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Glossary

Glossary of terms for IP



abstract
A brief summary of your invention in a patent application to help in quickly identifying its key features.
account of profits
A party who makes financial gain out of the unauthorised use of another’s IP rights is ordered by the Court to hand over such profits to the rightful owner of the IP.
address for service
The address in Australia where IP Australia will send all your correspondence. This may be a post office box. You must nominate an address in Australia for correspondence, even if your own address is not in Australia. You should notify IP Australia if this address changes.
adverse report
A report from an IP Australia examiner outlining reasons why your application for IP rights has not succeeded. The applicant has the opportunity to address the issues raised in the adverse report.
affidavit
A statement of sworn evidence which is filed in legal proceedings.
aggrieved party
The owner of IP rights whose rights have been infringed.
amendment
A change in any part of a patent application made after it is filed. A communication from the applicant to IP Australia directing or requesting that a change be made is also called an amendment. Amendments are typically made to overcome rejections, objections or requirements made by IP Australia.
amortisation
The expense that applies to intangible assets, in the same way that depreciation applies to non current assets.
anton piller order
This is the civil equivalent of a search warrant. It allows the owner of IP rights that have been infringed to search an infringer’s premises and seize specifically identified items.
applicant
The person(s) or organisation(s) making the application.
assignee
The person(s) or corporate body to whom all or limited rights under a patent are legally transferred.
assignment of rights
This occurs when you sell or bequeath your IP rights to someone else. The assignee then owns those rights.
ATMOSS
The IP Australia Trade Mark Register database. The database lists all the registered and pending marks, together with marks which have been refused registration, lapsed or removed from the database.
Australia Journal of Patents (AJOP)
Journal issued by IP Australia listed patent applications awaiting approval. Publication in the journal indicates the beginning of the opposition period.
Australian Business Number (ABN)
Australian Business Number issued by the Australian Taxation Office as a means of identifying business entities.
Australian Securities Institute (ASIC)
The Australian Government regulatory body that enforces and administers Corporations Law and consumer protection laws for investment, life and general insurance, superannuation and banking (except lending) throughout Australia.
authorised user
A person who is authorised by and under the control of the owner of a trade mark to use the trade mark in relation to goods and services covered by the trade mark.
automatic rights
In Australia, copyright and circuit layout rights are automatic rights. These rights come into effect at the moment of creation. No formal registration is necessary to protect these IP rights.
blocking patent
A patent, which prevents a third party from engaging in certain conduct because to do so would infringe one or more claims of that patent.
brand name
A word, letter or a group of words or letters used to establish an image for a product or service.
business angel
A person who facilitates the identification and introduction of investment ready companies to investors who are able to provide capital. Business angels also help the company through its various growth stages by providing advice and expertise.
business method patent
Patents relating to pure business methods. There is still some uncertainty in Australia relating to these patents.
business name
A name under which a business operates. Registration serves as a means of identifying the owners of the business and is obtained under state or territory legislation. Registration of a business name does not automatically give formal trade mark protection.
business plan
Determines how a business’ resources or assets can be applied profitably across the marketing, production and finance areas of a company.
capital gains tax (CGT)
A tax on the increase in the capital value of investments, payable when the capital gain is realised. Capital gains tax is indexed so that nominal increases in value due to inflation are not also taxed.
capitalisation
The sum of the total amount of various securities issued by a corporation, multiplied by the price of those securities. Capitalisation may include bonds, debentures, preference shares and ordinary shares.
cash flow
The net amount of money received by an individual or company over a certain period of time.
certified
When an innovation patent has been examined and found to meet the requirements of the Patents Act it will be certified, and is then legally enforceable.
circuit layout rights
Circuit layout rights automatically protect original layout designs for integrated circuits, and computer chips. While these rights are based on copyright law principles they are a separate, unique form of protection.
claims
Concise written statements that define the invention covered by the patent application. The patent protects what falls within that definition. Anything outside the claims is not protected.
combination mark registration
A trade mark that is a combination of words and a logo.
COMET (Commercialising Emerging Technologies)
A Commonwealth Government program administered by the Department of Industry Science and Resource, which aims to assist innovative companies commercialise their products.
commercialisation
Planning how you will take your good idea to the marketplace. It involves working the idea into your business plan, consideration of protection options and considering how to market and distribute the finished product.
common law trade mark
An unregistered trade mark, essentially an IP right provided by the goodwill associated with a trade mark.
company name
The name ascribed to a corporate entity incorporated within the Commonwealth of Australia. This may not necessarily be the ‘business name’ that the company trades under.
competitive searching
A search undertaken for commercial or research purposes. It enables you to determine whether your proposed product is new enough to attract market share, or will be successful as an application for formal IP rights.
complete specification
This is the basis for your patent. It must describe your invention fully, detail the best way of putting your invention into effect and include at least one claim.
comprehensive audit
An audit conducted for a specific purpose such as due diligence or to enforce or defend an action.
concurrent trade mark
A trade mark that is identical or deceptively similar to another mark that has been used during the same period of time.
confidential information
Information and materials of commercial or personal value and kept secret from the general public.
confidentiality agreement
An agreement between a person possessing confidential information and the person to whom that confidential information will be disclosed.
constitution of the company
A document that outlines the structure and responsibilities of all members of a company.
continuous use
This arises when a trade mark has been used for an ongoing period of time.
copyright
Copyright protects the original expression of ideas, not the ideas themselves. It is free and automatically safeguards your original works of art, literature, music, films, broadcasts and computer programs from copying and certain other uses.
copyright notice
A copyright notice indicates that the work is protected and identifies the copyright owner. It consists of the copyright symbol ©, the name of the owner and the year of creation or first publication. For sound recordings the p in a circle symbol is used.
cyberspace
The internet — a world created in virtual reality.
cybersquatter
A person who owns a domain name with no intention of using it, or intends using it in bad faith.
damages
Refers to the amount which a court awards the owner of IP rights for infringement of those rights by another person.
data seeding
Proactive measures to limit the incidence of infringement in and electronic environment.
database
Information relating to specific subjects stored electronically, eg. patents, trade marks and design databases.
debt finance
Funding that must be paid back in a certain timeframe. Banks normally provide this type of funding.
deceptively similar
A trade mark that is so similar to an existing mark, that it is likely to confuse or deceive the public.
defence
The document filed by the defendant to legal proceedings.
defence expenses
Legal costs incurred defending a claim.
defendant
The person defending the litigation or proceedings. In the Federal Court this person is known as a Respondent.
design
see industrial design
dilution factor
A term that refers the decreasing number of shares held by an original partner in a company following successive rounds of venture capital investment.
disclosure
The first public disclosure of details of an invention.
discovery
A process of production and inspection of documents in legal proceedings by the plaintiff and defendant.
distinctive
A trade mark that is unique and unlikely to be confused with another mark.
divisional
If IP Australia decides that an application covers too large an area to be considered as a single patent, then the application is split into one or more divisional applications. A divisional application has the same specification as the ‘parent’ but claims a different invention.
domain name
A domain name is the unique name that corresponds with an Internet Protocol address. It should be both easy and intuitive to remember. For example, IP Australia’s domain name is www.ipaustralia.gov.au (.gov = government, .au = Australia).
drawing
One or more specially prepared figures filed as a part of a patent application to explain and describe the invention. Drawings (or illustrations) are more commonly found with inventions for mechanical or electrical devices. As a rule, chemical patents and biotechnology patents will include chemical formulae, drawings or genetic code in the description of the invention and/or in the examples.
due diligence
The process of checking and verifying information contained in a statement to be released to the public prior to the registration of that statement. It also refers to ensuring that sufficient analysis has been conducted before making a loan or recommending an investment to a client.
duty of fidelity
The duty of an employee to maintain the confidentiality of any information that the employer treats as confidential. This is a relationship of trust.
EMDG (Export Market Development Grant)
A Commonwealth Government Scheme administered by AUSTRADE, which aims to assist Australian Exporters.
enforcing your rights
Taking action against a person who infringes your IP rights.
equity finance
Finance provided by venture capitalists that take an equity share in the investee company.
examination
The process during which the IP right (patents and designs) is assessed for compliance with requirements set out in the relevant Act. Examination is necessary if you wish to legally enforce your IP right.
exclusive licence
A licence where the licensee is given the right to commercialise the IP to the exclusion of all others, including the licensor.
exclusive rights
IP rights give the owner ‘exclusivity’ in the marketplace, however restrictions in duration and scope apply.
fair value
The amount for which an asset could be exchanged between knowledgeable willing parties in an arms length transaction.
favourable report
A report from IP Australia indicating that an application for IP rights has been successful.
fee, filing
The fee charged by IP Australia for filing a IP rights application.
fee, maintenance
The periodic fee for maintaining an IP right in force.
fiduciary duties
A relationship of trust between members of a company and the responsibilities they owe each other.
field restriction
When an IP right is licensed to a licensee with the restriction that the licensee is only permitted to commercialise a product in a particular field of application, eg. water treatment only as it relates to industrial waste.
filing date
The date when the application reaches IP Australia in complete form.
formalities check
An innovation patent is granted after it passes formalities check. The check ensures, among other things, that the specification is complete, scannable and legible.
franchising
Licencing your IP to third parties. This is more than just licencing your IP. it is in fact a unique business relationship.
goods and services tax (GST)
A tax on individual goods or services, which is added on to the retail prices of those goods and services.
goodwill
Unidentifiable intangible assets.
holding company
A corporation that owns enough voting stock in another firm to control management and operations either by influencing or electing its board of directors.
income tax
Tax payable on income earned.
industrial design (registered designs, designs)
Registered designs protect the way manufactured products look. Design refers to the features of shape, configuration, pattern or ornamentation, which can be judged by the eye in finished products. Design registration is for manufactured products and NOT artistic designs.
industrial property
Industrial property is a subset of intellectual property, referring to those types of intellectual property that have an industrial application. Specifically, it refers to patents, trade marks, designs, circuit layout rights and plant breeder’s rights.
industrially applied
A design applied to a product in either two or three dimensions for commercial use. Registration cannot be granted for products that are primarily literary or artistic in character.
infringement
Infringement occurs when someone willingly or unwillingly uses your intellectual property without your permission.
infringement strategy
Strategic assessment of your IP rights and setting parameters for beginning and ending infringement action.
infringer
A person who uses IP without permission of the owner of the IP rights.
initial public offering (IPO)
The first sale of shares of a company to the public.
injunction
An order by a court to a particular person to stop doing or to actually do a particular act.
innovation patent
An innovation patent is a relatively quick, inexpensive way to protect innovations that would not qualify for standard patent protection. Protection lasts for a maximum of eight years.
intangible assets
An asset that is saleable though not material or physical. IP is a specialised classification of intangible asset that is created by human intellectual and/or inspirational activity and enjoys special legal recognition and protection.
intellectual property (IP)
Intellectual property represents the property of your mind or intellect. Types of intellectual property include patents, trade marks, designs, confidential information/trade secrets, copyright, circuit layout rights and plant breeder’s rights.
intellectual property (IP) management
The management principles applicable to IP.
intellectual property (IP) rights
The exclusive rights associated with a patent, design, copyright, trade mark, circuit layout right, plant variety or confidential information.
interim injunction
An interim Court order which prohibits a person from engaging in specified behaviour.
international patent application
You can file an International Application with IP Australia under the PCT (Patent Co-operation Treaty). In your application, you should select or designate the countries in which you want a patent.
international trade mark application
There are two different ways Australian trade mark owners can seek trade mark protection overseas. An application may be filed directly with each country, or a single international application can be filed through IP Australia nominating the relevant Madrid Protocol treaty countries in which protection is required.
inventive step
The inventive step means that the invention is not obvious to someone with knowledge and experience in the technological field of the invention.
inventor
Anyone whose involvement and contribution was essential to the development of the invention.
IP
see intellectual property
IP audit
A systematic review of the IP owned, used or acquired by a company.
IP Australia
The Federal Government agency that administers patents, trade marks and design systems with Australia. IP Australia is part of the Industry, Science and Resources portfolio.
IP Australia journals
The patents, trade marks and designs journals used to notify applications that are awaiting final approvals.
IP due diligence
Those processes designed to ensure that IP rights actually exist.
IP insurance
Insurance policy aimed at providing some protection for the holder of IP rights against the costs of either starting or fighting infringement proceedings.
IP register
IP registers provide a large volume of publicly available technical knowledge. IP Australia maintains three of these registers for Australian patents, trade marks and designs.
IP rights
A set of laws associated with providing exclusivity and ownership of innovations.
lapse
The date when an IP right is no longer valid in a country or system due to failure to pay renewal (maintenance) fees. Some IP rights can be reinstated within a limited period.
legal confidentiality
A body of law that protects relationships of confidence and the information disclosed in such relationships.
legal proceedings
Describes the process of a legal claim being brought in a court.
legislation
The body of law created by Parliament as contained in various Acts, Rules and Regulations.
letter of demand
A letter issued by the holder of IP rights to a person suspected of infringing those rights.
licencing of rights
Licencing of rights gives the licensee the right to use (but not own) the rights.
limitation period
The period during which any legal proceedings must be commenced.
liquidator
A person appointed, usually by the court, to conduct the winding up of a company and the liquidation of its assets.
litigation
Another description for legal proceedings.
Madrid protocol
The Madrid protocol simplifies the process of applying for international trade marks. Only one application needs to be completed that lists all the countries you wish to be registered in.
manner of manufacture
A legal term used to distinguish inventions, which are patentable from those which are not. Artistic creations, mathematical methods, plans, schemes or other purely mental processes usually cannot be patented.
milestone payments
Payments made at defined milestones or stages of a project.
mortgaged IP rights
IP rights that are being held against a loan.
National Competition Policy (NCP)
Government policy to ensure that enabling the widest possible availability of competition will have a positive impact on economic growth.
national stage
The stage of an international patent application where copies of the application are forwarded to the patent offices of designated countries
new
Not publicly disclosed in any form, anywhere in the world.
nominated person
The person(s) or body corporate which owns the invention.
non exclusive licence
A licence that has no features of exclusivity. The licence is granted on the basis that the owner retains the right to commercialise and that the owner may grant any number of licences without limitation.
notice of opposition
A notice that a third party has lodged an opposition to your IP right being granted.
notice to admit facts
A procedure for extracting admissions of particular facts in dispute.
offer of compromise
A settlement offer made by a plaintiff or defendant who if not accepted, can increase the amount of costs recovered by the maker of the offer.
Olympic insignia Protection Act 1987
The Olympic Insignia Protection Act 1987 states that the Australian Olympic Committee (AOC) is the national owner of the Olympic rings symbol and the Olympic motto (both in Latin, ‘citius, altius, fortius’ and in English, ‘faster, higher, stronger’).
Open for Public Inspection
The date upon which a patent application is first made available to the public.
opposition
Patents, trade marks and designs all have a period of opposition, in which third parties may challenge the registration of IP for not being new or original.
Opposition period
A period of three months in which other parties may oppose an IP right being granted. The period starts following publication of the IP right in the relevant IP Australia journal.
outsourcing
The contracting of one or more suppliers external to a company to undertake a specific task/s.
passing off (in relation to trade marks)
Under common law, the key principle of passing off is that a person is representing his/her goods or services as those of another.
patent
A patent is a right granted for any device, substance, method or process, which is new, inventive and useful. See also innovation patent and standard patent.
patent application
A document filed by an inventor or applicant with IP Australia that discloses and claims an invention and that requests that the patent office grant the inventor or applicant the right to exclude others from practicing the invention.
patent attorney
A professional qualified in a scientific discipline and further qualified to draft and apply for patents, trade marks and designs and registered under the legislation.
patent certificate
Is granted after the three-month opposition period for a patent has ended, the application is sealed and the applicant receives a certificate.
patent notice
A notice attached to a product/service indicating that there is a patent pending on the innovation or if a patent has been approved, the patent number appears on the product.
patent of addition
These are used to protect an improvement or modification that has been made to an invention of an earlier patent or patent application.
patent pending
The condition that occurs between the time that a patent application has been filed on an invention and the deposition of that application either by abandonment of the application or issue of the patent.
patent search
A study of the patent literature in a particular field to determine whether the prior art in the field renders a particular invention anticipated or obvious, and, hence, unpatentable.
patentable
Capable of being patented in a particular jurisdiction. The ability of an invention to satisfy the legal requirements for patentability in a particular jurisdiction.
PCT (Patent Co-operation Treaty)
You can file an international application with IP Australia under the PCT. In your application, you should select or designate the countries in which you want a patent.
plaintiff
A person commencing legal proceedings. In the Federal Court this person is known as the Applicant.
plant breeder’s rights
Plant breeder’s rights are used to protect new varieties of plants by giving exclusive commercial rights to market a new variety or its reproductive material.
preliminary audit
Provides an overview of your IP and the value it contributes to your enterprise.
preliminary discovery
An application made to a court before infringement proceedings have begun to force a person to disclose the identity of an infringer.
prima facie
Apparent — literally it means ‘first face’.
prior art
That which is in the public domain and hence not patentable.
priority date
A priority date is established for your invention when you first file a patent application that describes the invention. This is used to determine if your invention is new. If the public knows your invention before this date, you are not entitled to patent it.
product restriction
When an IP right is licensed to a licensee with the restriction that the licensee is only permitted to commercialise a particular class of eg. a new resin that applies only to watercraft.
proprietary
Rights of ownership.
provisional specification
Used to establish a priority date for your invention. It does not give you patent protection on its own and does not cover you for any subsequent developments or improvements made to your invention. You must file a complete application associated with your provisional application, or file an international application claiming priority from the provisional, within 12 months or you will lose your priority date.
public disclosure
Any disclosure, either orally or in writing, to any person or persons.
public domain
Generally, you should not ‘use’ or ‘publish’ your IP before application for formal protection, or it will be in the ‘public domain’.
publication
Notification in the relevant IP Australia Journal that an IP right has been assessed and is likely to be approved. This signifies the beginning of the opposition period.
pursuit expenses
Expenses incurred by the IP owner in taking proceedings against infringers.
qualified person
Australia’s Plant Breeder’s Rights (PBR) scheme uses comparative trials to establish the distinctness, uniformity and stability of new varieties. The Qualified Person, in collaboration with the PBR Office, accepts responsibility for all aspects of the comparative trial.
registered trade mark
A registered trade mark gives you the exclusive legal right to use, licence or sell it within Australia (and any other country in which it is registered) for the goods and services for which it is registered.
relationship of confidence
The relationship between the person imparting the confidential information and the person receiving the information.
remedies
Repayment of losses incurred as a result of infringements against your IP.
royalty
A royalty is compensation paid to the owner of a right for the use of that right, for example, the fee paid by a licensee to a licensor. A royalty is usually payable as a portion of proceeds from sales, but may also be a lump sum or in some other form.
scope of audit
How far you have to investigate to ensure that you have identified what the company owns, the current status of the IP and its commercial potential.
sealing
A patent application is sealed if no opposition is filed during the opposition period. A patent deed is then sent to the owner.
search report
A report containing a list of citations of prior art references that, in the opinion of the searcher, are material to the patentability of a claimed invention. A search report often presents an opinion of patentability.
seed capital
Capital provided by venture capitalists to start-up companies that are unable to access conventional debt finance.
shareholders agreement
A document, agreed to be all parties in a company, that specifies all aspects of management, exit and entry strategies for business partners. Essentially, it creates the joint venture.
software licence
A licence over software which may provide the licensee with the opportunity to commercialise software. There is also an end user licence for software, which enables the customer to use the software — not sell or commercialise it.
stamp duty
Duty or tax paid on the transfer of property. The rate of duty varies from state to state.
standard patent
A standard patent requires a more significant level of inventiveness than an innovation patent, and can last for up to 20 years.
start-up
A company that has only recently commenced trading.
statement of claim
The document filed by a plaintiff who specifies the nature of the legal claim and outcome sought. In the Federal Court this document is filed with an Application.
tax effective structures
Company structures that enable you to take the best advantage of the current taxation system.
technology transfer
Purchasing or ‘trading’ technology between companies to enable new innovations or the further development of innovations.
term of an IP right
The maximum number of years that the exclusive rights conferred by the grant of a patent may last.
territory restrictions
When an IP right is licensed to a licensee with the restriction that the licensee is only permitted to commercialise in a particular geographical area.
title
A few words to describe the general nature of the invention. Should not contain anyone’s name, a fancy name (e.g. ‘The Simplex Wheel’, ‘The Hercules Braces’) a trade name, the word ‘patent’ or the abbreviation ‘etc.’
tort
The area law dealing with private or civil wrongs.
trade mark
A trade mark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or any combination of these, which is used to distinguish goods and services of one trader from those of another.
trade mark attorney
A professional person qualified in trade mark law and practice and registered under the legislation.
trade mark Nice Classification system
A classification of goods and services for the purposes of registering trademarks and service marks.
trade mark notice
Symbols used in conjunction with a trade mark to denote: a registered trade mark ® pending or unregistered trade mark ™; or
Trade Practices Act 1974
The aim of the Trade Practices Act is to enhance the welfare of Australians through the promotion of competition and fair-trading and provision for consumer protection.
trade secret
A trade secret is both a type of IP and a strategy for protecting your IP. It includes proprietary knowledge (know-how) and other confidential information.
undertaking as to damages
An undertaking required by the Court from a plaintiff as a condition for an injunction being ordered. The plaintiff undertakes to pay any damages suffered by the defendant if the legal case is unsuccessful.
unit trust
A pooled investment fund or collective investment established under a trust deed that continually offers new units and stands ready to redeem existing ones from the owners.
useful
Your invention should do what you say it will do.
valuation
Valuation is the process of allocating a dollar value to all the resources (assets) your business owns and that you expect will benefit you in the future. IP is one such asset.
venture capital
Money made available for investment in innovative enterprises or research, in which both the risk of loss and the potential for profit may be considerable.
venture capitalist
Person/s who provide venture capital in exchange for equity in the investee company.
voluntary request for examination
You as the applicant for an IP right (eg. Innovation Patent) request the Registrar to conduct an examination of your application. This is normally done if you believe that your rights have been infringed.
withholding tax
The tax payable on payments such as dividends, interest and debt repayments, sent to foreign entities.
word mark registration
A trade mark registration using block capital letters that covers the use of the word or slogan in all fonts and stylised forms.