Originally Published 1st July 2009

Protecting your intellectual property rights overseas is imperative for any business which trades or plans to trade outside of Australia. Having the appropriate registrations for trade marks, patents, designs and copyright in place is an essential part of any international expansion plan, and can avoid expensive difficulties further down the track.

The Australian Government now offers further assistance for exporters by allowing the recovery of some of the cost of seeking such IP protection, following recent amendments to the Export Market Development Grants (EMDG) Scheme.

Exporters may apply to recover the cost of granting, registering or extending their IP rights under foreign laws, including legal fees, as well as the cost of obtaining insurance to protect their existing IP rights.

Now is the time to protect what are often your most valuable assets – your brand names, inventions and product designs.

Part I: What is the EMDG?

The EMDG scheme is an Australian government financial assistance program administered by Austrade for both aspiring and current exporters. It aims to help exporters who promote their Australian made products overseas (excluding New Zealand), and to encourage other new and aspiring Australian businesses to develop export markets.

Part II: Eligibility for the EMDG

Eligibility for the EMDG is based upon whether an applicant:

  • conducts business in Australia
  • has reported an annual total turnover of A$50 million or less during the previous financial year
  • has spent A$10,000 on 'eligible export promotional activities' during the last two financial years
  • is promoting its products (goods, services and/or IP) overseas
  • is the principal exporter of the products, rather than merely an agent.

To be able to claim an EMDG an applicant must have spent funds seeking out or developing an export market for their product. An applicant is also required to provide evidence or documentation of the expenses incurred within the last financial year.

Part III: Expenses that can be claimed

The EMDG reimburses applicants up to 50% of their expenses, where expenditure passes the minimum A$10,000 threshold. An applicant's expenses must have been incurred on 'eligible export promotion activities', and are reimbursed in up to a maximum of eight government grants.

'Eligible export promotion activities' are spread across nine categories, which include:

  • the cost of granting, registering or extending rights of eligible IP
  • the cost of insurance of eligible IP
  • payments to an overseas representative for promoting your products abroad
  • engaging a market consultant to undertake export market research
  • costs of travel to and communication with the export market
  • costs of advertising and promoting (including providing free samples of) your product to the export market.

Registration/insurance of eligible IP

In respect of grants relating to IP protection, the grants apply in circumstances where:

  • IP rights are primarily the result of work or know-how conducted in Australia
  • there is a trade mark owned, assigned or first used within Australia.

In particular, under the scheme, applicants may claim:

  • payments made to lawyers or patent attorneys who provide advice or assistance in gaining protection for their IP in the foreign market
  • the cost of insurance premiums paid to protect against potential infringement of an applicant's IP in countries outside Australia.

Therefore, the cost of legal advice, which assists an applicant in gaining registration (or an extension of a period of registration) of IP rights in countries other than Australia or New Zealand, is recoverable under the EMDG scheme.

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.