Indigenous Knowledge: opportunities in the IP system

This webinar was hosted by Alicia Boardman and Sarah.

Alicia:
Welcome. My name’s Alicia Boardman and I’m from the IK Project policy team at IP Australia. I'm here speaking to you from Ngunnawal land. I’m here with my co-host Sarah.

Sarah:
Hi everyone. My name’s Sarah. I’m a Wiradjuri woman also currently on Ngunnawal land. I work in the trade mark and designs space as an Indigenous Knowledge examiner.

I’d like to start off on behalf of myself and IP Australia to just acknowledge the Aboriginal and Torres Strait Islander peoples of Australia. And acknowledge the Traditional custodians and owners of the lands on which our agency stands, which is the Ngunnawal people.

IP Australia acknowledges Australian Aboriginal and Torres Strait Islander peoples’ unique cultural and spiritual relationship to the land, waters and seas and their rich contribution to society. And we pay our respects to our ancestors and Elders, past, present and emerging and we’d like to extend those respects out to the lands that you’re dialling in from.

Alicia:
Let’s get started. So just to quickly go over what is IK, Indigenous Knowledge? IK is a term we use to cover a range of knowledge held and continually developed by Aboriginal and Torres Strait Islander people. It can be language, song, dance, stories, song lines, art and also things like knowledge of plants, science, medicines and agriculture.

At IP Australia we recognise the right of Indigenous people to their own knowledge, with over 60,000 years of creative tradition. And for this reason, we are looking at ways that the IP system can better support Aboriginal and Torres Strait Islander people to benefit from and protect their Indigenous Knowledge.

Today we'll be focusing on the current ways that the registered rights can be used to commercialise and protect Indigenous Knowledge in your business. And as we go, we'll be asking questions but also noting opportunities for better protection in the future.

Sarah:
So today we're going to through a little bit of a case study on Jess. So we’re going to go on her brand development journey. This is a fictional case study, that we've just come up with for this one, but if you are running a business, it’s very likely that you have created your own IP. And in the Indigenous business sector, its also likely that Indigenous Knowledge has a place in your business.

So using Jess, Jess has identified four potential IP assets, which use her traditional knowledge to try and help her gain a competitive advantage. She is going to start up a cosmetics business and she's going to utilise her traditional knowledge of a native bush, grown on her Country. So today we're going to be going through each of the IP rights that may be applicable to Jess’s business, just as you would if you were starting any kind of business development.

Alicia:
So what is IP? Intellectual property is all about ideas and their ownership. It’s about the rights of creators to make money from their own work.

IP Australia is responsible for administering the registered IP rights. That includes patents which protect inventions, trade marks which protect brands, designs which protect the look of a product and plant breeders’ rights which protect new plant varieties.

Just to note, IP rights are territorial. So they’re protected through national laws which means that for each country you might like to trade in, you will need to like to protect in. This means that for each country you might like to trade in, you will need to register your IP in that country. If this is of interest to you, there is helpful information on our website about how to launch your business internationally.

Sarah:
So there's also unregistered rights that IP Australia isn’t responsible for. We have copyright which protects the owner's original expression of the idea, but not the idea themselves. And that can include drawings, art, literature, film, broadcasts and computer programs. And copyright is automatic. So unlike the registered rights you don’t have to apply for it to have protection.

There's also trade secrets so any confidential information, including secret formulas or processes and methods used in production, can be covered by trade secrets. So for example Coca-Cola has used trade secrets to keep its formula from becoming public for decades.

There are other legal mechanisms to protect IK as IP rights don’t holistically protect IK. So just quickly, that can include contract law and non-disclosure agreements, which are existing mechanisms that you can use to share secret or confidential information like your Indigenous Knowledge, and ensure that it isn’t disclosed to a third party. If you’re bringing in new employees or working with business partners and you need to share your IK, an NDA could help you to protect that.

Protocols can also be useful to establish standards and expectations around respecting IK. And to show that you are proactive in this space, you might also consider including an Intellectual property page on your website and potentially a copyright statement at the bottom of each page on your website, to demonstrate that you are active in protecting your IP and your IK.

Alicia:
Let’s dive into the registered rights. Back to our case study. Jess has an idea for a skin cream and needs a way to differentiate her business in the cosmetic industry. So a way for her product to stand out in the marketplace and recognise her ancestry which is important to her and a part of who she is. So she needs needs a trade mark.

A trade mark identifies the particular goods or services of a trader as distinct from those of other traders. A trade mark can be a logo, a word, letters, numbers, a colour, a slogan, a sound, scent, shape, a picture, or any combination of these. Registration lasts 10 years and it can be renewed indefinitely.

So it’s important to think about a trade mark right at the start of your business journey. Trade marks are relatively inexpensive out of our four IP rights. They're around $200-400 depending on the type of application you need. And really it’s a small investment for the money and time that you can save down the track.

We also have a fast track application process called TM Headstart. TM Headstart allows you to speak with an examiner over the phone and get information on what might be an issue before formally applying. And you get that feedback within five days.

A trade mark is not a business name. This is often misunderstood. A business name and going to register for your business name is usually the first place that people start. To demonstrate the difference I’ll just work through each type of business identity that we have here on the screen.

So a business name, also known as a trading name, is the name under which your business operates and is connected to your Australian Business Number (ABN). It helps your customers find, identify and connect with your business.

A company name is very similar. It’s commonly identified with proprietary limited. And if you want to trade using a name other than your registered company name, you should also register that trading name as a business name.

A domain name is your street address on the internet. It’s the way that people find your business online. Domain names are registered on a first come first served basis. However, if a domain name is using a trade marked name, the owner of the trade mark can take certain actions against you to recover their domain name.

So that’s a bit of a hint. Essentially, trade marks give their owners exclusive legal rights to use the trade mark throughout Australia. Unlike a business, company or domain name, a registered trade mark lets you take action against other businesses using names that are the same or confusingly similar to your trade mark.

So the business name regulator does not check the trade mark register before granting your business name. So it’s a good idea to start first with your trade mark on your brand development journey.

So choosing a unique brand. What do we need to think about? Here at IP Australia our trade mark examiners will be checking to see whether your trade mark is registrable. Two key things that they look for is whether your trade mark is unique and distinctive and whether it’s similar to marks that already exist.

So, what we mean by distinctiveness. So trade marks shouldn't be descriptive because another trader may have a genuine desire to use the word to explain to customers what their goods and services are.

Sarah:
For example we wouldn’t allow soap on soap because other traders are going to need to be able to call their soap products soap without trying to infringe on any kind of branding.

Alicia:
Your trade mark doesn’t have to be as directly descriptive as that example. It could indicate a quality about your product. It could be ‘organic lotion’ or ‘eco-friendly lotion’ or include the ingredients of the product. These are all examples that don’t directly describe the product but would still be considered to be needed to be used by other people in the ordinary course of their business.

The other thing we look at as well is whether your trade mark is similar to other trade marks on the register. So this includes trade marks that are not exactly the same but are a little bit different. It’s important to look out for other images of a similar subject or design, spelling variations in your brand name and things that sound the same.

Our key tip here would be at this point in your business brand development, to really do your research. Get on Google, get on the trade marks register and see if the trade mark you’re applying for is already being used.

In our example here Jess has actually chosen a word in her language, biambul, which the Wiradjuri word for all. Out of respect for her community, she spoke about using it in her business with her community and made sure it was appropriate and she had their consent before moving forward with her application.

It’s important to note that this isn’t a requirement from IP Autralia however, through our consultations we have gathered information that suggests this is best practice.

Another thing to note is about rights based on language, is that when Jess gets the registration for biambul, she will have rights to use the word to sell and market her product, but she won’t have ownership over the word in all other industries nor in non-commercial settings.

A couple of things on trade marks, and I know this is a lot for people who haven’t had a lot of exposure to it, but within trade marks there’s actually a couple of different types that could be useful for Indigenous Knowledge and Indigenous businesses. One of them is a certification mark. So a certification mark indicates the goods or services in that are certified by the owner of the mark and meet specific rules or standards that are associated with it. So a certification trade mark can actually certify the quality, accuracy or some other characteristic of the goods or services including their origin, or the material from which they are made, or their mode of manufacture. This is an option if you are wanting to look at communicating to consumers the authenticity of your product.

Another type of trade mark that we have is called a collective mark. A collective mark is a sign used to identify the goods and services of members of an association and set them apart from goods and services that are provided from those who are not members of that association.

Unlike certification trade marks, the use of collective trade mark is not required to be subject to rules. So it’s a bit of a simpler application. A collective trade mark can only be owned by an association and not by an individual or proprietary company. So to apply for registration of a collective trade mark, the association applying may be an incorporated or unincorporated body.

These types of marks may be of interest to Indigenous businesses or associations because they can recognise ownership beyond an individual such as IK that's owned by a community. They can allow IK owners to retain ownership and control over their indigenous names, signs and symbols. And they can be used to raise public awareness and maximise consumer certainty as to the authenticity or quality of the goods or services being marketed under the mark.

Sarah:
At IP Australia, we do have Indigenous staff like myself and others that assist in identifying and examining marks that do contain IK. We can pick up some inappropriate uses of IK in these marks, but we are really looking to strengthen these measures. And to do that we need to know what you guys think are the things that are the biggest issues and that we should be trying to focus on and address.

Alicia:
So we're currently consulting with people to help ensure that the right people are using IK in trade marks and we're looking at new checks in addition to the ones that we just discussed. Out of the three options, we are interested in which ones do you guys out there think would be most useful?

Out of the three options on the screen, which measure do you think would be most useful to help with some of the issues surrounding the use of IK in trade marks? Is it that the applicant has consent from the IK owners to use the IK? Is it that the use of the IK might be disrespectful or hurtful to the IK owners and we should be looking at that? Or whether you’re concerned that consumers are seeing Indigenous Knowledge in branding from businesses who aren’t actually indigenous?

Sarah:
Okay, so moving on in our IP rights journey we’re going to talk about design rights, and what we mean when we say a design right at IP Australia. Here, a design right protects the overall appearance of a product resulting from one or more of the visual features of that product. So what we mean by product is a thing that is actually manufactured or hand made, and the visual feature refers to the shape, the pattern, or the configuration or ornamentation of that product. Those are the things you are getting protection for if you get a design right.

Design right is a relatively short right. It lasts for 5 years and it can be renewed for up to 10 years. But it can be a very strong right if you use it correctly.

If we talk about Jess, you can see on the screen there there’s an image of a bottle and some packaging. That’s actually two registrable design rights. The bottle can be registered and the packaging can be registered. Jess wants her product to stand out on the shelf amongst the other cosmetic lotions she’s making. So she comes up with a unique shape of a bottle and the unique packaging. And these are things that she can protect and get protection for, with a design right.

So at IP Australia design rights we have a two step system. Part 1 is registration and part 2 is certification. Once you do have a certified design right you can enforce that and stop people using your design incorrectly.

A design right is, as I mentioned, generally a short term commercial asset. But it can be used as part of a wider IP strategy. One strategy you may like to consider is filing a design right upfront to get that initial protection and then as you build reputation in your brand, you can then look at maybe filing a shape trade mark down the line to try and get that longer protection.

Designs are relatively low cost but you should consider the part of it in your broader IP strategy and how that may affect. Generally the cost is similar to trade marks. We do have filing costs at both steps. And enforcement can be costly if you did need to go to the courts to enforce something.

One of the most important things about design rights is, do not publish! When we’re looking at whether or not we can certify a design right we need to decide whether it’s new and distinctive. And to do that we search the internet to try and find if it exists anywhere before the filing date. So if we can find it anywhere on the internet before that filing date, you’re going to end up with a problem getting an actual certified design right.

Alicia:
So Sarah when you’re talking about whether it's been published online, does that include even if I haven’t made money from it or sold it yet?

Sarah:
Yes absolutely. If we can find it anywhere, even if it’s just on your personal Facebook page, even if you haven’t stated selling it, you wanted to try to test the market before you apply for that, it’s going to knock over your design right before you even start. So it really should be something you consider at the beginning of your business strategy as whether or not you’re going to require a design right.

And just a note quickly, there is an interaction between copyright and designs and it is very complex and it does vary based on individual situations. Generally, if you are looking to commercialise a product you would need to seriously consider that you may need a design right as this can affect your copyright protections. As this is a highly complex and individualised situation, it's likely you may need independent legal advice. If you would like to know more about this copyright/design overlap issue, please get in touch with us after the webinar and we can send out some information on that.

We do do some checks in designs similar to what we were talking about with trade marks to see if it would be offensive to Indigenous people and whether or not that design that contains IK would mislead people if the source was not from an Indigenous business.

So one of the questions that we’d like to ask is, to help us identify IK in designs upfront, should we be adding a requirement to the front of the application form and process where applicants would have to declare that use of IK and where that permission was obtained from as at the filing stage for filing a design? So we’d just like to get your opinion on whether you think this is something that should be introduced within the design filing system?

Next up in our IP rights journey is patents. A standard patent gives long-term protection and control over that invention. It lasts for up to 20 years from the filing date of your application, or up to 25 years if its a pharmaceutical substance.

The invention claimed in a standard patent must be new or novel, and involve an inventive step and it has to be able to be made or used in an industry to gain protection from a patent.

If you do get a patent right it will give you the right to stop others from manufacturing, using and selling your invention in Australia without your permission. It also gives you the ability to license someone else to manufacture your invention or agreed terms to take legal action against people who are using your invention without your permission. It encourages Australians to continue their research, to develop new and innovative products, and exploit new technology and promote the transfer of technology throughout Australia. It also gives trading partners the incentive to provide similar rights and thereby protect our exports in markets overseas.

As far as Jess goes, as we’ve mentioned she has a traditional knowledge about using her native flowering shrub that has medicinal uses to try and treat skin problems. So Jess has used this knowledge and has conducted further research and developed a new cosmetic which brightens skin. Jess could apply for a patent to protect a process for making a cosmetic or a plant extract from the native shrub. This patent could also be used to license and earn royalties from other companies, later down the track once she has established herself.

Some of the key things to consider with patents are the costs. There are a range of costs that should be considered. IP Australia’s fees generally range from about $400 to $500 for application and examination. But given that patents are complex and they take time and require technical or scientific specialities, you are likely going to need a patent attorney and this is where things can get a bit costly. So there are a breakdown of these including attorney fees, IP Australia fees and also renewal fees, that you might want to look into.

And you are also responsible for monitoring the market and enforcing your IP. And again this is just for Australia. If you did want to try and look at extending that protection overseas that’s something you would have to look into as well.

A professional can help you determine whether the time, effort and money required to get and maintain a patent would be valuable for your particular invention. So it’s worthwhile trying to get an opinion on that.

As with designs, it’s also really important to keep you invention, or patent, idea a secret. You need to be aware that if you demonstrate, sell or discuss your invention in public before filing an application with us, you may not get that patent right.

If you do want to discuss something with employees or business partners, you can have them sign a confidentiality agreement. In particular, make sure you have an agreement in writing before you give away any kind of Traditional Knowledge. It’s really important you should definitely consider talking to a professional to help you negotiate some kind of benefit sharing arrangement.

The trade off with patent protection is that you do make the invention publicly available. So protection also only lasts 20 years, so you need to consider is patent protection right for you. Trade secrets, as we mentioned before can also be another option that involve keeping your invention secret and can last indefinitely. It does involves having a process in place to keep the IK secret and a trade secret doesn’t require registration with IP Australia.

As far as Traditional Knowledge goes, it’s important to note that patent protection is only available for ‘new’ inventions. So it can be difficult for some kinds of Traditional Knowledge to meet this threshold in certain circumstances where they lack novelty because they’ve been around for a while. By the same token, if you think somebody has used your knowledge in a patent, there are ways to provide IP Australia with that information. And in some cases we can examine that and decide whether or not that patent is in fact valid.

In most instances, trade secrets and non-disclosure agreements may be the best way to protect TK in a proactive way.

Alicia:
Okay, so plant breeder's rights. These rights are used to protect new varieties of plants that are distinct, uniform and stable. Plant breeder's rights are exclusive commercial rights for a registered variety of plant. If you've developed, or are in the process of developing, a new plant variety, protecting your IP through PBR should be considered an integral part of your overall business strategy.

PBRs give you exclusive rights to produce or reproduce the plant material for commercial purposes or control who else can do so through licensing or similar arrangements. They offer, you can offer the plant material for sale and derive income from their sale either directly or through royalties. This can include the harvested material like fruits and grains, and not just the plants themselves. You can export the plant material to other countries and possibly protect it there as well. Again, this would require looking at applying for the rights in the other markets and in the other countries that you’re looking to expand into.

What do we mean by a new variety? It’s one that has not been sold with the breeder's consent beyond the allowable time period. It must be distinct, uniform and stable so that when reproduced it's true to type. So if you had knowledge of an endemic plant through Traditional Knowledge, that’s not necessarily going to qualify for a PBR.

Jess with her traditional knowledge and her booming cosmetics industry company, she has bred the plant to create a new variety that flowers all year round. Australian native plants, as we all are aware, are loved around the world, and given the medicinal properties of this plant, Jess decides to apply for a PBR.

Once registered, she’s got that PBR that can be used for 20 years of protection and commercial gain. It will allow Jess to control her variety and license others to grow it. She can commercialise the variety herself, or through a contractual arrangement, such as licensing with a chosen person or organisation, she can possibly earn royalty income. For the protection period, she is the only one who can do this.

It also gives other companies the confidence to enter into licensing contracts knowing that their investment is protected. This is just one way that Jess can commercialise her plant knowledge for herself or her community.

When considering a PBR, it’s important to consider the costs. There are a number of fees involved. However IP Australia’s fees are staggered, so it gives you a bit of flexibility as you go through the process as they’re not all due upfront. And they range from around $300 to $1600.

The main costs though are likely to be your QP fees and the cost of a trial. So a QP is a Qualified Person, and they’re required to be engaged for each application. They’re accredited by IP Australia to supervise growing trials and help verify the claims in your application. The QPs will charge fees which vary from one to another, but that’s independent of IP Australia.
Different plants will require different types of trials. The trial is essentially there just to establish that the claim is true and that the variety you’re applying for can be reproduced under the same conditions.

It’s important to be aware of timeframes with PBR. There are different timeframes for different plant varieties in terms of how long you can sell the variety before you apply. So it’s important to check the timeframes on our website so that you don’t miss out.

And whilst it’s sounding quite complex, PBR is simpler than it sounds. It can be for nurseries, such as land council revegetation nurseries and even home gardeners. We know for example that there’s an Aboriginal-owned nursery that have a PBR over the native plant Lomandra Muru. They’ve chosen a business model where they’re not growing themselves, actually. They’re licensing that out and earning royalties from those established planters.

So it can be a bit of a long process for the PBR but if you’ve got something that’s worth it, don’t give up.

In relation to plant breeder’s rights and patents, we are proposing a new disclosure requirement where people would have to declare their use of IK and the source of the IK, and for genetic resources, to disclose their origin and how the genetic resource was obtained.

This would be the first step in acknowledging First Nations people as the owners of Traditional Knowledge and recognising the role that Traditional Knowledge plays in informing western science. The requirement could also help encourage conversations around collaboration and benefit sharing.

We’re interested to hear from you the most important reason to have a new disclosure requirement. Whether that would be encouraging honesty about the use of IK, or deterring the misappropriation of IK. And if your IK was being used as a part of an invention or plant variety, how would you like to be acknowledged?

Sarah:
OK so that’s a wrap on Jess’ journey through the IP rights system. We’ve discussed trade marks, designs, patents and plant breeder’s rights. Just before we move on, let’s recap three key things to remember about IP in your business plan.

Number one is know your assets. IP rights don’t holistically protect IK, but they can help. And it’s important that you understand what your commercial advantage is and consider what mechanisms can best help you to make the most of your assets. A professional can help you develop an IP strategy for both your IP and also your IK, and weigh up the costs and benefits to your business.

The second one is size doesn’t matter. Whether your business is large or small, an IP strategy is equally important. Good IP management can help small business grow into larger more successful businesses.

And the third one is proactive and informed choices are key to protecting your IP. It’s important to be careful with social media or telling people about your business ideas before you have protection in place and before you really understand what that protection is. If we haven’t covered it in depth today, what we haven’t covered is, if you're planning on going overseas and doing business overseas, including manufacturing, consider international protection before you do enter into those markets.

Alicia:
So IP Australia, as we’ve mentioned, is looking at what more we can do to protect IK, and we’ve launched our consultations which are open on for topics, which is establishing an Indigenous Advisory Panel, enhancing measures for trade marks and designs, declaring the source of IK in new innovations and exploring interest in authenticity labelling.

So to have your say and get involved with our consultations just follow the link, which we’ll also send out after the webinar.