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Module 4: Intellectual property and commercialisation

1.2 Protecting IP internationally

IP protection, whether under a registration system (such as patents, trade marks, designs, and plant breeders rights), other legislative regimes (such as copyright or circuit layout), or common law (such as passing off) operates on a nation-by-nation basis. Establishing protection in Australia, or another country, does not automatically create rights in any other country.

Each country assesses and grants IP applications independently and has varying requirements, protection, enforcement, processes, and fees. It is therefore not possible to obtain 'worldwide protection' through a single application. However, there are a number of international and bi-lateral treaties concerning intellectual property (including some that make filing in a number of countries easier), including:

  • the Patent Cooperation Treaty (PCT) – this effectively establishes a crucial “priority date” in each member country, providing an opportunity at some future date to proceed to wider registration; it gives extra time to assess the value of an invention and its export potential before committing to the high costs involved in obtaining patents in numerous countries
  • the World Intellectual Property Organisation (WIPO)
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
  • Free trade agreements
  • Rome and Berne conventions on copyright
  • Madrid protocol
  • European Community schemes for trademarks and designs.

When disclosing or marketing an invention or design in Australia, it is important to ensure that the ability to patent or protect the design in another country is not invalidated. Under the above-mentioned international conventions, once protection is applied for in one country, it may also be applied for in other member countries, providing it is within the following time limits:

  • Patents and plant breeders rights – 12 months from the date of the first application in a member country
  • Designs and trade marks – 6 months from the date of the first application in a member country.

If an application is filed outside these time limits, the benefit of the international conventions cannot be realised and any earlier disclosure of your invention or design may invalidate the IP rights in other countries. It is also important to note that some countries are not members of these international conventions, and any publication or use can affect the applicant's ability to patent in those countries. Filing for international protection is expensive, particularly when it involves the translation of applications into other languages. In addition, each country will review the application through its own Patent Office, requiring fees to be paid and often requiring lawyers in those countries to be engaged at further cost.

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