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
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
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)
is the principal exporter of the products, rather than merely
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
the cost of insurance of eligible IP
payments to an overseas representative for promoting your
engaging a market consultant to undertake export market
costs of travel to and communication with the export
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
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
the cost of insurance premiums paid to protect against
potential infringement of an applicant's IP in countries
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.
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