©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 5th December 2011 Sofitel Hotel, Sydney

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

1. Impact of PPSA on IP

by Matthew Hall, PartnerSwaab Attorneys, Sydney

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

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

IP Collateral

Can include:

• patented machinery

• patented pharmaceuticals

• hardware with embedded software

• food and beverage containers protected by design

• branded clothing

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”

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.

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

2. Stamp Duty & IP

by Michael NorburyPartnerMadgwicks Lawyers, Melbourne

• 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

• 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

• A business asset

i) Goodwillii) Intellectual property used in NSW when linked to goodwilliii) Statutory licence if used in NSWiv) Goods (if other dutiable property)

Dutiable Property - NSW

• Land• Transferable site area• An existing right• A business asset• A chattel

Dutiable Property - Qld

• What is a business asset

i) Goodwillii) Statutory licence iii) Business nameiv) Rights under a franchise agreementv) A debtvi) Supply rightsvii) Intellectual Propertyviii) Personal property of a business

Dutiable Property - Qld

Part of GST agreement among Commonwealth and the States.

• ACT 2006• Tasmania 1 July 2008• NSW, NT, SA 1 July 2012• Qld, WA 1 July 2013

• Victoria IP was never dutiable

Duties Abolition

3. “Raising the Bar” – A new era for intellectual

property protection

by Nicholas TebbeySenior AssociateSnedden Hall & Gallop, Canberra

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 technologyremove the procedural hurdles that plague some elements of the IP registration system

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

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

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

How will Raising the Bar improve the IP system - Enforcement

• Increased deterrence for trade mark infringementGreater relief for infringement.Increase penalties for indictable offences.Restructure the elements of the existing offences under the Trade Marks ActIntroduce new summary offences

• Border ProtectionCounterfeit goods can be seized by CustomsNotice of objection filed by trade mark ownerNotice of seizure and inspection to be served by Customs

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

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.

Thank You.

Matthew Hall PartnerSwaab Attorneys, SydneyT: (02) 9777 5544E: mdh@swaab.com.au

Michael Norbury PartnerMadgwicks Lawyers, MelbourneT: (03) 9242 4727E: michael.norbury@madgwicks.com.au

Nicholas Tebbey Senior AssociateSnedden Hall & Gallop, CanberraT: (02) 6285 8056E: ntebbey@sneddenhall.com.au