IP Glossary

Our intellectual property glossary includes definitions and explanations for patents, trademarks, copyrights, and related concepts. You are welcome to use these terms in your own writings and publications, provided you credit LexGeneris and include a link to this page.

Abandoned Trademark Application

An abandoned trademark application refers to a situation where a trademark application has been discontinued or withdrawn by the applicant or the trademark registry, typically due to a failure to respond to examination requirements or opposition within the prescribed time limits. Once an application is abandoned, the applicant loses all rights to that trademark and must file a fresh application if they still wish to register the mark.

Agreement

An agreement is a legally binding contract that outlines the terms and conditions under which intellectual property can be used, licensed, or transferred. This may include licensing agreements, assignment agreements, joint venture agreements, or other types of Intellectual Property-related contracts.

Assignee

An assignee in intellectual property is the party to whom the rights of an IP asset, such as a patent or trademark, have been transferred by the original owner (the assignor).

Assignment

An assignment is a transfer of ownership of an intellectual property right from one party (the assignor) to another party (the assignee). It permanently transfers the rights to the new owner.

ATMOSS

The Australian Trade Mark On-line Search System (ATMOSS) is the free, publicly accessible online database provided by IP Australia that allows users to search for registered, pending, and removed Australian trademarks by keyword, image, application number, or owner to view details like the goods/services covered and status, track application progress, and determine availability for use to avoid infringement, making it an essential tool for businesses and individuals navigating the Australian trademark landscape.

Brand Protection

Brand protection refers to the measures taken to safeguard the reputation, identity, and goodwill associated with a particular brand, product, or service. This may involve registering and enforcing trademarks, monitoring and addressing counterfeiting or infringement, and maintaining the brand’s distinctive visual and conceptual elements.

Chemistry Patent

A chemistry patent is a type of patent that protects the invention of a new chemical compound, formulation, or process. Chemistry patents are particularly important in the pharmaceutical, agrochemical, and materials science industries.

Classification of goods and services

The classification of goods and services is based on the Nice Classification system, which divides trademarks into 45 distinct classes:

  • Goods: Classes 1-34 cover various types of goods, such as chemicals, paints, cosmetics, metals, machinery, textiles, food and beverages.
  • Services: Classes 35-45 cover different types of services, including advertising, finance, construction, telecommunications, transportation, education, healthcare, and legal services.

Each trademark application must specify the relevant class(es) that the trademark will be used in relation to. This classification system helps to distinguish trademarks used for different types of products or services and prevents confusion or conflicts between similar marks. The correct identification of the appropriate class(es) is crucial when filing a trademark application, as it determines the scope of protection granted to the trademark owner.

Compulsory License

A compulsory license is a legal mechanism that allows a government to grant a license to a third party to use a patented invention without the consent of the patent owner, after the invention falls on the public domain, typically in cases where the public interest is not being adequately served by the patent holder.

Conflicting Trademark

A conflicting trademark refers to a trademark application that is identical or deceptively similar to an existing registered or pending trademark. Trademark examiners will reject a new application if it is found to conflict with an earlier mark, as this can cause consumer confusion about the origin of the goods or services.

Copyright

Copyright is an intellectual property right, a legal/statutory right that grants the creator of an original work for its use and distribution. Copyright covers a wide range of works including books, music, films, software, and artistic works and computer programs.

Copyright Registration

Copyright registration is the process of officially registering the copyright claim with a copyright office. While copyright arises automatically upon creation of an original work, literary works, artistic works, sound recordings, photographs, & software and the copyright registration provides additional legal benefits and protections to the creator, artist, author, composer, performers.

Copyright Protection

Copyright is a form of intellectual property protection that grants the creator of an original work exclusive rights to the use and distribution of that work. In Australia, copyright arises automatically upon the creation of an original work and covers a wide range of creative works, including books, music, films, software, and artistic works.

Counter Claim

A counterclaim refers to a claim filed by a defendant in response to an infringement lawsuit or opposition. It allows the defendant to assert their IP rights, such as seeking a declaration of invalidity or non-infringement of the plaintiff’s IP. Counterclaims are commonly used in patent and trademark disputes to challenge the validity or scope of the asserted IP rights. Filing a counterclaim can be a strategic move to shift the burden of proof and potentially lead to a more favourable outcome for the defendant.

Creator

A creator is the individual or entity that produces an original work of authorship, such as a literary, artistic, musical, or dramatic work. The creator holds the copyright in the work and has exclusive rights over its use and distribution.

Deceptively Similar

Deceptively similar refers to a trademark that so closely resembles another trademark that it is likely to deceive or confuse consumers about the source of the goods or services. This can constitute trademark infringement.

Design

Design rights provide legal protection for the visual appearance of a product, including its shape, configuration, pattern, and ornamentation. Designs can be registered to obtain exclusive rights over the design of a product for up to 10 years of protection, allowing designers to prevent others from copying the unique visual features of their designs.

Design application

A design application is a formal process of seeking legal protection for the design by filing an application. Upon examination, the owner is granted of exclusive rights. In Australia, the rights are provided for an initial 5-year term, and it’s renewable for another 5 years. In New Zealand, the rights are provided for an initial 5-year term, and it’s renewable for two further 5-year terms so that it lasts for additional 10 years.

Design Search Code

Design codes refer to a numerical classification system used to search for design patents and registered designs. The design code system divides design into categories, divisions, and sections based on the visual features and characteristics of the design. This allows designers and IP offices to efficiently search and retrieve relevant design registrations when examining new design applications or investigating potential infringement.

Domain Name

A domain name is the unique address of a website on the internet. Domain names are registered through accredited registrars and can be protected as a form of intellectual property. Domain names are protected under Trademark.

Electronic Patent

An electronic patent is a type of patent that protects the invention of a new electronic device, circuit, or software-based technology. Electronic patents are crucial in the rapidly evolving fields of electronics, telecommunications, and computer science.

Examination

Examination is the process undertaken by an IP office, to assess whether an application for a patent, trademark or copyright or other Intellectual Property right meets the legal requirements for registration. Examination is conducted by the Examiner. Upon examination conducted successfully and the examiner issues an examination report either a positive report or adverse report. Examination is the most vital stage of the registration of Intellectual property rights.

Exclusive Rights

The rights that grant the Intellectual Property owner the sole right to use, sell, or license the intellectual property are called Exclusive Rights. This prevents & restricts the infringers from commercially exploiting the intellectual property without the copyright owner’s permission.

Exclusive Licence

An exclusive licence is a license that provides the licensee with the sole right to use, commercialize, or exploit the IP within a defined scope, such as a specific geographical area, field of use, or product. The licensor retains ownership of the IP but agrees not to grant any other licenses or use the IP within the scope of the exclusive license. This gives the exclusive licensee the strongest rights and control over the commercialization of the IP.

Exploitation

Exploitation refers to the commercial use or commercialization of intellectual property, such as copyrights, through manufacturing, selling, licensing, or assigning otherwise deriving value from the Intellectual Property asset.

Fair Use

“Fair use” is a doctrine in the Copyright act, it denotes the reasonable and limited use of a copyrighted work without the author’s permission, such as quoting from a book in a book review or using parts of it in a common parody. Fair use is a defense to a copyright infringement based upon the purpose and character of the use, the nature of the copyrighted work, the amount of the work used, and the economic impact of the use.” For Criticism, and for research purposes the usage of the copyrighted work does not fall under copyright infringement. It’s called Fair Use.

Goodwill

Goodwill refers to the commercial value and reputation associated with a business, product, or service. It is considered an intangible asset and can be protected through trademarks, trade names and other IP rights. Goodwill keeps consumers loyal to a company and can even attract new customers. Think of it as a business’s reputation. In accounting, goodwill is calculated as the company’s value beyond the reasonable value of its assets. Trademarks can also contribute to goodwill. For instance, consumers may trust a particular trademark, associating it with reliable products or services. When assessing a company’s value, it’s essential to consider both tangible assets and trademark goodwill.

Hearing

A hearing is a formal proceeding before an IP office, where parties can present evidence and arguments regarding an Intellectual Property application or dispute. In a patent, the claims define the scope of the invention for which protection is sought. The claims must particularly point out and distinctly claim the subject matter of the invention.

Industrial Application

Industrial applicability or industrial application is a patentability requirement in patent law. It states that a patent can only be granted for an invention that can be made or used in some kind of industry. This “industry” includes not only manufacturing but also areas like agriculture, electronics, and technology.

Infringement

Infringement occurs when someone uses a patented invention, a registered trademark, or a copyrighted work without the permission of the Intellectual Property owner. This violates the exclusive rights granted by the Intellectual Property protection. This act is said to be infringement.

Intellectual Property (IP)

  • Intellectual Property (IP) is an intangible property that comes into existence from creations of the Human Intellect. Patent, Copyright, Trademark, Trade Secret, Designs, Geographical Indication are types of intellectual Tual property.
  • A few examples of intellectual properties are inventions, literary and artistic works, musical works, industrial designs, and symbols & logos, trade names and images used in commerce.
  • IP is governed by IP laws & regulations of various jurisdictions in the world. These IP laws & regulations enable inventors and creators to earn recognition or financial benefit from what they invent or create.

Intellectual Property Rights (IP Rights)

Intellectual property rights are legal rights that accrued from the Intellectual property to the inventor and creator. IP rights are used to protect the use of ideas, inventions, innovations, and creative expressions. The main types of IP rights are patents, trademarks, copyright, and trade secrets. These rights allow the owner to benefit from their work or investment in a creation, invention.

Innovation

An Innovation refers to doing something new that improves a product, process, or service. These innovations help inventors, creators, to attain intellectual property protection by granting exclusive rights to inventors, creators and those who help in their businesses. Upon innovation only one can get IP protection and to prevent infringers.

Innovation Patent

An innovation patent is a second-tier patent system that provides a lower inventive threshold and shorter term of protection (up to 8 years) compared to a standard patent. An application for an innovation patent must also be accompanied by a complete specification. It is designed to protect minor incremental innovations. The specification must only include 5 claims defining the invention. Innovation patents can usually be granted within a month. A granted innovation patent protects for up to 8 years. Examination of your innovation patent application undergoes a formalities check, which is a simpler process that can be completed within a month. It is now discontinued in Australia; however, some countries still allow it.

Inventive Step

An inventive step is a key requirement for patentability. It means the invention must involve a technical advance compared to the existing state of the invention and must not be obvious with the relevant field of technology.

Inventor

An inventor is the individual or team responsible for conceiving and developing a new and useful invention which has novelty, distinctiveness, and industrial application. Inventors are patent rights owners and have the exclusive right to make, use, and sell the patented invention for a limited time.

IP Asset

An Intellectual Property asset is any intangible property that is the product of creativity, invention, and innovation. Examples include patents, trademarks, copyrights, trade secrets, and industrial designs. IP assets can provide significant commercial value and competitive advantage to your business.

IP Attorney

An IP attorney refers to a registered patent or trademark attorney. The IP attorneys are experts in IP law who hold tertiary qualifications in scientific or technical fields, as well as specialized training in patent, trademark, and other IP laws and practices. An attorney can assist clients in securing, managing, and enforcing their IP rights through services such as preparing and filing patent and trademark applications, conducting IP audits, and providing advice on infringement and licensing.

IP Audit

An Intellectual Property audit is a comprehensive review and assessment of an organization’s intellectual property assets and rights. It aims to uncover hidden Intellectual Property risks and potential, enabling the development of an effective IP strategy to leverage these assets.

IP Commercialization

Commercialization of Intellectual Property refers to the process of taking an invention, design, or creative work and turning it into a commercially viable product, service, or business. This involves activities such as market research, product development, manufacturing, marketing, and distribution to bring the Intellectual Property to the market and generate revenue.

IP Monetization

IP Monetization refers to the process of Intellectual Property owner such as patent holder, trademark holder, copyright owner converting the Intellectual Property assets into financial value, via licensing, selling, or assigning to any other party or parties, to companies etc., to generate revenue from the asset.

Letter of Demand

A letter of demand is a formal written notice sent by an Intellectual Property owner to an alleged infringer, demanding that they cease the infringing activity and compensate the IP owner for any damages.

License

A license is a grant of permission from an Intellectual Property owner (the licensor) to another party (the licensee) to use the IP in a defined way, usually in exchange for payment of a royalty or fee.

Licensee:

The licensee is the party who receives the right to use the IP owned by the licensor. The licensee is allowed to utilize the licensed IP, such as manufacturing a patented product or selling trademarked goods, within the scope and terms defined in the license agreement. The licensee pays the licensor consideration, and royalties for this permission to use the IP.

Licensor:

The licensor is the owner or holder of the IP rights, such as patents, trademarks, copyrights, or designs. The licensor grants permission to another party, the licensee, to use their IP for a specified purpose, duration, and under certain conditions, in exchange for consideration payment of royalties or fees.

Madrid Protocol

The Madrid Protocol is an international trademark registration system that allows a trademark owner to seek registration in multiple countries by filing a single application. It provides a cost-effective and efficient way to obtain trademark protection globally.

Medical Patent

A medical patent is a type of patent that protects the invention of a new drug, medical device, or other healthcare-related technology. Medical patents give the patent holder exclusive rights to manufacture, use, and sell the patented invention for a limited time.

Non-Exclusive Licence

A non-exclusive licence allows the IP owner (licensor) to grant the same or similar rights to multiple parties (licensees) to use the IP. The licensor retains the right to use the IP themselves and grant additional licenses to others. Non-exclusive licensees do not have the same level of exclusivity or control as an exclusive licensee.

Non-Exclusive Rights

Non-exclusive rights allow the Intellectual Property owner to grant multiple licenses to different parties to use the copyrighted Intellectual Property. This enables the Intellectual Property owner to commercialize the IP through multiple channels, modes & mediums.

Notice of Opposition

  • A notice of opposition is a formal document filed by Intellectual Property office upon objection or own initiative by IP office.
  • It is a procedure to oppose the registration of a trademark or patent or copyright from registration. It outlines the grounds on which the opposition is based, such as lack of distinctiveness or prior rights.

Novelty

Novelty is a key requirement for patentability. Novelty means newness. An invention must be new and not form part of the state of the prior art to be considered novel and eligible for patent protection.

Objection

An objection is a formal notice issued by an Intellectual Property office, identifying issues with a trademark or patent or copyright application that must be addressed before it can proceed to registration.

Opposition

Opposition is a procedure where a third party files an objection to a trademark, patent, or copyright registration. The opponent must provide grounds for why the application should not be accepted. And hearing procedures will be scheduled by the registry to conclude the opposition for either accepting the trademark / patent / copyright or to reject the application.

Overlapping Rights

Overlapping rights occur when multiple forms of Intellectual Property protection, such as patents, trademarks, and copyright, apply to the same invention or creation. This can provide comprehensive protection for the Intellectual Property owner.

Passing Off

Passing off is a common law remedy for unregistered trademark owners. Upon invoking this Passing off, unregistered trademark owners shall protect their mark from infringement. It protects the goodwill associated with a business, product, or service of an unregistered trademark.

Patent

A Patent is a statutory right for an invention granted for a limited time to the patentee by the Government. A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something or offers a new technical solution to a problem. Patents provide the patent owner with the right to decide how the invention is used and exploited.

Patentee

A patentee is the person or entity applying for a Patent application in the Patent Office. A Patentee is the person whom a patent has been granted. The patentee holds the exclusive rights conferred by the patent.

Patent Application

A patent application is an application filed by the Patentee/industrialists at a patent office for the grant of a patent for the invention described in the application. The application must meet certain requirements, such as describing the invention in sufficient detail and demonstrating it is new, inventive, and industrial applicability.

Patent Attorney

A patent attorney is a legal professional specializing in the preparation, filing, and prosecution of patent applications and the enforcement and defense of patent rights. Patent attorneys are licensed to represent clients before patent offices.

Patentable and Non-Patentable

Patentable inventions are those that meet the legal requirements for patent protection, including being new, involving an inventive step, and having industrial application. Non-patentable subject matter includes laws of nature, abstract ideas, and certain types of computer programs and business methods.

Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international patent law treaty that provides a unified procedure for filing patent applications. It makes it possible to seek patent protection for an invention simultaneously in many countries by filing a single “international” patent application.

Patent Protection

Patent protection grants the patent owner the exclusive right to commercially exploit the patented invention for a limited time, usually 20 years from the filing date.

Patent Registration

Patent registration is the process of officially registering the patents claims and specifications with a patent office. By filing an application with the registry, after examination of the patent claims/specifications by the examiner, no objections can be registered in the Patent office.

Postponement of Acceptance

Postponement of acceptance is a procedure where the acceptance of a patent is postponed for a while. This allows the patent applicant to optionally propose amendments in the specification, reduce the number of claims, rectify any errors etc.

Prior Art Search

A prior art search is research conducted to identify relevant existing knowledge (prior art) that may affect the patentability of an invention. It is an essential step in the patent application process.

Priority Date

The priority date is the date on which a patent application is first filed, either in Australia, India, New Zealand or in another country. This date is used to determine the prior art that can be cited against the application.

Rectification

Rectification is the process of correcting or amending an entry in the Intellectual Property register, such as a patent or trademark or copyright applications, to ensure the information is accurate and up to date. This may be necessary due to errors, changes in ownership, or other circumstances.

Registration

Registration is the process of formally registering the rights in intellectual property, such as patents, trademarks, copyrights, or designs, with a government Intellectual Property Registry. Registration provides legal recognition and protection of the Intellectual Property rights holder.

Res Judicata

Res judicata is a legal doctrine that prevents re-litigation of a case that has already been decided. It ensures that the same parties cannot re-litigate the same issues for the same relief that have already been determined by a final judgment.

Review

A review is the process of re-examining an Intellectual Property application or registration, typically in response to an objection or opposition. This may involve providing additional information, amending the application, or challenging the grounds for the objection or opposition.

Rights

Intellectual Property rights grant the owner exclusive rights to use, sell, license or otherwise commercially exploit the protected intellectual property. These rights prevent others from using the Intellectual Property without permission.

Royalty

A royalty is a payment made by one party (the licensee/assignee) to another party (the licensor/assignor) for the right to exploit an intellectual property asset. Royalties are commonly paid for the use of patents, copyrights, or trademarks.

Software IP

Software IP refers to computer code or programs that are protected by law against copying, theft, or any unauthorized use. The rights to software IP belong either to the company that created the program or to the company that purchased those rights from the original owner. Computer programs and software are protected by copyright law, which grants the copyright owner’s exclusive rights over the expression of the source code and object code. Trade secret protection may also apply to certain aspects of software.

Specification

The specification is the written description of the invention in a patent application. It must describe the invention in sufficient detail to enable a person skilled in the art to make and use the requested invention.

Standard Patent

A standard patent provides the patent holder with exclusive rights to the invention for up to 20 years (25 years in the case of pharmaceuticals) from the filing date. Standard patents require a prominent level of inventiveness and are granted for inventions that are new, involve an inventive step, and have industrial application. A standard patent must include a complete specification. This process can take months to years depending on the circumstances. Examination of your Standard patent application is undergone by the Commissioner of Patents before the patent can be granted, which may take 4 months to 5 years depending upon pendency at patent office, and whether the patent examination for the application is expedited or not.

Trade Secrets

A trade secret refers to confidential information that provides a business advantage over competitors who do not know or use that information. Trade secrets can encompass a wide range of subjects, including formulas, practices, processes, designs, instruments, and even a compilation of information. Trade secrets are protected if reasonable steps are taken to keep the information secret. 

Trademark

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks allow consumers to identify and recognize products or services and enable brand owners to build brand equity.

Trademark Application

A trademark application is a request filed with a trademark office to register a trademark by business individuals, entrepreneurs, and new start-ups. The application must include a representation of the trademark and identify the goods and/or services it will be used for. The trademark office will examine the application to ensure it meets the requirements for registration.

Trademark Attorney

A trademark attorney is a legal professional who specializes in the registration, protection, and enforcement of trademarks. Trademark attorneys assist clients in selecting, clearing, and registering trademarks, as well as defending against infringement and opposition proceedings.

Trademark Registration

The trademark registration is the process of officially registering the marks, trade names, logos, device marks, shapes in the Trademark registry. By filing an application with the registry, after examination of the marks by the examiner, no objections can be registered in the Trademark Registry.

USPTO

USPTO stands for the United States Patent and Trademark Office, which is the federal agency responsible for granting U.S. patents and registering trademarks.

WIPO

World Intellectual Property Organization is a United Nations agency responsible for protecting intellectual property (IP) through an international system that promotes creativity, innovation, and economic development. It plays a crucial role in safeguarding various forms of IP, including patents, copyrights, trademarks, industrial designs, geographical indications, and trade secrets. By striking a balance between innovators’ interests and the wider public, WIPO fosters an environment where creativity can flourish.

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