Dundas Lawyers is often asked to advise on and implement intellectual property (IP) protection structures. Whilst there are too many permutations to discuss, one common structure is depicted as follows:
Benefits of an IP protection structure
The most common benefit is to protect valuable IP against the trading risks of an existing or new trading company. In addition, depending on the nature of the IP itself, it may be possible to enter into territory specific licences that will provide revenue to an IP Holding Company to fund continued product development of a product.
In Australia, the Patent Act 1990 (Cth) provides protection for inventors by preventing others from using, making, or selling patented inventions without permission. The Act also extends liability to parties that are not directly infringing patents but may contribute to or enable patent infringement by supplying a product.
The Federal Court decision in Maxim Media Inc. v Nuclear Enterprises Pty Ltd [2024] FCA 1443 involved an interlocutory application seeking injunctive relief by Maxim Media Inc. and Maxim Inc. (together, Maxim) (Applicants) for alleged breaches of sections 18 and 29 of the Competition and Consumer Act 2010 (Cth), passing off and infringement of a registered trade mark under section 120 of the Trade Marks Act 1995 (Cth).
In Australia, computer code can amount to confidential information as well as being subject to copyright protection. In some cases the two things overlap as was the case in decision of the Court in Optus Networks Pty Ltd v Telstra Corporation Ltd (2010) 265 ALR 281; [2010] FCAFC 21.
Electronic discovery in the Federal Court of Australia (FCA) is nothing new. From July 2014, the FCA began implementing the Court’s electronic court file (ECF) across its Australian registries. This enabled the Court to embrace the use of technology in proceedings, including the use of electronic discovery, eLodgement, eTrials, eCourtroom, and video conferences.
Justice Burley of the Federal Court of Australia in the case of Siemens Industry Software Inc v Telstra Corporation Limited [2020] FCA 901 ordered that Telstra, within fourteen (14) days, provide to Siemens all documents in its control relating to the identity of certain Telstra Account holders. Those account holders were suspected by Siemens of having infringed the intellectual property rights in certain software owned by them. This order was…
Further information
If you are considering an IP protection structure regardless of your stage of the business lifecycle, feel free to reach out to discuss your specific requirements:
Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS. Legal Practice Director T: +61 7 3221 0013 (preferred) M: +61 419 726 535 E: mburrows@dundaslawyers.com.au
Disclaimer
This article contains general commentary only. You should not rely on the commentary as legal advice. Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.
