Intellectual property (IP) refers to the creations of the mind. It can include an invention, trademark, design or brand. As the owner, registering your IP can be critical in evolving your creation and provides you with the protection from other competitors. It is important to know the different types of IP in order to understand the relevant registration process. In this article, we’ll discuss the difference between patents and a trademarks.
What is a patent?
A patent grants a legally enforceable right to a device, substance, method or process that is new, useful and inventive or innovative. The two types of patents granted in Australia are the standard patent and the innovation patent. However, the Australian Government has begun the process of phasing out innovation patents (learn more here). The purpose of patents is to encourage the research and development of new products and to promote the dissemination of technology. As the owner of the patent, you have the exclusive commercial right to exploit the invention and/or license someone else to manufacture your invention.
An example of a successful patent is WiFi. The Commonwealth Scientific and Industrial Research Organisation (CSIRO) invented and patented wireless LAN (WLAN) in the early 1990s. Today, this technology provides wireless network connectivity to more than five billion devices worldwide.
What is a trademark?
A trademark commercially distinguishes a product or service from other traders. Sometimes called a brand, trademarks can be a marketing tool to help businesses stand out in the marketplace. A trademark is not just a ‘logo’. It can be a name, number, shape, colour, sound or even a scent. Examples of well-known trademarks include the McDonald’s golden arches, the Qantas kangaroo and even Cadbury’s iconic purple colour.
Main differences
Trademarks and patents can be registered through IP Australia. However, there are certain differences associated with the particular type of IP. The key differences include:
Application requirements
Valid patents must meet the requirements under s 18 of the Patents Act 1990. In a standard patent claim, the patent must be used or made in an industry, new, inventive, useful and has not previously been used in secret. In other words, the invention must differ from existing technology and offer something more than the application of ordinary background knowledge. It is the responsibility of the inventor to conduct thorough research prior to submitting an application to ensure that there is nothing similar in the marketplace. The Australian patent database is a useful place to start.
The application should also include a title, description, any number of claims, drawings (if applicable), an abstract and forms. The Australian Official Journal of Patents publishes the details of the application eighteen months after the application’s earliest priority date. Anyone using your invention after this date without your permission is unlawfully infringing your patent. You can request examination within five years of filing your application. The patent will be granted once the application has been examined and satisfies all the legal requirements.
Unlike patents, trademarks do not have to be new, useful or inventive to be registered. The application of the trademark requires the determination of the particular class your goods or services belong to and as well as identifying whether there are similar trademarks in your class.
It usually takes three to four months to examine an application, once it has been submitted. If accepted, the trademark will be open to opposition for two months. During this period, third parties can challenge the registration if they think the trademark is too similar to their own. The trademark is registered after the two months if there are no oppositions or reasons to revoke the application.
Duration of protection
A standard patent provides up to twenty years protection whereas an innovative patent only lasts for up to eight years.
A trademark registration lasts for ten years from its filing date. This can be renewed twelve months before the expiry date or up to six months after.
Rights granted
As previously mentioned, the grant of a patent confers the exclusive right to exploit. This means that the patent holder has the right to make, hire, sell, dispose or to license someone else to manufacture your invention. If an unauthorised person uses the invention, it is the responsibility of the patent holder to take action against them and enforce their rights. This can include sending a letter of warning, organising out of court negotiations and if necessary, court action.
A registered trademark provides you with exclusive rights to use, license and sell the mark. Similar to patents, the owner of the trademark is responsible for enforcing their IP rights against unauthorised users. Legal matters can arise when there is a formal objection to the registering of a trademark. The most common reason for opposition is when the trademark is identical or similar or if the trademark is likely to deceive or cause confusion with another registered trademark.
Recommendations to protect your business
Identify your type of IP
As this article has demonstrated, there are key differences in the application process and the rights afforded depending on the form of IP. It is important to know what kind of protection is relevant to your creation before undertaking the registration process.
Research your options
Comprehensive research should be conducted before an application is submitted. This will determine whether your IP is applicable for registration and limits the possibility of infringing the rights of others. If you require further assistance, it is best to consult a trademark or patent lawyer.
Avoid publicity
If you’re considering to register a patent or trademark, it is important to keep the idea out of the public domain. Publishing your idea before registration may negatively impact your claim. In these cases, a non-disclosure agreement may be useful in protecting your business.
Register
Although it is not mandatory, registering your IP is critical to protecting your business. Registration confers exclusive rights which means that your IP is protected from unauthorised users. This is particularly beneficial for patent owners who require extra security in developing their invention.
Follow up
Once registered, it is the responsibility of the IP owner to look out for infringement. Monitoring the potential market will ensure that your product remains competitive and profitable.
