About IP 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.
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.