Intellectual Property Update

1. 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

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

3. Impact of PPSA on IPby Matthew Hall, PartnerSwaab 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. Stamp Duty & IPby Michael NorburyPartnerMadgwicks Lawyers, Melbourne

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

12. Dutiable Property - NSW • 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

13. Dutiable Property - NSW • 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)

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

15. Dutiable Property - Qld • 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

16. Duties Abolition • 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

17. 3. “Raising the Bar” – A new era for intellectual property protectionby Nicholas TebbeySenior AssociateSnedden 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. Matthew Hall Partner Swaab Attorneys, Sydney T: (02) 9777 5544 E: mdh@swaab.com.au Michael Norbury Partner Madgwicks Lawyers, Melbourne T: (03) 9242 4727 E: michael.norbury@madgwicks.com.au Nicholas Tebbey Senior Associate Snedden Hall & Gallop, Canberra T: (02) 6285 8056 E: ntebbey@sneddenhall.com.au Thank You.