Protection of technology and intellectual property

Australians are notoriously early adopters of new technologies. Australian courts strongly support intellectual property rights, backed by a comprehensive legal framework that applies to Australian creators and those in other countries sharing multilateral or bilateral treaty arrangements.

Last updated: October 2018

Introduction

Australians are notoriously early adopters of new technologies. Australian courts strongly support intellectual property rights, backed by a comprehensive legal framework that applies to Australian creators and those in other countries sharing multilateral or bilateral treaty arrangements.  Federal legislation has been influenced by Australia’s entry into various treaties, including the Agreement on Trade-Related Aspects of Intellectual Property Rights. IP Australia is the federal government body that administers Australia’s intellectual property system and the registration of patents, designs and trade marks.

Patents

The Patents Act 1990 (Cth) currently provides for two types of patent.

  • A standard patent has a term of up to 20 years from the date of filing of the complete specification (provided that renewal fees are paid).
  • An innovation patent – which protects incremental advances in technology – has a term of eight years.

Patent terms may not be extended except in specific circumstances, for standard patents covering pharmaceutical substances only.

Importantly, there is currently a proposal to phase out the innovation patent system with legislation expected to be introduced into the federal parliament in late 2018 or early 2019.

An application for a standard patent is subject to a full examination as a condition of grant. By contrast, an application for an innovation patent is quicker and cheaper to obtain, needing only to be examined for compliance with formal requirements before it is registered. An innovation patent may not be asserted against an alleged infringer unless it has been substantively examined and certified. This can be requested and paid for at any time by the patentee or any third party (who might have concerns as to validity and/or infringement), or directed by the Commissioner of Patents.

The Patents Act provides procedures to challenge a patent by opposing the application (before grant) or asking the Commissioner of Patents to re-examine the patent. An opposition may involve written evidence and an oral hearing before a delegate of the Commissioner of Patents, who decides the outcome. Decisions in relation to patent eligibility or oppositions may be appealed to the Federal Court of Australia. 

Both standard and innovation patents may be also challenged by proceedings in the Federal Court of Australia seeking an order revoking a patent on the basis that it is invalid.  Grounds of invalidity include lack of proper subject matter, lack of novelty, lack of inventive (or, in the case of an innovation patent, innovative) step, lack of utility, and other technical grounds. Such proceedings can be commenced on their own, to "clear the way" for a product launch, or as part of a defence to infringement proceedings.

Australia is a party to the Paris Convention, under which a foreign applicant has a certain period from the date of an original application in a member country within which to file a similar application here. Australia is also a party to the Patent Cooperation Treaty, under which a single application in a member country may be treated as an application in one or more other member countries.

Designs

The Designs Act 2003 (Cth) creates a system for the registration of designs.

A design is defined as “the overall appearance of a product resulting from one or more visual features” and will be registrable if it is “new” and “distinctive”, assessed against designs publicly used in Australia or published within or outside Australia. 

Like an innovation patent, an application for registration of a design is not initially subject to substantive examination. Rather, it is registered on compliance with formalities only. The registered design will only be examined upon request of any person, by order of a court, or at the initiative of the Registrar. Also like an innovation patent, a design may not be asserted against an alleged infringer unless it has been substantively examined and certified by IP Australia.

The duration of the monopoly in the registered design is up to 10 years (consisting of an initial five-year term plus the option to renew for a further five years). As a party to the Paris Convention, Australia allows foreign applicants a six-month period of grace from the date of an original application in a member country in which to file an application for the same design in Australia.

Australia is not currently a member of the Hague Agreement. IP Australia has been consulting with stakeholders as to whether Australia might join the Hague Agreement in the near future, which would necessitate increasing the term of protection to 15 years. 

Significant changes are currently proposed for Australia’s design laws, including the introduction of a grace period for prior disclosures by a designer. Consultation in relation to these proposed reforms were due to commence in late 2018 or early 2019.

Trade marks

The Trade Marks Act 1995 (Cth) governs the registration of trade marks in Australia.  Applications to protect trade marks may be made whether or not the subject mark has been used (or licensed) in Australia in respect of particular goods and/or services. However, the applicant must at least have an intention to do so. 

Consistent with the Paris Convention, Australian legislation permits a period of grace within which an application by a foreign party may be filed in Australia for the same mark in respect of the same goods or services, while retaining the priority date of an earlier application in the Convention country. Australia is also a party to the Madrid Protocol, under which a single application may be made in any member country for subsequent processing by the relevant body in one or more other member countries nominated in the application.

Australia operates a system of classes for goods and services, in accordance with the Nice classification system. Trade marks are registered for 10 years, and may be renewed for further terms of 10 years each. A trade mark registration can be cancelled if it has not been used in Australia for the claimed goods and/or services for a continuous period of three years.

There is no requirement to register user licences in order to protect the registration of a trade mark. However, a licence must meet certain criteria - including that the registered owner has a right to exercise reasonable control over the use of the trade mark by the licensee - to ensure that the licensee's use is considered to be trade mark use by the registered owner.

Aside from the statutory protection of registered trade marks, the general law in Australia also prohibits passing off one’s goods or services as those of a competitor (for example, through the use of an identical or similar trade mark).

Copyright

Copyright in Australia is governed by the Copyright Act 1968 (Cth). It lasts for the life of the human author plus 70 years, in the case of works, and (broadly speaking) 70 years from the date of publication in the case of subject matter other than works.

The types of material that are covered encompass literary works (which include computer programs); musical works; artistic works (which include photographs, engineering drawings, plans, buildings and works of artistic craftsmanship, irrespective of whether the artistic content is regarded to be high); dramatic works; and films, sound recordings, sound and television broadcasts, and published editions.

If the criteria for the establishment of a copyright exist, that copyright arises automatically without the need for registration, notice or any other formality. Indeed, there is no system for the registration of copyright in Australia. Such criteria include the creation of the copyright material by a citizen, national or resident of, or first publication in, Australia or one of the many countries with which Australia has multilateral or bilateral treaty arrangements.

Australia is a member of the Berne Convention and a party to the Universal Copyright Convention, as well as several other treaties for the protection of individual rights.

Confidential information

Under Australian law, there is no property in information. This is different to the position in some other countries. However, there is a right to have truly confidential information kept confidential in certain circumstances.

The protection of confidential information (which includes trade secrets) is governed by the general law, and not by statute. This means that in Australia there is no written code, such as the uniform statement of law adopted in many American states.

The general law imposes duties on a person who receives confidential information in circumstances where he or she knew, or should have known, that the information was confidential.

That duty requires the recipient not to disclose the information contrary to the requirements of the discloser. It also prohibits any use, even secret use, of the information (except as permitted by the discloser). In some cases, a recipient of confidential information may be restrained from using and/or disclosing the information, even if he or she did not know that the information was, in fact, confidential.

The law protects only identifiable information that has been kept genuinely secret, or has been disclosed only to those who have been brought under a duty to maintain confidentiality

No contract, or even writing, is required, as the duty results from the operation of law alone. Nonetheless, confidentiality notices and written acknowledgements of confidentiality can help prove that the requirement of confidentiality has been communicated to the recipient. By contrast, if the recipient of confidential information wishes to place an obligation on the discloser (for example, to maintain exclusivity and not disclose the information to any other party), an agreement to that effect must be entered into. Such a term would be in the nature of a restraint of trade and subject to the law relevant to this type of contract.

Plant breeder's rights

The Plant Breeder's Rights Act 1994 (Cth) provides for the registration of new plant varieties.

A Plant Breeder's Right or PBR confers on the registered proprietor the exclusive right to produce, reproduce, import, export and sell propagating material of the registered variety in Australia. 

Once the produce has been sold with the consent of the registered owner, the rights in respect of sale are exhausted, but the consent of the registered owner is required for further propagation.  

Each variety the subject of a PBR is identified by reference to a specific name which, in respect of plants in the relevant genus, can only be used to market produce of that variety.

A PBR has a duration of 20 years from the date of application (or 25 years in the case of trees or vines).

Circuit layouts and mask works

Protection of circuit layouts is provided under the Circuit Layouts Act 1989 (Cth). This legislation was enacted in anticipation of the Washington Treaty on Intellectual Property in Respect of Integrated Circuits coming into force. Unlike the Semiconductor Chip Protection Act in the United States, the Australian legislation does not extend protection to a mask work. Instead, it applies to a circuit layout that is defined as a representation, fixed in any material form, of the three-dimensional location of the active and passive elements and inter-connections comprising an integrated circuit.

Eligible layout rights under the Australian legislation last for 10 years from the date of first commercial exploitation or (where there is no commercial exploitation) the year in which the circuit layout was made.

There are no registration requirements or facilities. However, the Australian legislation is unusual in providing for marking of eligible layouts or integrated circuits. 

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