Intellectual Property, Startup Advice

An Australian startup guide to protecting intellectual property in the US, South Korea, EU, New Zealand and Indonesia

Patricia Kelly /

Many Australian startups and SMEs are well aware of the power intellectual property can wield as a business asset. However, as they begin planning global expansion, many do not consider the different IP regulations that are required for individual markets.

To take full advantage of global IP markets, you first must know the local laws.

US

IP protection in the US is similar to Australia. In this market, you can register for patents, trademarks and designs, but unlike Australia, you can register for copyright. In Australia, copyright protection is free and automatic from the moment a work is on paper, disk or otherwise put into “material form”. Here, copyright is administered by the federal Department of Communications and the Arts, while IP Australia administers IP rights such as patents and trademarks. In the US, copyright can be registered with the US Copyright Office.

Patent, trademark and design applications can all be filed electronically through the USPTO website. The US has very similar IP registration and protection laws to Australia. However, please keep in mind the civil litigation process for enforcement of IP is considered to be more aggressive in the US. As with most countries an address for service is recommended before applying for IP rights.

South Korea

South Korea is an intriguing destination for many of Australia’s agile startups and SMEs. In 2015-16, goods and services trade between Australia and South Korea totalled $33.9 billion, making South Korea Australia’s fourth largest trading partner.

Intellectual property rights that can be protected in South Korea are trademarks, patents, designs, copyright and new plant varieties. When applying for IP protection in South Korea, an address for service and local agent/attorney is generally needed.

Unlike Australia, South Korea has a “first to file” rule for obtaining trademark rights — if there is a trademark dispute, whomever filed for registration first will generally have priority, regardless of which party developed or first used the trademark. This rule is also used in China. If you are thinking of entering these market, it is worth filing for trademark IP rights. If you fail to use your trademark in a three-year period, the registration will be removed.

European Union

Companies looking to trade in Europe can take advantage of registration bodies that can administer IP rights effective across European countries. For patents, this is the European Patent Office, which can be used to file patent applications in all countries that are signatories to the European Patent Convention.

Similarly, trademarks and designs rights can be registered with a single right across the EU through the EU Intellectual Property Office. Plant variety owners can also apply for registration of a Community Plant Variety Right through the Community Plant Variety Office (CVPO).

It is important to remember that due to the national and EU-wide rights available, the IP system in the EU can be complicated and significantly more expensive than similar registration in Australia (as the EU covers a range of countries).

As with IP throughout the world, it is important for IP rights holders to actively monitor the marketplace for any infringements. We recommend registering your IP with the European Observatory on Infringements of Intellectual Property Rights , as it will assist in the prevention of infringing products being exported or imported. An address for service in the EU and a local agent or attorney may be required when seeking IP registration in the EU.

New Zealand

Despite New Zealand’s relatively small population, Australia’s two-way trade in goods and services with NZ is relatively large, valued at $24.4 billion in 2015. NZ’s close geographical proximity to Australia means the nation presents many opportunities for Australian startups and small businesses. 

Intellectual property protection in NZ is similar to Australia. Copyright is overseen by the Intellectual Property Policy Group, while trademarks, patents, designs and plant variety rights are overseen by the Intellectual Property Office of New Zealand.

If you are seeking a patent in NZ, you either need a local address for service and a local agent or attorney, or alternatively you can use the services of a registered Australian patent attorney under special Trans-Tasman regulatory provisions. However, you will need a local address for service and a local agent or attorney in NZ if applying for other IP rights.

Indonesia

Indonesia has a population of close to 260 million people and is the largest economy in South-East Asia, presenting Australian businesses with exciting new market opportunities.

Intellectual property in Indonesia is overseen by the Directorate General of Intellectual Property (DGIP). Intellectual property rights are handled separately by different offices within the DGIP. As with most countries, to have an IP application approved, an address for service and a local agent or attorney is generally required.

Rights available for registration in Indonesia include geographical indicators (GI). These identify goods originating in a specific territory, region or locality, with a particular quality, reputation or other characteristic attributable to its geographical origin (for example, Champagne).

For those wanting international rights in numerous jurisdictions, this can be pursued through a single Patent Cooperation Treaty (PCT) or Madrid application. Professional advice on pursuing IP rights in overseas jurisdictions can be obtained through many Australian IP attorneys, who normally have overseas associates, and there is additional information available on the IP Australia website. 

The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) also offers a complimentary initial consulting service to IP creators and users. This service provides a 30 minute preliminary consultation with a specialist Patent or Trade Mark Attorney with the appropriate legal and technical expertise, for free.

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Patricia Kelly

Patricia Kelly is the director general of IP Australia.

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