant value. Preventing competitors from using your designs allows you to maximise that value and avoid unnecessary harm to your business.

 

What to Do if Someone Copies Your Design

A design that has been registered and certified grants you the right to take legal action against anyone who uses your design without permission (within Australia).

If someone copies your design, the first thing you should do is contact your intellectual property attorneys. Your attorney may be able to resolve the issue without the need to take the matter to court.

If that fails, as the IP holder, you may be able to obtain a court order that prevents others from infringing your design. A competitor that fails to abide by an injunction may be held liable for any damages their actions have caused.

For example, large brands manufacture products with recognisable design features. If a competitor were to copy these design features, it could cause confusion among customers, damaging the brand in the process.

In this case, design registration could be used to prevent competitors from infringing the design, and to seek damages if the brand is harmed.

 

Manage Your Design Registrations with the Attorneys at Kings!

Design registration is an affordable and effective way to protect your intellectual property. Since the design of a product can have a big impact on how customers perceive your brand, registration is crucial for anyone that’s looking to manufacture a product.

Registering and maintaining your designs is a straightforward process that should be handled by the IP attorneys at Kings!

Design registration is a multi-step process that requires proper documentation. We’ll also need to perform a search of existing designs to ensure that your product is unique and distinctive. Once that’s taken care of, our attorneys can register and certify your design, giving you exclusive control over your products.

If you are interested in registering a new design, or if you would like to manage an existing registration, speak to the attorneys at Kings!

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Kraft Foods Schweiz Holding GmbH v Mars, Incorporated [2023] APO 41 – Crumb Chocolate Flavour Compositions

Background

On 1 December 2016, Mars filed Australian patent application no. 2016365338 (the Application) for a composition which modifies a final food aroma to mimic the aroma of chocolate crumb powder. 

Claim 1 of the Application is directed to a chocolate composition that has two parts, namely;

(a) dry milk chocolate, which is milk chocolate made with milk powder and without chocolate crumb powder or without the crumb process; and 

(b) an extraneous flavour composition that includes at least the nine recited odorants and provides an overall aroma of crumb chocolate, a creamy aroma of crumb chocolate, or an overall aroma and creaminess of crumb chocolate. 

The application was opposed by Kraft. In their statement of grounds and particulars, Kraft made many allegations. 

This article will consider Kraft’s allegation that claim 1 of the Application does not reflect the results described in the specification (i.e. that claim 1 was not supported) due to “glaring inconsistencies in the data and the interpretation of the results.”

Support

A comparison between the invention described in the claims and the specification was undertaken to determine whether the claims were supported by the disclosure in the description when read by a person skilled in the art. 

In asserting a lack of support, the Opponent relied upon evidence from three independent food scientists. The Applicant relied on evidence from Dr Dizbalis, a flavour scientist from Mars and an inventor on the present application.

Interestingly, relying on evidence and the merits of such evidence where the evidence is adduced from someone who is also an inventor of the application in question was not considered by the Delegate.

The Experiments

The patent application outlined that determining the compounds for inclusion in claim 1 involved three key experiments. We summarise the goal of each of these experiments in the table below. 

Experiment 1

Identify the compounds responsible for creating the crumb chocolate flavour more than traditional chocolate. 

Experiment 2

Identify the odour activity value, that is, how important a compound is to the overall odour of a sample. 

Experiment 3

Perform omission experiments whereby a single odorant is omitted at a time and a trained panellist will evaluate the creaminess and aroma to determine which odorants are important for creating the crumb chocolate aroma.

The first two experiments identified a key compound (for the chemistry and chocolate nerds – furanone), that had a significant impact on the crumb chocolate aroma. 
In their evidence, Dr Dizbalis commented that the identification of the compounds of experiments 1 and 2 involved research that extended over a period of 10-years. 
The omission experiments (experiment 3) found the key compound identified in experiments 1 and 2 to be unimportant in providing the crumb chocolate aroma. 
The key compound was not listed in claim 1 of the patent application. 
In the declaration of Dr Dizbalis, it was noted that, “Both FD factor and OAV values, being quantitative methods rather than human sensory experiments, are a useful method of narrowing down the odorants that may be of importance to the overall aroma of a food sample, but it is ultimately human sensory experiments that provide an answer as to how the human brain perceives the combined overall aroma of a food sample.”

The Decision

In the decision, the Delegate held that the apparent inconsistencies in individual results for a particular odorant simply indicates there are limitations in the analytical techniques used. The Delegate considered that any apparent inconsistencies in the empirical data do not provide sufficient basis to find the claims lack support.

In reaching this conclusion, the Delegate noted that the specification gives more weight and importance to human sensory testing when selecting the key compounds that significantly contribute to an overall aroma of crumb chocolate, a creamy aroma of crumb chocolate or an overall aroma and creaminess of crumb chocolate. 

This raises the question of why Mars invested 10 years of research into steps 1 and 2 when what would ultimately be given weight for the patent application was the information discerned from step 3.  

Regardless, this decision gives us helpful insight into support requirements and is a reminder to ensure that your patent description also includes discussion as to why certain integers may be selected for inclusion in the claims over other integers. 

Book a free consultation with the expert team at Kings today to ensure that your patent application fulfils the support requirements to be properly protected. 

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How to Copyright Artwork in Australia

Artists in Australia enjoy one of the world’s most robust copyright systems. If you create original artwork, you typically have the exclusive right to use, publish, reproduce and distribute your works.

While Australia’s copyright legislation provides excellent protection, navigating the system and managing your claims can be challenging.

Depending on your needs, you may also need other forms of intellectual property to keep your artworks and ideas secure.

In this article we will discuss how to copyright artwork in Australia, and whether your works require other forms of protection.

  

 

Copyrights for Artistic Works in Australia

Australia’s copyright regulations provide protection for a wide range of “artistic works.”

This includes:

  • Paintings, drawings and sketches
  • Photographs
  • Sculptures
  • Engravings
  • Maps and models
  • Plans and blueprints

These works are eligible for copyright protection, regardless of the artistic quality of the work.

The Copyright Act further extends protection to “works of artistic craftsmanship” that don’t fall into the above categories.

These works must satisfy an additional aesthetic appeal criteria, and they must be the work of a skilled craftsperson. This includes items such as handmade tapestries, jewellery and furniture.

  

 

How to Copyright Artwork in Australia

Artwork receives automatic copyright protection in Australia the moment it is put into material form. You do not need to register or publish your artwork to receive copyright.

However, it is common for copyrighted works to bear a copyright symbol or notice. The copyright symbol (©) is placed in a prominent position on the artwork, along with the year the artwork was created. An artwork may also include a written copyright notice.

There is no set form of written notice, but it should state:

This work is copyright. Apart from any use permitted under the Copyright Act 1968, no part may be reproduced by any process, nor may any other exclusive right be exercised, without the permission of [the copyright owner, the year of copyright].

Copyright protects both physical and electronic artworks. Electronic works can be further protected with digital rights management (DRM) information.

There is no requirement to attach a copyright notice to an artwork. But attaching a copyright mark or written notice is advisable, as it lets other people know that the copyright is actively maintained.

 

 

Your Legal Rights As the Copyright Owner

As the copyright owner for an artwork, you are granted the exclusive right to use your artwork. Other parties require your permission to:

  • Reproduce your artwork (e.g. by scanning or photographing it)
  • Publish your artwork in print format
  • Sell copies of your artwork in print format
  • Distribute your artwork through the internet
  • You also receive moral rights, including:
  • The right to be properly credited as the creator of the artwork
  • Protection against your artwork being attributed to someone else
  • Protection against disrespectful treatment of your artwork

Seek legal advice if you think your copyright has been infringed. You will need professional support to enforce your copyright and prevent others from copying, selling or distributing your artwork without permission.

 

Are Logos Protected by Copyright in Australia?

Yes, logos and other artistic branding elements are protected by Australia’s copyright laws.

However, copyright only protects the original expression of an artwork, not the ideas behind the artwork. This means a business cannot rely on copyright alone to protect logos and other recognisable symbols.

A business’ logo often holds significant value in the form of customer recognition and brand equity. If your logo is unlawfully copied by a competitor, this can dilute your brand and harm your reputation, which may have significant financial implications.

While your copyright prevents others from copying or distributing your logo without permission, you cannot use copyright to recover financial damage to your brand. For this, your logos and recognisable branding need to be trade marked.

A trade mark is a form of intellectual property that protects your business’ unique branding, products and services. Registering your logo as a trade mark grants you the right to deter others from using your trade mark, as well as to sell or licence the trade mark for others to use.

Unlike copyright, trade marks must be formally registered with IP Australia.

 

 

Protect Your Artworks and Branding with the Attorneys at KINGS!

Australia’s copyright system provides automatic protection for artworks and other original creations. That’s excellent news for artists, but businesses still need to ensure their unique ideas are protected.

For support with registering and managing trade marks, designs and patents, talk to the attorneys at Kings!

Kings is an independent intellectual property firm based in Brisbane that works with clients all over the country. Our attorneys are experts in all areas of copyright and intellectual property law.

With a background in technology, mining, engineering, life sciences and more, we can provide the protection your business needs.

Whether you are protecting artworks, branding, products or inventions, we can develop a solution that supports your requirements. Contact us online to book a confidential consultation today!

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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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