In the last issue, we explained in detail Australia's long-standing and well-regulated environmental protection system. Investors in Australia need to obtain relevant permits when making environmental-related investments.

In addition to the environmental protection system, Australia is also one of the earliest countries in the world to establish an intellectual property system. Since the establishment of the patent system in 1903, it has a history of more than 100 years. The protection of intellectual property rights in Australia ranks among the top in the world. Enterprises operating in Australia generally attach great importance to intellectual property rights, which will inevitably lead to some intellectual property infringement disputes. Therefore, investors going to Australia should have a detailed understanding of Australia's intellectual property system, so as to protect the interests of their own enterprises or resolve possible disputes.
(The following content is from the official website of the Australian Intellectual Property Office https://www.ipaustralia.gov.au/)

Overview of 1. Intellectual Property

(I) Intellectual Property Definition

Intellectual property (Intellectual Property) refers to intellectual creations, including brands, trademarks, inventions, designs or works of art, or plant breeders' rights. Intellectual property rights (Intellectual Property Rights) refer to the legal protection of intellectual creations such as brands and trademarks, and give the corresponding holders the exclusive right to profit from them. Investors in Australia need to understand the value of relevant intellectual property rights before applying for registration of intellectual property rights to confirm whether the intellectual property rights are worth protecting. At the same time, it is also necessary to study the market and understand competitors and consumers to ensure that the relevant intellectual property ideas are novel and will not be infringed. At the same time, be careful not to make the idea public before it is protected, otherwise it may lead to unsuccessful registration. If you have to discuss intellectual property with others, you can use the confidentiality agreement (NDA) provided by the Australian Intellectual Property Office to protect the interests of both parties.

(II) intellectual property management institutions

There are a wide range of types of intellectual property, including not only trademarks, patents, designs, and plant breeders' rights, but also copyrights, circuit layouts, and trade secrets. However, the registration or protection of the above-mentioned intellectual property rights are not the same.

In Australia, trade marks, patents, designs and plant breeders' rights are administered by the Intellectual Property Office of Australia, while copyright and circuit layout are administered by the Attorney General of Australia (Attorney-General's Department). Trade secrets are protected by confidentiality agreements and relevant laws and regulations. Copyright protects art, non-commercial design, music, literature or film. For example, the Game of Thrones TV series. The circuit layout protects the layout design or plan of the integrated circuit used in the computer generated device. For example, computer chips or semiconductor chip designs for computers or pacemakers. In addition, copyright and circuit layout rights are automatically generated and therefore do not need to be protected by registration like other intellectual property rights.

(III) intellectual property owner

The owners of intellectual property are not always the creators of ideas. Investors coming to Australia should confirm the owner of intellectual property rights before applying for registration of intellectual property rights or taking relevant legal measures.

In general, the following persons are the owners of intellectual property rights:

• Creators of intellectual property rights;

-Those who purchase intellectual property rights from the creator or former owner of intellectual property rights.

Intellectual property can belong to a business, organization, or individual, and sometimes more than one owner, if two or more parties work together to create an idea, they are co-owners.

In addition, in Australia, the employer owns the intellectual property rights created by the employee in connection with the operation of the business, unless otherwise agreed in the labor contract between the parties. The intellectual property created by the Contractor shall be the property of the Contractor, unless otherwise agreed in the Contract.

Therefore, in order to avoid intellectual property disputes, the contract should be clearly agreed:

1. Who owns the intellectual property created by the employee/contractor;

2. Who has the right to use the intellectual property in business;

3. Whether and when the transfer of ownership of intellectual property rights takes place;

4. Whether any party can modify intellectual property rights;

5. Confidentiality agreements;

6. Return a copy of the intellectual property right at the end of the work;

7. Non-competition agreements;

8. Develop employee policies.

The employee policy includes the following:

(a) sharing of information;

2. Information storage (entities, computers and networks);

Information technology security policies (e. g. passwords and software usage).

However, the relevant IP contracts are complex and complex, so employers are advised to seek professional legal advice before entering into agreements with employees or contractors.

(IV) government use of intellectual property

In rare cases, the Australian Government and State/Territory Governments under the "official use" provisions of the Patents Act 1990 and the Designs Act 2003 may:(1) use patents or design rights without permission; and (2) sell products produced under the "official use" provisions.

However, the exercise of this power by the Australian Government and State/Territory Governments is subject to the following limitations:

1. consultation with the owners of intellectual property rights (except in emergency situations);

2. Inform the use of intellectual property rights;

3. Provide information as needed, except in violation of laws and regulations;

4. Fair compensation for intellectual property royalties.

(V) intellectual property evaluation

As mentioned above, in Australia, before applying for registration of intellectual property rights, the value of intellectual property rights needs to be assessed. This assessment mainly involves two aspects:(1) the identification of intellectual property assets;(2) the assignment of intellectual property rights.

Determining the Value of Intellectual Property]

The value of intellectual property can be determined on a cost basis and a fair value basis. However, the ultimate value of the intellectual property will be determined when the intellectual property is sold or transferred.

Common intellectual property valuation methods include:

• Royalty relief;

• Excess profits or notional royalties payable;

• Capitalization of earnings;

• Net present value of incremental cash flows;

• difference in gross profit;

• Premium sales.

(VI) indigenous knowledge (Indigenous Knowledge)

Indigenous knowledge is an important part of the Australian intellectual property system. Indigenous knowledge refers to the traditional knowledge and traditional cultural expressions of the Aboriginal and Torres Strait Islander peoples of Australia. Indigenous knowledge is an important asset belonging to Aboriginal and Torres Strait Islander peoples and is used to identify the historical, cultural and social identity of a community and its values.

Aboriginal and Torres Strait Islander Australians have the following expectations regarding the use of Aboriginal knowledge:

• Control of who and how indigenous knowledge is used;

-Protection of indigenous knowledge against unauthorized use of its knowledge and sanctions for misappropriation;

• The Government recognizes itself as the owner of indigenous knowledge;

• Respect for the owners of indigenous knowledge and the cultural rituals associated with it;

-Obtain the consent of traditional custodians before using indigenous knowledge.

Indigenous knowledge is of great significance to Aboriginal and Torres Strait Islander peoples, but under current law, intellectual property rights do not fully cover and protect all indigenous knowledge, for example, secret and sacred knowledge, including the stories behind the practice.

(VII) intellectual property legal services

In Australia, the application for registration of intellectual property rights is complicated and cumbersome, so if you have a need for intellectual property registration, you can seek professional legal services, including:

Trademark lawyers;

Patent lawyers;

Intellectual property lawyers;

Intellectual property search companies;

An accountant or consultant specializing in the marketing and commercialization of intellectual property.

2. Marks

(I) Overview

Trademarks provide legal protection for brands to help customers distinguish related products or services in the marketplace. Trademarks may be used to protect logos, phrases, words, letters, colors, sounds, smells, pictures, actions, packaging aspects, or a combination of these aspects. After successfully registering a trademark in Australia, you can:(1) protect commercial assets;(2) enjoy the exclusive right to use the trademark in Australia;(3) enjoy the right to sell the trademark or license others to use the trademark. The different logos are called "types" of trademarks ".

However, it should be noted that operating a business in Australia, if you do not trade in your own name, you need to register the business name with the Australian Securities and Investments Commission (ASIC). However, this does not prevent others from using the registered business name. Only after the trademark is registered can the exclusive right of the enterprise name be enjoyed.

(II) special trademark

certification trademark]

A certification mark indicates that a certain good or service has certain qualities or characteristics to distinguish the goods or services of different merchants.

When applying for the registration of a certification trademark, the applicant must provide the rules for the use of the certification trademark, including:

1. The standards that must be met for certification of the use of goods or services;

2. The method of determining whether the standard is met;

3. The requirements that must be met by the approved certifying person;

4. Requirements that must be met by the owner or approved user of the certified trademark;

5. Procedures for resolving disputes over the conformity of goods or services with standards;

6. Other requirements.

Certification rules must also be approved by the Australian Competition and Consumer Commission (ACCC) before a certification mark can be registered. A certified trademark can be used by multiple businesses simultaneously. If another person proves that his goods or services conform to the certification rules, he may apply to the certification trademark owner for the use of the certification trademark.

geographical indication]

Geographical indications indicate that the goods originate from a particular region and that a certain quality, reputation or other characteristic of the goods also originates from that region. Geographical indications may be protected as certification marks or by the Wine Act. Geographical indications protected under the Geographical Indications Protection Act are registered with Wine Australia and recorded in the Protected Register.

The contents of geographical indications include:

How the product is manufactured;

what ingredients are used in the product;

Regional environmental or agricultural characteristics that give products unique qualities;

It has a reputation in the region for producing a particular product of a certain quality.

In addition, a geographical indication registered as a certification trademark is valid for ten years from the date of application and may be renewed upon expiration.

(III) registered trademark application process

It takes at least 7 months to apply for a trademark registration in Australia and costs at least A $250.

Here is the process to apply for trademark registration in Australia:

1. Identify the trademark owner

2. Determine the subject qualification

To apply for the registration of a trademark in Australia, the applicant must be resident in Australia or New Zealand (or have an agent resident in Australia or New Zealand) and intend to use the trademark for the goods and/or services in the application.

3. Research

Before applying for registration of a trademark, it is necessary to search for an existing trademark to search whether the trademark to be applied for registration has been registered. At the same time, it is necessary to list the categories of goods and/or services for which the trademark is applied for registration, so as to determine the scope of protection of the trademark.

4. Collection of information

5. Provide the following materials

(1) Ownership and contact information (including postal address);

(2) a representative mark of the trademark (e. g., an image of the trademark);

(3) A list of the goods and/or services to which the mark applies and the relevant class number.

6. Submission of Application

There are two methods to apply for trademark registration: pre-application (TM Headstart) and standard application.

(1) Pre-application (TM Headstart)

TM Headstart are often used in initial trademark applications to review applications for common errors. TM Headstart are used for common trademark types, such as (1) words or phrases (e. g., "Mighty helpful" for Mitre10);(2) words or phrases in a particular font style (e. g., "Ford" for cursive); and (3) logos (e. g., the Nike logo).

The TM Headstart has three steps, each with a separate fee.

① Submit TM Headstart application;

Usually within five working days, the examiner will send the review report to the applicant's E-mail.

② Application for modification (optional);

Deadline: Five business days (before 11:59 pm AEST) after receipt of the Examiner's report.

③ Formal submission of application (optional).

Deadline: Five business days (before 11:59 pm AEST) after receipt of the Examiner's report.

The minimum fee for TM Headstart is A $330 and includes pre-application submission (step 1) and formal application submission (step 3). The fee will increase if the application is amended.

(2) Standard application

The standard application applies to the registration of trademarks and special types of trademarks other than the above-mentioned pre-application. The standard application fee for a registered trademark is at least A $250. But you can use a selection list (picklist) to save money. The choice list is a searchable list of more than 60,000 goods and services, divided into 45 categories.

In addition, new categories of goods and services can be added to the application for the registration of trademarks, but only in certain special cases and at an additional cost.

7. Review

Trademark applications usually take three to four months to review. However, if the application is urgent, such as the date of publication of the goods and/or services to which the trademark applies, or if the court is pending a trademark case. You can expedite trademark examination through Intellectual Property Australia's "Accelerated Trademark Application" online service.

8. Acceptance

After the review is passed, the relevant application will be accepted by the Australian Intellectual Property Office and the trademark will be published in the Australian Trademark Official Journal (Australian Official Journal of Trade Marks) and the Australian Trademark Search (Australian Trade Mark Search). The publicity period is two months, during which anyone can object to the trademark.

9. Registration

If there is no objection to the application for registration of the trademark, or the applicant overcomes the objection. The trademark will be successfully registered and granted 10 years of protection.

(IV) common problem solving

modification application]

Trademark registration applicants may amend the application in order to pass the examination of the registered trademark application, and most of them can be amended free of charge, unless there are special provisions. There are three main types of modifications:

1. Before the review begins, the applicant makes minor changes to the application, including:

• Updating of personal data;

• Cancellation or reduction of the quantity of goods and services;

• Add or remove endorsements.

2. The examiner may require minor amendments to the application, including:

• Ownership details;

• Cancellation or reduction of the quantity of goods and services;

• Add or change endorsements.

3. Voluntary amendment of registered trademarks

• Amendments to registered trademarks are subject to strict rules. However, the following contents in the trademark application cannot be modified:

• Increasing the quantity of goods and services;

• Add additional items to the selected category;

Modify the representative mark of the trademark (unless requested by the examiner).

response review report]

When the examination of the trademark registration application is not passed, the examination report will point out the problems existing in the trademark application and propose solutions to the problems.

In practice, the common problems are:

• The trademark is not unique enough;

• the trademark is too similar to other trademarks for the same or similar goods and/or services;

The party identified as the owner cannot legally own the trademark, or the ownership is unclear;

• The goods and services category was chosen incorrectly, or the category was too broad.

In order to make the registered trademark application meet the requirements, the examination report can be modified through the following steps:

1. Submit an application through the online service of Intellectual Property Australia;

2. Accurate description of the modified part;

For example: Request to remove Classes 9 and 10 from the application.

3. Provide supporting documents.

overcome objections]

As mentioned above, after the trademark registration application is examined and accepted, the trademark has a two-month publicity period, during which others can raise objections. Common objections include:

1. The trademark is identical or very similar to another trademark that has been registered or is under application;

The international registration of the mark has been or is being sought in Australia.

Intellectual Property Australia will notify the applicant of the objection to his trademark, and the applicant is required to complete the letter of intent to defend within one month of receiving the notice of objection. Both parties will then be contacted by the Australian Intellectual Property Office for argumentation, and both parties have the right to withdraw the application or application, or hold a written or oral hearing, and the hearing officer will make the final decision. If the objecting party wins, the registered trademark application will be rejected, and if the applicant overcomes the objection, the trademark will be successfully registered.

3. Patents (Patents)

(I) Overview

Patents protect any device, substance, method or process that is novel, inventive and practical. If you want to obtain a patent for a device, substance or method, you must ensure that the relevant device, substance or method:

(a) novelty;

Can be manufactured or used in an industry;

Significantly different from existing products;

4. Having suitable matters, usually referred to as "manufacturing methods".

The scope of patents includes: medical technology, pharmaceuticals, biotechnology, organic chemistry, civil engineering, equipment, mechanical devices, etc. In addition, computer-related inventions, biological inventions and microorganisms can also be patented if they have "the essence of the invention. And the related invention is granted a patent can be achieved:

1. The right to market monopoly of the invention;

2. Permit others to produce inventions on agreed terms, eliminating the risk of others stealing ideas;

3. The right to take legal action to prevent others from manufacturing, using and/or selling the invention in Australia without the patentee's permission.

However, sometimes a patent may not be the best option to protect the invention because of its specificity, and it can be protected as a trade secret.

(II) registered patent application process

It takes at least six months to apply for a registered patent in Australia, at least 110 Australian dollars to apply for a provisional patent, and thousands of Australian dollars to apply for a standard patent. The following is the process of applying for patent registration.

1. Research

(1) Understand what patents are and what inventions can be patented;

(2) Ensure that the invention is undisclosed or confirmed within the 12-month grace period;

(3) Choose to file a standard patent application, an international application (PCT) or a provisional patent application;

(4) Know the cost of applying for a patent.

2. Identification of the patent owner

3. Retrieval

Patent applicants can search for existing patents through the Internet or patent databases to ensure that the invention is not protected by a patent.

4. Collect documents and write instructions

The instructions shall include:

(1) a detailed description of the invention;

(2) Claims;

The claims specify the scope of protection provided by the registered patent and are used for substantive examination of the application by Intellectual Property Australia. Claims must be attached to a standard patent application, while a provisional patent application is left to the applicant to decide whether to attach claims.

The claims shall:

• Concise and to the point;

• Written in plain English;

• Write a sentence;

• Clear definition of invention;

• Distinguish the applicant's invention from other inventions;

• list all the essential technical features of the invention or inventive concept, and the interrelationships between them;

• Consistent with the description of the invention.

(3) the summary;

(4) Invention drawings;

(5) List of gene sequences (if required).

5. Application

Similar to trademark applications, there are two main types of patent applications:

(1) Provisional patent application

A provisional patent application is used to apply for a provisional patent, thereby obtaining a priority date and indicating to the applicant agency that the standard application will proceed. If the inventor has disclosed the invention before applying for a patent, at this time, the inventor enjoys a grace period of 12 months. If he decides to continue to apply for a patent, he needs to submit a provisional application within 12 months.

(2) Standard patent application

A standard patent application can provide full protection for a patent, and a standard patent application requires a minimum of A $370. At this point, a preliminary search and opinion (PSO) can be selected to understand the patentability of the invention as early as possible before the review. However, a PSO cannot replace a formal review, and once a review is applied for, a PSO cannot be applied. The PSO costs A $950.

In addition, many stages in the standard patent application process have deadlines. However, if the patent applicant misses the deadline or needs more time, he or she can apply for an extension if the following conditions are met:

(1) an error or omission by the applicant, employee, agent or attorney;

(2) Conditions beyond the control of the applicant, such as illness or accident, or delay in postal or express delivery;

(3) It cannot be implemented despite reasonable procedures and practices;

(4) Lack of funds to pay fees or excessive workload.

The cost of the extension depends on the circumstances:

Substantive review

The applicant must apply for substantive examination and pay the relevant fees within five years from the date of application. If the application date is close to five years, but no substantive examination has been applied for, IP Australia will send a reminder to the applicant. From the date of the reminder, the applicant will have two months to apply for substantive examination. If you do not apply for substantive examination or no payment, the relevant patent application will be invalid. From the date of the applicant's application for substantive examination, the Australian Intellectual Property Office needs about 12 months to conduct a substantive examination of the patent.
However, the applicant may request an expedited examination of the patent application in the following circumstances:

(1) the need to implement the patent as soon as possible;

(2) There are investors waiting for patent authorization;

(3) there is an urgent need to start production or complete market research;

(4) It is necessary to license the relevant invention to a third party.

In addition, Australia has the following patent fast track:

(1) green technology;

(2) Fast track for small and medium-sized enterprises;

(3)PPH agreement;

If the relevant patent application has been registered in other countries, it can be quickly examined through the PPH agreement.

7. After the substantive examination is passed, the patent application will be accepted by the Australian Intellectual Property Office at the following fees:

8. Grant of Patents

If the substantive examination is passed, Intellectual Property Australia will publish the relevant patent in the Australian Patent Journal. From the date of publicity, the third party will have three months to raise objections to the application. If no third party raises an objection, or if the applicant overcomes the objection, IP Australia will register the patent and update its status in the Australian Patent Journal. After the patent is granted, if the fee can be renewed on time from the date of application, the patent will enjoy a 20-year protection period, and the pharmaceutical patent will enjoy a 25-year protection period.

(III) divisive applications and additional patents

After applying for or registering a standard patent, if you want to supplement the patent, you can apply for it by dividing the case and attaching the patent.

divisive application]

By dividing a patent application (parent application) into two or more applications. This can be used to protect some of the items in the parent patent application.

additional patent]

If you have already filed a standard patent application and want to improve or modify your invention, you can apply for an additional patent to include your new idea. However, the additional patent must be a new patent that was not filed in the original application.

(IV) innovation patent

There is a special system in Australian patent applications-innovation patents. Innovation patents are created to protect inventions that have a short market life and may be replaced by newer innovations (such as computer-based inventions). This allows Australian SMEs to quickly develop and protect new innovations. But over time, innovation patents have not achieved the desired goal of supporting SMEs in the market. Therefore, the Australian government will phase out innovation patents from 2020, and the last day for innovation patent applications is August 25, 2021. Existing patents for innovations filed on or before 25 August 2021 (AEST) will remain in force until they expire.

(V) common problem solving

modification application]

Patent applicants can amend the application in order to pass the examination of the patent application, most of which can be amended free of charge, unless there are special provisions. There are four main types of modifications:

1. update personal data;

2. Amendments to the specification (excluding the summary) prior to the commencement of the substantive examination;

3. Revision of the review report;

4. Voluntary amendment of granted patents.

response review report]

The examination report will point out the problems existing in the patent application, and the examiner's conclusions will be detailed in the report, together with the methods for solving these problems. Any issues raised in the review report must be resolved within 12 months from the date of receipt of notification of the review report.

Common problems include:

1. The invention is not novel and creative;

2. The invention is not suitable for patentable application;

3. The claims include two or more inventions or are unclear.

overcome objections]

As mentioned above, after the patent application is approved, there is a three-month publicity period for the registered trademark, during which other people can raise objections. Common objections include:

1. Your invention is the same or very similar to another patent application, so it is not novel and inventive

You are not the true owner of the invention.

As with trademarks, Intellectual Property Australia will also notify the applicant of any objection to the patent, and both parties have the right to withdraw the application or application, or hold a written or oral hearing, and the hearing officer will make the final decision. Unlike a trademark, however, the person making the objection usually submits a piece of evidence to Intellectual Property Australia that the patent application would be invalid if granted. However, data obtained from Intellectual Property Australia shows that objections to patent applications are rare-less than 2% of standard applications accepted by Intellectual Property Australia.

4. Design Rights

(I) Overview

Design rights are intended to protect the overall visual appearance of novel and unique products with the following characteristics.

1. Tangible quality

2. Industrial manufacturing or handmade;

3. Production on a commercial scale.

The following designs are not protected by design rights:

1. Design without physical form, such as concepts, processes and computer graphics;

2. Brand name or logo designed for the product;

How the product works;

4. Materials used in the product;

5. Product size;

6. Some design features of the product.

After obtaining the protection of design right, the product can enjoy:

1. The exclusive right to design in Australia;

2. Authorize others to use the relevant design in Australia;

3. The design can be sold or licensed in Australia;

4. Can apply for the same design right overseas (within six months after applying in Australia);

5. The right to take legal action against persons who use the design without permission.

(II) Design Right Application Registration Process

In Australia, applying for design rights mainly includes two major steps-registration and certification. It takes at least three months and the cost is at least 250 Australian dollars. The specific process is as follows:

registered design]

1. Submission of application

Consistent with the aforementioned trademark and patent applications, design right applicants can first collect documents and submit their applications through the online service of Intellectual Property Australia, and need to provide the following information:

(1) The design owner and contact information (including mailing address);

(2) A representative of at least one design (such as a photo or line drawing of the design);

(3) Product name.

The cost of a design application varies according to the items included in the design:

In addition, if each product can be classified in the same Locarno Class (see below), only multiple design rights can be applied for, and the above fees must be paid regardless of the result of the application.

As for the date of application for registration, the applicant can choose to apply for registration at the time of application or at any time within six months after the date of application. If the applicant does not apply for registration within six months, Intellectual Property Australia will initiate the registration process for the applicant, unless the applicant formally withdraws the application.

2. Application for publication in the Australian Design Database

IP Australia publishes some details of the application, such as the names of the owner and designer. But the appearance of the design will not be published.

3. Evaluation of the application (eight weeks)

IP Australia reviews a design application to ensure that it meets the statutory criteria, which is commonly referred to as a "formality assessment" (formalities assessment).

4. Respond to the results

If IP Australia finds that there are problems with the application during its assessment, the applicant will be notified and the applicant will have two months to resolve the problems. However, if the timeout is not resolved, the application will be invalid.

5. Design Registration and Publication

If there is no problem (or the problem has been solved), the design will be registered.

[Certified Appearance Design] (Optional Process)

The design applicant may apply for a design certification review at the time of application or at any time during the registration period. When the design is certified, the applicant has the legal right to take action against others who use the design without permission, and can continue all the rights granted at the time of registration. The following is the certification process:

1. Application for review

After the design is registered, the applicant (or others) may request a review. The applicant may submit the application for examination after submitting the design application, or after submitting the design application. However, regardless of the outcome of the review, the applicant will have to pay A $420. If a third party (such as a competitor) requests a review of the registered design. As a design applicant, you need to bear the average review fee with the third party, I .e. 210 Australian dollars per party.

2. Design Review (13 weeks)

Intellectual Property Australia conducts a substantive review of designs applying for certification to ensure that they meet statutory standards. For example, Intellectual Property Australia will search for identical and similar designs worldwide. If the applicant's design or a design that is too similar to the applicant's design is found, Intellectual Property Australia will notify the applicant in writing of the registration failure.

3. Responses to questions raised

If there are any problems during the application process, IP Australia will notify the applicant and the applicant will have six months to resolve them. If it cannot be resolved, the registration granted by the first part will be terminated.

4. Appearance design through certification

If there is no problem (or the problem has been resolved), the design will be registered and IP Australia will issue a certificate of review to the applicant.

In addition, similar to patents, if you miss the deadline for a design right application for the following reasons, you can apply to Intellectual Property Australia for an extension, which requires a minimum of A $100.

(1) An error or omission by the applicant, agent or solicitor, but forgetting to apply is not considered an error or omission.

(2) Situations beyond the control of the applicant, such as unavoidable diseases or accidents, or delays in postal or express delivery.

Special Provisions on (III) Design Rights

Grace period for design rights]

The so-called grace period of design right refers to that in some cases, the applicant is allowed to disclose the design without affecting his or her right to obtain the design. The Australian Grace Period for Design Rights will come into effect on 10 March 2022 and will only apply if:

(1) Applications filed on or after this date

(2) Disclosures made on or after such date.

and the person disclosing the design must be:

(1) the designer;

(2) The owner of the design, such as the employer or successor in title;

(3) Designers/persons authorized by the design owner, such as marketing companies;

(4) A person who has obtained a design without permission. For example, competitors steal or employees leak designs and post them on social media.

In addition, if you want to apply for a grace period, the applicant should submit an application for design rights within 12 months after the publication of the design.

[Locarno Class and Product Name]]

• Locarno Class

In the Australian intellectual property system, the Locarno Class is used to divide designs into different categories and subcategories to facilitate the search for similar products. As mentioned earlier, if each product for which a design right is applied can be classified into the same Locarno Class, the applicant can only apply for multiple design rights. Locarno Class consists of 32 categories, many of which are further divided into subcategories.

The classification code and sub-code are represented by two sets of two-digit numbers separated by a hyphen, such as 05-06. Subcategories are represented by letters, such as 05-06A.

For example:

If the product is a swimsuit, the classification code is 02-02A.

02 refers to the category of clothing and apparel items, 02 is the subcategory assigned to clothing, and A is the subcategory assigned to swimwear, swimwear, and bathrobe.

Applicants are not required to place the product in the Locarno Class when applying for design rights, and IP Australia classifies the design according to the use of the product. However, applicants are required to provide a clear, accurate and short product name at the time of submission so that IP Australia can place the product in the correct Locarno Class.

• Product name

The product name shall be:

(1) Match the statement in the application form

(2) Describe only the nature of the product.

If the product name is not clear, it will lead:

(1) Delay in processing applications;

(2) The design scope is not clear, which leads to protection difficulties;

(3) the public cannot understand the product design;

(4) It is difficult for others to search for relevant designs.

For example:

The product name is "container". The product name is not specific because there are multiple containers in Locarno Class, including:

Tableware container-classification code: 07-07;

Egg container-classification code: 09-03;

Medical liquid collection container-classification code: 24-02.

(IV) common problem solving

Response Procedure Assessment]

As mentioned above, when registering a design right, the Australian Intellectual Property Office will review the application. If there is a problem with the design application during the registration step, the applicant will receive a formal notice. The procedural assessment will address the problems in the application, including:

1. Lack of required application details;

2. The product name is not clear;

3. The design expression is inconsistent.

If the applicant receives a procedural assessment, it shall:

1. Read the procedure assessment carefully to understand the problems raised and how to solve them;

2. If you have any questions, you can contact the person responsible for evaluating the application;

3. Respond as soon as possible. The period is two months;

4. Submit amendments through the online service.

However, it should be noted that the scope of protection can be reduced by modification, such as removing additional designs. However, the scope of protection cannot be extended. For example, adding new features that the product did not have in the original application.

response review report]

Frequently asked questions in the review report include:

The design is not novel;

2. Lack of design characteristics.

Specific steps to respond to the review report can be found above on trademarks and patents.

overcome objections]

See trademark and patent related content above.

5. Plant Breeders' Rights (Breeder)

(I) Overview

Plant Breeders' Rights (hereinafter referred to as PBR) grant exclusive commercial rights to developers of new plant varieties. Plant breeders' rights cover all plants, such as trees, flowers, shrubs, vines, as well as algae and fungi.

PBR enjoys the following exclusive rights to plant breeding:

1. Propagation or breeding of plants and plant material for commercial purposes;

2. selling plant material or licensing its sale;

3. Import and export of plant materials;

4. Sale of rights to another party.

Plant varieties registered for PBR must meet the following requirements:

1. is the product of a selective breeding process;

2. It is a newly developed variety, and;

3. Uniqueness, consistency and stability.

However, in some cases, even if the applicant is granted a PBR, others can still use the relevant new plant variety, such as using the plant variety for:(1) private and non-commercial use;(2) experimental use; and (3) breeding other plant varieties and farm self-preserved seeds. However, if another person uses a PBR-protected plant variety to harvest material, or cultivates a new variety or similar variety from it, the PBR owner may claim intellectual property rights against it.

(II) Application for PBR Registration Process

In Australia, it takes about two-and-a-half years to sign up for a PBR and costs about $2300 plus external fees. The registered PBR is divided into two parts. The first link is the initial application by the applicant to obtain temporary protection of the plant variety, and once the plant variety has obtained temporary protection, it is necessary to enter the second link so that the plant variety is fully protected by PBR.

The following is the process of applying for PBR registration and related fees:

the first link]

1. Fill in the application form for the first link, including:

(1) Nominate a qualified person (Qualified Person, hereinafter referred to as QP);

A QP is an expert on a particular plant group, certified by Intellectual Property Australia and responsible for certifying new PBR applications.

(2) Pictures of candidate varieties.

The fee for the application is:

Preliminary review

After the application is submitted, Intellectual Property Australia will conduct an initial review of the application, which will take about 8 weeks. If no problem is found in the review, it will enter the acceptance stage, and if the review finds a problem, the Australian Intellectual Property Office will send a review report to the applicant, and the applicant needs to respond within the specified time.

3. Acceptance

When the application is reviewed, it will be accepted by Intellectual Property Australia. At this point, the PBR is granted a temporary period of protection that goes back to the filing date of the application. After that, IP Australia will contact the QP nominated by the applicant and work with it to enter the second stage of the registered PBR.

second link]

1. Planting test

After the application is accepted, the registered PBR applicant and the QP are required to conduct a planting test to determine whether the new plant variety is unique, consistent and stable. In some cases, the results of previous trials conducted abroad can be used. In addition, the experiment can be carried out by the applicant himself or in CTC.

Depending on the type of plant, the time of planting test is also different:

wheat varieties -3 to 6 months;

rose varieties -1 and a half years;

Apple -4 years;

Mango-up to 9 years.

2. Submit the second link application

After the applicant has completed the planting test with QP, QP will submit a description of the plant variety to Intellectual Property Australia and publish it in the Plant Variety Journal.

At this point, the Applicant shall submit with the QP:

(1) the second link application form;

(2) a certificate signed by the QP;

(3) Confirmation form submitted to the Centre for Genetic Resources.

3. The second part of the review

Within 12 months of the first stage application being accepted by Intellectual Property Australia, the applicant is required to submit a detailed description of the plant variety and pay a review fee in order to be re-examined by Intellectual Property Australia. However, if the plant variety is isolated due to biosafety after entry, the Australian Intellectual Property Office will adjust the 12-month limit period until the plant variety is released from isolation, but the applicant needs to provide relevant evidence to the Australian Intellectual Property Office.

The second phase of the review costs are as follows:

This review fee includes:

(1) Technical review application, including field review (if required) or overseas test report;

(2) Evaluation description;

(3) Publication of new variety descriptions and photographs in the Journal of Plant Varieties;

(4) Make other necessary inquiries to determine whether the conditions of PBR are met.

4. Publicity

When the application is reviewed, Intellectual Property Australia will publish details of the new variety in the Plant Variety Journal. From the date of publicity, third parties may raise objections to the approval of the review within six months.

6. Intellectual Property Follow-up Matters

(I) Intellectual Property Renewal

After an intellectual property is protected, the owner of the intellectual property is required to renew it so that it remains in a protected state. The following are the renewal dates and fees for trademarks, patents and designs.

trademark]

Trademarks need to be renewed every 10 years and can be renewed one year before the renewal expiration date. There is no limit on the number of trademark renewals. However, the cost of trademark renewal will vary depending on the method of payment.

patent]

1. Standard patent:

A standard patent shall be first renewed 4 years from the filing date and must be renewed annually thereafter until the patent term expires.

2. Innovation patent:

The innovation patent shall be renewed for the first 2 years from the filing date and must be renewed annually thereafter until the patent protection period expires. The cost of a patent renewal depends on the type of patent and when the application was originally filed.

design right]

The first renewal period of the design is at any time within the first five years after registration, and can be renewed for another five years after the end of the first renewal period. However, the design right can only be renewed once, so the protection period of the design right is up to 10 years. The cost of renewal of design rights is consistent with the cost of renewal of trademark rights.

plant breeder rights]

The rights of plant breeders need to be renewed once a year from the date of successful registration. Only when the rights of plant breeders are renewed every year will the rights of plant breeders be protected. However, the maximum protection period of plant breeding rights is limited to 25 years for trees and vines, and 20 years for other species.

If the intellectual property owner misses the renewal date of the above-mentioned trademark, patent, design right and plant breeder right, the Australian Intellectual Property Office will provide a grace period of 6 months, during which the intellectual property owner can still renew the trademark, but it needs to pay a renewal fee of A $100 per month. If this period is exceeded, the relevant intellectual property rights will no longer be protected.

(II) Licensing Others to Use Intellectual Property

Intellectual property owners (licensors) may license others (licensees) to use (but not own) their intellectual property in order to obtain economic benefits. Mainly includes the following license types:

exclusive use license]

The owner of the intellectual property rights permits a single individual or enterprise to commercialize its intellectual property rights, and no other owner may use the intellectual property rights for profit, including the owner of the intellectual property rights himself. However, an intellectual property owner may restrict the use of intellectual property in a licence as follows:

(a) specific geographical area;

(B) areas of application;

3. Product category.

separate use license]

Individuals or businesses are allowed to use their intellectual property, but intellectual property owners can also commercialize some aspects of their intellectual property.

non-exclusive use license]

Allow multiple individuals or businesses to use your intellectual property, and the intellectual property owner can also commercialize certain aspects of their intellectual property.

compulsory use license]

In exceptional circumstances, Australian companies can apply for a compulsory licence for patented pharmaceutical inventions (PPI). The license allows companies to produce generic versions of patented drugs for export to countries in need.

In addition, the intellectual property owner in the intellectual property license can specify whether the licensee can transfer this right to another party. However, the conditions under which the licensee transfers the intellectual property or sub-licenses the intellectual property to others should be stated in the licence agreement.

(III) intellectual property infringement

Intellectual property infringement refers to the use of intellectual property rights by others without the knowledge or permission of the intellectual property owner. The infringement of intellectual property rights will cause serious impact on related products, businesses and brands, so it needs to be prevented or stopped in time. The following are ways to prevent intellectual property rights from being infringed.

(1) developing a tort strategy;

An infringement strategy is a plan of action that an intellectual property owner can take to prevent intellectual property from being infringed.

(2) monitoring the market;