This country-specific Q&A provides an overview to intellectual property laws and regulations that may occur in Australia.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/practice-areas/intellectual-property-third-edition/
What different types of intellectual property rights exist in your jurisdiction to protect: (a) Inventions; (b) Brands; (c) Other creations, technology and proprietary interests
- Patents – a patent is a legally enforceable right that protects inventions relating to a device, substance, method or process. For a patent to be granted, the claimed invention must be new, useful and inventive or innovative. There are two different types of patents that are granted in Australia: the standard patent and the innovation patent. An innovation patent protects minor or incremental “inventions” that do not meet the higher inventive threshold required for standard patents. This type of patent was intended to provide a second tier of protection to meet the needs of medium and small businesses. A standard patent provides a patentee with a monopoly over the claimed invention for a period of 20 years, as compared to 8 years for an innovation patent. As such, the threshold for obtaining a standard patent is higher and requires an inventive (compared with innovative) step.
- Trade marks – a trade mark is a sign (such as a name, brand or device) used, or intended to be used, to distinguish the goods and services or services dealt with or provided by one person from the goods or services dealt with or provided by another.
- Geographical indications – a geographical indication (GI) identifies a good as originating in a specific region where a particular quality, reputation or other characteristic of the good is attributable to that geographic origin. GIs have rules that set out the qualities or characteristics of the good on which the GI is allowed to be used. These rules provide assurance to consumers that they are purchasing a product with specific qualities.
- Passing off and rights to prevent unfair competition (misleading or deceptive conduct) – the tort of passing off and the prohibition on misleading and deceptive conduct provide protection to brands in the absence of a registered trade mark. The tort of passing off protects a brand’s goodwill by prohibiting misrepresentations as to the source of the goods. The misleading or deceptive conduct provision of the Australian Consumer Law prohibits a person, including a company, in trade or commerce from engaging conduct that is misleading or deceptive or is likely to mislead or deceive.
- Copyright – copyright protects the original expression of an idea, if that idea is expressed in a material or tangible form. The two types of subject matter protected by copyright are: ‘works’ (i.e. literary, dramatic, artistic, and musical works); and, ‘subject matter other than works’ (i.e. sound recordings, films, television broadcasts and published editions). Copyright does not, for example, protect ideas, concepts, facts, systems, methods, newspaper headlines and most 3D objects. For works created or produced in Australia, the author is given automatic copyright protection at the time that a work is fixed in a material form. For subject matter other than works, there is no requirement of originality, instead copyright will subsist in certain circumstances, for example, where the maker of a sound recording, or film is an Australian citizen and the sound recording or film was first made or published in Australia. There is no Australian register of copyright and also no requirement to use any special notices or symbols to obtain copyright protection, or to positively claim copyright, for copyright rights to arise.
- Registered designs – design registration protects the overall appearance of a product that has an industrial or commercial use. The overall appearance takes into account one or more visual features of the product, such as: shape, configuration, pattern, and ornamentation which, when applied to a product, gives it a unique visual appearance. A design is a registrable design if it is new and distinctive, as compared with the prior art base as it existed before the priority date of the design.
- Plant breeder’s rights (PBRs) – PBRs are used to protect new varieties of plants that are distinct, uniform and stable. Only eligible new or recently exploited varieties can be registered. A new variety is one that has not been sold with the breeder’s consent beyond the allowable time period. A recently exploited variety is a plant that has not been sold with the breeder’s consent beyond 12 months. For overseas varieties, the plant should not have been sold for more than four years. In certain circumstances, PBRs can also extend to essentially derived varieties, dependent varieties, and to harvested material.
- Circuit layouts – circuit layouts are the layout designs or plans (topographies) of integrated circuits used in computer-generated equipment. A circuit layout is a two-dimensional representation of the three-dimensional location of electronic components in an integrated circuit. Circuit layout rights automatically protect original layout designs for integrated circuits and computer chips. While these rights are based on copyright law principles, they are a separate and unique form of protection.
- Confidential information, trade secrets and know-how – trade secrets and know-how are subsets of the broader concept of confidential information, which is any type of information or knowledge that is used by a business that is not generally known to the public. These rights can be protected by both common law and contract.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
- Patents – the type of patent you hold will determine the duration of your protection:
- Standard patent – lasts for up to 20 years from the filing date of your application (if annual fees are paid).
- Innovation patent – lasts for up to eight years from the filing date of your application (if annual fees are paid).
- Pharmaceutical patents – patents directed to a pharmaceutical substance per se, or to a pharmaceutical substance when produced by a process that involves the use of recombinant DNA technology, may qualify for patent term extension of 5 years beyond the 20 years available for standard patents.
- lasts for up to 25 years from the filing date of your application (if annual fees are paid).
- Registered trade marks – indefinite, subject to payment of renewal fees every ten years for registered marks.
- Geographical indications – indefinite (in the case of certification trade marks, subject to payment of renewal fees every ten years).
- Cause of action in passing off or rights to prevent unfair competition (misleading and deceptive conduct) – indefinite. (Although, each Australian jurisdiction has a limitation statute prescribing the limitation period for tortious claims; and, a claim for misleading or deceptive conduct must be made within six years of the cause of action accruing.)
- Copyright – the general rule is that copyright lasts for the life of the author of the work, plus 70 years.
For subject matter other than works, copyright lasts for:
- 70 years from the year of first publication of a sound recording or film;
- 50 years from the year a television or sound broadcast was made; and
- 25 years from the year of first publication of a published edition of a work.
Since there is no register of copyright material in Australia, in order to ascertain whether or not something is protected by copyright, it will be necessary to look at factors such as: what year the creator of the copyright material died; legislative amendments; when the work was created; whether different expiry dates apply to separate components of the copyright material (such as cinematograph film); and whether the work is already in the public domain. Once copyright expires, the work is considered to be ‘in the public domain’ and may be used freely by anyone.
- Designs – registration protects your design for five years from the filing date of your application and can be renewed for a further five years.
- Plant breeder’s rights – protection applies for 20 years for most plant species and 25 years for vines and trees (if annual fees are paid).
- Circuit layouts – from the first commercial exploitation, rights continue for 10 years. The first commercial exploitation must occur within 10 years of creation of the layout, or 10 years from when it was made. As such, the maximum possible protection period is 20 years from the year of making an eligible layout.
- Confidential information, trade secret, know-how – rights last for as long as the IP remains outside of the public domain. (In other words, as long as the confidential nature of the information is preserved.)
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
In general, the creator/author/maker/inventor/designer of the intellectual property right is the first owner.
However, an employer will own the intellectual property created by employees in the course of their employment. If the intellectual property right was created by an employee, other than in the course of their employment, the employee will retain ownership of the intellectual property.
The same rule does not apply to an independent contractor or consultant. A contractor or consultant will own the intellectual property created during the course of an engagement, unless there is an agreement stating otherwise.
Intellectual property rights that arise in the course of a commission will, in some circumstances, be owned by the commissioner.
Which of the intellectual property rights described above are registered rights?
Rights in patents, trade marks, geographical indications, designs, and plant breeder’s rights, may be registered.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
- Patents –
- Trade marks –
- Geographical indications – Australia has two systems for GI registration: (i) GIs for all goods can be registered using the certification trade mark (CTM) system; (ii) GIs for wine can also be registered under a separate system administered by Wine Australia.
- Designs –
- Plant breeder’s rights –
a. Who can apply – a patent can be owned by the inventor(s); the person who has legally obtained rights to the invention from the inventor(s) or an intermediary; or, a company, organisation, or other employer of someone who made the invention in the course of their normal duties. A firm or partnership is unable to obtain a patent. The partners in the firm or partnership can, however, obtain a patent jointly in their own names.
b. Procedure for registration – consider filing a provisional application to get the earliest possible priority date. You must then file a complete application within 12 months:
i. Standard patent – submit application, publication of application, examination of application, acceptance, publication, patent granted.
ii. Innovation patent – submit application, application checked to satisfy formalities, granted and published, examination (if requested), certification subject to opposition.
a. Who can apply – only the owner of the trade mark can apply for registration. To be eligible the owner must be an individual, a company, an incorporated association, or more than one of these (in the case of multiple owners). A trade mark can also be owned by an unincorporated association (for a collective trade mark only) or a body existing under legislation (for example a registered charity).
b. Procedure for registration – applications for trade marks are examined by the Trade Marks Office for compliance with trade mark requirements. If the application is accepted it is published for opposition purposes. Interested parties have two months to file an opposition, otherwise the trade mark is registered.
a. Who can apply – the CTM system is provided under the Trade Marks Act 1995 (the applicant must be the owner). Applications for the designated of protected wine GIs under the Wine Australia Act 2013 must be made by an individual winemaker or winegrape grower or an association or declared organisation representing growers and/or winemakers.
b. Procedure for registration –
i. Applications for CTMs including GIs are examined by the Trade Marks Office for compliance with trade mark requirements; the Australian Competition and Consumer Commission (ACCC) then examines and assesses the certification rules submitted with the application to determine whether attributes required to become an approved certifier are sufficient; if approved, the ACCC initial assessment is published for comments; the ACCC then will make a final assessment on the application; if favourable, ACCC will issue a certificate and IP Australia advertises the CTM application as accepted with a certified copy of the rules; opposition period; and registration.
ii. Applications for the designation of protected wine GIs on the Wine Register are considered by the Geographical Indication Committee (GIC). Although, an application cannot be considered by the GIC until interested parties have had the opportunity to object. When assessing an application the GIC must consider the relevant statutory criteria and consult with any declared wine growers’ or winemakers organisations. The GIC will then make an interim determination which is published in the Commonwealth Gazette and the prospective region’s local newspaper. Comments are considered by the GIC prior to making a final determination. Upon publication of the final determination, persons aggrieved have 28 days to apply to the Administrative Appeals Tribunal (AAT) for review of the determination. If no applications are made, the final determination could be entered into the Register.
a. Who can apply – to be entitled as the owner of a design you can be the person who conceived the design (e.g. the designer); the employer of the designer, if the designer made the design while working for you; the person who contracted the designer to make the design; the person to whom the designer has assigned the design in writing. Where two or people own interests in a design they must apply jointly.
b. Procedure for registration – file design application; request registration of design; application formalities check; once the formalities check is successful and/or any issues are resolved your design is registered; once a design has been registered it can be examined; and, if the examination results in certification your design right is legally enforceable.
a. Who can apply – the original breeder of a new variety (if the breeder is an employee of an organisation their employer can submit an application), or a person or organisation that has acquired ownership rights from the original breeder. The applicant must be an Australian resident, or an Australian agent representing an overseas breeder or owner.
Procedure for registration – within 12 months from the first day that you sold or advertised your new plant variety, file application part 1 to acquire provisional protection of new plant variety; formalities check of application part 1; acceptance of application part 1; (in most cases) conduct a growing trial before filing application part 2; field examination of growing trial; file application part 2 to acquire full and ongoing PBR protection of new plant variety; publication of plant description in Plant Varieties Journal; six month opposition period; acceptance of application; certificate of PBR granted.
How long does the registration procedure usually take?
- Patents – the type of patent you apply for will determine the length of the registration procedure:
- Trade marks – the minimum length of the registration procedure is seven months although, in practice this timeframe is more realistically 12 months. Depending on the circumstances of the case, however, the registration procedure can take years.
- Geographical indications – depending on the circumstances of the case, it is possible for registration of a GI as a certification trade mark to be obtained in approximately 12 months. Wine Australia has stated that registration of a protected wine GI can be registered in minimum six months although, in practice the timeframe would be longer and will depend on factors such as whether the mark is contentious, the quality of the information provided to the GIC, and whether any objections are made.
- Designs – it can take up to three months to process an application and do the formalities check. Once the formalities check is successful and/or any issues are resolved your design is registered. If you request examination of your design this will happen within three months of the request being submitted. You will generally have six months to respond to any issues raised in examination.
- Plant breeder’s rights (PBRs) – the registration process can take just under a year, or over ten years, depending on the species you are breeding. The average time for PBR registration is two and a half years.
a. Standard patent (including pharmaceutical patents) – depending on the circumstances and the type of protection you are applying for, the registration process can take six months up to several years.
b. Innovation patent – usually granted within a month of filing the complete application (this is because there is no examination before it is granted). If requested by yourself or third party, examination (to clarify your legal rights) will take six months.
Do third parties have the right to take part in or comment on the registration process?
- Patents –
- Trade marks – any interested third party is able to file an opposition to formally object to the registering of a trade mark. The reasons why a party will oppose a trade mark registration are varied. For example, a party may oppose an accepted trade mark application because they think it is too similar to their own; or, because the trade mark applicant is not the true owner of the trade mark.
- Geographical indications –
- Designs – third parties can request examination and lodge prior art material at any time after registration of a design.
- Plant breeder’s rights (PBRs) – an objection to an application for PBR can be made by any person who considers that their commercial interests would be adversely affected by the grant of that PBR; or that the application is incorrect, incomplete or will not fulfil all the conditions required by the Plant Breeder’s Rights Act 1994. Objections can be lodged at any time after application part 1 is accepted and before the end of the six-month opposition period.
a. Innovation patent examination – third parties can request examination of a granted innovation patent.
b. Opposing a patent – if you believe an invention should not be awarded a patent, you can challenge its validity by filing an opposition. Apart from the granting of a patent, other actions in the patent application process can be opposed including: an applicant’s request to amend their patent specification, the grant of an extension of time to restore a patent or patent application, the grant of an extension of term of a pharmaceutical patent, and the grant of a licence to use an invention.
c. Ownership disputes – occur when there is a challenge as to who is the true owner of a patent application. The challenge can be made by either a person who is listed as a joint applicant or, a person who is not listed as an applicant.
a. GIs registered using the certification trade mark (CTM) system – third parties may submit comments to the Australia Competition and Consumer Commission (ACCC) following the publication of the initial assessment. Any interested third party is also able to file an opposition to formally object to the CTM application once acceptance is published.
b. GIs for wine registered under the Wine Act 2013 – trade mark owners (or those with applications pending) or other persons will be invited by the Geographical Indications Committee (GIC) to object to the application before it is considered by the GIC. When the GIC makes an interim determination, which is published in the Commonwealth Gazette, third parties may provide comments. Further, when the GIC makes a final determination, which is also published, aggrieved persons have 28 days to apply to the Administrative Appeals Tribunal (AAT) for review of the determination before it is formally entered on the Register.
What (if any) steps can the applicant take if registration is refused?
- Patents – you can appeal from a decision of the Commissioner of Patents within 21 days of the date of the decision by filing a Notice of Appeal in the Federal Court.
- Trade marks – you can appeal a decision, direction or determination of the trade marks Registrar to the Federal Court or Federal Circuit Court. Appeals from Registrar’s decisions may be made inter alia in respect of the rejection of an application or the rejection of an International Registration Designating Australia.
- Geographical indications –
- Designs – you can apply to the AAT for review of a decision of the Registrar to inter alia refuse an application.
- Plant breeder’s rights – a decision of the Registrar to accept or reject an application is reviewable by the AAT.
a. GIs registered using the certification trade mark (CTM) system – the trade mark rights of appeal from decisions of the Registrar apply. You can apply for review by the Administrative Appeals Tribunal (AAT) if the Australian Competition and Consumer Commission (ACCC) makes a decision not to give a certificate as to the competence of the certifying body, or the appropriateness of the rules; or to approve, or to not approve, a subsequent variation of the rules governing the use of a registered certification trade mark.
b. GIs for wine registered under the Wine Act 2013 – appeals against the final determination of the Geographical Indications Committee (GIC) must be made to the AAT within 28 days. Appeals against an AAT decision can be lodged with the Federal Court.
What are the current application and renewal fees for each of these intellectual property rights?
- Patents – the fees payable will depend on the type of application/patent:
- Trade marks – the fees payable for a standard trade mark application are AUD350 per class; and for a trade mark renewal paid by IP Australia’s online portal AUD400 or, paid by other means AUD450 per class.
- Geographical indications – the fees for certification trade mark application/renewal are the same as an ordinary trade mark. The fees payable on application for designation of protected wine GI are AUD27,500 (with no further fees are payable).
- Designs – the fees payable for a design application paid by IP Australia’s online portal AUD250 or, paid by other means AUD350 per design; and for a design renewal paid by IP Australia’s online portal AUD320 or, paid by other means AUD370.
- Plant breeder’s rights (PBRs) – PBR application fee AUD345 (not including examination or certificate fees); and annual fee paid by IP Australia’s online portal AUD345 or, paid by other means AUD395.
a. Provisional application – filed by IP Australia’s online portal AUD110 or, filed by other means AUD210.
b. Standard patent – application (including international applications through the PCT process) filed by IP Australia’s online portal AUD370 or, filed by other means AUD470. Annual renewal fees must be paid for standard patents, and the cost will vary depending on the number of years that have passed since you filed it. For example, 4th-9th anniversaries renewal fees paid by IP Australia’s online portal AUD300 or, paid by other means AUD350.
c. Innovation patent – application filed by IP Australia’s online portal AUD180 or, filed by other means AUD280. Annual renewal fees must be paid for innovation patents, and the cost will vary depending on the number of years that have passed since you filed it. For example, 2nd-4th anniversaries renewal fees paid by IP Australia’s online portal AUD110 or, paid by other means AUD160.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
- Patents – annual renewal fees must be paid on all standard and innovation patent applications if you want them to remain in force. These fees are usually due on or before the anniversary of the filing date of your application. Patent protection will stop if the renewal fee is not paid. Although, a six-month grace period applies during which time you may renew upon payment of the monthly late fee(s).
- Trade marks – a registration may be renewed every ten years. You can pay your renewal fees from 12 months before the renewal due date or up to six months after that date expires. Additional monthly fees will apply if the registration is renewed after the expiry date. If the fees are not paid within six months of the renewal due date expiration, the registration will lapse.
- Geographical indications – no renewal fees payable.
- Designs – after the initial five-year period of registration, you may choose to renew and extend the design registration for a further five years. If renewal fees are not paid before the due date, there is a six-month grace period during which you may renew. However, a monthly fee will apply from the date renewal is due.
- Plant breeder’s rights (PBRs) – an annual renewal fee is due each year on the date that your PBR was granted. The fee must be paid to maintain your exclusive rights. If these fees are not paid within 30 days of the due date, your PBR will be revoked.
What are the requirements to assign ownership of each of the intellectual property rights described in section A?
The assignment of intellectual property rights (either in whole or in part) may be affected by an agreement, which is usually in the form of a Deed of Assignment. The assignment must be in writing and signed by or on behalf of the assignor.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
There is a requirement to record an assignment (or partial assignment) of registered rights, including trade marks, patents, registered designs and plant breeder’s rights, with the relevant Registrar.
The request must be made in writing using the specific form available for each registered intellectual property right and must include details of the intellectual property the subject of the assignment, as well as documentary evidence of the assignment.
The relevant register is prima facie evidence of any particulars entered in it. As such, it is important that the public record correctly reflects the owner of the registered intellectual property right. Failure to record an assignment of a registered intellectual property right can have serious consequences. For example, certain actions are required to be brought by the registered owner.
What are the requirements to licence a third party to use each of the intellectual property rights described in section A?
Any type of intellectual property can be licensed in Australia. The terms of the licence are generally at the discretion of the parties and governed by the law of contract. It is best practice to have the terms of the licence set out in writing and signed by the parties. There are no statutory requirements to licence, although:
- Patent licence agreements are regulated by the Patents Act 1990.
- Trade mark licence agreements are regulated by the Trade Marks Act 1995.
- Copyright licensing is regulated by the Copyright Act 1968.
Importantly, conduct involving intellectual property rights, including licensing, will be subject to the anti-competitive conduct prohibitions in Part IV of the Competition and Consumer Act 2010 from 13 September 2019.
It is worth noting that Australian law distinguishes between licences and franchises.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
No. Although security interests in personal property, including security interests in relation to IP and IP licences, can be registered on the Personal Property Securities Register (PPSR). Claimed interests in registered IP may also be recorded on the IP Registers, but are of no legal effect.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Generally the rights of licensees regarding enforcement of the licensed IP will be determined by the terms set out in the licensing agreement. Otherwise, exclusive licensees usually have standing to bring infringement proceedings, and non-exclusive licensees will have standing if the owner is joined to the proceedings as co-claimant or defendant. Having said that:
- Patents – only patentees and exclusive licensees have standing to sue under the Patents Act 1990.
- Trade marks – the owner of a registered trade mark may authorise another person to use it. For use to be authorised it must be under the control of the registered owner. The authorised user may bring an action for infringement of the trade mark if the registered owner refuses or neglects to do so within two months of a request from the authorised user. If the authorised user takes infringement action the registered owner must be made a defendant in the action.
- Copyright – except as against the owner of the copyright, an exclusive licensee has the same rights of action and remedies of the owner of the copyright. Non-exclusive licensees may bring proceedings if the owner is joined.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
- Trade marks – the Trade Marks Act 1995 specifies a number of activities that constitute criminal offences in relation to registered marks. These offences are primarily concerned with counterfeiting and falsifying registered marks. For example, it is a criminal offence to: falsify or remove a registered trade mark; falsely apply a registered trade mark; make a die, block, machine or instrument that for use in a trade mark offence; draw a registered trade mark for use in a trade mark offence; sell, possess, distribute or import a good, knowing that the trade mark has been falsified or removed. The commission of an offence under the Act can result in imprisonment or fines, or both.
- Copyright – the Copyright Act 1968 provides criminal sanctions to protect copyright. By way of example, under the Act, it is an offence to: knowingly import, possess, sell, distribute or commercially deal with an infringing copy; offer for sale infringing copies of computer programs; and transmit a computer program to enable it to be copied when received. The commission of an offence under the Act can result in imprisonment or fines, or both.
- Plant breeder’s rights (PBRs) – under the Plant Breeder’s Rights Act 1994, it is an offence to: make a false statement in an application of other document given to the registrar for the purposes of the act; falsely claim ownership of a PBR; falsely claim that a PBR extends to cover another plant variety that is not a dependent variety or essentially derived from their variety; falsely claim that a plant variety has been granted PBR protection. The commission of an offence under the Act can result in imprisonment or fines.
- Federal, as well as state and territory police may investigate and commence prosecutions for breaches of federal trade marks, copyright, and PBRs laws.
What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in section A? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Civil court proceedings involving intellectual property rights are heard primarily in the Federal Court of Australia, including appeals from decisions of the relevant intellectual property office. Less complex intellectual property proceedings may be heard in the Federal Circuit Court (not including patent proceedings). The High Court of Australia hears appeals from the Federal Court of Australia.
Oppositions may also be brought before the Trade Marks, Patent, Designs and Plant Breeder’s Rights Offices. The Copyright Tribunal also has jurisdiction to hear matters relating to statutory and voluntary licences.
Alternative dispute resolution (ADR) processes, including arbitration and mediation, may be considered appropriate in the early stages of dispute that has been filed in either the Federal or Federal Circuit Court. In some cases, a judge may order that the parties attempt to mediate the issues before allowing the case to proceed.
Unjustified threats provisions – the Patents, Designs and Plant Breeder’s Rights Acts provide penalties for unjustified threats of infringement. The Copyright and Trade Mark Acts include similar provisions for ‘groundless threats’ of legal proceedings in relation to trade mark copyright infringement. Accordingly, a rights owner should ensure that any allegation of infringement is justified, before putting another party on notice.
What is the length and cost of such procedures?
Civil litigation in the Federal Court of Australia can be relatively costly and time consuming. The primary proceeding may take up to 12 – 18 months from the date of filing to be heard. The Federal Court aims to provide a judgment within three months. Any appeal may take a further three to six months to be heard.
A successful party is usually entitled to recover a proportion of their legal costs, usually in the range of 60% – 70% percent of actual costs.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
Most intellectual property litigation is commenced in the Federal Court of Australia. The Intellectual Property ‘National Practice Area’ covers disputes concerning matters such as patents, trade marks, copyright, designs, circuit layouts, plant breeder’s rights and appeals from the Commissioner of Patents or Register of Trade Marks. The Federal Court comprises specialist judges who will hear intellectual property proceedings.
The Federal Circuit Court also has jurisdiction to hear and determine civil disputes concerning copyright, designs, trade marks, plant breeder’s rights and claims under the Australian Consumer Law, but not patent matters. The ‘Intellectual Property Pilot Scheme’ commenced on 1 July 2018 and aims to give litigants certainty in enforcing their intellectual property rights by providing a more streamlined and cost-effective process.
By way of example, a patent case that is filed in the Federal Court of Australia might proceed as follows:
- Proceedings are commenced;
- A Request for Expedition might be made (in appropriate cases only);
- The Court may refer a matter to mediation at any stage of the proceeding;
- A Case management hearing takes place and the parties will identify the genuine issues in dispute as well as whether all appropriate parties have been joined and whether any cross-claim is to be made;
- In an appropriate case, the Court will order that the parties produce an agreed primer explaining the technical background to the invention claimed in the specification in suit;
- Requests for discovery may be made;
- Any Interlocutory matters will be heard;
- A timetable for the filing and service of evidence will be set down;
- A pre-trial case management hearing will generally be heard prior to the scheduled trial date;
- The hearing will take place;
- Judgment will be provided, and orders will be made;
- The parties will make submissions as to costs.
Any appeal from the final decision of a judge of the Federal Court will be heard by the Full Court of the Federal Court. Any appeal will be heard during the allocated appeal periods.
What customs procedures are available to stop the import and/or export of infringing goods?
The Australian Border Force (ABF) enforces intellectual property rights through the Notice of Objection Scheme. The scheme enables the ABF to seize goods that infringe a valid Notice of Objection that has been lodged by a rights holder in relation to trade marks or copyright owned by them. The ABF can only seize goods suspected of infringing intellectual property rights if there is a valid Notice of Objection in place. To lodge a Notice of Objection, a rights holder/objector must provide details of the trade marks and/or copyright they are seeking to protect as well as deed of undertaking.
In the event that goods are seized by the ABF as a result of the Notice of Objection, the importer/designated owner and the rights holder/objector will be notified in writing. The importer/designated owner must make a claim for release of seized goods within ten working days of notification. If a claim is made, the rights holder/objector will have ten working days to commence legal action. The importer/designated owner may voluntarily forfeit the seized goods at any stage prior to legal action being commenced. The rights holder/objector can also consent to the release of the goods to the importer/designated owner. If the rights holder/objector does not commence legal action within ten days, the ABF must release the goods. Depending on the outcome of the above process, the ABF may dispose of the forfeited goods, usually by destruction or donation to a charity.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
The Civil Dispute Resolution Act 2011, in conjunction with the relevant Court Rules, require that parties to civil disputes take ‘genuine steps’ to resolve disputes prior to commencing litigation in the Federal Court or Federal Circuit Court of Australia.
In practice, this means that an applicant is required to prepare a ‘genuine steps statement’, which specifies the steps that have been taken to try to resolve the issues in dispute. If no steps have been taken, it must specify why no such steps were taken, which may relate to, but are not limited to:
(a) the urgency of the proceedings;
(b) whether, and the extent to which, the safety or security of any person or property would be compromised by taking such steps.
If an applicant files a genuine steps statement, a respondent is then required to state either that the respondent agrees with the applicant’s genuine steps statement, or that is disagrees in whole or in part.
When exercising its discretion to award costs, the Court may account whether a person required to file a genuine steps statement complied with that obligation and took genuine steps to resolve the dispute.
What options are available to settle intellectual property disputes in your jurisdiction?
Intellectual property disputes may be settled at any time and a commercial resolution to the dispute may be reached without the intervention of the Court. If litigation has already commenced, a party claiming relief may discontinue the proceedings and the matter will then be disposed of by an order of the Court, which is usually sought by consent from the parties.
Any settlement that is reached between the parties should be encapsulated into a formal settlement agreement. Such an agreement will normally cover issues such as: whether a licence is being granted to use the intellectual property and under what terms; whether there will be any payment made for past damages and legal costs; a dispute resolution mechanism; and confidentiality.
What is required to establish infringement of each of the intellectual property rights described in section A? What evidence is necessary in this context?
- Patents – establish (i) alleged infringer acted without the owner’s authorisation; (ii) alleged infringer exploited the invention as claimed by the patent; (ii) infringement was performed within the patent area (Australia).
- Trade marks – establish (i) the alleged infringer used the sign as a trade mark; (ii) the sign used is substantially identical with or deceptively similar to the registered trade mark; (iii) the use is within the jurisdiction.
- Geographical indications –
a. Certification trade mark – establish trade mark infringement.
b. Protected wine GI – establish (i) sale, importation or exportation of wine with a false or misleading description and presentation.
- Passing off – establish (i) the subsistence of some reputation or goodwill on the part of the plaintiff; (ii) deceptive conduct on the part of the defendant (actionable misrepresentation); (iii) injury/damage to goodwill of the plaintiff as a result of the conduct.
- Rights to prevent unfair competition (misleading and deceptive conduct) –
a. Section 18 of the Australian Consumer Law (ACL) – establish (i) person; (ii) engaging in conduct that is misleading or deceptive; (iii) in trade or commerce.
b. Section 29 of the ACL – establish (i) person; (ii) making proscribed false or misleading representation(s) in relation to goods or services; (iii) in trade or commerce.
- Copyright – establish (i) copyright subsists; (ii) infringement by doing an act comprised in the copyright; (iii) the infringer did not have permission or consent to exercise the infringed rights.
- Registered designs – establish (i) alleged infringer acted without the owner’s licence or authority (ii) alleged infringer makes, sells, hires or imports a product, or uses for trade or business a product, embodying a design that is identical or substantially similar in overall impression to the registered design, or authorises a third party top do any of those acts; (iii) within the jurisdiction.
- Plant breeder’s rights (PBRs) – establish (i) alleged infringer acted without the grantee’s authorisation; (ii) alleged infringer committed an act that would constitute infringement of the PBR in relation to propagating material of a plant variety in respect of which PBR have been granted.
- Circuit layouts – establish (i) eligible layout; (ii) the alleged infringer acted without the owner’s authorisation during the protection period; (iii) copies or authorises the copying of the layout in material form; makes or authorises the making of an integrated circuit in accordance with the layout; or commercially exploits or authorises the commercial exploitation of the layout in Australia if the person knows or ought reasonably to know, that he or she is not licensed by the owner of that right to do so.
- Breach of confidence – establish (i) there existed an obligation of confidence in relation to specific information; (ii) the information had the necessary quality of confidence; (iii) the use or disclosure was unauthorised; (iv) the breach resulted in the plaintiff suffering damage.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular – a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
At an early stage in the proceedings parties should consider and confer about an approach to the management of evidence. That consideration should cover the best way to lead evidence - whether written or oral. The parties' approach should have in mind the most effective, efficient and economical way to manage evidence. Innovative tools relating to managing evidence will be encouraged by the Court, including the use of:
- statement of agreed and disputed facts;
- joint reports and concurrent expert evidence; and
- organisation of evidence, where appropriate, into discrete components.
Detailed guidance on evidence is set out in Part 11 of the Federal Court’s Central Practice Note (CPN-1).
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
The Intellectual Property National Practice Area (NPA) of the Federal Court (FCA) covers disputes concerning matters such as patents, trade marks, copyright, designs, circuit layouts, plant breeder's rights and appeals from the Commissioner of Patents or Registrar of Trade Marks. Specialist judges in the Intellectual Property NPA are listed on the FCA website.
Parties intending to rely on expert evidence at trial are expected to consider between them and inform the Court at the earliest opportunity of the best way to efficiently manage and adduce expert evidence, including such matters as the use of joint-reports, concurrent evidence, and how evidence may best be given (orally or in writing) and so on. Detailed guidance on these matters is set out in the Federal Court’s Expert Evidence Practice Note (GPN-EXPT) with which the parties should be familiar.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
To the extent that discovery may be necessary, it is dealt with in Part 20 of the Federal Court Rules. No party is to give, and so no party has a right to, discovery without an order. A discovery applicant should not make a request unless it will facilitate the just resolution of the proceeding as quickly, inexpensively and efficiently as possible. Detailed guidance on discovery is set out in Part 10 of the Federal Court’s Central Practice Note (CPN-1).
A subpoena may also be issued with the leave of the Court. A subpoena is an order to the addressee requiring attendance to give evidence in Court or the production of a document or a thing to the Court, or both. The issuing party bears the onus of demonstrating that the subpoena has a legitimate forensic purpose in relation to the issues in the proceeding. Detailed guidance is set out in the Federal Court’s Subpoenas and Notices to Produce Practice Note (GPN-SUBP).
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Expert and fact witnesses can be called for cross-examination during the trial. If the person required to attend fails to do so, the person’s evidence may not be used or, the Court may issue a subpoena. (Although, the Court may dispense with compliance with the Rules.) If a witness is cross-examined, the party using the evidence may re-examine the person.
What defences to infringement are available?
A common defence is that the act complained of does not constitute infringement. Particular defences include:
- Patents – use of a patented invention in relation to foreign vessels, aircraft and vehicles registered in the Convention countries, that only enter the patent area temporarily or accidentally; prior use (the infringer exploited the product before the patent’s priority date); exploitation of an invention by the Crown; innocent infringement; experimental use.
- Trade marks – the plaintiff has no title in the mark or the mark is not yet on the Register; the plaintiff’s mark has been invalidly registered; the Trade Marks Act 1995 provides no infringement has taken place (e.g. good faith use of a person’s name; use of a sign to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; use of the trade mark for comparative advertising).
- Geographical indications –
- Passing off – justification (such as honest concurrent use or the use of one’s own name); use of a registered trade mark.
- Rights to prevent unfair competition (misleading and deceptive conduct) – publisher’s defence (where the alleged contravention has been committed by the publication of an advertisement and the publisher did not know and had no reason to suspect that its publication would amount to a contravention); information provider defence (where the alleged contravention has been committed by the publication of information such as news); it is a defence to prosecutions (but not in civil proceedings or where the Australian Competition and Consumer Commission seeks an injunction) that the contravention was due to reasonable mistake of fact including a mistake of fact caused by reliance on information supplied by another party, or that the contravention was due to the act or default of another person, an accident or some other cause beyond the defendant’s control and that the defendant took reasonable steps and exercised due diligence to avoid the contravention.
- Copyright – relevant act done with the licence of the copyright owner; specific defences relating to fair dealing, public performance, broadcasting and the Internet, computer programs, parallel importation exceptions, educational uses, recordings of musical works, artistic works, and industrial designs.
- Design – spare parts/rights to repair defence.
- Plant breeder’s rights (PBRs) – the complained act in relation to a plant variety covered by PBR is done privately and for non-commercial purposes, or for experimental purposes, or for the purpose of breeding other plant varieties; farm-saved-seed defence; the Commonwealth, State or Territory legislation authorises persons other than the grantee to exercise rights within the scope of the PBR monopoly on payment of equitable remuneration; persons licensed by the Secretary of the Department; exhaustion of PBR.
- Circuit layout – statutory defences of innocent commercial exploitation; private use; teaching or research purposes; evaluation or analysis; permitted use under licence; defence or security purposes. Common law defence of idea/expression.
- Breach of confidence – contractual term is invalid at law; disclosure pursuant to authority of law; privileged discovery; defences generally available in equity; disclosure pursuant to an order for discovery; a disclosure made in the public interest.
a. Certification trade mark – trade mark defences.
b. Protected wine GI – the Wine Australia Act 2013 provides the description and presentation is not false or misleading.
Who can challenge each of the intellectual property rights described above?
Challenges before the relevant intellectual property office:
Trade marks: Any interested third party is able to oppose the registration of a trade mark.
Patents: Any person may oppose the grant of a patent (or certified innovation patent).
Designs: A third party may request examination of a registered design, which tests the validity of the design registration.
Plant Breeder’s Rights (PBR): An opposition to an application for PBR can be made by any person who considers that their commercial interests would be adversely affected by the grant of that PBR, or by any person who considers that the application is incomplete or incorrect.
Challenges in court:
Usually the owner of an intellectual property right will bring an action against an alleged infringer, although in some cases an exclusive licensee or authorised user will also hold the right to sue. When court proceedings are brought, it is common for the respondent to the application to cross-claim and seek to challenge the validity of the intellectual property right that is being asserted.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
Challenges may be brought both during the registration process in the case of an opposition to registration and during the subsistence of the right, where a party to a proceeding is seeking to challenge the validity of the intellectual property right that is being asserted.
Registered Trade Marks: An opposition to the registration of a trade mark must be made within two months of the trade mark being advertised as accepted in the Australian Official Journal of Trade Marks. An application for the removal of a trade mark due to non-use may also be brought 5 years since the filing date of the registered trade mark, or at least 3 years since the particulars of the registered trade mark were entered into the Register (depending on the filing date of the registered trade mark).
Patents: An opposition to the grant of a standard patent must be filed within 3 months of the advertisement of the acceptance of a standard patent application. Innovation patents may be opposed at any time after they have certified.
Designs: A party may challenge request examination once a design has been registered.
Plant Breeder’s rights: An opposition can be brought any time after application part 1is accepted under provisional protection and within 6 months of the public notice of the description of the variety (application part 2).
Challenges in court: Revocation proceedings can be brought in court; however they are typically brought as a response to infringement proceedings.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Challenges can be brought before the relevant office that granted the intellectual property right (within the prescribed opposition time frame) and before the Federal Court and Federal Circuit Court of Australia.
Patents: A patent will be found to be invalid if it: is not a manner of manufacture; lacks novelty; does not contain an inventive (or in the case of an innovation patent, an innovative) step; is not useful; has been secretly used; is for a human being and the biological processes for their generation. A patent may also be revoked if the patentee is not entitled to the invention, or if the patent was obtained by fraud.
Registered Trade Marks: A trade mark may be subject to revocation if it contains a sign that has become descriptive; if any of the grounds on which the registration could have been opposed can be made out; if it was fraudulently obtained; or if it is likely to deceive or cause confusion.
Registered Design: The validity of a design is a question of whether the design is new and distinctive. The examination of a design is limited to the question of whether it is a registrable design (that is, new and distinctive). The test of newness involves a very narrow test of identicality and most objections to the validity of a design will be a lack of distinctiveness.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described in section A, for example, declaratory relief or licences of right?
There is provision in the Patents Act for the Federal Court of Australia to make an order requiring the grant of a compulsory licence, including to exploit patented pharmaceutical inventions. This is to enable the manufacture of a pharmaceutical product in Australia for export to an eligible importing country, to address public health problems in that country.
There is also a mechanism in the Designs Act, as well as the Patents Act, that allows Australian federal, state and territory governments to access and use patented technology and registered designs without the authorisation of the patentee or a registered owner. These provisions exist to ensure that the patent and design systems do not prevent governments from acting in the public interest, although in practice these provisions are seldom used.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in section A?
Some of the forms of interim relief available for infringement of intellectual property rights are:
1. Search order – search, or Anton Piller orders are issued to permit the applicant’s lawyers to enter the respondent’s premises to search for and remove infringing goods and documents which evidence infringement. For a search order to be granted, the applicant must establish that: (i) there is a strong prima facie case of infringement; (ii) the potential or actual damage will be very serious for the applicant; and (iii) there is compelling evidence that the respondent has incriminating material in their possession and that there is a likelihood that material bearing infringing marks or relevant documents will be destroyed. The applicant must also establish that the balance of convenience will favour the award of interlocutory relief.
2. Freezing order – freezing, asset preservation or Mareva orders are issued to restrain the respondent from disposing of or dissipating their assets which may be required to satisfy the applicant’s pending claim. For a freezing order to be granted, the applicant must establish that: (i) there is a prima facie cause of action against the respondent; and (ii) a danger that, due to the respondent absconding or disposing of their assets, the applicant will not be able to have the judgment satisfied if successful.
3. Interim or interlocutory injunction – interim (granted until a named date, usually for a short period of time) or interlocutory (granted until the hearing or further order) injunctions are usually awarded to preserve the status quo pending the determination of the proceedings and to restrain the respondent from doing the complained act. The objective is to protect the applicant from continued infringement of their rights in circumstances in which damages would not be an adequate remedy. In order to for an injunction to be granted, the Court must be satisfied that: (i) there is a serious question to be tried; (ii) damages would not be a sufficient remedy; and (iii) the balance of convenience favours the grant of an injunction.
Even if the three considerations are established, the Court, retaining its discretion, may nonetheless decline to grant the injunction. Relevant factors include: the balance of convenience in the circumstances, taking into account matters such as the strength of the applicant’s case, the delay in applying for an interlocutory injunction and the effect of an interlocutory injunction on the parties and third persons; the adequacy of damages, and the possibility and adequacy of other remedies; and any undertakings which the respondent may be prepared to give. For example, the Court may conclude from the circumstances of the delay that the matter is not sufficiently urgent or that the anticipated damage is not sufficiently serious to justify the grant of interlocutory relief.
If the applicant is successful in their claim, the Court may award the following final remedies:
- Damages - the applicant may generally be awarded damages at their election, provided that the applicant is able to demonstrate the damages they have suffered as a consequence of the respondent’s actions. Whether or not the respondent made profits from the infringing actions is an irrelevant consideration when assessing damages. The purpose is to restore the applicant to the position as if the infringement had not occurred. Whilst the quantum of damages is assessed liberally, it is not intended to be punitive to the respondent. The applicant may be able to claim damages for loss of profit as a result of infringing sales that they would otherwise have made, lost licensing fees and loss of goodwill. The Court may also decide to award additional damages if considered appropriate, having regard to matters including the flagrancy of the infringement, conduct of the respondent and the benefit accrued to the respondent. In cases of innocent infringement (e.g. copyright), the applicant is not entitled to damages, but is entitled to an account of profits in respect of the infringement, whether any other relief is granted or not.
- Account of profits – in the alternative to damages, and at the election of the applicant, the Court may award the applicant with an account of profits and thus order the respondent to pay a sum equivalent to the profits made from using the IP. The objective is to prevent the unjust enrichment of the respondent. In determining the final sum payable, the Court may deduct applicable costs and overheads from the total profits made from the infringing goods.
- Delivery up – the Court may order the respondent to deliver relevant infringing materials to the applicant for destruction.
- Final injunction – final injunctions are granted to restrain further infringement of the IP right. For the Court to award a final injunction in the exercise of its discretion, it must be satisfied that there is some threat of the commencement, continuation, or repetition of an act which constitutes infringement. An applicant may also seek a ‘springboard injunction’ to restrain the respondent from using a benefit produced by a prior infringing act in the future, even if that future conduct may not be infringing and otherwise be lawful. For example, a springboard injunction may be granted to limit the advantage that an employee has accrued through misuse of the employer’s confidential information.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
In Australia, the general rule in IP enforcement proceedings is that the unsuccessful party is ordered to pay a proportion of the successful party’s legal costs. Typically, this results in the successful party being able to recover approximately 60 to 70% of its actual costs. The amount recovered by the successful party cannot exceed the amount that they have paid or are yet to pay to their solicitor. In some circumstances (for example, if the unsuccessful party has unreasonably rejected a genuine offer of compromise or settlement), the Court may order that the unsuccessful party pay the other party’s costs on an indemnity basis, with the result that the successful party will be able to recover almost all of its costs.
Each jurisdiction in Australia at both the Federal and State/Territory levels has its own specific rules relating to when an applicant may be required to provide security for costs, upon an application for security by the respondent. The general trend is that a Court will have jurisdiction to order an applicant to provide security for costs where the applicant: is ordinarily resident outside Australia; has failed to state their actual address in the originating process so as to avoid obligations which may arise during the proceeding; has changed address after initiating the proceeding so as to avoid its consequences; sues for the benefit of another person; or is a corporation that will be unable to pay the costs of the other party if ordered to do so. Failure by the applicant to give security as ordered by the Court will generally result in the staying of the proceeding.