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Intellectual Property

Queensland intellectual property (‘IP’) lawyers

Our intellectual property lawyers are well-versed in offering intellectual property law solutions to our clients on the Gold Coast in Queensland (‘Qld’), whether they are a professional firms or a corporate client. We assist you in submitting an application (or applications) to IP Australia to protect the value of your intellectual property asset (or assets) while keeping you aware of your obligations in establishing and retaining those rights as your business evolves.

Ramsden Lawyers are the intellectual property lawyers for 2017.

Understanding the significance of IP assets

Intellectual property spans across multiple areas of intangible property rights recognition. It includes patents, copyright, designs, trade marks and trade secrets. More innovative aspects of IP law also extend into the realms of plant genomes. It is frequently the source of interesting and complex legal decisions at the cutting edge of law and technology.

For example, in Telstra Corporation Limited v Phone Directories [2010] (‘Telstra’), the Federal Court refused Telstra’s argument that Phone Directories should not be allowed to copy content out of the Yellow Pages and White Pages and publish it as their own. The court decided that Telstra could not claim copyright on hard copy databases; they had not added any original human work to it as the data had been compiled and arranged by a software program rather than a human.

The case took IP law in an interesting direction. Based on the finding in Telstra and the pre-existing case law, an inconsistency exists in Australian IP law whereby copyright subsists in databases compiled and arranged by human authors, but not where the arrangement is computer generated.

It is understanding the nuances of IP law as it stands in 2017 that sets us apart from other firms and makes our business lawyers chosen by clients.

Intellectual property lawyers with cross-sectional industry experience

Intellectual Property is filled with interesting cases, such as the above, that require a team of dedicated IP lawyers (or patent attorney / patent attorneys) to decipher and apply it to your circumstances in real time. We provide our clients with an intellectual property lawyer experienced in all IP law matters and take the time to explain often complex concepts in plain language for your comfort and upskilling.

Our attorneys’ method of IP law is a strategic approach based on an experienced understanding only possible with a team of diverse intellectual property lawyers that have experienced the intersection of IP within multiple industries, allowing them to identify the overarching patterns as well as industry-specific nuance.

Resolving issues

Our attorneys’ expertise begins at the point of assisting clients to protect the value of the symbols, designs and processes they have established and relied upon, or intend to establish. We are adept at undertaking comprehensive yet swift searches on existing patents and trademarks as well as their status. This forms an important part of the initial due diligence process whether registering your branding, logo, symbol or invention domestically or overseas. The due diligence process is essential to ensure that you are not or will not be infringing existing registered branding, a logo, a symbol or an invention.

We can advise on the availability of a certain sign that a client wishes to retain for their use, and provide guidance on how best to strategise to accomplish their IP law goals.

Our attorneys’ experience also extends to providing guidance on the design and lodgement of patent specifications, trademark applications and designs. We guide you through the process of modifying, amending and renewing existing IP, complete licensing documentation on your behalf and subsuming the role of a patent attorney.

It is important that your trade mark attorney (or any other intellectual property lawyer) continues to diligently monitor your registered property, both for infringing competitors and looming renewal dates.

Without registered intellectual property you may be forced to rely upon the more difficult to establish and more costly to pursue common law tort of ‘passing off’, which requires that you prove both goodwill in your related goods and services and that there is an element of misrepresentation on the part of the offending party. Passing off also does not provide the same monopoly rights that can be achieved via a proper IP Australia registration (and paying the attaching fees).

In the event that negotiations with another party become litigious, we are also experts in intellectual property law litigation.

Ramsden Lawyers advocates for lawyers to play a commercially active role in intellectual and technological progress by ensuring that ideas are protected the same way as tangible physical property in order to drive industry and progress through innovation.

Cross jurisdictional capabilities

Our Qld solicitors have acted for and dealt professionally with another solicitor or solicitors all across Queensland (including Brisbane) as well as in NSW, WA and Victoria (particularly firms in Sydney, Perth and Melbourne). Ramsden Lawyers is acutely aware of the economic significance of intellectual property such as, amongst other things, patent protection and trade marks for protecting brands overseas.

Australia’s geographical, political and ties to businesses in South East Asia. We are a Gold Coast leader in providing legal advice and services to clients based out of Asia. We excel at acting for our Asian clients on large projects for subsidiary companies, large property acquisitions and developments.

Patents

This involves an inventor (or inventors) being granted exclusive rights over a product or process in exchange for detailed public disclosure of its function. The process requires that the inventors appropriately define and disclose their invention and meet requirements such as novelty and usefulness.  Once a patent is granted, the inventors receive a legally enforceable right to a monopoly on the invention described.

Copyright

Grants a creator of an original work exclusive rights for its use and publication for a set period of time. Our Gold Coast intellectual property lawyers help clients navigate the limitations and exceptions, such as fair use, and protect their work from unsolicited replications.

Trademarks

Are recognisable signs, designs or expressions used by consumers to identify products or services of a particular business. We can assist you in registering, maintaining and enforcing your company’s trademarks or defending wrongful or baseless threats of infringements.

Designs

Is an area of IP law that protect visual designs such as shapes, configurations or compositions of pattern and/or colour. We assist clients in meeting the formalities for having a design recognised and infringement action. We also assist our clients to defend infringement actions.

Trade secrets

Involves protecting highly coveted commercial information from a competitor relating to business and/or manufacturing processes. We assist clients to protect their hard-earned industry knowledge and confidential information and can help you weigh up whether the best approach is through non-disclosure agreements or the registration of IP. In the event trade secrets are being abused by a competitor, we enforce your rights for you.

Domain names

Involves registering a domain name. Frequently, domain name squatting is a source of dispute amongst businesses where one party has acquired, but is not using, a domain name that appears to pertain to another business. We specialise in advising clients of the difference between a domain name registration, a business name and a trade mark. Importantly, having a business name does not entitle you to a corresponding domain name. The only way to prevent domain name squatting is to have a registered trade mark, which such an individual would then infringe upon, or alternatively negotiating with the other party. Depending on the willingness of the other party to negotiate, a favourable solution may not be possible and you may be forced to utilise another domain name that is less desirable or beneficial to your business.

Your Application

If you believe that you will be seriously disadvantaged because of the time taken between filing and examination of your particular application, we may request that your application be examined sooner. An application to expedite must be accompanied by a declaration (witnessed) detailing the reasons for the request. Requests are assessed on their individual merit and are more likely to be accepted if any delay examining your application is likely to result in a particular commercial or other form of disadvantage.

When your application for registration is examined, it will be assessed to see if it meets the requirements of the relevant legislation (e.g. the Trade Marks Act 1995 (Cth), the Designs Act 2003 (Cth), etc.). If your application meets all the requirements, it will be accepted for registration. If not, we will be sent a report setting out any requirements that need to be addressed before registration can be affected. We will reply in writing and address any matters which have been raised.

Timeframes

The Trade Marks Act 1995 allows you fifteen (15) months from the date of the examiner’s first report in which to meet any requirements identified by the examiner and to have your application accepted by the Registrar. If we need additional time, we may request and pay for extensions of time up to a further six (6) months.

From fifteen (15) to twenty-one (21) months, extensions will be granted on the payment of fees to IP Australia. In addition to providing the appropriate fee, requests for extensions beyond the twenty-one (21) month period must be accompanied by a declaration outlining the specific grounds for the desired extension with further fees payable.

After Acceptance Of Your Application

When your trade mark is accepted for registration, the details of the application will be advertised in the Official Journal of Trade Marks.

For three (3) months after the advertisement date, anyone who believes your trade mark should not be registered may oppose its registration.

If your application is opposed, we will have the opportunity to design a strategy to defend against the action. Only a very small percentage of applications are opposed.

Registration

If no opposition is filed against your application, or if opposition is unsuccessful, your trade mark will be registered when we pay the registration fee. Note that it is also possible that there will be multiple oppositions, and that those oppositions must be addressed before your application can proceed.

If all oppositions cannot be overcome, it may be necessary to seek to register an alternative form of IP. Alternatively, you may form agreements with the party or parties mounting the oppositions against your proposed registration. Such agreements can create a commercially viable licensing arrangement whereby you are entitled to use of a registered trade mark for a fee.

If you delay payment beyond the end of the opposition period, there is a chance someone can request an extension of time to oppose. This can be avoided by paying the registration fee early.

IP Australia will then send us a Certificate of Registration and record the details of your trade mark in the Register of Trade Marks.

Your trade mark will be registered as from the date of filing the application, rather than from the date of the examination or acceptance.

The earliest date your trade mark can be registered is seven and a half months (7.5) after an application is filed. This is to allow IP Australia to fulfil its international obligations to allow six months for applicants to claim a priority date based on overseas filing under the Madrid Protocol. The Madrid Protocol is an internationally recognised agreement between countries that standardises the way in which you can obtain internationally valid trade mark registration, registered patents or registered designs.

Renewal

Late fees apply if the registration is renewed after the expiry date.

Two (2) months before the expiry date, IP Australia will send you a reminder notice to your address for service informing you of the fees and steps required to renew your registration. The Registrar will renew your trade mark registration when the renewal fee is paid.

Examination

Registered designs are not automatically examined. Our current records indicate that most designs are not examined as clients do not often need to enforce their rights. However, examination must be completed if you need to enforce your rights in the design or if a third party wants to confirm the validity of the registration.

If you think you may need to have your design examined, our team of solicitors can provide you with in depth legal advice concerning examination and its effect on your prospects in any potential litigious dispute or disputes.

To request examination of your design, we can file a Request for Examination on your behalf. After we file the request, IP Australia will then check that your registered design meets all relevant requirements of the Designs Act.

If the design satisfies the requirements under the Act, we will receive a notice informing us that your design has been examined and a certificate of examination has been issued. Once this occurs, we will be able to commence legal action of your behalf to enforce your rights with respect to the design. In addition, a notice advertising that the design has been certified will be published in the Australian Official Journal of Designs.

If the design does not satisfy the requirements under the Act, we will receive an adverse report that will outline the reasons why your registration, in its present form, is unsuccessful. However, we will have the opportunity to make submissions and/or amend the details in the design registration to rectify any issues.

Examination Requests from third parties

Other people can request examination of your registered design. They may also provide information relevant to the newness and distinctiveness of your design to be considered by the Registrar in the examination process.

They will pay half of the examination fee, and then you must pay the balance of this fee, because if your design is certified, you stand to benefit from this action. Once both parties have paid the appropriate fee, examination will commence. If a third party requests examination and you do not pay the balance of the fees, the design registration will cease.

If your design is found not to be new and distinctive during examination and you are not able to overcome the objection, your design registration will also cease.

Infringement

If your registered design is infringed, or you believe it is being infringed, you should immediately request examination. If your registered design is examined and certified, we can then take legal action against the competing party. However, if it is examined and found invalid, your design registration will be revoked and we will not be able to take any action.

Renewal

The initial period of registration for your design generally lasts for five years from the filing date of your application.

You may choose to renew your design registration for a further five year (to a maximum of ten years). If you do not renew your registration within the required timeframe, your design will cease.

Two months prior to the date of renewal, IP Australia will send us a renewal reminder notice. We can renew your registration for up to six months after the date of renewal, however additional fees will be incurred.

Renewals are a simple yet essential process and if not properly affected can see your registered trade mark, trade marks, patent (i.e. inventions) or design lapse, exposing you to infringements.

Key competencies as of 2017

  • Consultation on intellectual property matters, consultation on international trademarking and liaising with the World Intellectual Property Organisation (‘WIPO’)
  • IP Audits
  • Consultation and legal Advice on IP Australia proceedings, proceedings related to court filing and proceedings related to alternative dispute resolution
  • Protection of your property asset or assets
  • Conducting dispute resolution (i.e. resolution of disputes without having recourse to litigation)
  • Trademarking and trademark protection
  • Trademarking advice
  • Design Registration
  • Trademark registration
  • Patent Applications
  • Protecting a logo, symbol or branding

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