Intellectual Property

Practice Areas > Intellectual Property

Intellectual Property

Intellectual property (IP) can be a very valuable asset. Therefore, it is important to identify and capture intellectual property rights, take steps to protect those rights and then explore which commercialisation opportunities will make best use of your intellectual property assets.

At mdp McDonald Partners, our lawyers have a wealth of experience in identifying, protecting, and realising the value of intellectual property. We can assist you to protect and license inventions, brands and other intellectual property and to properly commercialise that intellectual property.

Our practice covers all areas of intellectual property, including trade marks, copyright, designs, patents, trade secrets, commercialisation and intellectual property litigation.

Trade Marks

A trade mark is a sign which distinguishes the goods or services of a trader from those of other traders. A trade mark can take any one of a number of forms, including a word, logo, aspect of packaging, shape, colour, sound or smell.

Examples of registered trade marks include the colour purple for Cadbury chocolate, Coca Cola's distinctive bottle shape and Arnott's "Tim Tam" name for biscuits.

In order for a trade mark owner to get the best protection for a trade mark, the trade mark should be registered. We can assist clients with trade mark registrability advice, trade mark applications and trade mark infringement advice.

For more information on trade marks, see our trade marks page.

Copyright

Copyright protects a range of works, including everything from written text, art works, musical works, films and sound recordings. Examples of material that would be subject to copyright include the text and layout of a brochure, computer programs and other software, architectural plans and sketches as well as photos and other images on packaging.

A copyright owner has certain exclusive rights over a copyright work, including the right to copy, publish, sell, assign or licence the work. If a person does any of these things without the permission of the copyright owner, that person may be infringing copyright.

Our intellectual property lawyers can work with you to determine whether something is protected by copyright, who owns that copyright, whether copyright is being infringed and what commercialisation opportunities exist for a copyright work.

For more information on copyright, see our copyright page.

Patents

A patent is a registered right over an invention. An invention can be a thing (for example, machinery or a pharmaceutical product) or a method (for example, a way of packaging a certain product). Patent protection is the strongest form of intellectual property protection, and gives the patent owner the exclusive right to use, sell, assign or license the invention.

In order for an invention to be eligible for patent protection, certain requirements must be satisfied. Our team of intellectual property lawyers can work with you to determine whether your invention is eligible for patent protection, whether your invention infringes any previously granted patents and what commercialisation opportunities exist for your invention. Our lawyers can also help to put in place confidentiality agreements to ensure that your invention is not made public before the patent application is filed.

For further information on patents, see our patents page.

Designs

Design registration protects the distinctive appearance of an item. The distinctive appearance may be due to an unusual shape, pattern or configuration. Examples of registered designs include clothing, furniture, electronic devices and other household items.

By registering a design, the design owner is granted certain exclusive rights over that design for up to 10 years, including the right to use, sell, assign or license the design.

In order for a design to be eligible for registration, it must satisfy certain criteria. Our lawyers can work with you to determine whether your design meets registrability requirements and determine whether any alternative forms of intellectual property protection may be available.

For further information on patents, see our designs page.

Confidential Information and Trade Secrets

Whilst not strictly a type of intellectual property, effective protection and enforcement of rights related to confidential information and trade secrets can complement your intellectual property rights.

Confidential information and trade secrets are information which is not publicly available and has a special character of secrecy. Confidential information should be protected by effective legal controls (such as well-crafted confidentiality agreements) as well as practical steps (such as special processes and procedures for handling confidential information).

Ensuring that information remains confidential can be critical to securing registered intellectual property rights, especially in the case of patents and designs.

Our lawyers can work with you to determine how to best protect your confidential information and can also assist in cases where the confidentiality of your information is jeopardised.

Commercialisation

We can assist clients in not only protecting their intellectual property but also making the most of that asset.

In most cases, commercialisation of intellectual property assets will take one of three forms.

 ·Exploit the asset - This involves the rights-holder using, manufacturing and/or selling the product to consumers. This gives the rights-holder the highest degree of control over the asset but generally also involves a significant investment of time and money.

 · License the asset - This involves the rights-holder (the licensor) retaining ownership of the product but licensing the use, manufacture and/or sale of the product to a third party (the licensee). The scope of license agreements may be restricted by geographic regions, industry sectors or by specific applications of the product. The licensee will usually pay the licensor fees or royalties, thus generating income for the licensor. This option gives the rights-holder a moderate degree of control over the asset and will generally involve a decreased investment of time and money on the part of the rights-holder.

 · Sell the asset - In this case, the rights-holder sells either their business or the rights to the product. This will often mean quick cash for the rights-holder but the rights-holder will generally not have any ongoing involvement with the product.

An intellectual property right may also be exploited through a franchise arrangement. Franchising will often be an alternative to used in conjunction with licensing.

For further information on specific commercialisation options, see our licensing, franchising, sale of business and commercial agreements pages .

Corporate Structuring

Intellectual property rights have the capacity to become especially valuable assets. Our intellectual property and commercial lawyers can review your corporate structure to ensure that the structure is effective from a number of perspectives, including tax, risk management, as well as ensuring that the structure is attractive to potential investors or purchasers.

Intellectual Property Litigation and Dispute Resolution

Intellectual property rights are often central to a business's operations. Given the value and significance of intellectual property rights, it is inevitable that intellectual property disputes will arise from time to time.

Our lawyers have extensive experience in intellectual property litigation as well as resolving disputes via non-litigious methods.