1. Decide on the best format for your trade mark. Registering a word mark in standard capital letters will generally provide the broadest protection.  For additional or alternative protection, consider registering a composite mark (a word(s) together with design elements) and/or a logo alone.  Registrable trade marks can include trading names, product names and even aspects of packaging such as colours and shapes.
2. Carefully select the goods and/or services to be covered by the application as it is not possible to add items after you have filed your application. When choosing items, think about the nature of your business and the products and/or services that you provide.  Also consider your plans for the future and select items accordingly.
3. Ensure that you nominate the correct applicant name as making a mistake can invalidate a registration. If the trade mark is already in use, the applicant should be the owner of the rights to the mark and either be using or authorising the use of the trade mark.  If a trade mark has not yet been used, the applicant should be the business entity intending to use/authorise the use of the mark in the future.
4. Conduct some pre-filing searches to check whether anyone else has already registered or is using a similar mark. It is important to search the Australian Trade Marks Register and to also conduct some general searches of the internet and company/business name registrations etc.
5. Look at protection for export markets. Whilst it is not possible to register a “worldwide” trade mark per se, it is possible to file an International “Madrid Protocol” Application to cover a number of different countries at the same time.  If we file an International Application within 6 months of filing an Australia application, we can claim the Australian filing date as the effective “priority” date for the relevant overseas countries.

Madderns has a team of experienced trade mark attorneys who can assist you with the process of securing trade mark protection for your valuable brands.  Our trade mark services include:

• advising on the registrability of proposed trade marks;
• preparing trade mark applications including drafting statements of goods and services designed to properly protect the interests of the relevant business;
• filing trade mark applications in Australia and also overseas (including through the international “Madrid Protocol” system); and
• prosecuting trade mark applications and assisting with overcoming any objections raised during the course of examination.

The post TOP 5 TIPS FOR FILING A TRADE MARK APPLICATION appeared first on Madderns | Our Team is Your Team.

This expansion to the patent box scheme extends support for practical, technology‑focused innovations in the Australian agricultural and veterinary sectors and for technologies which have the potential to lower emissions in line with the Government’s target to achieve net zero emissions by 2050.

To be eligible, the corporate taxpayer must commercialise a plant variety protected by Plant Breeder’s Rights (PBRs) or an eligible patent for an agricultural and veterinary (agvet) chemical product listed on the Australian Pesticides and Veterinary Medicines Authority (APVMA) or PubCRIS (Public Chemicals Registration Information System) register. Alternatively, the corporate taxpayer must commercialise a patented technology which has the potential to lower emissions.

Currently, profits on PBRs, patents on agvet products and patents on emissions reducing technology are taxed at the corporate rate of 30 per cent for large businesses and 25 per cent for small enterprises. The patent box will reduce the income tax rate to 17 per cent for PBRs and patents granted or issued after 29 March 2022 and for income years starting on or after 1 July 2023. The tax concession only applies to eligible income, where the research and development of the innovation took place in Australia.

Taken together with the R&D Tax Incentive, which provides up to a 43.5% refundable tax offset for eligible research and development activities, this expansion to the patent box will provide an increased incentive to conduct research and development in Australia.

This patent box expansion to agriculture and emissions reducing technology will be introduced into the patent box legislation after the Government has consulted with industry and settled the details of the expansion.

It is estimated that this expansion will deliver $13.4 million to eligible corporate taxpayers with PBR and agvet patents over the 2022 to 2026 period, and will deliver $66.2 million to eligible corporate taxpayers with emissions reducing patents over the same period.

The post The Australian Government is expanding the patent box tax concession to agricultural sector innovations appeared first on Madderns | Our Team is Your Team.

A Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was passed by Parliament on 30 August 2021, which among other things, introduces the 12-month grace period for filing a design application in Australia. This grace period will have effect in Australia, but not other jurisdictions, and so cannot remedy pre-filing disclosure for an applicant in another jurisdiction without similar provisions.

A design application in Australia will need to be filed within 12 months of disclosure to receive the benefit of the grace period, and the disclosure will need to have been made by:

• The designer(s);
• The owner(s) of the design where this is someone other than the designer;
• A party authorised by the designer or design owner; or
• A party who obtained the design from the designer or design owner without their permission.

Publication of a design by any official designs office is not eligible for the grace period.

The Australian design grace period will come into effect 10 March 2022.

In order to balance the rights of design owners and third parties in light of the introduction of this grace period, the Bill also introduces an infringement exemption that protects third parties against infringing a registered design where they were using it before its priority date.

This applies to both independent creation, and in the case that the third party uses the design based on the disclosure made by the design owner before the priority date.

Accordingly, it remains preferable to file a design application in Australia before making any disclosure, or which claims priority under the Paris Convention, but the grace period will be available if required.

The post Grace Period Introduced for Australian Design Rights appeared first on Madderns | Our Team is Your Team.

Jeff has a strong reputation within the profession, the firm and among his clients as a registered Australian and New Zealand patent attorney. He specialises in chemistry, pharmaceuticals, biotechnology, polymers, materials, nanotechnology, and medical device patents.

Jeff takes over from Tom Melville, who was appointed Managing Partner in 2014. Under Tom’s leadership, Madderns has grown, maintained an enviable culture, attracted outstanding new talent and continued to assist a wonderful and diverse portfolio of clients to take their great ideas to the world.

Tom will now have more time to immerse himself in client-focussed work at Madderns, including leading the firm’s engineering practice and contributing to the board.

The post Managing partner announcement appeared first on Madderns | Our Team is Your Team.

While patent examination can be requested at any time, examination must be requested within two months of receiving a direction from IP Australia to do so, or within five years of filing (whichever is sooner). Failure to request examination in time will result in lapsing of the application.

IP Australia will typically direct an applicant to request examination around 4 years after filing. Once Examination has been requested, it joins a queue, where it waits to examined, with IP Australia aiming to issue a first report within 12 months.

For applicants looking to accelerate the process, there is the existing option of requesting expedited examination, where IP Australia will aim to issue the first report within 8 weeks of the request.

S44(2) of the Patents Act 1990 stipulates that the Commissioner may, on one or more prescribed grounds, direct the applicant to request examination. The prescribed grounds are found in Reg 3.16 of the Patents Regulations 1991:

• That the Commissioner reasonably considers it expedient to give the direction having regard to the progress made in the examination of applications filed before the filing date of the application concerned;
• That the Commissioner reasonably considers it to be in the public interest to give the direction;
• That the Commissioner reasonably considers it expedient to give the direction, having regard to the examination of another application for a standard patent or the examination of an innovation patent.

The Regulations also require that the direction must be given in writing and state the grounds on which it is given.

The intent of the new model is to issue a direction to applicants when an applicant’s IP strategy is more developed, with the aim of helping applicants navigate the patent examination process more efficiently. This will apply to applications made using patent attorney firms and self-filers. The model may change the previous first come, first served order of directions by focusing on applications that are considered more likely to be ready for examination, but the model will not change the directions process as mandated by the Patents Act.

However, it will be interesting to see whether the reason provided is updated to indicate that the decision has been made because of this new process, or whether it will remain the current default reason:

“You have received this direction because either progress has been made in the examination of applications filed before the filing date of your application or I consider it to be in the public interest”

The announcement of this trial comes around the same time that the Australian Government’s commissioned review in to the accessibility of the Australian patent system to small and medium enterprises (SMEs) was tabled in parliament. Provide a link.

The final report of the Patents Accessibility Review made 16 recommendations intended to improve both the accessibility of the patent system and the support provided to Australian SMEs applying for protection in Australia and overseas.

The report was based on findings from oral consultations with SME representatives and other specialists, including commercialisation advisors, organisations representing patent attorneys such as IPTA and FICPI and patent attorneys. The research team also considered submissions and undertook their own research.

While the complete report makes interesting reading for all stakeholders, it does provide commentary on processing times for patent applications, with the executive summary stating:

“On processing times there is no significant issue, given that IP Australia can arrange for expedited review of a patent application at no extra cost, this taking three months. Some participants were quite happy for the delay of a year or so (this being the standard patent examination time under normal circumstances) – but there is no doubt that the availability of an expedited review service will deal with any problem here.”

The Report identified that for many, the delay in examination of a patent application was useful, as costs were postponed, including the following, non-attributed quote:

“Australia is amongst the fastest jurisdictions in the world.

This is a red herring. SMEs applications shouldn’t be dealt with quickly. …It’s important to defer prosecution costs.”

The decision to move to this new process raises many questions:

• What metrics does IP Australia intend using to determine how developed an applicant’s IP strategy is?
• What does IP Australia consider to be efficient navigation of the patent examination process?
• Will this model be influenced by the progress of corresponding overseas patent applications?
• What does it mean to be more likely to be ready for examination?
• What can an applicant do to prevent early directions issuing?

While the findings of the accessibility report are not contradictory to IP Australia’s efforts to improve the customer experience, it is hoped that the agency is careful when it comes to anticipating the diverse needs of its customer base.

The post IP Australia developing criteria to accelerate examination for selected applications appeared first on Madderns | Our Team is Your Team.

Patent box schemes of different forms are currently available to innovators in over twenty countries including many European countries. The general concept of a patent box scheme is to encourage innovation by applying a lower rate of corporate tax to any profits made from patented inventions.

The Australian government is introducing a patent box to encourage businesses to undertake R&D and keep patents in Australia. The patent box will tax income derived from Australian medical and biotech patents at a 17 per cent effective concessional corporate tax rate. Normally corporate income is taxed at 30 per cent or 25 per cent for SMEs.

Only granted Australian patents with a filing date after 11 May 2021 will be eligible for the patent box.  It seems likely that the patent box will also only apply to granted Australian standard patents and not innovation patents.

The government has said it will consult closely with industry on the design of the patent box before implementation on 1 July 2022.

In addition to the new patent box scheme which incentivises businesses at the ‘back end’ of the commercialisation pathway, Australia also has an R&D tax incentive, which provides incentives to carry out earlier stage research and development in Australia.

At this stage, the patent box scheme will only apply to biotech and medical technologies, although the government has also suggested it could be extended to the clean technology sector. In an effort to incentivise innovation in a wide range of sectors in Australia it would be good to see the patent box scheme eventually extended to other technology areas as well.

Madderns will monitor the implementation of the patent box scheme closely and update our clients and associates when we have further information.

The post New patent box scheme for Australia appeared first on Madderns | Our Team is Your Team.

The most significant difference between the two patent types is that the threshold for an invention being “innovative” is much lower than that for an invention being “inventive” and in practice, Innovation Patents can provide protection for inventions that are essentially only novel over the prior art, even if they may be obvious.

As well as being used to protect more incremental inventions (which may nevertheless be very commercially valuable), Innovation Patents have been used as a tool in patent enforcement because, since they cannot be invalidated for lack of inventiveness, they are very robust patents and can be difficult to invalidate. Indeed, they have been described as the “strongest patent in the world”.

After a review conducted by the Australian Government¹, the decision was made to abolish the Innovation Patent system. This takes effect on 26 August 2021, from which date no new Innovation Patent applications can be filed. There is however, a quite generous transition phase, which still allows new Innovation Patent applications to be filed as divisional applications of a pending patent application, or converted from a pending patent application, provided that that pending patent application was filed before 26 August 2021. This means that the significant benefits of the Innovation Patent system can still be accessed for the next 8 years, until 26 August 2029, at which time all Innovation Patents will have expired.

This means that, should you wish to keep your options open to use the Innovation Patent System for the next 8 years, you must take certain steps to ensure that a Standard or Innovation Patent Application is filed before 26 August 2021. A number of different scenarios include:

a) pending Provisional Patent application in Australia: if you have a pending Australian Provisional Patent application whose 12-month period expires on or after 26 August 2021, you should consider filing an Australian Standard Patent application or Innovation Patent application before this date. The Provisional Patent application may still be used after that date as a priority basis for filing overseas patent applications before the expiry of the 12-month period as usual.

b) pending overseas patent application: If you have a first patent application filing for an invention in another country, and the 12-month period for claiming priority expires after 26 August 2021, you can consider filing an Australian Standard Patent application or an Innovation Patent application before this date.

c) invention in development: while filing a patent application too early is generally discouraged, and it may not be practical or in the best interests of your long-term protection strategy for an invention under development, consideration should be given to the potential value of keeping the option of obtaining an Innovation patent for your invention, or at least a part of your invention, by filing a Standard Patent application or Innovation Patent application before 26 August 2021.

So while the Innovation Patent system is soon coming to an end, early and appropriate planning can maximise your opportunities to still benefit from its many advantages for up to 8 years. If you would like to consider the options available to you, speak with your Patent Attorney soon.

The post Preparing for the End of the Australian Innovation Patent System appeared first on Madderns | Our Team is Your Team.

The WTR 1000 is the only standalone publication to recommend individual practitioners and their firms exclusively in the trademark field, shining a spotlight on the firms and individuals deemed outstanding in this critical area of practice.

Recognising Australia’s competitive IP landscape, Madderns has been cited for its expertise in prosecution and strategy.

WTR 1000 cited Madderns for catering to a “large client base of iconic Australian names with big export businesses”.

“The firm’s expertise in the wine industry is known and respected far and wide, while its reputation in the fashion industry continues to grow. The set is experienced in complex prosecution work and regularly represents rights holders in opposition and non-use cancellation proceedings domestically and globally. A specialised side offers filing and prosecution services in China too.”

Congratulations also to Louise Emmett, Megan Ryder and Craig Vinall for their individual professional mentions. Louise and Megan were recognised as being part of the specialist trademarks team assisting clients on prosecution matters, and Craig for juggling both patent and trademark matters.

For further information about the WTR 1000, click here https://www.worldtrademarkreview.com/directories/wtr1000/rankings/australia

The post WTR 1000 – The World’s Leading Trademark Professionals 2021 appeared first on Madderns | Our Team is Your Team.

David is an Australian and New Zealand Patent and Trade Mark Attorney within our specialist Engineering team.  David’s expertise covers a broad range of mechanical engineering and advanced manufacturing technologies, with a particular interest in automotive and medical technology.

The post Promotion for David Bey appeared first on Madderns | Our Team is Your Team.

The Australian eChallenge pre-accelerator is an entrepreneurship program founded by the University of Adelaide’s Entrepreneurship Commercialisation and Innovation Centre, where teams including at least one student from any teaching institution nationally have an opportunity to learn how innovators create, develop, assess and action ideas for a business, app, product or service. It provides opportunities to interact with innovators from South Australian-based local and international businesses, industry leaders, and voluntary mentors.

Teams can win cash or prizes to assist them to launch a business. Notable past winners include Life Whisperer. Individuals and teams are eligible to enter categories including Open, Biogen, Agri-Food & Wine, Digital and Social Enterprise. The winners of the 2020 Australian eChallenge will be announced at an awards lunch tomorrow, via livestream on Tuesday 1 December, 12:30pm to 1:30pm ACST.

Madderns partner and registered patent and trade mark attorney Bill McFarlane has been working with the Australian eChallenge since its inception 17 years ago and as a finals judge for many of those years. He sees it as an opportunity to guide and support student-based teams of entrepreneurs as they step up and present their concepts as a business plan.

“The Australian eChallenge provides an invaluable opportunity for budding entrepreneurs and innovators to find the right people to talk to, whether they be business mentors, government representatives, potential partners or patent and trade mark attorneys to help them understand their idea, design and brand protection options” Mr McFarlane said.

“The Australian eChallenge gives students and their team an opportunity to present to business people who can assist and support them during the early stages and learn from the process of creating a business plan. Team building, methods for idea assessment, market analysis and what it will take to deliver goods or services are available to all teams. All these activities are provided in an encouraging, convivial and collaborative environment, so who wouldn’t want to be involved in the Australian eChallenge pre-accelerator?”

“Madderns values being involved in the Australian eChallenge process as a way to contribute to the development of people and businesses of the future.”

The post Supporting the search for new ideas at the Australian eChallenge appeared first on Madderns | Our Team is Your Team.