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©2011 Meritas. All Rights Reserved. Intellectual Property Update Matthew Hall – Swaab Attorneys, Sydney Michael Norbury – Madgwicks, Melbourne Nicholas.

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Presentation on theme: "©2011 Meritas. All Rights Reserved. Intellectual Property Update Matthew Hall – Swaab Attorneys, Sydney Michael Norbury – Madgwicks, Melbourne Nicholas."— Presentation transcript:

1 ©2011 Meritas. All Rights Reserved. Intellectual Property Update Matthew Hall – Swaab Attorneys, Sydney Michael Norbury – Madgwicks, Melbourne Nicholas Tebbey – Snedden, Hall & Gallop, Canberra CSA Annual Conference Monday 5 th December 2011 Sofitel Hotel, Sydney

2 Agenda 1.Impact of PPSA on IP - Matthew Hall 1.Stamp Duty & IP – Michael Norbury 1.“Raising the Bar” : A new era of IP protection – Nicholas Tebbey 1. Questions & Answers

3 1.Impact of PPSA on IP by Matthew Hall, Partner Swaab Attorneys, Sydney

4 Not affect “interests” on IP registers PPSR does not replace the IP Australia registers, which will continue to record ownership and other registration details. Still possible to register “interests” in registered intellectual property rights on the IP Australia registers

5 IP Collateral Regime applies to IPRs associated with goods that are collateral if:  The exercise of rights in goods ‘necessarily involves’ an exercise of the IPRs, AND  The obligation secured is ( in addition ) secured by a security interest attached to the IPRs

6 IP Collateral Can include: patented machinery patented pharmaceuticals hardware with embedded software food and beverage containers protected by design branded clothing

7 IP Collateral To avoid these implied references, security agreements must clearly state the extent to which intellectual property rights or licences form part of the “collateral”

8 IP Licences Generally a licence will not be a security interest Unless there is some form of security granted – eg. A reversionary right If IP licence is security given by licensee & IP is transferred by licensor, security interest binds future licensors.

9 Transitional matters Transitional provisions will apply for 2 years for existing securities Existing security interests recorded on the IP Australia registers will not be migrated

10 2.Stamp Duty & IP by Michael Norbury Partner Madgwicks Lawyers, Melbourne

11 Is there a dutiable transaction? Does the transaction involve dutiable property? What is dutiable value? What is the rate ? Typically 5% - 5.5% Liability for Duty

12 Land Transferable floor space Land use entitlement Share in an unlisted NSW company Units in a unit trust ( unlisted ) A partnership interest An option to purchase NSW land Dutiable Property - NSW

13 A business asset i)Goodwill ii)Intellectual property used in NSW when linked to goodwill iii) Statutory licence if used in NSW iv) Goods (if other dutiable property) Dutiable Property - NSW

14 Land Transferable site area An existing right A business asset A chattel Dutiable Property - Qld

15 What is a business asset i)Goodwill ii)Statutory licence iii) Business name iv) Rights under a franchise agreement v) A debt vi) Supply rights vii) Intellectual Property viii) Personal property of a business Dutiable Property - Qld

16 Part of GST agreement among Commonwealth and the States. ACT2006 Tasmania1 July 2008 NSW, NT, SA1 July 2012 Qld, WA 1 July 2013 Victoria IP was never dutiable Duties Abolition

17 3. “Raising the Bar” – A new era for intellectual property protection by Nicholas Tebbey Senior Associate Snedden Hall & Gallop, Canberra

18 Background to the Raising the Bar amendments Introduced into the Senate in June 2011 Followed a series of exposure drafts and community consultation Designed to  support innovation and encourage greater investment in research and technology  remove the procedural hurdles that plague some elements of the IP registration system

19 Summary of the Raising the Bar amendments Changes to patent application procedures Changes to trade mark application procedures Increase relief for infringement and Improve current systems for dealing with counterfeit imports

20 Why do we need these changes? To reduce delays in applications To better assist developers and researchers with their capacity to benefit from “good ideas” To address perceptions that current penalties for trade mark infringement are too low To improve the current system for confiscating and dealing with counterfeit imports

21 How will Raising the Bar improve the IP system - Registration A review of the standards against which IP rights are assessed, including:  new patentability standards (inventive step, utility, etc)  more clarity surrounding the presumption of registrability for trade marks Amend opposition procedures to streamline the process

22 How will Raising the Bar improve the IP system - Enforcement Increased deterrence for trade mark infringement  Greater relief for infringement.  Increase penalties for indictable offences.  Restructure the elements of the existing offences under the Trade Marks Act  Introduce new summary offences Border Protection  Counterfeit goods can be seized by Customs  Notice of objection filed by trade mark owner  Notice of seizure and inspection to be served by Customs

23 When will this occur? 12 months from the Act receiving royal assent New registration procedures will apply to any application for which an examination report has not been issued at the date of commencement Enforcement provisions will apply to any existing registered trade mark or patent

24 So what does this mean for your business? Make sure registrations are up to date Keep an asset register that clearly identifies your IP Understand the risks surrounding infringement and the need for proper due diligence Be alert, but not alarmed.

25 Thank You. Matthew HallPartner Swaab Attorneys, Sydney T: (02) E: Michael NorburyPartner Madgwicks Lawyers, Melbourne T: (03) E: Nicholas TebbeySenior Associate Snedden Hall & Gallop, Canberra T: (02) E:


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