A Guide to Domestic IP Applications

You have just invented a better way to manufacture phones, written a new book or have come up with a new brand logo, but how do you protect these? The answer is found in intellectual property law or IP law for short. In the past, we covered what IP is, but in this article, we will cover how you can protect it.

IP Australia

IP Australia is the government body that handles all IP registrations for Australian residents. This includes domestic and international IP applications. IP Australia handles domestic IP applications. International IP applications are filed with IP Australia, but they follow a very different process.

The application process

IP Australia covers the three main IP categories: patents, trademarks and designs.

Standard Patents

1. Is your IP really a patent or is it another form of IP? For example, people often confused patents with designs. Patents relate to how an invention works, whereas designs are what an invention looks like;
2. You must do a search either by yourself or with a professional to check your invention is not similar or the same as anything else on the market. You should use a professional, as this task is specific and you can easily miss something. However, if you choose to do it by yourself, this database will help;
3. File your patent application. Your application must come with a patent specification–description of your invention;
4. Upon successfully filing your patent, it will be published on the Australian Journal of Patents about 18 months after filing date. This is not a patent grant. If and only if your grant is later awarded, then any illegal use of your patent will be set at the time it was published.
5. Elect to have your application examined at anytime after filing. However, you cannot wait longer than 5 years after filing or 2 months after being told by IP Australia to request an examination. Normally, this will take 12 months.
6. Your patent will either be rejected or approved. If approved, a standard patent lasts around 20 years. However, you will need to pay yearly fees for the life of the patent. You can appeal rejected applications. The two most common reasons for applications being rejected are:

• The application is the exact same as another;
• Patent owner on application is not the actual owner.

This covers standard patents only, which make up the majority of patent applications. You will need to see a patent lawyer to talk about your patent, as you may not be able to file a standard patent and instead will need to file another type of patent. Also, the process for standard patents are lengthy and can take up to 5 years to successfully register.

Trademarks

1. Do you really have a trademark?  
2. Is your trademark too common, offensive or the same as another? For example, common words or images, such as a ‘APPLE’ on a bottle of apple cider or a picture of a dog on a can of dog food cannot be trademarked.
3. Do you know what category of goods and services you will register the trademark for? Trademarks do not apply to all businesses and companies within Australia. They only apply to a category of businesses and companies based on the types of goods or services these businesses and companies provide.
4. IP Australia offers two ways to apply for a trademark. These are:

• Standard
• TM Headstart

Standard applications are cheaper. They start at $250. It takes around 13 weeks for your trademark application process. TM Headstart is more costly, but it includes pre-assessment, which will give you an idea about whether your trademark will pass. It starts at $330. This can save you money in the long term, as failed applications are costly to fix.

If your application fails, you can appeal it, but you must appeal within 15 months. You can apply for an increase in time if you cannot or do not respond within 15 months, but this will cost you.

Designs

1. Make sure you have a design and not a trademark;
2. Check if your design is new and distinguished. New means it does not exist anywhere in Australia or the world. Distinguished means it is not similar in overall look to anything else in Australia or the world. Also, you must keep your design secret from the public. Registration and certification is not possible for public designs.
3. You must first apply to register your design with IP Australia, so that you can start using it. This means it can now become publicly known. In your registration application, you will need to provide drawings and images that clearly outline your design.
4. To create a legally enforceable right though, you need to have it certified. Certification gives you an enforcement right, while registration just gives you an unenforceable interest.
5. Registered designs are protected for 5 years. You must renew your design after 5 years to enjoy another 5 years.

Registration of IP is lengthy. You will need legal advice to ensure smooth sailing.

Want to know more? Contact a LawPath consultant on 1800 529 728 to learn more about IP registration and to obtain a fixed-fee quote from Australia’s largest legal marketplace.