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 Commonwealth of Australia

Patent Office, Trade Mark and Designs

Fee Revenues

 or Intellectual Property [IP]

Dave Elsmore

Page made 3 February 2008
 

 

Some Patent facts:

The Intellectual Property

[1] The term 'Intellectual Property' is sometimes used synonymously with the term 'Industrial Property'. But what do these mean? What really is intellectual or industrial property?

IP Australia (representing the Australian Patent Office, the Australian Trade Marks Office, the Australian Designs Office and the Australian Plant Breeder's Rights Office) says: "Intellectual Property represents the property of your mind or intellect. In business terms, this means your proprietary knowledge."

Patents, trade marks and designs are the main intellectual property rights. Other intellectual property rights are copyright, circuit layouts and plant variety rights. In recent times, the protection of geographical indications that indicate the geographic origin of goods such as wine has also become significant.

Other intellectual property rights may be protected at common law or in equity. For example, goodwill or commercial reputation that is attached to a mark, name or get up may be protected through the common law actions of passing off and injurious falsehood; while trade secrets and confidential information may be protected by the equitable action for breach of confidence.

The role of a patent attorney and a trade marks attorney lies primarily in the registrable intellectual property rights of patents, trade marks and industrial designs.

What is a Patent?

A patent is a monopoly which is granted for up to 20 years in respect of an invention. The patent system rewards owners of inventions by providing them with an exclusive right to exploit the invention in Australia whilst the patent remains in force. In return, the owner is obliged to disclose details of the invention in the form of a detailed patent specification, thus enabling anyone to use the technology once the patent expires.

A patent is granted to the owner of the invention who must be either the inventor, the inventor's employer, or someone else deriving title from the inventor.

Although a patent gives the patent owner the right to exclude others from exploiting the invention, the grant of a patent does not necessarily mean that the owner is free to exploit the invention. The owner of a patent must ensure that exploitation of the patented invention complies with all applicable laws and regulations, and does not infringe the patent rights of others.

Some examples of unpatentable subject matter are:

  • mere discoveries and ideas;

  • the arrangement of printed material on a sheet;

  • mathematical formula

    Patent Office Fee Stamps

[2 & 4] Patent fee stamps were introduced for the payment of fees under the Patents, Trade Marks, Designs and copyright Acts by the former Commissioner of patents Mr. H. R. Wilmot in 1953.

No Act or regulation specifically authorises these stamps.

However, Regulation 5 [No 2] of the Patents Regulations provides “payment of fees should be made at the patent office by such means, and in such manner, as the Commissioner directs”.  The Trade Mark Regulations and Design Regulations have similar provisions and the commissioner directed that certain fees must be paid by means of Patent Office Fee Stamps.

The system of fee stamps was introduced by prior agreement with the Audit Office and the [then] Department of the Treasury.  These stamps are printed by the Note Printing Branch and are required to be dealt with as “accountable forms”.

The stamps were sold across the counter. Stocks of stamps were kept by patent attorneys in appropriate denominations and were affixed to applications and cancelled by date stamp.

Commencing about 1962, from time to time thereafter the Institute of Patent Attorneys has contended that the use of these stamps is onerous, expensive and risky and should be abandoned.  The argument runs that loss or destruction of a stamp may mean permanent loss of money, while loss or destruction of a cheque does not.  However, the system of payment by stamps had many advantages for the Patent Office.

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First Series.  1954 - 1966

First Issue

Printed in sheets of 60 [12 x 5]. 

First colour given is that of the denomination.  The second colour is that of the key plate design.

Watermarked Crown C of A multiple [SG 15].  Perforation 14x14½ Comb.

2/- red on olive

2/6 red on black

6/8 read on dark green

10/-red on blue

£1 red on blue

£2 blue on green

£4 blue on orange

£5 blue on dark brown

£6 green on red

£7-10/- green on brown

£10 green on purple

£12 black on green

 

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Second Series.  1966 - 1978

First Issue             

Printed in sheets of 60 [12 x 5].  1976c sheet reduced to 50 [10 x 5] no imprint. 

First colour given is that of the denomination.  The second colour is that of the key plate design.

Watermarked Crown C of A multiple [SG 15].  Perforation 14 x 14½ Comb.

25c red and black

50c red and light blue

$1.00 red and indigo

$2.00 ultramarine and red

$3.00 ultramarine and dark brown

$4.00 ultramarine and olive green

$5.00 ultramarine in purple

$6.00 ultramarine and yellow bistre

$8.00 ultramarine and orange

$10.00 ultramarine and brown

$12.00 green and dark red-brown

$15.00 green and brown

$16.00 dark green and indigo

$20.00 dark green and purple

$24.00 black and dark green

$40.00 black and magenta

$60.00 black and brown

Printed on very thin paper, so thin that you can see the design clearly through the back of the stamp. 

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Second Issue.

Unwatermarked.  Perforation 14 x 14½ comb.

$3.00 ultramarine and dark brown

$10.00 ultramarine and brown

$20.00 dark green and purple

I have not seen any unwatermarked stamps.

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Third Series.  1978 - 1988 [4]

First Issue

Printed in sheets or 50 [10 x 5] Unwatermarked, no imprint. Perforation 14 x 14½ comb.

The first colour given is that the centre of the stamp, the second colour is the colour of the outer frame and value.

$1.00 vermilion on yellow olive

$2.00 blue on red

$3.00 blue on grey

$5.00 blue

$8.00 blue on orange

$10.00 blue on brown

$12.00 green on maroon

$20.00 emerald on plum

$40.00 black on a bright purple

$50.00 black on bright green

$60.00 black on brown

$100 grey on greenish yellow olive

In this 1978 issue I have found both thick unwatermarked white and cream papers.

I have seen/recorded the $1.00 $2.00 and $50.00 on thick cream paper.

I have seen/recorded the $5.00 $10.00 $20.00 $40.00 $50.00 and $100 on thick white paper.

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Second Issue c1980

Printed in sheets or 50 [10 x 5] Unwatermarked, no imprint. Perforation 13¾ x 14½ comb.

The first colour given is that the centre of the stamp, the second colour is the colour of the outer frame and value.

$1.00 vermilion on yellow olive

$2.00 blue on red

$3.00 blue on grey

$5.00 blue

$10.00 blue on brown

$40.00 black on a bright purple

$50.00 black on bright green

$60.00 black on brown

$100 grey on greenish yellow olive

I am waiting to add further studies on the rates of use of these stamps

Ok that's the stamps out of the way, we can now start on the recorded cancels used in the Commonwealth Patent Office at Canberra and Sub Offices in Melbourne and Sydney.

I am yet to see any dated cancels from Queensland, Western Australia, Tasmania, Northern Territory and South Australia.

But first some more info on how the Patent system works.

[3] Procedure for applying for Patents in Australia

The first step in obtaining a patent in Australia frequently involves filing a provisional specification at the Patent Office. The provisional specification is a written description of the invention, and filing it establishes a "priority" date for the invention described. The priority date is the date at which the newness of the invention will be assessed. The filed application will have priority over later-filed applications or published documents, and any patent eventually granted will not be damaged by them. After the provisional has been filed the invention described may be freely used. However, the specification is kept secret by the Patent Office, and the only information published by the Patent Office at this stage is the title, the applicant's name, the application date and the provisional number.

Within one year of filing the provisional a complete specification must be filed in order to maintain the priority date. The complete specification is based on the provisional specification but includes details of any modifications, developments and improvements to the invention. The complete specification includes a set of "claims" defining the scope of the protection sought for the invention. The monopoly granted under the patent will be determined by the wording of the claims. Once a complete specification has been filed no new matter may be added to the specification.

A patent application number is allotted by the Patent Office at this stage, and full details of the provisional and the complete specifications will be published by the Patent Office 18 months after the priority date. Damages may be assessed retrospectively to the date of publication in any successful infringement action which is brought after the patent is granted.

The Patent Office usually directs examination to be requested about one year after the complete specification is filed. During examination a patent examiner will conduct a brief search for earlier published documents to establish whether or not the invention is new. An official report is then issued containing details of the search and any other objections raised by the examiner. Provided the invention is new the objections can usually be readily overcome by proposing amendments to the specification or presenting counter-arguments, or both.

Once the objections have been overcome, the application is accepted. Acceptance is advertised to allow interested third parties to oppose the application. If there is no opposition, or an opposition is unsuccessful, the patent is sealed and a deed of letters patent issues a few months later. The application becomes a patent at sealing.

The maximum duration of a patent is 20 years from the filing date of the complete specification. Renewal fees for maintaining the application and patent in force must be paid every year starting from the fifth anniversary of the filing of the complete specification. If you instruct us to prepare and file a patent application for you, we will send you timely reminders at every stage of the procedure outlined above, together with our commentary and; if appropriate, our recommendations.

[3] Micro-organism deposits

What is a micro-organism deposit?

A "micro-organism deposit" is a deposit of biological material with a recognised international depositary such as the American Type Culture Collection (ATCC). The term "micro-organism" is used loosely to refer to a variety of biological materials including eukaryotic cell lines, such as hybridomas, fungi, yeasts, protozoa, bacteria and viruses as well as host cells containing genetic material such as plasmids and other vectors.

[3] Innovation Patent

Innovation patents are intended to provide protection for simple technical advances that are not sufficiently inventive to meet the "inventive step" requirement for standard patents. The innovation patent has a lower threshold called an "innovative step" which requires that the advance claimed differs from the prior art so as to "substantially contribute to the working". There is no non-obvious requirement. The invention must also satisfy the criteria that it is new, useful and a manner of manufacture.

The innovation patent system is designed to suit small to medium sized enterprises and individuals. They are intended to provide an industrial property right that is quick and easy to obtain and suited to inventions with a short commercial life. Obtaining an innovation patent is less costly as it is not examined for substantive issues like novelty and inventive step before grant. It only goes through a formalities check which is used to make sure that all the necessary documents have been provided and that the application is not in respect of humans, plant or animals, or biological processes.

There is no check by the Patent Office before grant as to whether the patent is valid. This may make the value of an innovation patent more difficult to evaluate until it has undergone substantial examination. This form of examination is not automatic. A request for substantial examination can be made at any time by the applicant or a third party. If examination is successful the innovation patent is "certified" by the patent Office. Once the innovation patent is certified, the patentee has the right to enforce the patent in the same way as a standard patent.

                       

Green value shades, £10 misplaced


 
 

 

Patent Office

[4] From the First Series

Below is a short study of the cancels used by the Commonwealth Patent Office

Commonwealth Patent Office Canberra 1955, cancel in black 41mm x 28mm

Commonwealth Patent Office Canberra 1959, cancel in violet 40mm x 28mm

Commonwealth Patent Office Canberra 1960, cancel in black 40mm x 28mm

Cancelled by Patent and Trade Mark Attorney, Unknown name.

Perfin cancel 62 for 1962 [left of this is missing presumed day and month numbers]

Patent application number 87205

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Patent Office

[4] From the Second Series

      

Australian Patent Office Canberra 1969, cancel in black 34mm x 34mm

Cancelled in black a 45mm x 4mm 'F. B. Rice & Co.' Patent and Trade Mark Attorneys

[3] FB Rice & Co has been focused on IP services for more than 50 years - protecting IP is their business, so their knowledge and expertise is at the forefront of the market. Their attorneys offer a full range of Patent and Trade Mark attorney services and provide advice and guidance through the complexities of protection and enforcement with a commercial and pragmatic approach. From individual inventors to Australian and international corporations, universities and research institutes.

Australian Patent Office 1974, cancel in black 46mm x 28mm

        

Cancelled by Patent and Trade Mark Attorneys, Baker & McKenzie.

      Australian Patent Office 1975, cancel in black ??mm x 26mm

Cancelled by Patent and Trade Mark Attorney, F. B. Rice & Co.

Australian Patent Office 19??, cancel in black ??mm x 28mm

Australian Patent Office 1976, cancel in black 47mm x 29mm

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Sydney Patent Sub Office

[4] From Second and Third Series

Below is a short study of the cancels used by the Sub Office Sydney

Cancelled by Patent and Trade Mark Attorney, F. B. Rice & Co.

These stamps appear to be reused or cut from an error document

Lodged at Sub Office Sydney 1980, cancel in black 51mm x 25m

Lodged at Sub Office Sydney 1981, cancel in black 48mm x 32mm

[4] From the Third Series

Lower 'FEE STAMP TO VALUE OF' box 51mm x 11mm, reads $75 obviously a $50 is missing from this cut out.

Lodged at Sub Office Sydney 1984, cancel in black 50mm x 24mm

Lodged at Sub Office Sydney 1985, cancel in black 50mm x 27mm

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[4] Melbourne Patent Sub Office

Below is a very short study of the cancels used by the Sub Office Melbourne

 

Lodged at Sub Office Melbourne 1982, cancel in black 51mm x 26mm

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Trade Marks

Some Trade Mark facts:

[3] Trade Mark Registrability

Current legislation defines a "trade mark" as a sign used or intended to be used, to distinguish goods or services dealt with or provided in the course of trade. A "sign" is defined as including any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent or any combination of the foregoing.

An application for registration of a trade mark will be rejected if the trade mark is not capable of distinguishing the applicant's goods and/or services from those of other traders. Trade marks that are not inherently adapted to distinguish are mostly trade marks that consist wholly of a common sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the goods or services.

Evidence of the extent to which the applicant has used the mark establishing that the mark is in fact distinctive of goods or services may overcome the objection.

A trade mark is registered in connection with goods or services, or both. A statement must recite a specific list of goods/services and an objection will be raised if the Registrar believes the statement of goods/services is too broad.

[4] Trade Marks Sub Office Sydney

Below is a short study of the cancels used by Trade Mark Sub Office Sydney

The only way to tell if one of these revenues has been used to register a Trade Mark is by the cancel

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Trade Mark Sub-Office Sydney 1955, cancel in black 42mm x 29mm

Trade Mark Sub-Office Sydney 1974, oval cancel in black 50mm x 34mm

$3 Grossly misplaced value

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[4] Trade Marks Sub Office Melbourne

Below is a short study of the cancels used by Trade Mark Sub Office Melbourne

Trade Mark Sub-Office Melbourne 1960, cancel in violet 57mm x 28mm

Trade Mark Sub-Office Melbourne 1969, cancel in violet 57mm x 30mm

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Patents, Trade Marks and Designs

Some Design facts:

[3] Australian Registered Designs

Nature of a Registered Design
A Registered Design gives to the owner of the design a monopoly right in respect of the appearance of a product embodying that design.  The appearance can be defined in terms of visual features, such as shape, configuration, pattern and ornamentation.

Design versus Patent
There is a clear distinction between the protection afforded by a Registered Design and by a patent.  Design protection is given only in respect of the appearance of an article, whereas the article itself, its functionality or the manner in which it operates may be protected by a patent.

It is, of course possible, and sometimes highly desirable, to have both design and patent protection for the same "invention".  For example, it is possible to have a Registered Design in respect of the appearance of a product, say a telephone, and a patent in respect of the manner in which it functions.

New Designs Act
Until recently the legislation governing Registration of Design in Australia was the Designs Act 1906.  A new Designs Act 2003 came into force on 17 June 2004.

For designs registered under the Designs Act 1906, the Courts in recent years have taken a narrow view of the protection afforded by design registrations.  As a result the scope of protection for such "old" designs, is generally limited so that only very similar designs will infringe a design registration. 

However, it is expected that the protection afforded for designs registered under the Designs Act 2003, will be relatively broader than that provided under the 1906 Act.  In particular, under the new Designs Act 2003, a person will infringe a Registered Design if they make or sell a product which embodies a design that is identical or substantially similar in overall impression to the Registered Design.  In considering infringement, more weight will be given to similarities between the Registered Design and the alleged infringement than to differences between them.

Criteria for Registrability
Under the new Act, a design will be registrable if the design is new and distinctive when compared with the prior art base.  The prior art base includes designs publicly used in Australia, designs which have been published in a document either in Australia or elsewhere, and designs which have been disclosed in earlier design applications.


A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base.  When making judgement as to whether a design is substantially similar in overall impression to another design, more weight should be given to similarities between the designs than to difference between them.  This is the same test as the infringement test.

3-D designs - loss of copyright
For three-dimensional designs which are to be applied to articles, it is important to file an application for design registration before any publication or use of the design occurs.  Failure to do so may prevent later registration and curtail the copyright in the design. 

2-D designs - dual copyright/design protection
Unlike three-dimensional designs, designs which are solely 2-dimensional patterns or ornaments applied to the surface of articles, such as pictures on T-shirts, do not lose copyright protection after publication and sale of the articles. Therefore, such designs can enjoy dual copyright/registered design protection.
Whilst copyright goes a long way in providing protection, a registered design may be a valuable tool when it comes to enforcing rights in the design. To show copyright infringement, a court has to be convinced that the alleged infringer directly or indirectly copied the design. In contrast, it is not necessary to show copying in the case of a registered design.

Applying for Design Registration
The registration process for a design begins with filing a design application at the Designs Office.

Multiple designs
Although a single application for multiple designs is now permitted under the Designs Act 2003, the official fee for filing a multiple design application is the fee for a single application multiplied by the number of designs in the application.  Further, each design in a multiple design application is separately renewable, hence a separate record must be kept for each design which forms part of a multiple design application.  Consequently, we perceive that there is little, if any, cost benefit to an applicant in filing a multiple design application compared with filing a plurality of design applications each for a single design.  However FB Rice routinely give a discount for multiple designs filed together whether as a single design or as multiple applications.

Minimum filing requirements
The application must include at least one representation of the design.  Representations take the form of drawings or photographs which clearly depict the article to which the design is applied.  The representations should show a perspective view of the article and a view from every side.  Eventually, five copies of the representations will be required by the Designs Office.

Registration after formalities examination
After the application has been made, a formalities check is carried out.  If there are any deficiencies in the application, a notice issues allowing two months to correct the deficiencies. If the formalities check is satisfied, the Registrar of Designs must register the design.  The design application is not examined for newness and distinctiveness prior to registration. 

Registered Design Unenforceable unless Certified
Examination of a Registered Design for newness and distinctiveness is optional.  However a Registered Design is not enforceable unless it has been examined and certified.  Therefore the value of an unexamined design application is limited.  A fee is payable on filing a request for examination.

Substantive examination
Upon examination, the Designs Examiner may issue a notice raising objections to the certification of the design, allowing six months to overcome those objections.  In particular, the Examiner may object that the design is not new and distinctive in the light of one or a number of earlier design applications or registrations.  In many instances, the objections may be overcome by filing suitable submissions.  Official Reports will continue to issue until the Examiner is satisfied that all objections to certification of the design have been overcome or withdrawn.  Once all the objections have been overcome, a certificate of examination is issued and the Registered Design is then enforceable.  If the objections are not overcome, the registration may be revoked, subject to an appeal. 

Ten Year Term
The initial term of a registered design is five years commencing on the day it is first filed in Australia.  The registration may then be extended to ten years from the filing date by paying a renewal fee.  No further extension of the term beyond ten years is currently possible.

Overseas Protection
Design registration or similar protection, is available in many overseas countries.  Applications filed in most of these countries within six months of the date of filing a design application for the same design in Australia, will take a priority date from the filing date of the Australian application.

[4] Patents, Trade Marks and Designs

 Sub Office Melbourne

Below is a very short study of the cancels used by

Patents, Trade Mark and Designs Sub Office Melbourne

Lodged at Sub Office Melbourne 1985, cancel in black 48mm x 25mm

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OK over to you the reader, can you add any information to this page? if so please let Dave know.

Bibliography

[1] Institute of Patent and Trade Mark Attorneys of Australia

[2] The Revenue Stamps of The Commonwealth of Australia and it's Territories. Bill Craig 1986 [Public Trustee of Tasmania, retired]

[3] F. B. Rice & Co. Patent and Trade Mark Attorneys

[4] Dave Elsmore

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