It is all very well to be conscientious about protecting your intellectual property (IP), and this is relatively easy within Australia given that our laws in this area are about as sophisticated as they come.
However, in other jurisdictions, the protections may not be as strong. In fact, there might not even be any system of protection for the various types of IP.
Therefore, depending upon the country you are proposing to export to, there may be an unavoidable level of risk that your IP may end up being exploited there.
You will also want to ensure that in launching your service or product you are not inadvertently infringing an existing player’s IP (see box).
There is no substitute for getting professional advice from experts within the country itself. This, in part, is why many Australian law firms have entered into strategic alliances with commercial law firms worldwide.
In the meantime, let us look at the basics:
IP is often referred to as 'creations of the mind that can be protected once they take a tangible form'. There are seven types of IP rights in Australia:
- Trade marks
- Circuit layout rights
- Plant breeder's rights
- Confidential information (also known as ‘trade secrets’).
The first six are governed by separate pieces of Commonwealth legislation, while the last is a creature of common law and equity, and is perhaps one of the most important, particularly where ICT businesses are concerned.
If you want to protect your IP in export markets, you will first have had to move to protect these valuable assets here in Australia. You can do this by creating a protective 'AURA' around your business, which works as follows:
AUDIT – create a register of your IP assets, with professional assistance.
UNDERSTAND – be interested in those assets; understand what they are and how they can be protected under Australian law.
REGISTER – register all significant assets that are registrable under their respective registration systems. IP Australia is the federal government agency responsible for maintaining registers of trademarks, patents, designs and plant breeders’ rights.
ACT – secure assets that cannot be protected by registration - for example, by obtaining contractual obligations and acknowledgements from employees and contractors about your trade secrets, and ensuring copyright is clearly claimed where applicable.
This is not a one-off exercise. The ‘AURA’ will fade out if it is not regenerated periodically. Your review of your register should reveal some former assets that have become obsolete, or never really took off, and registrations that can therefore be left to lapse, and should also identify any new assets that need to be added.
Let us assume you have created a strong ‘AURA’, and now want to explore export markets.
Australia is a party to a number of treaties and international conventions in the IP sphere, but these do not necessarily provide the degree of international protection that many IP owners might wish for. In any event, they only bind the countries that are signatories to them.
For example, none of these treaties and conventions give rise to any such thing as an international trade mark, patent or copyright, although you may have an international reputation that you may be able to protect using common law rights (assuming the export market is a common law country, of course, which does not apply to most of Europe, or Asia).
Multilateral arrangements for the promotion of international consistency in the laws of copyright include:
- the Berne Convention that is administered by the International Division of the World International Property Organisation (WIPO), a specialised agency of the UN
- the Universal Copyright Convention that is administered by UNESCO
- the Agreement on Trade Related Aspects of Intellectual Property (TRIPS) which forms part of the 1994 General Agreement on Tariffs and Trade (GATT).
These all seek to promote uniformity amongst international copyright laws so that no registration is required, for example, for copyright to subsist in a work. However, there are still significant differences between the regimes of different countries' copyright laws.
Trademarks are probably the most sophisticated in terms of international arrangements. The Paris Convention of 1967, to which Australia and many other countries belong, allows you to get the same priority date in all member countries in which you file, provided you file in those countries within six months of the original filing date. This also applies to industrial designs and to patents, but for patents, you are allowed 12 months in which to file your other applications.
The Madrid Protocol of 1989 provides for a system of international registration of trademarks amongst countries that are parties to that treaty, so that you can name the other member countries in your Australian trademark application that you would like to register a trademark in, and end up with one registration in all those countries, provided that your application meets those countries' individual requirements for registration.
A similar regime is set up in relation to patents by the Patent Cooperation Treaty, but it is important to remember that it really only assists in getting the same priority date for all applications – the application is still examined under the individual laws of all countries concerned, although International Search Offices set up under the Treaty (like the US and Australia) attempt to streamline applications by reporting to other patent offices on whether the application meets the basic tests of patentability.
This might sound expensive, and it often is, particularly where it is necessary to translate applications into different languages, which is why some owners of IP that enjoys copyright protection (like computer software) often prefer to try and rely on this and the law of trade secrets in an attempt to protect their IP from misuse.
The problem with this strategy is three-fold:
- Copyright only protects the expression of the idea, not the idea itself. This has particular significance in the technology sector. The most graphic example of the limitations of copyright protection in this sense is the famous 1992 US case Apple Computer v Microsoft Corporation in which the court held that Apple's copyright did not extend to the functionality or idea of the "Windows" user interface, and since Microsoft had not copied the form of representation of the interface, they had not infringed Apple's copyright.
- You can have confidentiality agreements signed, and in the case of key people who are likely to build up vast know how in your organisation, you can even go one further and include restraint of trade provisions in them as well. However, if you are going to use these types of documents outside Australia, you will need to consider their enforceability in a particular country and be prepared to take proceedings in that country to enforce them if they are breached.
- If you do not, the word will pretty quickly get around that you are soft on enforcement, and your rights will be flouted. There are international law firms that specialise in investigation and enforcement of IP owners’ rights. These firms tend to place their branch offices in countries that are known to be "frontier territory" in recognising IP rights, and therefore where piracy is rife.
- Another interesting tactic these firms employ is developing networks of local intelligence agents in those jurisdictions that will tip them off when knock offs are spotted, so they can in turn inform the IP owner and hopefully, get the brief to launch the necessary urgent legal proceedings, raids and seizures etc.
It is interesting to note that Apple had not applied for a patent for aspects of the "Windows" system as they might have done, probably because Steve Jobs, the Apple founder, in fact got the ideas for his Macintosh system from Xerox in the first place. Xerox have regretted ever since that they did not apply for patents in the '70s to protect these ideas.
Our very own CSIRO on the other hand, is jubilant to have just won a patent case in Texas (summary judgment was handed down by Justice Leonard Davis on 13 November 2006), ruling that its 1993 US patent relating to a Wireless Local Area Network was valid, over the objections of the respondent, a Japanese owned company called Buffalo Technology, that had refused to pay CSIRO patent licence fees, and also Microsoft, Dell, Hewlett Packard, Intel, Apple and Netgear, who all brought proceedings questioning the validity of the CSIRO's patent. The case can be appealed on a point of law, but CSIRO are at present claiming the strongly worded judgment as a comprehensive victory, a vindication of their scientific leadership in wireless technology, and a demonstration of their business savvy.
- Publication or use of your invention or design can prevent later registration of a patent or design in that country if it means that the invention or design can no longer be considered "novel".
There are government agencies that might be able to assist you in navigating this maze. In New South Wales, the first port of call is the Department of State and Regional Development. Other States and Territories will have a similar department. Additionally, the federal government agency, Austrade, runs free seminars and development programs on exporting, and also offers export market development grants to successful current and would-be exporter applicants. There is also helpful information available on the IP Australia website, including links to many countries IP offices and websites, publishers providing international databases, and firms offering international services. In addition, IP Australia is currently undertaking an advocacy program with China which will involve in part providing information through their website and conducting seminars to assist traders with protection of their IP in China.
ARE YOU ABOUT TO TREAD ON SOMEONE ELSE’S TOES?
*Catherine Logan is a corporate partner at national law firm Hunt & Hunt. Hunt & Hunt is the Australian member of Interlaw, an association of independent commercial law firms across 120 cities worldwide, in 57 countries. In 2006, Hunt & Hunt entered into a formal strategic alliance with Austrade, enabling the firm to provide information, insight and introductions to its exporter clients.
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.