Other IP Rights and Interface with Patents: Utility Innovations, Industrial Designs and Trade Secrets
Utility innovations
A utility innovation is a lesser right for incremental inventions. It is granted under the Patents Act 1983, has an initial term of 10 years, and can be extended twice for 5 years each, to a maximum of 20 years. Utility innovation applications are not subject to full substantive examination; they are granted after formal examination but can be invalidated later.
Industrial designs and trade secrets
Industrial designs protect the appearance of a product, such as shape, configuration, pattern or ornamentation, under the Industrial Designs Act 1996; the term is 5 years, renewable up to 25 years. Trade secrets are protected by contract and breach of confidence, not by registration. A patent requires full disclosure; a trade secret requires secrecy.
Worked example
A client develops a new bottle shape with a distinctive grip. The shape has no technical function beyond aesthetics. Advise filing an industrial design, not a patent, because the shape is ornamental. If the grip also improves grip strength through a technical feature, a patent or utility innovation may be available for that feature.
Traps
- Seeking a patent for purely aesthetic creations, which are excluded under s. 13.
- Assuming a utility innovation is examined for inventive step at grant.
- Relying on trade secrets without a confidentiality agreement.
- Overlapping design and patent protection without checking prior art.