Meet our Guest with Kelly Sims
Portrait of Kelly Sims. Courtesy of Kelly Sims.
At Guest Work Agency, we are passionate about protecting artists’ intellectual property (IP), which is why we are so excited about the innovative work being done by IP Australia to create a world-class IP system. IP Australia is the Australian Government agency that administers IP rights and laws for patents, trade marks, design rights and plant breeder's rights (yes, that’s correct, rights over plant varieties!).
For this edition of Meet our Guest, we had a chat with Kelly Sims, who is Registrar of Trade Marks and Designs and General Manager of the Trade Marks and Designs Group. Kelly is currently on secondment as General Manager, Governance Group at IP Australia.
You’ve been working with IP Australia for several years now. Can you tell us about your roles and what drew you to intellectual property in the first place?
I joined IP Australia as Registrar and General Manager of the Trade Marks Designs Group while we were still coming out of COVID in September 2021. I am the first senior executive the agency placed outside of Canberra in its 120-year history, as I am based at the Melbourne IP Office or ‘MIPO’ as we call it. I travel regularly to Canberra and to visit our larger teams in Sydney and Brisbane who work remotely.
I am currently on secondment as the General Manager for IP Australia’s Governance Group from my regular role as Registrar. Governance Group helps the agency to make informed decisions to advance our strategic objectives by establishing, promoting and supporting best practice governance policies and practices, including publishing our 2023-24 annual report. This includes legal, procurement, security, portfolio management, risk, and assurance. We are also responsible for the administration of the Trans-Tasman IP Attorney Regime – a joint regulatory and disciplinary system for patent attorneys - on behalf of the Australian and New Zealand Governments.
My career background covers diplomacy, energy/environment and technology policy, customer service, and economic development, so the importance of IP to innovation, export, and economic growth have always been in my orbit. My interest in joining IP Australia was around going deeper into the IP part of innovation, and how trade marks and designs rights (the highest volume of rights that we administer) support our economy and communities to grow and succeed.
I love seeing how our customers use IP in their design and businesses and we publish many case studies on our website and across our social media on LinkedIn, Facebook and Instragram – please follow us there.
In 2021 IP Australia launched a dedicated IPAVentures team, exploring breakthrough innovations in IP. What drove you to start IPAVentures? Can you tell us about some of IPAVentures’ specific areas of research?
IPAVentures was initially established as an experiment for the agency to establish a disciplined and sustainable approach to breakthrough innovation for the IP rights system. We use a business ventures approach to rapidly explore new opportunities, using a stage gated approach to develop, test and refine ideas, and then prototype and develop those deemed most promising. We consider what could be rather than taking a position on if it should be. I have been privileged to be on the Venture Board for this work and see how it has inspired conversations internally and externally with our staff, customers, stakeholders and the wider community.
You can find our Innovation Framework on our website and a summary of our ventures here.
In the past few years we have seen some important updates to Australian designs law, including a 12 month grace period. The grace period allows a design to be shared publicly (under certain conditions) without impacting the ability to secure a design right in Australia. For example, a designer who publishes a design on social media can still seek protection for the design within 12 months of when it was first posted. Have you seen any changes – positive or negative – since this amendment came into effect in 2022?
The implementation of the grace period has provided applicants enforceable design rights where previously they may not have had that opportunity due to inadvertent disclosure of their design before filing for protection. We’ve received positive feedback from customers on the change, particularly from small business who are often self-represented and may not have an in depth understanding of the Australian design system. In the last financial year (2023 – 2024), of those applicants who have successfully used the grace period provision, nearly two thirds were locally based designers and businesses.
In 2023 IP Australia sought feedback from the public on whether digital and virtual designs, like graphic user interfaces (GUI’s) and holograms, should be eligible for protection under Australian designs law. Can you tell us about the feedback you received and where the proposed changes to the law are currently at?
The feedback we received on our proposal to introduce virtual design protection in Australia was supported by a broad range of stakeholders. In particular, submitters considered that expanding protection to include virtual designs would bring Australia in line with our major trading partners and would reflect the reality that these types of designs are an important area of innovative activity for Australia. This area of reform is also aligned with the Government’s focus of supporting investment in digital technology.
The next step is legislation to implement the reform, which will be dependent on Government and parliamentary priorities. You can see the outcomes of our consultations here (Aug 2024).
Building on the previous question, what kinds of technological trends do you think are shaping the IP landscape?
As part of our IPAVentures work in the last 12 months, we did an IP Provocations series around the impact of Gen AI and the IP system. It raised important questions around the ability of GenAI to generate novel content and whether our traditional understanding of intellectual property still holds true, and how might GenAI intersect with designs, patents, trade marks and plant breeders’ rights? You can find our full provocations report here.
How do you see trade marks and designs protection evolving in the next 5 -10 years? And why is legal protection important?
We are excited to be part of the ongoing stewardship and evolution of the IP system in the coming years and we outline how we will do that in our 2024-25 Corporate Plan under this purpose: “Enabling Australians to benefit from great ideas by providing a world-leading IP system”.
Check out leading Australian company Scoot Boots Pty Ltd to understand why strategic IP management is so important and underpins their global success here.
Are there any common misconceptions or challenges about IP protection that you’ve observed? What advice would you give to an artist, designer or developer looking to protect their IP?
In our engagements with our customers (especially SMEs), we find the most common misconceptions raised with us are:
Assuming that having a registered business name protects against anyone else using it
Not recognising the IP that exists in their business – let alone options for protection and considering these early
Not understanding how the IP system works, nor the benefits of IP rights ownership
Assuming IP protection is only for big pharmaceutical companies and consumer brands
That it’s too expensive and/or too hard to apply
Not understanding what advice you might need and how to get it from the IP/legal profession
Not understanding the difference between copyright, trade marks, designs or patents
Not knowing it’s important to keep the invention/design a secret (designs and patents)
Considering if /when you need an NDA/confidentiality agreement when working with third parties
Visit our website to consider these points more and seek advice from IP professionals as you need it.