Your top IP questions answered

• Q. What mistakes are typically made in IP protection?

  Cohen: A common mistake is failing to register IP in a timely manner, which can leave businesses vulnerable to copycats and can also damage your brand.

  And, if you plan on selling or manufacturing your product overseas, it’s also prudent to register your IP in the markets where you are doing business or planning to do business.

  Yorke: If you’re considering patent protection for a new invention, it's really important that you don’t disclose the invention to anyone before seeking proper advice on how to protect it.

  Public disclosure of an invention before you have sought patent protection for it can jeopardise your ability to get that protection. If you have put details of your invention on the internet, for example, and then you file a patent application for it, your application may be rejected. And even if you can get a granted patent for that invention, you could find that your patent is invalid.

  
  
• Q. What does an IP lawyer or consultant need to know to implement the best protections?

  Yorke: When we first meet a client, we need to find out what exactly they have come up with and whether anything has already been done to protect it. The more background information we have, the better. We also need to understand what they are looking to do with what they have come up with, both now and in the future.

  That then helps us to advise the client on the steps they need to take to get the best protection. Those steps might involve filing IP applications or putting contracts in place to secure ownership and control of the IP.

  
  
• Q. Are certain sectors more vulnerable than others in terms of IP risk?

  Cohen: The sector most vulnerable may be SMEs and startups that don’t engage with the IP system and are missing out on the protections afforded by registered IP rights.

  Economic research conducted by IP Australia shows that for Australian SMEs, IP rights provide an important set of tools for gaining competitive advantage in a market. They are instrumental for attracting finance, licensing and selling intellectual assets, and earning a return on intangible investment.

  Small, new businesses often lack a track record of product launches or satisfied clients to validate their potential. Investors can find it difficult to value the intangible assets on which a startup’s potential is built. Research shows that patents and trademarks can increase a startup’s likelihood of obtaining venture capital and investors’ estimates of the startup’s value.

  Startups that file for at least one IP right in their first year are twice as likely to achieve higher growth than their peers that filed no IP rights. For policymakers and investors, IP activity is an important indicator of a startup’s future growth potential.

  
  
• Q. How do you protect IP rights across numerous countries?

  Cohen: It is important to consider the future of your business and identify which markets you intend to trade in.

  To protect your IP rights across numerous countries, you can file through an international cooperation system. You’ll be able to start by filing a single application to cover your trademark, patent or design in multiple countries. You may need to take further steps depending on the type of IP and the country where you’re applying.

  For trademarks, the Madrid System allows you to file a single application and seek protection in more than 128 countries. For patents, the Patent Cooperation Treaty (PCT) enables you to file one international patent application that has the same effect as national applications in the PCT member states.

  Additionally, for designs, the Hague System governs the international registration of industrial designs. If you are unable to file an application via an international cooperation system, you can consider filing an application via the IP office of a relevant country.

  When operating internationally, you could consider using an international expert with knowledge of the legal systems and filing requirements in your chosen markets.

  
  
• Q. What are the potential outcomes of not getting IP protection right?

  Yorke: If you put a new product or service on the market and you haven’t sought proper IP protection for it, there is a risk that your competitors will take one look at it and say, ‘Actually, we’ll just do exactly what you’re doing.’ Failing to get IP protection, or not getting the right protection, can result in your losing any competitive advantage.

  We see a lot of issues around trademarks. A business will often spend a lot of money on creating a brand but won’t do a trademark search, and won’t seek trademark protection for their brand. They will launch a new brand, hit the market hard, and will then get a cease-and-desist letter saying something like, ‘You’re using our brand’, or ‘You’ve infringed our trademarks’. They then have to decide whether to fight a potentially lengthy legal battle or rebrand. Both options can be costly.

  If you’re about to spend money on a new brand, have trademark searches done to make sure you’ve got the ability to use the brand, and look at getting registered trademark protection for that brand. We often find ourselves advising businesses who get into trouble because they have failed to take these steps. These failures usually arise because a business didn’t spend a couple of thousand dollars at the outset on protecting its brand.

  
  
• Q. Can businesses file these applications themselves?

  Yorke: Businesses can file their own patent or trademark applications, but most people don’t understand how the patent or trademark systems work, and filing mistakes are very common.

  For example, with trademarks there are 45 classes of goods or services to choose from, and you also need to create a specification for each class you want protection in. If you get this wrong, you may find that your trademark protection doesn’t actually stop others from using your brand. Another mistake we see a lot is trademark applications being filed in the wrong business or company name, with the result that the trademark is invalid. Sometimes these filing problems can’t be fixed.

  A lot can go wrong when someone files their own trademark application. This will often be done to save money, but it can also be risky if the person filing the application doesn’t really understand what they are doing. If your brand is valuable, it’s a good idea to get proper advice on how to protect it.

  
  
• Q. If you think your IP rights have been infringed, what do you do?

  Cohen: It is important to monitor the market and proactively check for IP right infringement. If you suspect infringement, it’s crucial to act promptly to protect your interests and enforce your IP rights effectively.

  The specific steps and legal options available may vary, depending on the country and the nature of the infringement. It’s recommended to seek legal advice to understand your rights and the steps you can take.