Five Practical Tips for IP enforcement on Online marketplaces

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Online marketplaces, such as Amazon and eBay, are not only changing the way we buy, but are also changing the way we sell.  The threshold for listing products on many of these online marketplaces is very low, particularly when compared with traditional bricks and mortar stores, and individuals and small businesses are able to sell products and services online with minimal outlay.

While this is empowering for individuals and small businesses that wish to sell online, it poses new challenges to intellectual property right holders.  Many online marketplaces appear to be a haven for selling counterfeit (or infringing) products, as it can be difficult to identify who the seller actually is.  Furthermore, and due to the low threshold for listing items, are also popular with individuals that have little understanding of intellectual property.

You may be wondering if it is even possible to keep on top of this, particularly if you are an individual or small business.  But luckily, these marketplaces generally respect intellectual property, and typically provide efficient complaint reporting tools.  By using these tools, it is often possible to get counterfeit or infringing products removed from the marketplaces quickly, and without necessarily even being able to identify the seller (which at times can be difficult).

In many cases (examples are provided below), complaints are made using an online form, which is submitted to the online marketplace for review.  In the online form you are generally required to enter your details, details of your rights, and details of the listing(s) that infringe your rights.  If the complaint passes an initial review, it is generally provided to the seller for a response.  Depending on the marketplace, the listing may be temporarily removed during this period.  If the seller does not respond to the complaint, the listing is generally removed (if not already done so), and in the case of repeated breaches, the seller may be suspended by the marketplace.

In the case of obvious infringement, the listing is often able to be removed shortly after the complaint is filed (in some case within days), particularly if the seller does not challenge the complaint.  We have even seen cases where listings are voluntarily removed by the seller directly after the complaint is made.


  1. Have details of your IP rights ready, as you will need these to submit your complaint.  In the case of a trade mark, for example, most of the relevant information (e.g. registration number, class, goods) can be found on the registration certificate.
  2. Focus on the most obvious infringement.  In many cases it is faster and easier to have a listing removed for copyright or trade mark infringement only, even if design and/or patent rights are also infringed.
  3. Consider traditional “cease and desist” letters when dealing with other businesses, particularly those that operate online and in the physical space.  Sometimes it can be more efficient to stop the infringement once, rather than challenging each listing.
  4. Monitor these online marketplaces for infringement so that you can act promptly when infringement occurs.  Consider adding a weekly/monthly reminder so that this task is not forgotten.
  5. Make sure your Trade Marks are registered and up to date.  It is much easier to quickly stop infringement if your Trade Marks are already registered.


Infringement Reporting Tool:


EXAMPLE 2 – Facebook

Infringement Reporting Tool:



eBay has a Verified Rights Owner (VeRO) Program ( for IP complaints.

Initially, a Notice of Claimed Infringement (a PDF form) is completed and submitted

The form is much like the online forms above (you enter your details, details of your IP, and eBay item numbers to which the report relates).

Gumtree has a near identical reporting system.


EXAMPLE 4 – Alibaba

Alibaba has an Intellectual Property Protection (IPP) system (

The main difference with the Alibaba IPP system and the examples provided above, is that IP rights are registered separately to complaints, and associated with an account.  This is efficient when making many reports, as you do not need to re-enter details of your rights for each complaint.

I would suggest allowing extra time to initially register your rights on Alibaba, as it is a very detailed process (e.g. you must upload pages of your registration certificates for review).


The complaint mechanisms provided by online marketplaces can be a very efficient and cost-effective way of removing infringing products from online marketplaces, and thus keeping infringers at bay.

If you would like any assistance, or further advice regarding infringement of your rights, in the context of one of the above mentioned marketplaces or otherwise, please feel free to contact us on 07 3808 3566 or email at


IP Gateway attends INTA’s 2018 Designs Conference in London: The Power of Design

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At the end of February, IP Gateway’s Head of Designs, Daniel Rosenthal, attended the 2018 Designs Conference in London: The Power of Design, organised by the International Trademark Association (INTA).

The two-day conference is one of very few dedicated international designs law conferences, and the leading conference of its type.

Accordingly leading business and legal experts from all over the world attended to share knowledge, strategies and best-practice in designs law.  In addition to a large number of delegates from Europe and the USA, delegates came from as far afield as Japan, Canada, South Korea, Argentina, Jordan and India.

IP Gateway was the only Australian Patent Attorney firm represented at the conference, underlining our exceptional commitment to designs law amongst Australian firms.

Daniel stated that it was a pleasure to attend the conference, including the extensive program of educational presentations, and to continue to expand IP Gateway’s expertise in international designs law.

Daniel Rosenthal (left) at the INTA London 2018 Conference: The Power of Design, with leading US IP law practitioners, from right to left: Christopher Carani, Paolo Beconcini, Dunstan Barnes and Ronald DiCerbo.

If you would like to discuss how to secure Intellectual Property protection with qualified award winning experts, please contact IP Gateway Patent and Trade Mark Attorneys by telephone on +61 7 38083566 or email us at

Protecting Inventions Internationally.

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By Christy Grobbler PhD



Granted Australian patents only protect inventions within Australia. For inventors seeking protection for their invention outside Australia, there are options available.

Is there an international or worldwide patent?

An international or worldwide patent does not exist.  Foreign patent protection is only available in the form of one or more national patents.  Nevertheless, there are options available for inventors who wish to protect their invention internationally.

PCT application

One option is to file a single patent application or ‘PCT application’ under the Patent Cooperation Treaty (PCT) A PCT application effectively creates pending patent rights in each country of the 152 PCT member countries.  A PCT application is commonly referred to as an international patent application.  In order to obtain national patent rights, a PCT applicant must formally proceed before the national patent office in each country of interest (or region in the case of Europe) within 30 or 31 months from the first filing.  This is known as entering the national phase.

Paris convention application

Another option is to directly file a separate national patent application in each country of interest under the Paris convention for the Protection of Industrial Property (Paris convention).  The Paris convention has 177 member countries.

The PCT application versus the convention application

Both the PCT and Paris convention provide a system which allows a person to file a first patent application in their home country that provides essentially pending worldwide patent rights for 12 months.  This preservation is perfected if a PCT application and/or one or more convention applications are filed within the 12 months. For countries in which no application is filed, patent rights are lost.

It is important to remember that the decision to grant a patent is dependent on the laws of each country. The greatest benefit of filing a PCT application is that it allows a person to file a single application without fear of immediately losing rights to the invention in other PCT member countries. A PCT application is therefore useful for an invention having a global, or potential global market.

Further, a PCT applicant will have more time to consider the value of the invention in different member countries, as well as to assess different commercial opportunities and/or to organize funds.  In this way, the PCT application can act as a place holder, allowing the applicant to delay making further decisions for up 18 months from the PCT filing date.   A PCT application can also act as a deterrent or a source of frustration to potential foreign competitors during that 18 month period as a foreign competitor cannot know whether the applicant will enter the national phase in their country.

Applications filed via the PCT route are also particularly advantageous in that the applicant is provided with results of an international search. This can provide invaluable insight into the international patentability of the invention that may assist the applicant with making decisions as to which countries they would like to progress their application. Further, positive international search results may help applicants attract potential investors, licensees and/or business partners.

On the other hand, filing a convention application may be more appropriate for inventors who only have a commercial interest in specific countries. Filing a convention application may be more economical as it avoids the additional costs associated with filing a PCT application on top of the national phase filing fees for each desired country.  Thus, a convention application may be more appealing to more cost-conscious applicants looking to file in only a few countries with well-defined markets.  Also as convention applications are filed at selected patent offices 18 months before a PCT application enters national phase, patent protection is likely to be granted faster. This may be particularly advantageous for inventions that are market ready and/or have a short commercial or shelf life.

Further, an applicant can file both a PCT application and one or more convention applications in key market countries.  This means that an applicant can keep their options open while pursuing enforceable patent rights to protect their current market position.  A separate convention application will need to be filed in countries that are not PCT members.

How do I choose what is best for me?

This depends on a number of factors including the relevant industry, financial situation, technology, business plans, product market readiness, level of innovation, commercial planning and different patentably requirements of foreign patent offices.  The experienced Patent Attorneys at IP Gateway are able to assist in developing a tailored foreign filing strategy that best meets an applicant’s business and financial situation.

If you have a Patent, Design or Innovation that you’d like to be protected or you want to discuss how to secure protection for your Intellectual Property with qualified award winning experts, please contact IP Gateway Patent and Trade Mark Attorneys on 07 38083566 or email us at


Look Before You Leap – Conducting an Australian Trade Mark Search

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By Michelle Conomos


Zoe Foster Blake, the Aussie author of a relationship book and app, Break-Up Boss, has recently made headlines after being forced to recall her ‘Break-Up Boss’ merchandise from sale.  The merchandise was recalled upon learning that a ‘very well-known international fashion brand’ already had trade mark rights to the word BOSS.

The Aussie author recently launched t-shirts to promote the book and app featuring the word BOSS.  However, she sheepishly admitted she hadn’t done any checks to see if there were any trade mark or common law right issues around the word prior to using it.


Zoe’s story highlights the importance of conducting trade mark clearance searches prior to developing or launching a new brand or applying for a trade mark.  Conducting a trade mark clearance search will identify if there are any potential obstacles to the use or registration of your trade mark and help you make informed decisions about trade mark eligibility prior to committing to a brand name.   While this may seem like a low priority or extra cost when you are starting up or growing your business, this step can potentially save you thousands of dollars in legal costs and rebranding should a trade mark dispute arise.

Although conducting your own search via the Australian Trade Marks Register is a good starting point, we recommend engaging an experienced trade mark attorney to ultimately conduct a comprehensive trade mark search.  A comprehensive search includes common law search and searches of other available databases, in addition to the Australian Trade Marks Register, thereby providing you with the full picture before committing to your new brand.

At IP Gateway, our team of experienced and qualified trade mark attorneys can conduct a comprehensive clearance search for you, and if the trade mark is clear, assist you in applying to protect your trade mark.  We provide you with a search report together with comprehensive advice clearly presenting any commercial and legal risks for your consideration.

If you require assistance with a trade mark clearance search, please contact IP Gateway Patent and Trade Mark Attorneys on 07 3808 3566 or email us at 


IP Gateway appoints Jack King-Scott to new position as Director.

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IP Gateway is pleased to announce the appointment of Jack King-Scott as a director of the firm effective 23 February 2018.

Jack is one of the rising stars in the patent profession in Brisbane and he will now be involved in charting the direction and future of IP Gateway. Jack’s enthusiasm and drive have been an asset since he joined the firm and his leadership qualities will help him in his new role as a director.

At a time of great opportunity in the Brisbane market Jack’s leadership will help to propel the firm up to the next level.

A fundamental part of Jack’s new role will be to build new, and maintain existing business relationships. This will be one of his key objectives as he travels to the USA to visit key clients of the firm in March.

In addition Jack will lead IP Gateway’s engagement with high growth technology businesses in Queensland.


Congratulations Jack, from all the IP Gateway Team.

Australian Registered Designs – Is it a good idea to request examination?

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By Daniel Rosenthal | Head of Designs


In Australia, design applications proceed to registration without substantive examination.


Examination is optional and is typically only requested when pursuing an infringer.  Consequently, many registered designs remain in force throughout their ten-year term without ever being examined.

For owners of registered designs, this allows examination, and associated costs, to be avoided, while still providing a registered right and thus a deterrent to anyone considering copying the design.

However, it should be appreciated that Australian registered designs cannot be enforced until after they have been examined and ‘certified’ by IP Australia.  Further, any action taken against a potential infringer in relation to an unexamined and uncertified registered design may be regarded as an ‘unjustified threat’.  This applies even if the infringer has flagrantly copied the registered design.



To Request or Not To Request?


Design owners must therefore balance the convenience and economy of having a registered design albeit uncertified against the substantial limitations in the rights provided while it remains uncertified.

Is it a good idea to voluntarily request examination at an early stage?

Opinions and strategies vary considerably between design owners.


The Likelihood of Infringement Occurring

An important, if fairly obvious, factor to take into consideration, is the likelihood of infringement.  If there is a high risk of infringement, then it would be preferable to apply for early examination of a registered design so that action can be taken without delay.

Moreover, where the risk of infringement is high, an examined and certified design might act as a sufficient deterrent to reduce this risk.


The Likelihood of Revocation

Conversely, when there is a known validity problem with a registered design (e.g., the known existence of a quite similar earlier design), then it may be sensible to avoid or defer the risk of revocation by not requesting examination.

In our experience, it is relatively uncommon for a design registration to be objected to based on earlier designs or products (other than those of the same owner).  Accordingly, it is unusual for a registered design to be revoked based on a design that the owner did not (or could not) know about.

Of course, other than objections based on earlier designs or products, there are some instances in which the subject matter of the actual design is likely to result in an insurmountable objection being raised during examination.  This is particularly an issue when the design relates to something intangible or transient, such as, e.g., an icon or image displayed on a computer screen.  Designs based on such subject matter typically pass the initial formalities check, and therefore proceed to registration only to be revoked if examined.  The Australian government has stated an intention to review this aspect of Australian designs law in the near future.  We therefore recommend avoiding examination of such designs at present, and awaiting the anticipated change in law.


Time Required for Examination

A clear disadvantage of deferring examination is that it will delay the ability for a design owner to initiate (or even threaten) infringement action against a potential infringer.

In our experience, a design owner will generally receive a response from the Designs Office, be it an examination report or certificate of certification, within about three months from requesting examination.

It is, however, possible to request expedited examination, which will reduce the examination time frame from about three months to about six to eight weeks. Thus, in our experience, examination can be carried out, and certification usually achieved, fairly expeditiously when needed.

Other Commercial Considerations

In some instances, there may be other commercial considerations when deciding whether or not to request examination of a registered design.

For example, a design owner may wish to licence or assign their design registration.  In such scenarios, having the design examined and certified might be a requirement of the potential licensee or assignee, and/or might increase the value of the design registration.

In a similar example, examination and certification may increase the value of a registered design, which may assist a design owner seeking investment in, or sale of, an associated business.

Another commercial consideration is the increased deterrent effect of a certified registered design as opposed to an unexamined, registered design.


Whether or not a design owner requests early examination depends on a number of considerations, including the risk of infringement, the risk of revocation and other commercial considerations.  Put simply, however, there is no one solution that suits all, rather the decision as to whether or not examination is requested early, if at all, has to be considered on a case by case basis.

If you are a design owner struggling with this decision or if you have more general design queries, please contact  IP Gateway Patent and Trade Mark Attorneys on 07 3808 3566 or email us at



This article is provided for general information purposes only.  It is not a substitute for legal advice.  Please contact us for case specific advice on all designs matters.

IP Gateway Patent & Trade Mark Attorneys Pty Ltd © 2018

Recent Australian Patent Office Decisions

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By Alison McMillan PhD


The Tasmanian licit opium poppy industry provides about 50% of the world’s Narcotic Raw Material (NRM).  The industry is worth about $290 million to Tasmania.

The Tasmanian poppy industry is controlled by three companies, SunPharma, India’s largest pharmaceutical company, Tasmanian Alkaloids Pty Ltd (Tas Alkaloids) owned by SK Capital, a US private equity company, and TPI Enterprise Limited (TPI), the smallest and only Australian company.

NRM contains a number of alkaloids including morphine in a major amount and codeine in a minor amount.   NRM is processed to extract alkaloids for use in the manufacture of pain relief formulations.  Codeine is the most widely used pain killer in the world. In order to meet the worldwide demand for codeine, codeine is manufactured from extracted morphine.

Production of a poppy plant variant that can produce high levels of codeine at the expense of morphine would reduce the costs of producing codeine.   The commercial advantages would be significant and development of such an improved poppy plant has long been a goal of the licit poppy industry.  (A low morphine poppy plant would be of little use in the illicit poppy industry in which morphine is used to manufacture heroine).

Tas Alkaloids developed such an improved poppy plant and filed patent applications around the world.  The Australian patent application was accepted on 11 June 2009.  Both SunPharma and TPI filed notices of opposition to the grant of a patent at the Australian Patent Office.  The main ground of opposition was that the invention was obvious and thus not patentable.  It was argued that the steps taken by Tas Alkaloids to produce the improved poppy plant would have been mere routine for a plant biologist.  All parties led considerable evidence from a number of highly experienced experts in the field.

The Patent Office recently issued its decisions for both oppositions on 31 January 2018.  The Patent Office accepted Tas Alkaloids’ position that the invention was not obvious and both oppositions were dismissed.

The opponents have three weeks to appeal the respective Patent Office decisions in the Federal Court.

The licit poppy industry in Tasmania is of significant commercial importance to Tasmania and is unique in terms of the highly restrictive regulations (requiring United Nations permission to grow the plants) and is controlled by only three companies.  For one company to have exclusive and enforceable patent rights for the improved high codeine poppy plant could have significant effects on the industry.

Given the commercial importance of this new poppy, an appeal by one or both of the opponents would be expected.  We will be watching further developments with interest.

New IP Gateway office opens its doors in the city of the Gold Coast!

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IP Gateway is a well-established patent and trade mark firm in the Brisbane Metropolitan area with an enviable client base.

As a result of the expanding needs of our clients we have opened a new office in the city of the Gold Coast.  The office is based in Miami on the central Gold Coast and will enable the firm to better serve its Gold Coast clients.

The City of the Gold Coast is officially the fastest growing region of Australia and is well known for its strongly entrepreneurial culture and its prolific rate of startup businesses.

It has a rapidly growing population of 650,000 people and a strong economic base of medical research, information technology and high-tech manufacturing industries.

The Gold Coast has an increased need for highly skilled patent and trade mark attorneys.

If your business is located on the Gold Coast and you need some professional assistance with patents, trade marks or designs but don’t want the long drive to Brisbane, IP Gateway Patent and Trade Marks Attorneys is your perfect partner.

Phone number: (07) 5628 7031


Address: 2190 Gold Coast Hwy, Miami QLD 4220



Should I patent my idea?

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By Jack King-Scott PhD


To patent or not to patent is an important decision every entrepreneur makes when commercialising his or her idea.  It is no small decision.  If you don’t patent your idea someone could steal it, right?  Conversely, you have heard that patenting is expensive and what if your idea is not a success?


The power of patents

Applying for and obtaining a patent is often the best decision an inventor makes.  A patent grants a legal right to stop others from copying, manufacturing, selling or importing an idea without permission for up to 20 years.  Holding such exclusive rights helps reward innovation, because a patent can be sold or licensed to others thereby generating revenue.  Some businesses even exist solely to collect the royalties from a licensed patent portfolio.

Moreover, if you are planning to manufacture and sell your idea yourself, a patent can help better justify your investment in design, production and marketing.  This is because you have the comfort of lead time over competitors who may steal your idea and the peace of mind in knowing your idea is protected by law and is enforceable if someone infringes your rights.


When not to patent

Despite the above, the simple fact is, in some instances some ideas probably shouldn’t be patented.

For example, to be patentable an idea has to be a new and at least an innovative improvement over what has globally been done before.  Accordingly, it is not possible to patent an existing widget that you previously saw overseas or on holidays.  Moreover, applying a new colour, size, or aesthetic flair to the widget will most likely not justify a patent, since the modification, while new, may not qualify as at least an innovative improvement over the existing widget.

In some instances, your idea may be patentable but you may not need a patent.  For example, if your idea is a new product that you only plan to casually sell on the side, then you may not want a patent.  It is important to remember that a patent is not required to sell a product, rather, among other things, a patent is a tool to prevent others from selling such a product.


Prepare for protection

So if you have evaluated your idea and decided to move forward with a patent, what should you do?

First, do some patent research.  This includes searching to determine whether your idea is new and at least innovative.  More importantly, however, this includes searching to determine whether commercialising your idea will infringe any third party’s rights (i.e., existing patents).

Searching can be done either by yourself or by engaging a registered patent attorney.  However, searching is a specialist task that we generally recommend a patent attorney carry out.


Engage a patent attorney

If you have done the searching yourself and the results are positive, the next step is to engage a patent attorney to prepare your application.

While any one can write a patent application, it is important to understand that it is a legal document that has to fulfil or satisfy legal requirements in order to provide meaningful protection and in order for any patent to claim priority to the document.  As such resist the urge to cut costs and engage a patent attorney to draft your patent application properly the first time.

Generally speaking, the cost of preparing and filing an initial patent application starts at $5,000.  Realistically, this cost is quite minor in comparison with the amount of money required to create, market and distribute an idea, particularly for the peace of mind it provides in knowing that your idea is protected.

The take home message – carefully evaluate whether or not you require patent protection for your idea, and if you do, engage a patent attorney to do the job properly the first time.

Good luck with your decision!


If you have a Patent that you’d like to be protected or you want to discuss how to secure protection for your Intellectual Property with qualified award winning experts, please contact IP Gateway Patent and Trade Mark Attorneys on 07 38083566 or email us at

IP Gateway continues to grow with the addition of a powerhouse attorney

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2018 has started off with a bang for IP Gateway with Clinton Priddle joining the firm at the beginning of February.  Clinton will be fronting IP Gateway’s Electrical Engineering (“EE”) and Information & Communications Technology (“ICT”) patent practice and is a welcome complement to our growing local practice.

As a Registered Patent and Trade Marks Attorney in Australia and New Zealand, Clinton has risen through the ranks of some of Brisbane’s former prominent attorney firms before joining IP Gateway.

Clinton’s interest in patent law was sparked by an early exposure to patents as an inventor.  He has been named as an inventor in over 30 patent applications!

Prior to joining the profession, Clinton worked for Ericsson in Sweden as a Senior Research Engineer.  He holds a Masters of Science in Information Technology Engineering from Uppsala University in Sweden and a Masters of Industrial Property from the University of Technology, Sydney.

Clinton’s specialities lay in drafting, filing and prosecuting patent application, and managing patent portfolios for his clients both in Australia and internationally.  He also specialises in patent oppositions, filing and prosecution strategies, and providing commercialisation advice from an IP perspective.

Welcome to the team Clinton.

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