Patents

Sources of law

The primary source of law for patents in Australia is the Patents Act 1990 (Cth). 

Unpatented inventions are protected through the law of confidence, which is discussed in Section 6 below.

Substantive law

Nature and duration of the right. A patent gives the patentee the exclusive right to “exploit” an invention and to authorise others to exploit an invention. This includes:

• where the invention is a product — making, hiring, selling or otherwise disposing of the product, or offering to do so, using or importing the product, or keeping the product for the purposes of doing any of those things; and
• where the invention is a method or process — using the method or process, or exploiting a product resulting from the use of the method or process.

The maximum life of a patent is 20 years. Patents for new pharmaceutical substances may be extended for up to five years under a “Patent Term Extension”. 

Australia permits “Swiss-type” claims for the use of a known substance in the manufacture of a medicament for the treatment of a new condition, as well as “omnibus” claims defined by reference to the whole or part of the specification.

Australia currently has a system of “innovation patents” which is being phased out. Innovation patents have a lower threshold of patentability, similar to utility models, and last a maximum of eight years.

Patentability. The Patents Act requires that the invention must:

• be a manner of manufacture within the meaning of Section 6 of the UK Statute of Monopolies;
• be novel;
• involve an inventive step; 
• have utility (i.e. be useful); and
• not have been secretly used in Australia before the priority date by or with the authority of the patentee.

The prior art base is generally assessed at the priority date of the claim.

Human beings and biological processes for their generation are not patentable. The “manner of manufacture” requirement broadly requires that a product or process must be useful in a practical sense and consist of a vendible product. An abstract business method is not a “manner of manufacture”. Whether computer-implemented inventions are patentable is a complex question with conflicting approaches in Australian case law. 

Patent validity requires that the specification:

• is sufficient — i.e., it discloses the invention clearly and completely enough for the invention to be performed by the skilled person;
• discloses the best method known to the applicant of performing the invention; and
• includes claims that are clear, succinct and supported by matter disclosed in the specification.

Prosecution. Australia allows the filing of “provisional applications”, usually containing a broad description of the inventive concept, which establish a priority date but are never published and cannot proceed to grant. To benefit from the priority date, a complete application must be filed within 12 months of filing the provisional application. 

Certain public disclosures of an invention within a 12-month “grace period” before a complete application are disregarded.

After a patent is accepted by the Australian Patent Office for grant, other parties may file oppositions during an extendible three-month opposition period. The patent is not granted unless the opposition is overcome.

Entitlement. A patent can only be granted to a person who is “entitled” to it: the inventor, a person entitled to have it assigned to them, or their successors in title or personal legal representatives. Artificial intelligence machines cannot be named as an inventor. 

Licences and assignments. A patent is personal property and can be assigned, licensed and pledged as security. An exclusive licensee may take action for infringement, but the patentee must be joined as a party to the action (as either a defendant or a plaintiff).

Compulsory licences may be sought in certain circumstances, such as where the patentee has not adequately “worked” the patent, or granted to federal or state governments. 

Australia applies a global doctrine of exhaustion — the rights of a patentee come to an end when the patented product is first sold by, or with the authorisation of, the patentee. 

Enforcement

Infringement. “Primary” infringement of a patent occurs when an unauthorised person exploits the invention — e.g., making or selling an article or using a process that falls within the scope of the patent claims. This includes importing into Australia an infringing product that was made overseas.

“Contributory” infringement occurs when the defendant supplies a product to a third party which could potentially contribute to that third party infringing the patent — e.g., supplying a product whose only reasonable use constitutes patent infringement. 

Actively authorising (sanctioning, countenancing or approving) infringement, or being party to infringing conduct by participating in a common design, can also constitute infringement. 

Defences. Where a person has exploited a product, method or process immediately before the priority date, based on certain public disclosures by the patentee, or during the 12-month grace period, they may continue to do so after the patent is granted. This prior-use entitlement can be assigned, but not licensed, to a third party.

Other exemptions allow free access to patented inventions for regulatory approvals and experimental use (Patents Act sections 119B and 119C).

Defendants in patent infringement proceedings typically also attack the validity of the plaintiff’s patent. 

Remedies. If an infringement action is successful, the patentee may obtain injunctions, and either damages or an account of profits (Patents Act section 122). Monetary remedies may be reduced or not awarded for “innocent infringements”, and additional damages may be awarded on a discretionary basis. The right to damages for infringement backdates to the date of publication of the complete specification. 

Unjustified threats. A person who is threatened by another person with patent infringement proceedings may seek a declaration that the threats are unjustified and relief by way of an injunction and damages.

Registered designs

Sources of law

The Designs Act 2003 (Cth) provides for the registration of designs. Australia does not have a separate system of unregistered design rights.

Substantive law

Nature of the right. A registered design right protects the overall appearance of a product resulting from one or more visual features of the product. Visual features:

• include shape or configuration, as well as pattern or ornamentation; and
• exclude the feel of the product, the materials used in the product, and (for a product with one or more indefinite dimensions) the indefinite dimensions or more than one repeat of a pattern.

Visual features that are functional can be protected.

A “product” can be any manufactured or handmade “thing”, or the component part (if made separately) of a complex product.

The owner of a registered design has the exclusive right to:

• make the product or import the product into Australia for sale;
• sell, hire or otherwise dispose of the product or use for trade or business, or to keep the product for these purposes; and
• authorise another to exercise any of the above exclusive rights.

A registered design is a monopoly right, including over products created independently without knowledge of the registered design. 

The life of a registration is a maximum of ten years from the date of filing (renewal fees must be paid after the first five years).

Registrability. A design is registrable if it is both “new” (not identical to a prior design) and “distinctive” (not substantially similar in overall impression to a prior design). 

Generally, the priority date of a design is the filing date in Australia, or the filing date of an application in a Paris Convention or WTO member state.

Subject to some exceptions, publication or use of a design that occurs within the 12 months before the design’s priority date by a relevant entity will be disregarded when assessing whether a design is new and distinctive. 

Prosecution. Design applications are initially checked for formalities, and proceed to registration without any substantive examination as to registrability.

The owner of the design or a third party may request a substantive examination of the registered design at any time during or after its ten-year term of registration. After examination, the Designs Office “certifies” the design if it is valid, or revokes the registration. No action can be taken for infringement of the design until it is certified.

The monopoly in the design is determined solely by reference to the “representations” (drawings of the product in the registration). 

Generally the designer is the owner; but an employer or person contracting the designer may own the design if the design was created in the course of employment or under a contract.

Copyright/design overlap. Provisions of the Copyright Act 1968 (Cth) have the effect that an artistic work that has been registered as a design, or that has been applied industrially as a design to products, is denied copyright protection, unless it is a “work of artistic craftsmanship”. 

Licences and assignments. The owner of a design may assign or license its rights. Registered owners and exclusive licensees have concurrent rights to bring infringement proceedings. 

Compulsory licences may be sought where a design is being applied outside Australia but not in Australia to a reasonable extent, or may be obtained by federal or state governments.

Enforcement

Infringement. A person infringes a registered design by applying the design, or a design that is “substantially similar in overall appearance”, to any product in respect of which the design is registered without the consent of the owner, or by importing for trade or business, or dealing in, such a product. 

Defences exist for use that began before the design’s priority date (including during the 12-month grace period), and the use of a design for a spare part to repair a complex product. 

Remedies. If an infringement action is successful, the owner may obtain injunctions, and either damages or an account of profits. Monetary remedies may be reduced or not awarded for “innocent infringements”, and additional damages may be awarded on a discretionary basis. 

Unjustified threats. A person who is threatened by another person with design infringement proceedings may seek a declaration that the threats are unjustified and relief by way of an injunction and damages. 

Sources of law

The primary source of law for registered trade marks is the Trade Marks Act 1995 (Cth) (TMA).

Rights acquired through use of unregistered trade marks may be protected at common law by the tort of passing off and under the Australian Consumer Law — see below, Section 4.

Substantive law

The TMA provides for the registration of four types of trade marks: standard trade marks, certification trade marks, collective trade marks and defensive trade marks.

Filing. An application to register a trade mark in Australia must be filed with IP Australia and include a clear representation of the trade mark, the specification of goods or services, the name and address of the applicant, an Australian or New Zealand address for service and the details of any priority claim.

Examination. The Australian Trade Mark Office (ATMO) examines trade mark applications. It will issue a report with an objection to registration if satisfied that there is a ground for rejection. Those grounds include insufficient distinctiveness, conflict with a prior registration or application and unclear or incorrect classification. An applicant has a 15-month extendible period to overcome any objections raised.

Opposition. After an application is accepted for registration, it is published for a two-month opposition period. Any third party can oppose registration on any of the examination grounds and additional opposition grounds, which include that the applicant is not the owner of the trade mark, use of the trade mark would be likely to deceive or cause confusion with another trade mark that had a prior reputation, and the application was made in bad faith.

Registration and renewal. Once the opposition period expires without a successful opposition, the trade mark is registered for 10 years and issued a Certificate of Registration. A registration can be renewed indefinitely every 10 years by paying the official fees. No documents are required to renew or maintain a registration.

Non-use. Any third party can initiate a non-use action against a registration on two grounds. Those grounds are that the registered owner had no intention to use the trade mark in Australia at the time of filing or, if three years from the registration date has passed, had not used the trade mark within the preceding three-year period. The Registrar can also exercise a discretion not to remove a registration in certain circumstances.

Cancellation and revocation. Any third party can initiate a cancellation proceeding against a registration on any examination or opposition ground as a court proceeding before the Federal Court of Australia or Federal Circuit Court of Australia. The ATMO can also initiate revocation of registration or acceptance in limited circumstances.

Assignment and licences. An assignment of a trade mark should be recorded on the Trade Marks Register supported by documentary evidence.

A trade mark licence should be set out in an agreement that makes it clear that the registered owner retains ownership of the trade mark and exercises control over the licensee’s use. Licences do not need to be recorded on the Register. Unregistered trade marks and other brand assets may not be assignable.

Enforcement

Primary infringement of a registered trade mark occurs if a person uses a substantially identical or deceptively similar sign in relation to the same goods or services, similar goods or services or closely related goods and services, or if the registered trade mark is well-known, unrelated goods or services.

Secondary infringement of a registered trade mark can occur by any person connected to the course of trade of the infringing goods or services, such as a director, manufacturer or distributor. A person may also be liable as a joint tortfeasor if they direct or procure, or are personally involved in the commission of, an infringing act.

Defences. Defences to trade mark infringement include descriptive use, the exercise of a right to use the trade mark and prior use. A person also does not infringe a trade mark if a reasonable person would conclude that the trade mark was used by, or with permission from, the registered owner. This means that a registered owner’s ability to prevent parallel importation of genuine goods is limited.

Remedies. Remedies for trade mark infringement include an injunction, damages or account of profits. A person can also bring an action for unjustified threats and obtain relief in the form of a declaration that the threat is unjustified, an injunction restraining continued threat, or damages sustained because of the threat.

Border measures. The registered owner of a registered trade mark can give a notice to the Australian Border Force to object to the importation of goods that infringe the registered trade mark. If the ABF becomes aware of a shipment of potentially infringing goods, it will seize the goods and notify the registered owner.

Sources of law

Copyright is protected under the Copyright Act 1968 (Cth) (CA).

Australia is a signatory to the Berne Convention and the Geneva Universal Copyright Convention.

Substantive law

Nature of copyright. Copyright may subsist in: 

• literary, dramatic, musical or artistic “works” (Works); and 
• “subject-matter other than works” (Other Subject Matter), being sound recordings, cinematograph films, television and sound broadcasts, and published editions of works. 

Computer programs are protected as literary works, but circuit layouts for computer chips are protected separately under the Circuit Layouts Act 1989 (Cth). 

Copyright automatically subsists in a Work or Other Subject Matter when it comes into existence in a material form, and is not dependent upon any system of registration. There is no official public register of copyright in Australia.

Copyright is a bundle of exclusive rights to perform certain acts in relation to the protected Work or Other Subject Matter.

The exclusive rights in relation to Works are the right to reproduce in material form, publish and communicate to the public, and (for literary, dramatic or musical works only) the right to perform in public and make an adaptation.

Different rights attach to Other Subject Matter. In particular, there is an exclusive right to “copy”, not to “reproduce”. With some exceptions, copyright subsists in: 

• a Work until the end of the 70th year after the author of the Work died;
• sound recordings and cinematograph films for 70 years after they are made public; 
• television and sound broadcasts for 50 years from the first broadcast; and 
• published editions for 25 years from publication. 

Australia provides reciprocal protection for works or subject matter in a country which is party to the Berne Convention, Rome Convention, Universal Copyright Convention, WIPO Copyright Treaty or WIPO Performances and Phonograms Treaty, or is a member of the WTO.

Ownership. Generally, the author of a Work is the owner of the copyright. There are limited exceptions for commissioned photographs, portraits and engravings. Copyright in a Work that is created in the course of a person’s employment automatically vests in the employer. Ownership of Other Subject Matter differs depending on the subject matter and whether it has been commissioned.

Assignment and licences. Copyright (including future copyright) can be assigned or licensed.

Assignments must be in writing.

An exclusive licensee can institute proceedings for infringement, but until they join the copyright owner as a party, they can only obtain interlocutory injunctions.

The CA creates a number of compulsory licence schemes, which are operated by collecting societies, many of which have reciprocal arrangements with other countries for overseas royalties.

There can also be an implied licence to use copyright material, according to ordinary principles of contract law. 

Enforcement

Infringement. Primary infringement occurs when a person does, or authorises another person to do, an act comprised in the copyright, without licence of the copyright owner and where an exception under the CA does not apply. The key question is whether the defendant has performed an act comprised in the copyright in relation to a “substantial part” of the Work or Other Subject Matter. The quality of what is taken in relation to the work as a whole is more important than the quantity. 

If there is no causal connection between the work in which copyright subsists and the alleged infringing work, there is no infringement. 

Authorising an infringement of copyright is itself an infringement of copyright. Sale of, and other dealings in, infringing articles constitute secondary infringement.

Exceptions to infringement. The CA contains exceptions to copyright infringement for “fair dealing” for the purpose of: 

• research or study; 
• criticism or review; 
• parody or satire; 
• reporting news;
• access by persons with a disability; and
• the purposes of judicial proceedings and legal advice.

The CA does not define the term “fair dealing”, but sets out non-exhaustively some factors that must be taken into account in assessing whether the dealing is fair for the purpose of “research or study”. Case law has not provided a definite test for “fair dealing”, instead adopting a flexible approach. 

The CA also includes exceptions for:

• private and domestic use; 
• broadcasters;
• service providers;
• educational use; 
• research and preservation purposes; and
• libraries, archives and educational institutions (“flexible dealing” exceptions).

Unjustified threats. A person who is threatened by another person with copyright infringement proceedings may seek a declaration that the threats are unjustified and relief by way of an injunction and damages. 

Remedies. If an infringement action is successful, the owner may obtain injunctions, and either damages or account of profits. Damages or account of profits may be reduced or not awarded for “innocent infringements”. Additional damages may be awarded on a discretionary basis.

Certain infringements of copyright constitute criminal offences under the CA. Penalties include fines and imprisonment. 

Border measures. For physical goods, the CA sets out a scheme by which the ABF may confiscate or seize counterfeit goods imported into Australia which infringe copyright, once a copyright owner lodges a Notice of Objection with the ABF.

For online infringement, the CA allows copyright owners to apply to the Federal Court for site-blocking injunctions requiring carriage service providers to disable access to an online location (e.g., a website).

Sources of law

Trade dress, unregistered trade marks, “get up” and other similar assets can be protected under:

• the tort of passing off; and
• the Australia Consumer Law (ACL), contained in Schedule 2 of the Competition and Consumer Act 2010 (Cth).

Substantive law

Passing off

The elements of passing off are:

• the plaintiff has an established reputation or goodwill relating to its goods, services or indicia;
• there is or will be a misrepresentation by the defendant to the public in the course of trade, which is likely to confuse or deceive the public into believing that a connection exists between the defendant or its goods, services or business, and the plaintiff of the plaintiff’s business; and
• this misrepresentation will or is likely to cause damage to the business reputation or goodwill of the plaintiff.

Actions under the ACL

Under the ACL, a person must not, in trade or commerce:

• engage in conduct that is misleading or deceptive, or likely to mislead or deceive; and
• make false or misleading representations in connection with the supply or promotion of goods or services, including that:
  • goods or services are of a particular standard, quality, value or grade;
  • goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
  • the person making the representation has a sponsorship, approval or affiliation.

These provisions are very versatile and can apply to a broad range of conduct in trade or commerce in B2B and B2C contexts, and not only to protect trade dress.

Conduct is misleading or deceptive if it leads, or is capable of leading, a not insignificant number of relevant consumers into error or misconception. The test is objective and determined having regard to the surrounding context. 

Enforcement

Businesses typically bring actions for passing off and contraventions of the ACL concurrently with actions for IP infringement, particularly trade mark infringement. Such actions may also provide coverage where an action for IP infringement is unavailable.

Remedies available for passing off or contravention of the ACL include injunctions, damages, compensatory orders and corrective advertising. In addition, the Australian Competition and Consumer Commission may impose significant penalties for contravening the ACL, separately to private relief.

There is no independent right of publicity in Australia. Unauthorised uses of a person’s name, likeness or other indicia may be dealt with through actions for passing off or misleading or deceptive conduct.

Australia does not have a legislative regime for the protection of trade secrets. Trade secrets, know-how, client information, data, and other sensitive information are protectable by way of contractual and/or equitable duties of confidence. 

Contractual obligations of confidence are largely governed by the terms of the contract.

In order to establish breach of an equitable duty of confidence, the plaintiff must establish that the information is identified or identifiable with specificity, has a quality of confidence (is not public property or knowledge and has a sufficient degree of secrecy about it), has been received in circumstances importing an obligation of confidence, and that there is an actual or threatened use of the information without consent.

A contractual duty of confidence takes priority over an equitable duty to the extent that they overlap.

The primary remedy for breach of confidence is an injunction to restrain disclosure and use of information. Monetary remedies are also available in the form of damages or an account of profits.

Australia protects three categories of moral rights for authors of Works. These rights are: 

• the right of attribution as the author of the Work;
• the right of integrity (to object to derogatory treatment of a Work which prejudicially affects the author’s honour or reputation); and 
• the right not to have authorship falsely attributed.

Performers have equivalent moral rights.

Moral rights are not assignable, and an author can enforce moral rights even after the assignment of copyright in the work, restricting the activities of a subsequent copyright owner. However, an author can give their consent to something that would otherwise breach their moral rights.

Non-competes

In addition to confidentiality obligations, businesses may rely on non-compete clauses to restrain a worker’s activity within a particular geographic area or industry, for a particular time period, after their employment ends.

Under common law principles, restraints of trade are generally presumed void, but this presumption may be rebutted where a clause protects a legitimate interest of the employer, is reasonable in its duration and extent, and not contrary to the public interest. 

The use of non-compete clauses is currently under review by the Australian government, which may result in laws that significantly reduce their use in employment contracts. 

Business names registrations

If a business is carried on under a name that is not the name of the individual, partnership or company operating the business, it needs to be registered with the Australian Securities & Investment Commission. However, a business name registration by itself gives no right to act against infringers or to use the business name if the use would otherwise be unlawful.