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How the latest changes to IP laws could affect your business

The Australian intellectual property (IP) system has undergone its biggest overhaul in decades. Here are some key changes and their implications for small businesses.

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A new Act, which includes amendments to certain parts of various intellectual property laws, came into effect on 15 April, 2013. Changes occurred across patents, designs, trade marks and more, and it’s important to know how these might affect you. Here are some of the main changes to be aware of:

A simpler and more time-efficient IP system

The new laws will see shorter time frames involved in certain processes, such as opposing patents and trade marks. The laws in place until now have allowed long time frames for settling these sorts of actions. This has, on occasion, seen the party with the most money win, simply because they can afford to draw out proceedings. Under the new system, much shorter time frames are imposed, which is good news for small businesses involved in IP disputes.

Stronger IP protection

The amended laws will see increases in the penalties that apply to people guilty of counterfeiting, which is a great benefit to trade mark owners. There will also be stronger ‘powers’ for the customs department to seize shipments of imported goods that are fake products.

"Up until now, the maximum penalty for trade-mark infringement has been two years imprisonment – under the amended rules, this will rise to five years. "

Up until now, the maximum penalty for trade-mark infringement has been two years imprisonment – under the amended rules, this will rise to five years.

There is also a bit of a change in jurisdiction, which could save trade mark and design owners money when protecting their IP rights. Up until now, matters relating to trade marks and designs have been taken to the Federal Court. Under the amended rules, these matters can be heard in the Federal Magistrates Court, which is a less costly option.

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Improving the quality of patents

The changes to patent laws will raise the standards that one must meet in order to be granted a patent. Until now, there has often been legal uncertainty around granted patents and the associated rights. The new laws may make it a bit more difficult to register your invention and protect it as a patent; however, if successful, there will be a much clearer understanding of the rights associated to that patent.

The standards set by the new patent laws are now in line with those in other countries, such as USA, Japan and Europe. This will help exporters by giving them the assurance that their Australian patents will meet the standards required overseas, in the event they need to protect their rights in other countries.

Trade mark opposition matters

This is one of the bigger changes for me, given this is the area in which I work!

Up until now, a person had three months (from a date of advertisement) to lodge an opposition if they thought a trade mark should not be allowed to register.

Under the new laws, a person will need to lodge their intention to oppose a trade mark within two months of that advertisement date. They will then need to follow up within one month with a “Statement of Grounds and Particulars”. The trade-mark applicant must subsequently lodge a notice that they intend to defend against the action. If they fail to do so, then their trade-mark application will lapse.

This is a major change, as there has not been any requirement up until now for applicants to voice such an intention. Up until now it could be many months before you know that the applicant is not actually going to defend themselves against oppositions. The reduced wait time could save businesses involved in trade-mark disputes thousands of dollars.

These are just some of the changes that have come with the new rules. If you have registered IP or have been considering registration of your IP, ensure you’re familiar with the new laws in case you are affected by them.

Are you clear on your rights as a trade-mark owner?

Jacqui Pryor

is the director of Mark My Words Trademark Services Pty Ltd and brings with her 18 years experience in dealing with Australian & International trademark matters - affordably and professionally.

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