Oppositions

Co-existence agreements

Confidentiality agreements

Licensing and transferring of IP rights

Searches and watching services

Infringement, freedom-to-operate and related advice

Expert witness services

Due diligences

IP portfolio management

Domain name registration

 

Apart from the core services of preparing and filing applications for patents, registered trade marks, registered designs, and registration of domain names, we also provide a host of related services, including the following:

 

Oppositions

Standard patent applications and trade mark applications are examined by the Patent and Trade Marks Office (IP Australia) to see if the patent or trade mark should be granted/registered. If the examiner approves of the application, the application will be accepted. It is then possible for 3rd parties to oppose the grant of the patent or registration of the trade mark. The opponent can raise various grounds of opposition and file evidence in support of these grounds. Similarly, the person applying for the patent or trade mark can challenge the opposition and file evidence in support of the challenge. This process takes place during opposition proceedings before an examiner/hearing officer at IP Australia. Opposition proceedings are a little bit similar to proceedings in court, but are far less formal and usually far less costly.

Often, there are various tactics and strategies that are involved in dealing with oppositions, and often these matters can be settled through negotiations between the parties.

We act for clients whose IP has been opposed by others, and for clients opposing the IP of others. We take a pragmatic business-orientated approach, helping our clients towards a practical solution, while minimising costs. 

 

Co-existence agreements

With trade mark matters, it is quite common for different businesses to have competing rights and interests. Sometimes, as part of a negotiated outcome, the parties will enter into co-existence agreements. These define how the parties can co-exist in the marketplace, and avoind treading on each others’s toes as far as possible. Often, a co-existence agreement will be entered into between the parties as part of a settlement of a trade mark opposition. We have experience preparing such agreements for our clients. 

 

Confidentiality agreements

Intellectual property can be a very valuable asset of a business. Sometimes, before IP is properly protected, it is necessary to discuss the IP with other people. For example, if an invention involves technology outside the area of expertise of the inventor, it is necessary to speak to experts such as engineers, scientists, manufacturers, etc, to determine details of the invention, whether and how it can be made, and so on. Alternatively, it might be necessary to speak to potential investors.

In these cirumstances, it is very important to protect the confidentialty of the invention. Otherwise it might no longer be patentable. Similar factors apply for designs. Of course there are many other reasons that it may be important to preserve the confidentiality of the IP.

A confidentiality agreement (non-disclosure agreement) can be used for this purpose. We can prepare such documents for our clients and can advise them as to circimstances in which these documents might be required. 

 

licensing and transferring of IP rights

It is very common for people who own IP to licence others to use their IP. For example, you may have created an invention in the form of a product, but not have the resources to manufacture it on a commercial scale. in this case you may wish to licence a manufacturer to make and sell the product in exchange for a royalty. As another example, you may have a registered trade mark that you want to licence to others for them to use as authorised users, for example as part of a franchise. We can draft licence agreements for our clients and advise them on the issues relating to the licensing.

Alternatively, sometimes, people want to completely transfer their IP. This may be as part of an employment situation, because they sell their business, because they do not want to have the burden of commercialising the IP, etc. Often, the transferring of IP is referred to as assigning it.  Just like in the case of licensing, we can draft assignment agreements for our clients and advise them on the issues relating to the assignment.

It is also often necessary or adviseable to record the licensing or assignment of IP at IP Australia. Again, this is a service that we provide to our clients. 

 

Searches and watching services

There are various types of searches that can be done in relation to IP. For example, you may want to have a search done to assess whether your invention or design is novel (new), because if it isn’t it might not be possible to protect it. Similarly, you may want a search done to assess whether a trade mark that you want to use is available to be registered.

Another common reason for having a search done is to assess the risks of infringing the rights of other people.

There are also other reasons for doing searches. Searches can be very useful for minimising risks and assessing the “lay of the land” in relation to IP.

We advise our clients on the different types of search that can be done in their particular circumstances, and arrange the carrying out of searches.

A watching service is a type of regular search that can be done to keep watch on a particular situation. A common type of watching service is to check for new applications for IP protection that conflict with your IP. For example, a monthly watching service may be maintained to check for new trade marks that have been accepted by IP Australia. If the watching service reveals a newly accepted trade mark that you think is too similar to your trade mark or business name, you may wish to oppose it. The watching service can alert you to the other trade mark in time to meet the deadline for filing the opposition. 

 

Infringement, freedom-to-operate and related advice

You may have a product, method, concept (invention), design, trade mark, etc, and you are concerned that it might infringe someone else’s rights. Perhaps you have even come across someone else’s IP which you fear you may be infringing.

Perhaps you have even received a nasty letter from someone accusing you of infringing their rights (or their client’s rights if they are a lawyer or attorney).

On the other hand, perhaps you believe that someone else is infringing your rights.

We provide various services in relation to the issue of infringement.

One of the services that we provide is to analyse the situation and to provide a professional opinion as to whether infringement is occurring or even if the patent or registered trade mark or design is valid.

We also assist our clients in pursuing other people that are infringing our clients’ rights. Part of this may involve providing patent and trademark attorney support and advice to IP lawyers or barristers who are engaging in IP litigation on behalf of our clients. 

 

Expert witness services

The combination of our legal, patent-and-trademark-attorney, and engineering qualifications, and our real-life experience in these areas, makes us well-suited to provide expert witness services to parties that are in the process of litigation involving IP. We understand the issues both from the legal perspective and from the technical perspective. We have experience in providing expert witness services and have been successful in providing invaluable assistance and input to IP Counsel in such matters. 

 

Due diligences

There are circumstances when it is necessary to assess the “health” of the IP of a business. A prime example is when the business is about to be bought or acquired by a new owner. Sometimes, a business may want to assess the state of its own IP – for example, to check that all aspects are up to date, that money is not being spent maintaining IP that is no longer relevant, and to check that all relevant IP is properly protected.

These situations may call for a due diligence investigation to be performed, and this is a service that we offer.  

 

IP portfolio management

Different types of IP can remain active for many years. For example, patents typically have a maximum life of 20 years, while trade marks can be maintained in perpetuity. We maintain records of our clients’ IP, remind them of the due dates for renewing the IP, and attend to the renewal.

Most often, businesses and other IP owners do not have the systems in place to do this for themselves, and rely on us to perform these services. 

 

Domain name registration

There is often a close relationship between businesses’ trade marks and branding and their domain names. We can advise businesses on the issue of selecting domain names and on how this ties up with their trade marks, and can apply to register domoan names on behalf of our clients.

Another area where domain names and trade marks are relevant relates to the use of meta data including keywords on web sites, and the use of keywords in sponsored (e.g. pay-per-click) internet advertising. This is an area where infringment often occurs, even sometimes unknowingly. We can advise client on these matters.