Griffith Hack has maintained its status as a Tier 1 firm for patent prosecution in the IP STARS 2021 rankings, with principals Amanda Stark and Janelle Borham named as Patent Stars.

The results highlight Griffith Hack’s standing as a leader in patent work both within Australia and internationally.

Earlier in 2021, Griffith Hack was also named as a Tier 1 firm for trade mark prosecution by IP STARS, with Anne Makrigiorgos recognised as a Trade Mark Star.

Published by Managing IP, IP STARS recognises firms and senior practitioners who have been identified as leaders in their fields and is considered one the most comprehensive and widely respected guides in the IP profession.

The federal budget demonstrates a commitment to research, innovation and technology – but to take full advantage, greater utilisation of Australia’s world class intellectual property (IP) system is required.

Treasurer Josh Frydenberg has handed down a 2021-22 federal budget that is focused on bolstering Australia’s economic recovery amid the fallout of the COVID pandemic. 

The broad-ranging budget places a significant emphasis on job creation and essential services, with childcare, aged care, infrastructure, education and training, small business, environment and housing figuring prominently.

But they weren’t the only winners. Technology companies, emerging industries, researchers, and start-ups can also look at last night’s announcement with a sense of optimism. Proactive measures to support innovation and business growth, and to address skills shortages, have been addressed, providing a once in a lifetime opportunity for Australia to technologically reposition itself on the global stage.

Of note, areas such as clean energy, artificial intelligence, digital economy, agribusiness, drone technology and technical skills-based training have all received substantial investment. Generous tax incentives also feature prominently, including the introduction of a “Patent box” aimed at reducing taxes on income from innovative research.

Key highlights in more detail

Patent box: Encouraging Australian medical and biotech innovation
Investment in Australian medical and biotech technologies is being supported by the introduction of a patent box. The patent box will reduce taxes on income from innovative research to encourage businesses to undertake their R&D in Australia and to keep the revenue that patents generate in Australia. 

From 1 July 2022, the patent box will tax income derived from Australian medical and biotech patents at a 17 per cent effective concessional corporate tax rate. Normally corporate income is taxed at 30 per cent or 25 per cent for small and medium companies. Only granted patents, which were applied for after the Budget announcement, will be eligible.

The Government will follow the OECD’s guidelines on patent boxes to ensure the patent box meets internationally accepted standards. The Government will also consult closely with industry on the design of the patent box to determine whether a patent box is also an effective way of supporting the clean energy sector.

This measure complements the Government’s $2 billion investment in the Research and Development Tax Incentive which was announced in the 2020‑21 Budget. The Government has asked the Board of Taxation to review the administrative framework of the R&DTI before the end of 2021.

Stimulating innovation in Australian businesses
The Government will allow taxpayers to self-assess the effective life of certain depreciating intangible assets for tax purposes, rather than being required to use the effective life currently prescribed by statute. This will apply to patents, registered designs, copyrights, in-house software, licenses and telecommunications site access rights.

Taxpayers will be able to bring deductions forward if they self-assess the assets as having a shorter effective life than the current statutory life. This change will reduce the cost of investment for business, and align the tax treatment of these intangible assets with the treatment of tangible assets. Taxpayers will continue to have the option to use the existing statutory effective life when depreciating these assets.

This will apply to eligible assets acquired following the completion of temporary full expensing, which has been extended and will now end on 30 June 2023.

Growing the Australian digital games industry
Australia’s digital games industry has been bolstered by a “digital games tax offset” that will cut the costs related to game development. Digital game developers will receive a 30 per cent refundable tax offset, capped at $20 million per year, for qualifying Australian games expenditure. The global digital games industry provides significant opportunities for Australia and this tax offset will make Australia an attractive destination for digital talent.

Why this budget highlights the value of strategic IP protection

Investment in commercialised sectors such as medical research, biotechnology and clean energy provides a timely reminder of the importance of strategic IP protection to take full advantage of these investments.

Australian governments have long strived to align Australia’s IP protection systems with the most robust in the world. The objective of several significant legislative changes has been to ‘support innovation by encouraging investment in research and technology in Australia and by helping Australian businesses benefit from their good ideas’.

But while Australia now has a world class IP system, not enough Australian businesses are using it. Recent evidence suggests that the Australian patent filings market is experiencing sluggish growth with both locals and foreign filers cutting back on their investment in Australian patents. Australia risks entering the post-pandemic period significantly lagging other countries when it comes to the generation of home-grown IP. Prioritising innovation now is key to assist in our economic recovery.

Summary

Australia’s 2021-22 federal budget presents an opportunity for businesses in Australia to invest in, protect, and maximise the value from R&D and innovation. With the global economy in a fragile state after a tumultuous 12 months, and with a strong knowledge economy, Australia is well-positioned to better establish itself as a major global player in the technology, innovation and commercialisation landscape. 

Our experts will provide ongoing in-depth analysis on specific topics featured in the federal budget. To stay up to date, subscribe to our email list. If you have questions for our team about the impact and opportunities of the federal budget, or strategic IP protection, please contact us at .

From 12 April 2021, new rules governing the eligibility of registering .au domain names come into effect. The primary changes affect domain name holders who rely on an Australian trade mark as the basis of their eligibility to hold an .au domain name. 

Key aspects of the new rules and how they may apply to your brand, are outlined below. 

Relying on trade marks to meet “Australian presence” requirements

To register an .au domain name, it is necessary to have an “Australian presence”, which can be satisfied by meeting various criteria including:

  • being an Australian company;
  • trading under a registered business name;
  • owning an Australian trade mark registration or an application for a trade mark which has a “close and substantial” connection to the domain name. Reliance on an Australian trade mark registration or application is particularly common for overseas rights holders using .au domain names. 

The new rules governing .au domain name eligibility require domain names be an “exact match” to the holder’s trade mark. The domain name must include all the words which comprise your trade mark, in the order they appear in your trade mark. However, not all trade mark elements have to be included in the domain name, specifically:

  • Domain Name System (DNS) identifiers such as com.au;
  • punctuation marks, such as exclamation points or apostrophes;
  • articles such as “a”, “and” or “the”;
  • ampersands.

As an example of how strict the new “exact match” requirements are, a party holding the trade mark registration for GRIFFITH HACK could rely on the trade mark registration as a basis for registering the domain name griffithhack.com.au, but not as a basis for registering domain names such as griffithhacklaw.com.au or gh.com.au.

One further rule change of specific interest to overseas rights holders relying on an Australian trade mark registration or application as a basis for holding a .au domain name, is that companies can now hold .au domain names on behalf of another company in their corporate group, as long as they meet the Australian presence requirement.

When the new eligibility rules come into effect on 12 April 2021, they will apply to all .au domain names registered or renewed after this date.  We recommend that .au domain name holders review their .au domain names to ensure they will meet the new eligibility requirements. It may be necessary to take actions such as filing new trade mark applications that are “exact matches” for your .au domain names or transferring your .au domain names to your Australian businesses or subsidiaries to ensure your .au domain names remain valid. 

A new wine export label directory to help Australian wine producers protect their intellectual property rights is expected to commence in April 2021.

The Wine Australia Amendment (Label Directory) Bill 2019 finally passed both houses of Parliament on 9 December 2020 enabling Wine Australia to establish the wine export label directory helping brand owners protect their export wine labels against copycat labelling.

While regulations implementing the detail of the directory are currently being finalized, Wine Australia says

The directory will require all Australian wine exporters to submit images of their labels to Wine Australia prior to gaining export approval. Brand owners will then be able to search the directory to identify breaches of their intellectual property rights, and the public will be able to verify whether the Australian wines they consume originated in Australia.

Wine Australia

The establishment of the new wine export label directory follows a number of significant instances of counterfeiting of Australian wine brands in export markets, particularly in Asia, starting with the seizure in November 2017 of 14,000 bottles of fake Penfolds wine being sold by counterfeiters in China. 

We will provide an update when further information about the new wine export label directory becomes available.

A new legal framework in Myanmar has been announced for trade mark registration and protection, impacting upon both foreign and domestic trade mark owners.

Background & the current system

Prior to the new legal framework, under statutory law trade mark owners in Myanmar had to record their marks with the Office of Registration of Deeds (ORD).

The new trade mark laws will be formally introduced this month, January 2020, through a ‘Soft Opening’. At this time, existing trade mark declarations and notices filed under the previous system will no longer be sufficient to demonstrate ownership of marks in Myanmar.

To maintain trade mark protection in Myanmar and avoid losing rights under the new legal framework, all existing mark owners in Myanmar must file new applications during the ‘Soft Opening’ from January 2020. The ‘Soft Opening’ period will last a period of 6 months from the first day of its introduction.

To qualify for re-filing during the ‘Soft Opening’ there must be an existing declaration or notice under the previous system.

Existing Myanmar trade mark owners

We recommend that trade mark owners with existing protection in Myanmar speak with Griffith Hack to ensure their trade marks are correctly re-filed under the new system during the ‘Soft Opening’ period.

Note that re-filing is not an automated process and further fees will apply.

Below is an overview of the required documents for re-filing existing trade marks rights in Myanmar:

      1. Legalised Power of Attorney

      2. Declaration of Ownership, registered under the existing law

      3. Caution Notice (if published)

Importantly, if any amendments to the existing trade mark(s) rights are required (such as name/address change or assignment), the trade mark must be filed as a new application in the ‘Grand Opening’ which is expected to commence from July 2020.

If you do not currently have any trade mark protection in Myanmar and require it, new applications cannot be filed until the ‘Grand Opening’ period commences.

Next steps

The fact that Myanmar will adopt a ‘first to file’ approach when filing new trade mark applications makes the impending changes especially relevant and time sensitive. The first person (or company) that files the trade mark is generally granted the right to that trade mark, irrespective of an unregistered marks’ prior use. In Myanmar the classic case of ‘first in, best dressed’ will therefore apply.

If you have an existing declaration or notice in Myanmar for your trade mark or are interested in obtaining trade mark protection in Myanmar in the future, please get in touch with one of Griffith Hack’s trade mark attorneys.