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Intellectual Property glossary

Australian IP law is spread across multiple Commonwealth Acts — Patents, Trade Marks, Copyright, and Designs — and the common law actions of passing off and breach of confidence. This glossary covers 40 commonly used terms.

In short

This is a glossary of 40 key terms used in Australian intellectual property practice. Each entry has a plain-English definition and, where relevant, a citation to the governing IP Act.

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40 terms

Definitions

Account of profits

An equitable remedy in IP infringement requiring the defendant to pay over profits made from the infringement, as an alternative to damages.

Copyright Act 1968 (Cth) s 115(2)

Assignment

A transfer of ownership of an IP right from one party to another. Must be in writing for most registered rights.

Patents Act 1990 (Cth) s 14

Breach of confidence

An equitable cause of action protecting information that has the necessary quality of confidence and was communicated in circumstances importing an obligation of confidence.

Coco v AN Clark (Engineers) Ltd [1969] RPC 41

Classes (Nice Classification)

The international classification system grouping goods and services into 45 classes for trade mark registration purposes.

Trade Marks Act 1995 (Cth)

Deceptive similarity

A ground of opposition and infringement for trade marks — the mark is so nearly resembling another that it is likely to deceive or cause confusion.

Trade Marks Act 1995 (Cth) s 10

Design

The overall appearance of a product resulting from visual features such as shape, configuration, pattern, or ornamentation.

Designs Act 2003 (Cth) s 5

Distinctiveness

The ability of a trade mark to distinguish the applicant's goods or services from those of others — a prerequisite to registration.

Trade Marks Act 1995 (Cth) s 41

Examination

The process by which IP Australia examines a patent, trade mark, or design application against the formal and substantive requirements for registration.

Patents Act 1990 (Cth) s 44

Fair dealing

Statutory exceptions to copyright infringement covering specific purposes such as research or study, criticism or review, and news reporting.

Copyright Act 1968 (Cth) ss 40-42

Groundless threats

An action available to a person threatened with an IP infringement suit that is unjustified, allowing them to seek a declaration and damages.

Patents Act 1990 (Cth) s 128

Infringement

An unauthorised act that falls within the exclusive rights conferred by an IP right, such as making, using, or selling the protected subject matter.

Innovation patent

A second-tier patent formerly available under the Patents Act, phased out for new applications from 25 August 2021.

Patents Act 1990 (Cth) Chapter 2

Inventive step

The requirement that a patentable invention must not be obvious to a person skilled in the relevant art in light of the prior art base.

Patents Act 1990 (Cth) s 7(2)

IP Australia

The Australian Government agency responsible for administering the registration of patents, trade marks, designs, and plant breeder's rights.

Licence

A permission granted by the IP owner allowing another party to exercise specified rights in the IP, often in exchange for royalties.

Madrid Protocol

An international treaty administered by WIPO that allows trade mark owners to seek protection in multiple member countries through a single application.

Trade Marks Act 1995 (Cth) Part 17A

Moral rights

The personal rights of an author to attribution, against false attribution, and to integrity of authorship in respect of a work.

Copyright Act 1968 (Cth) Part IX

Newness

One of the two requirements for design registration — the design must be new as against the prior art base.

Designs Act 2003 (Cth) s 16

Notice of opposition

A document filed with IP Australia opposing the grant of a patent, design, or trade mark on specified grounds.

Trade Marks Act 1995 (Cth) s 52

Novelty

The requirement that a patentable invention must not have been publicly disclosed anywhere in the world before the priority date.

Patents Act 1990 (Cth) s 7(1)

Opposition grounds

The statutory grounds on which the registration of a trade mark, patent, or design may be opposed before grant.

Trade Marks Act 1995 (Cth) Part 5

Originality

The requirement for copyright subsistence — the work must originate from the author and involve some independent intellectual effort.

IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14

Passing off

A common law tort protecting the goodwill of a business against misrepresentations by another trader that damage or are likely to damage that goodwill.

Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491

Patent

A registered right granting the patentee exclusive rights to exploit an invention for a limited period, in exchange for public disclosure.

Patents Act 1990 (Cth)

Patent specification

The document that describes and claims an invention in a patent application, consisting of a description and claims.

Patents Act 1990 (Cth) s 40

Plant breeder's right

A registered IP right protecting new varieties of plants that are distinct, uniform, and stable.

Plant Breeder's Rights Act 1994 (Cth)

Prior art base

All information made publicly available anywhere in the world before the priority date, against which novelty and inventive step are assessed.

Patents Act 1990 (Cth) Schedule 1

Priority date

The date from which novelty and inventive step are assessed, typically the filing date of the first application disclosing the invention.

Patents Act 1990 (Cth) s 43

Provisional application

A first patent application establishing a priority date, which must be followed by a complete application within 12 months.

Patents Act 1990 (Cth) s 38

Publication

Making a work or invention available to the public, which for patents forms part of the prior art base and for copyright affects term in some cases.

Registered design

A design registered under the Designs Act that confers exclusive rights in relation to the visual features of a product for up to 10 years.

Designs Act 2003 (Cth)

Royalty

A payment made to an IP owner for the right to exploit the IP, often calculated as a percentage of sales or a per-unit fee.

Search report

A report prepared during patent examination identifying prior art relevant to novelty and inventive step.

Patents Act 1990 (Cth) s 45

Specification (trade mark)

The description of the goods or services for which a trade mark is registered, classified under the Nice Classification.

Trade Marks Act 1995 (Cth)

Substantial identity

A test for trade mark infringement — whether a mark is substantially identical with another when compared side by side.

Trade Marks Act 1995 (Cth) s 120

Substantial part

Copyright is infringed by reproducing a substantial part of a work — assessed qualitatively, not merely quantitatively.

Copyright Act 1968 (Cth) s 14

Term of protection

The period during which an IP right subsists — 20 years for standard patents, 10 years for trade marks (renewable), life plus 70 years for most copyright works.

Trade mark

A sign used or intended to be used to distinguish the goods or services of one trader from those of others. Registrable under the Trade Marks Act.

Trade Marks Act 1995 (Cth) s 17

Use of trade mark

The use of a sign as a trade mark — i.e. as a badge of origin — which is required for infringement and for maintaining registration.

Trade Marks Act 1995 (Cth) s 7
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