Patent it

A patent can be granted to someone who has created something that is inventive, new and useful. Essentially a patent is an exchange; the patent holder is granted a monopoly which allows them to stop others from making, using or selling their idea or invention. In return, their ‘idea’ and how to create or replicate it is published in patent databases.

A patent can protect inventions and innovations such as machines, industrial processes, pharmaceuticals and their productive methods, computer hardware and software, toys, electrical appliances, plants and other biological/biotech products and processes, even some business methods—in short, almost anything commercially useful. Patents can give you protection, subject to the payment of annual fees, for either eight or twenty years, depending on the type of patent granted.

The cost of patenting will vary on such things as the type of patent being granted and the number of countries in which you intend to register your patent. You should speak to IP Australia, a patent attorney or an IP lawyer to get a better idea of the costs involved in patenting your invention. You should be aware that there is no such thing as a world patent. For more information on seeking patent protection overseas, visit www.ipaustralia.gov.au

You cannot patent artistic creations, principles, theories, mathematical models or any purely mental processes with no tangible commercial application.

An important point to remember about patents is that generally the invention must not be disclosed before an application has been filed because it will otherwise not be considered new. However, a number of countries, including Australia, provide a grace period so that in certain circumstances accidental public disclosure of an invention will not affect the validity of a subsequent patent application. In Australia a complete application must be filed within 12 months of the disclosure but in other countries the time allowed and other conditions may be different. Visit www.ipaustralia.gov.au for a comprehensive explanation of the grace period. See the IP and Profiting from Your New Idea section for more information on patents.

Design registration protects the appearance or 'look' of manufactured products. Providing the design has a new and distinctive appearance, i.e. has a special shape, configuration, pattern or ornamentation, then it can be registered. A design which has been examined and certified gives you a legally enforceable right to use your product's design to gain a marketing edge and prevent others from using the design without your permission.

You should not publicly disclose your design before seeking registration. If you are considering applying for a trade mark that features your design you should consider applying for the design before making a trade mark application.

An alternate option to design registration is to publish your design. Publication will fully disclose the design to the public and consequently prohibit someone else registering your design. However you should be aware that publication will not give any rights to stop others from imitating or copying your design.

Searching - IP information at your fingertips

It has been noted earlier that in some instances, searching can be complex and it is likely that you will be basing significant commercial decisions on the results (and the interpretation of the results) of your search. Records of all registered Australian patents, trade marks, designs and plant breeder’s rights are kept on searchable databases on IP Australia’s website. These databases contain a wealth of information to help you make an informed decision regarding IP rights.

Searching IP registers, databases and relevant publications, also known as searching the ’prior art’, is an extremely useful and important step in developing your IP strategy. Prior art includes all publicly available information in the form of patent records, industry magazines, journals, the Internet and relevant published papers. If your invention is already described in a document published anywhere in the world you cannot get a valid patent. However, there are some limitations to searching ‘prior art’.

You can complete some types of patent, trade mark, design and plant breeder’s rights searches at an IP Australia office in your state, or at www.ipaustralia.gov.au. You can search these databases free of charge. However, depending upon the complexity of the particular type of IP you are seeking to use and protect, it is a good idea to consider using a commercial search company, or patent and trade mark attorney to conduct a thorough search and analysis for you. For international patent and trade mark databases and searching firms, please refer to the relevant links on the IP Australia website at www.ipaustralia.gov.au/resources/international_professionals.shtml.

Protecting Unregistered IP

Aside from patents, trade marks and designs there are a number of other IP rights that exist without the need for formal registration. Copyright and confidential information is discussed in this section. However, the law of passing off and the Trade Practices Act 1974 also offer businesses some protection against exploitation from competitors.

Copyright

Copyright in a work allows the owner to exclusively control and exploit the use of that work. Copyright covers books, art, music and sound recordings, photographs, software, databases, films and print, radio and television ads and other promotional materials. Copyright protects the expression of, and not the substance of, a work. For example, the actual text of a manual is covered, but not the ideas conveyed. Copyright does not protect manufactured articles.

There have been a number of changes to copyright legislation due to the implementation of the Australia-United States Free Trade Agreement. The most significant change is the extension of the term of protection for most copyright material by 20 years, from 50 to 70 years from the date of the author’s death. For more information about copyright in Australia, visit the Attorney-General’s Department website at www.ag.gov.au or the Copyright Council’s website at www.copyright.org.au.

Confidential Information and Trade Secrets

Your business has information that would lose its value if it were obtained by your competitors. For example, this could include trade secrets, product manufacturing specifications, business and marketing plans, client lists and data. You can obtain relief in the courts for damage caused to your business by unauthorised disclosure or exploitation of this confidential information, and/or an injunction to prevent such a 'breach of confidence'.

Trade secrets are particularly important IP assets. The main benefit of trade secrecy is that it can exist for as long as the information remains confidential, whereas patents and designs have a limited monopoly term. Even if the subject matter of a trade secret is patentable, simply keeping a trade secret confidential can sometimes be a better strategy. The owners of the Coca-Cola soft drink formula certainly think so. Had they patented their mixture, the whole world would now know the process and be able to manufacture the same substance. This type of strategy is only worthwhile if the product is difficult to reverse engineer (which means that it is difficult to ascertain exactly how it is manufactured).

Employees and confidential information

Employees can leave knowing a lot about your business-which could affect your competitive edge if they move to a competitor or start up a competing business. Essentially employees can legally leave with what they have learned as part of their general work skills, but should not be leaving with employer-specific information. It is worth seeking advice about this issue if you employ a number of people who have exposure to the confidential information in your organisation.

Confidential materials should be marked with a confidentiality legend e.g. CONFIDENTIAL, and kept under lock and key. Employees and others needing access to the information should be made aware of their obligations to keep it secret, preferably by written agreements. There can be a fine line between an employee's general knowledge-which he or she can use freely-and knowledge that belongs to the business-which the employee can be required to protect even after leaving the business. Legal advice should be sought on suitable confidentiality policies for your business situation.