Intellectual Property

Ex-employees and IP protection

The importance of protecting your intellectual property cannot be overstated.  Various threats are posed to the confidentiality and exclusive use a company enjoys with their intellectual property.  One (1) such threat is when an employee, informed of the company’s intellectual property, ceases to be an employee of the company.  How can you protect your company’s intellectual property from this ex-employee? [Read more…]

Trade mark infringement – the good faith defence

To build a brand, its vital for businesses to be aware of their rights with respect to using the intellectual property of others to avoid inadvertently infringing on someone else’s rights.  Where a person honestly and accidentally infringes another’s trade mark (Infringer) a defence that may be available is that the the mark in question was being used  in good faith.  The circumstances in which this defence is available is set out in  section 122 of the Act and is the subject of this article. [Read more…]

IP licences and state-based transfer duty

Transfers of intellectual property (IP) are not usually considered to be dutiable transactions pursuant to state-based Duties Acts.  That said the question is always whether the IP includes goodwill, which is dutiable and as a result whether the payment of transfer duty is required.

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Opposing a trade marks on the grounds of bad faith

If a someone has applied to register a trade mark and has done so in bad faith, knowing something they have said is incorrect or false, registration may be able to be opposed or, if it has already been registered, apply for removal of the trade mark on the grounds of bad faith.

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The test for infringement of circuit layout rights

Circuit layout rights automatically protect original layout designs for integrated circuits and computer chips under the Circuit Layouts Act 1989 (Cth) (Act).  While this right is a derivative of copyright law principles, they are a separate and unique form of protection.  This article aims to examine the test for infringement of circuit layout rights, which involves four distinct elements such as eligible layout, copying, without authorisation and substantial part.   [Read more…]

Can an AI be an inventor under the Patents Act 1990 (Cth)

In the recent decision of Thaler v Commissioner of Patents [2021] FCA 879, Beach J rejected the Deputy Commissioner of Patents’ (DCP) determination that, due to the inventor being named as an artificial intelligence system (AI) rather than a human, a patent application did not comply with the Patents Regulations 1991 (Cth) (Regulations). [Read more…]

Interlocutory injunctions and undertakings as to damages

An interlocutory injunction is an order made by the Court prior to trial either preventing or requiring some undertaking to be taken by one or more parties.  The Courts acknowledge that the imposition of such an interlocutory injunction on a party is not necessarily final and is subject to change.  As such, an undertaking as to damages is usually required by the party seeking an interlocutory injunction (Applicant).  This article discusses the established principles the Court will use to discern whether an Applicant has an adequate case for granting an interlocutory injunction. [Read more…]

Software royalties and income tax

The Australian Taxation Office (ATO) recently released a draft Taxation Ruling (TR) 2021/D4 (Draft Ruling) which considers whether certain software related royalties may be taxable.  In short, the Draft Ruling provides a much needed, and quite broad, scope for when consideration of computer software will be a royalty for income tax purposes.  This article discusses this broadened scope. [Read more…]

Non-fungible tokens – the new way to own IP?

Non-fungible tokens (NFTs) have been making headlines recently for being sold at auction for enormous sums of money.  Business school drop-out turned American DJ, 3LAU, apparently sold his NFT collection just over a month ago for $11.6 million USD ($15 million AUD).[1]  Grimes, otherwise known as Claire Boucher, a prominent musician and partner to Tesla CEO, Elon Musk, sold multiple digital artworks amounting to a total of $6 million USD ($7.79 million AUD).[2]

So what are NFTs and how can they help you protect your intellectual property (IP)? [Read more…]

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