Enforce and Defend your IP Rights

IP Disputes


IP rights can be disputed through opposition and reexamination processes at IP Australia, and before the Courts.

About IP Disputes

Patent Disputes

Various options exist in relation to patent disputes including patent oppositions and reexamination before IP Australia, and actions before the Courts. The actions that are available depend on the stage of the case (application or granted) and whether or not the dispute is before IP Australia, the Courts or is, perhaps, in its early stages between parties.

For example, a standard Australian patent may only be opposed before IP Australia between acceptance and grant – beyond this date – only reexamination before IP Australia or invalidation actions before are Court are available. Similarly, if you intend to enforce your IP rights – your patent must be in order and granted – before any infringement action is taken.

Accordingly, the first stage with any patent dispute is to assess the case and determine the strategy of how best to proceed. For example, in relation to patent infringement – a frank assessment needs to be made in relation to likelihood of a finding of infringement – and an assessment of the likely damages that may be awarded if successful. Due to the potential costs on all parties involved in patent disputes – a settlement is often desirable and we encourage our Client’s to take a firm but fair approach which we find leads to be most favorable commercial outcomes.

Trade Mark Disputes

Trade mark disputes are one of the most common IP disputes simply because nearly every business has some form of trade mark rights, and – so often more than one trader may wish to use the same or a similar name or logo. Trade marks may be opposed prior to registration before IP Australia to stop the mark becoming registered. For example, you may find a third party attempting to register a very similar name and may oppose a trade mark application on this basis. However, once a trade mark is registered – any cancellation actions usually take place before the Court unless the mark in question is not being use – in which case non-use actions before IP Australia may be available.

In terms of trade mark enforcement, infringement action may be taken before a Court when a mark is registered. Usually, we start with an assessment of the infringement and then, if appropriate, progress to sending a cease-and-desist letter. Depending on the outcome of the letter, a settlement may be reached or infringement action before the Court may prove necessary.

Again, the most important step in such a dispute – is obtaining good advice early on to determine prospects of success and also what the desired outcome is such as a settlement or award of damages.

Design Disputes

Australian registered designs are unique in the fact that the design may become registered without examination – but, cannot be enforced unless the design is certified by way of examination and a certification certificate is issued. Accordingly, the first step in any design dispute is determining if the design is actually certified.

If the design is not certified, the Applicant or a third party may request for it to be examined. Whilst there is no formal opposition process for designs in Australia – a third party may request examination and even provide the examiner with prior art. Once certified – a design may be enforced against third party before a Court. It is noted that design rights can be quite limited in scope (only providing rights for the look of the product and not its function) – and it is important to understand what the scope of the design right may or may not be prior to engaging in any form of IP dispute.

Patent, trade mark and Design Disputes

Get Help with IP Disputes.


What our clients say

As I move into consultancy, I would like to acknowledge your part in assisting WEARX achieve its IP management plan objectives. We moved our portfolio for a large Sydney based Patent Attorney firm in mid-2013 to Caska IP – and I’m pleased to say this has paid off. Your dedicated approach to finding the best way to provide us with appropriate IP protection in challenging market conditions, has helped us achieve commercial security and good management. In summary, your service level and cost base has exceeded our expectations.

Jerry Hoslin, Director & Founder, WearX

I have been involved in business consultancy for over 25 years. This has involved launching new businesses, ideas, products as well as assisting existing businesses to expand. In that time I have experienced many start ups and dealt with a large range of Intellectual Property. Andrew Caska, Principal Patent Attorney of Caska IP, has recently provided his services to one of my clients and we worked closely to formalise important patents and trade marks. His understanding of the invention, his work and timely delivery were all first class and we are very happy with the outcomes.

Grant Harms, Business Consultant, Punchbox.co

Caska IP has been more than supportive in protecting Automed Pty Ltd IP for the agricultural and medical industry. In working with IP& we have developed a clear IP strategy for patents and trademarks for our products, for the Australian market and the international market. We are more than happy with their dedication and level of service and would recommend them to any small or large organisation

David Edwards, CEO & Founder, Automed Pty Ltd

As an individual inventor, I set out to find a Patent Attorney service that was accessible and reasonably priced to assist in lodging my first patent application. I found Caska IP to be not only affordable and accessible, but highly professional and attentive to my needs and requirements. Caska IP worked with me to assist in refining my idea and expressing its unique qualities. I highly recommend Caska IP to the individual inventor.

Lester Walters, Inventor, QUAD R&D Pty Ltd

I was relatively unaware of what was needed and admit to being a bit nervous. Your perception and interpretation of what I was trying to achieve gave me great comfort. On receipt of the initial draft I was impressed with the professional presentation and the attention to detail with little alteration being required. You may rest assured that I will be using Caska IP for future projects (of which I have several) after this one is put to bed.

John Plumridge, Inventor
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