Australia: An IP Audit: Protecting Designs Under Patent, Copyright and Trademarks Laws

Last Updated: 29 January 2013

by Bill McFarlane from Madderns and Nicholas Fox from Simmons & Simmons

Conduct an IP Audit – there are many helpful sites which provide a variety of steps

One such site is available on the WIPO site

Audits can be conducted by you, IP knowledgeable personnel, or outsourced to patent/trademark/design attorneys and legal firms knowledgeable about copyright (there may also be a need to consider employment contracts and other contracts for outsourced works)

The auditor needs to be knowledgeable about the different types of IP (registrable, un-registrable and not-registrable).

Patents Registrable
Trademarks Registrable
Designs Registrable
Copyright Registrable US and few other countries © symbol
Plant Varieties Registrable
Integrated Circuit Protection Unregistered Rights (M) symbol
Trade Secrets Not registrable

Clearly the extent of any audit will depend on the time, effort, and cost of the process but even a cursory audit will identify the main assets, glaring gaps in the portfolio and risks and forms a base of information that can be shared and used for policy settings and progress reports.

Active management of the portfolio includes:

  • Ensuring the various departments talk to each other
    • marketing knows what engineering is doing, can, and cannot do
    • what's in the wind so that trademarks and marketing expenditure is timed to occur before release of the product or service
    • user and technical manuals and advertising information complement each other
  • What IP to apply for, renew, or abandon

Maintaining an IP register or at least updating it on a regular basis

Maintaining renewal and reminders

Cost management and budgeting for the future

Knowing what is a trade secret or should be kept confidential – treating it accordingly with marking and procedural steps to be followed by staff

Product and Service marking of IP rights Patent, TM, Design, Copyright to act as a notice of those IP rights (where are these marks needed by law and the consequences of not using them)

Copyright, Trademarks and Designs

What are they and can they all protect a single product or service?

Copyright examples

Trademark examples

Design examples

Non-traditional trademarks

3D shape trademarks

Design protection registered and unregistered

Where does Copyright fit it?

Can design coverage overlap with Copyright?


Examples of a product that has all three forms of protection

Strengths and Weakness of each form of protection

  • International
  • Scope
  • Lifetime (and if renewable during that lifetime)

Patents – technical inventions

Patents protect technical inventions

How something is achieved rather than what it looks like

20 year duration

Covers anything which works in the same way even if developed independently

Invention must be new and non-obvious

Prosecution costs are siginficant

Trademarks – indicators of origin

Traditionally confined to trade names and logos

More recently expanded to cover non-conventional marks

  • Sound marks
  • Smells
  • Gestures
  • 3D marks

Sieckermann criteria

  • Represented graphically, clear precise, self contained easily accessible, intelligible, durable and objective

Potentially unlimited duration

Copyright, unregistered design right and unfair competition

Copyright works

  • Literary, artistic, dramatic, musical or artistic works

Limited to copying

Duration – life +70 years

Can cover 3D reproduction of 2D images

Extent of protection varies on jurisdiction

  • Slavish copying covered by unfair competition – DE, NL
  • UK/ EU un registered design right
  • No copyright protection for designs in Canada

Pros & Cons


  • Strong but expensive. The only way to protection function


  • Potentially unlimited duration but acting as an indicator of origin difficult


  • Relatively cheap, but uncertain scope


  • No upfront costs but need to evidence to establish creation. Protection limited to copying. Not always available

GOAL has exercised reasonable professional care and diligence in the collection, processing, and reporting of this information. However, the information/data used is from third party sources and GOAL has not independently verified, validated, or audited the information. GOAL makes no representations or warranties with respect to the accuracy of the information, nor whether it is suitable for the purposes to which it is put by users. GOAL shall not be liable to any user of this presentation or to any other person or entity for any inaccuracy of this information or any errors or omissions in its content, regardless of the cause of such inaccuracy, error or omission. Furthermore, in no event shall GOAL be liable for consequential, incidental or punitive damages to any person or entity for any matter relating to this information.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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