New SME tools from IP Australia

James Riley
Editorial Director

Intellectual Property (IP) is one of the key battlegrounds of the information age. IP issues are important as never before as business processes evolve. The key differentiator between many organisations is what they think, rather than what they do.

Next week, on Tuesday 23 August, and IP Australia will host a half day forum on ‘Intellectual Property – Your Business Here and Abroad’. The event will be supported by Sydney startup hub Tank Stream Labs and APRA AMCOS, Australia’s official music rights agency, and held at APRA AMCOS’s premises in Ultimo in Sydney.

The keynote address will be given by Patricia Kelly, Director General of the Commonwealth agency IP Australia. She will give an overview of how IP Australia is assisting Australia’s SMEs secure the right IP protection and discover other business opportunities that can arise once their IP positions are in place.

Patricia Kelly: New tools to help small business better understand and protect their intellectual property

Ms Kelly is a career public servant with impressive credentials. She has been head of IP Australia since 2013, and led Australia’s bid to host the Square Kilometre Array (SKA) radio telescope. She was awarded the Public Service Medal in this year’s Queen’s Birthday honours. caught up with her before next week’s event.

“We really want to be a world-leading IP office, in terms of the quality of the work that we do, and the efficiency and the service that we provide to our customers,” Ms Kelly said. “We want people to get good service and robust IP rights from us, but we don’t want to have to charge them high fees.”

So, who are IP Australia’s customers? “Any applicants for IP rights. These are primarily patents and trademarks, but also designs and plant breeder’s rights.

“We have a lot of international customers, mostly patent owners who want to ensure they have an Australian patent. And Australian small businesses who want a trade mark without incurring professional services costs are a lot of our business.”

IP Australia has introduced TM Headstart, an online self-help system called to help businesses apply for a trade mark. It is a two stage process.

The first stage is to submit an application online to see if the trade mark can be registered – it is not being used by someone else, or is deceptive or offensive, for example.

An IP examiner advises and within a week if an application is likely to be successful, or what kinds of changes might have to be made. Stage Two is the actual registration process. The first stage costs $120, the second stage $80, for each class. There are 34 classes of goods, such as ‘computers’ or ‘footwear’.

“It’s not a huge amount,” says Ms Kelly. “And to apply for standard patent is just $370. But the real cost in IP is usually for professional services, particularly with patents. You really need an experienced drafter to develop a patent specification that will withstand legal challenge.

“We don’t offer that – it’s a commercial service, but by streamlining the process, especially with trademarks, we can keep the cost for small business down.”

Ms Kelly says that IP Australia is constantly looking at new technologies and new business models to add value to what it can provide Australian businesses. It has also introduced an education program, to show business the advantages IP protection.

“We hold workshops, and we have a particular focus on incubators. We have partnered with the CPA, using accountants to help small businesses understand the issues. There are millions of small businesses in Australia, and we try hard to get the message out to them.”

At Tuesday’s event Ms Kelly will outline some of the services IP Australia is providing. “We have been trying to support the government some National Innovation and Science Agenda, to better connect business and researchers. We have some particular value add there.

“We’ve also put out an IP tool kit which is meant to help collaboration, with model contracts and other documents. And we’ve developed a website called Source IP, which has all of Australia’s public sector patents, including everything the universities generate.

“If businesses want to know what the Australian research sector is generating, what they might be able to use, they can go to one place and find out if there’s any relevant IP and who to contact about licensing and other matters.”

A constant challenge, says Ms Kelly, is attracting and retaining skilled staff. IP Australia has 1180 staff, but finding specialists in the area is difficult. “Not only patent examiners, but ICT people to manage the technology. The census shows the problems that can occur if you don’t do that.”

The Productivity Commission is currently reviewing Australia’s IP arrangements, with a report due to be handed to the Government next month. IP Australia, as the Government’s IP agency, will be helping the Government frame a response.

“It will be important to get the right policy settings in place to get that balance right, between protecting rights holders and incentivising innovation, while not restricting people’s use of technology or goods and services.”

We asked Ms Kelly what small businesses, and especially startups, should be doing about IP, given that many of them wish to operate internationally. ”The very first thing they need to do is look at the IP position in the markets where they want to operate, whether they’ve got freedom to operate, whether they can register their trademarks and patents.

“China has been a particular issue because it’s such a big opportunity, but it is a country where the IP system can be hard to navigate. We are currently in the process of putting an IP specialist into the embassy in Beijing to help Australian businesses in China.

“At the moment, as an Australian company looking to move into China, you may find that your trademark will be registered in China in both English and Chinese, and you might have to buy it back.

“Big companies and small have been caught by this. It’s a different system. In Australia, you have a right to a trademark just because you’ve used it. If you tried to register a trademark, and IP Australia found the person next door had been using it for ten years, we wouldn’t grant it. In China, if you were the first to file, you get it. Some people in China squat on trademarks, and it can cost a lot to buy them back.”

IP Australia is affiliated with the UN’s World Intellectual Property Organisation (WIPO), which is currently headed by Australian Francis Gurry. There is a high degree of international cooperation in IP matters, explains Ms Kelly, but there remain many differences between regimes in different countries.

“There’s no such thing as a world patent. You can apply under the treaty system for a patent in a range of countries, and there is an international trade mark system called the Madrid Protocol, but there will still be for rights in each national market.

“We do rely on examination by other country’s officers in some cases. If you apply for 20 markets, the first thing an examiner does is look at whether it’s been examined anywhere else – part of the international system is that we have access to that information.”

Reserve your seat now for Intellectual Property – Your Business Here and Abroad.

Do you know more? Contact James Riley via Email.

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