Tips and tricks for searching for an existing right

Why search someone else’s IP?

When you suspect or are accused of infringement, it is vital to understand if the other party has registered IP rights, and what they cover. This can be for several reasons:

Verifying that any claim to IP rights the other party has made are real and current, and are relevant to the current issue.
The other party may have a registered right which predates your right, is similar to your right, or covers a specific area that your rights may not. For example, it would not be advisable for Pigeon chocolate to pursue trade mark enforcement action against Pigeon soap before checking the details of any trade mark owned by the Pigeon soap company.
The other party may have a registered right, but you disagree about the extent of those rights or how they apply to specific issues.
The other party may have rights which apply in other jurisdictions (i.e. other countries) which may be critical to choosing your approach.
Even if the suspected infringer is not the registered owner of the IP, they may believe that they have permission to use the IP. There may be an arrangement with a previous owner of a right, a distributor (who believes they are authorised to grant permission to use the IP), or other reasons they believe are legitimate (but may be disputed).
Even if someone doesn't currently own a right, their past use, ownership or use might affect what you choose to do now.

Searching, interpreting and comparing registered rights is a specialised skill, and seeking professional assistance may be a good idea to confirm your position.

Searching for someone’s registered IP right

IP Australia maintains free-to-access, easy-to-use, public-facing IP registers for patents, trade marks, designs and plant breeder’s rights. These allow anyone to search for any IP rights which have been applied for in Australia and include considerable detail.

If you suspect infringement, it is useful to search for rights held in the suspected infringer’s name, business name, and any possible associates who may own a right. Additionally, it can be helpful to search for any rights relating to the issue and to investigate if the suspected infringer has a relationship with a rights holder (such as licencing agreement).

If you are accused of infringement by an IP owner, be aware that many details about a registered right and its ownership are accessible within the public registers. You can easily confirm the existence and ownership of any stated right and view its details.

To check whether someone has an IP registration overseas, read about searching international IP registers(Opens in a new tab/window).

Australian trade marks can be searched using the Australian Trade Mark Search(Opens in a new tab/window) or TM Checker. (Opens in a new tab/window)
- TM Checker is intended for those considering applying for a trade mark, but it also offers a quick way to check for details of marks which may be similar to yours.
- Australian Trade Mark Search (ATMS)  allows you to search the Register of Trade Marks, which includes all trade marks which have been applied for in Australia.
- You can search trade marks by various methods, including by applicants/owners. It is also ideal to check the registration status of a trade mark.
- ATMS features an Advanced search option, which include saving searches, which allows a user to 're-run' a search to see what’s changed.
- For help with these advanced features refer to Help | IP Australia | Trade Mark Search(Opens in a new tab/window)
For more details: How To Search Existing Trade Marks | IP Australia(Opens in a new tab/window)
If you identify another party’s trade mark, the status of that trade mark should be noted. The following status information can be found on the left of the screen on the ATMS tool.
The following statuses indicate that a trade mark is currently active and may be important in the context of IP enforcement.
Registered
- Registered
  If the trade mark is registered, then it is a current IP right and may stop a similar trade mark being registered.
Pending
- Published
  A published trade mark is one that either has not been examined yet or it is facing grounds for rejection but could still be registered if these are overcome.
- Accepted
  An accepted trade mark is one that has been examined and no grounds for rejection remain, however there is a 2-month window called the opposition period in which it can be opposed by another party – this will show up as 'Accepted: In opposition period'. If someone is opposing the registration of that trade mark, it will be listed as 'Accepted: Opposed'.
The remaining statuses, below, may indicate that a trade mark is less likely to be relevant in the context of current IP enforcement.
Removed
- Removed
  This trade mark is no longer registered. You can check the date when the trade mark was removed from the register.
- Ceased
  The same as removed, but usually refers to international trade marks. Protected international trade marks that are removed from the register are usually marked as 'Ceased'.
- Cancelled
  Cancelled trade marks are no longer registered. Cancelling a registration is done at the request of the registered owner or through an order made by a prescribed court.
- Status Not Available
  Not registered, this is likely to be a very old registration that has lapsed or was removed long ago.
Never Registered
Never Registered and Lapsed
This means that the trade mark was applied for but never registered.

Whatever the status of a trade mark, its use in the market is an important factor to consider in relation to infringement and enforcement. This is because a trade mark that is unregistered may still have some IP protection, for example from use and exposure in the marketplace.
For more details: How To Search Existing Trade Marks | IP Australia(Opens in a new tab/window)
Australian patents can be searched using the Australian Patent Search Tool(Opens in a new tab/window). This tool allows people to search for patent numbers, invention titles, keywords relating to patents as well as other advanced queries.
There are also a number of other databases that may be worth considering for your patent search. Google Patents(Opens in a new tab/window) searches patents from around the world. Most major patent offices also have domestic search tools (such as USPTO(Opens in a new tab/window), Espacenet(Opens in a new tab/window)). The 5 largest IP offices (IP5) have also developed a site known as global dossier(Opens in a new tab/window), which may help you find related patents and family members in your search.
It's also worth noting the status of the patent. When searching Australian patents and Australian innovation patents, the status might be:
Filed
This patent application has been received by IP Australia. The patent application is not yet protected under the Patents Act. If the application progresses to receiving protection, it may retroactively receive that protection from the date of filing. (That is, if a competitor's patent has the status filed, it may subsequently be granted, which might present issues if you are operating in this space.)
Accepted — Standard
The patent application has met the requirements outlined in the Patents Act and has been accepted. A notice of acceptance has been published in the Official Journal. After the prescribed notice period of 3 months, the accepted patent will be subject to grant. If the patent is granted, the protection offered will be retroactively applied back to the date of patent (usually the original filing date).
Accepted — Innovation
The patent application has met the formality requirements for an innovation patent under the Patents Act and has been accepted. This patent is not yet protected under the Act. The patent application may now proceed to grant.
Ceased
This patent has ceased and is no longer in force. This is typically due to a failure to pay a renewal fee or act within a required time period. While this patent is not currently protected, the patent was protected for the period that it was in force. Certain circumstances may retroactively revive the patent (such as an extension of time under section 223).
Certified
This innovation patent has received a Certificate of Examination. The patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention. Legal action can be taken against any infringement, including injunctions, damages, or an account of profits. The maximum term of an innovation patent is 8 years from the date of patent (usually the original filing date).
Converted
This patent has been converted from one type of patent into another type. For example, from a provisional patent application to a standard patent application. The patent typically is given a new patent number that the application continues under. The current status of the patent will be shown under the new patent number.
Expired
This patent has passed the maximum term for the patent and is no longer protected from the date of expiry. The patent was protected for the period that it was in force.
Granted — Standard
This patent has been granted. This patent is protected, and the patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention. Legal action can be taken against any infringement, including injunctions, damages, or an account of profits. The term of a standard patent is 20 years from the date of the patent (usually the original filing date); however, it may be extended to 25 years for pharmaceutical substances.
Granted — Innovation
This patent application has been granted. This patent is not yet enforceable. A notice of the patent has been published in the Official Journal. The patent application may now be examined to receive a Certificate of Examination. After certification the patent will be able to be retroactively enforced from the date of patent (usually the original filing date).
Lapsed
This patent application has lapsed. This is typically due to a failure to pay a renewal fee or act within a required time period. This patent is not protected. Certain circumstances may revive the patent application such as section 223 extensions of time. If those circumstances are met and the application is deemed to receive protection under the Act, it may do so retroactively.
Refused
The patent application has not met the requirements outlined in the Patents Act. The patent application is not protected. A notice of refusal has been published in the Official Journal.
Revoked
Usually this means that the patent has been retroactively determined to have not met the requirements of the Patent Act, however it also possible that the patentee may have surrendered the patent. This patent is no longer in force and is not protected.
Withdrawn
The patent application has been withdrawn by the applicant. The patent is not in force and is not protected.
Australian plant breeder’s rights (PBR) can be searched using the Australian Plant Breeder’s Rights search(Opens in a new tab/window). This allows you to search the Register of Plant Breeder's Rights by genus, species, common name or status. For more information about searching for PBRs, see How To Search Existing Plant Breeder’s Rights(Opens in a new tab/window).